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Oil-Dri Corporation of America v. Nestle Purina Petcare Co.

United States District Court, N.D. Illinois, Eastern Division

June 26, 2018

OIL-DRI CORPORATION OF AMERICA, Plaintiff/Counter-Defendant,
NESTLE PURINA PETCARE COMPANY, Defendant/Counter-Plaintiff.

          Matthew F. Kennelly District Judge



         On February 3, 2015, Oil-Dri Corporation of America ("Oil-Dri") brought this suit against Nestle Purina PetCare Company ("Purina") for infringement of U.S. Patent No. 5, 975, 019 ("the '019 Patent"), entitled "Clumping Animal Litter." The application for the '019 Patent was filed on August 19, 1997, and the patent was issued to G. Robert Goss and D. Cristina Frugoli on November 2, 1999. Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., No. 15 C 1067, 2018 WL 1071443, at *1 (N.D. 111. Feb. 26, 2018) (St. Eve, J.). Purina has filed a motion to strike Oil-Dri's "alleged 'new' evidence of priority, 'Further Supplemental Revised Response to Purina's Interrogatory No. 1,' and portions of its [Oil-Dri's] Final Infringement Contentions" (doc. # 352: Purina's Mot. to Strike). Purina's motion to strike has now been fully briefed. For the reasons set forth below, we deny the motion but order Oil-Dri to present a witness or witnesses for deposition in accordance with this ruling.


         Discovery began in earnest in this case on March 15, 2017 (after an extended stay in connection with an inter partes review proceeding), when Oil-Dri served its initial disclosures and produced three "invention-related documents," which were dated March 13, March 14, and July 22, 1997 (doc. #411: Purina's Supp'l Br. in Supp. of Mot. to Strike, Ex. 3). On April 3, 1997, Oil-Dri produced 258 pages of additional documents, which included six pages of laboratory results from the notebooks of inventors Ms. Frugoli and Dr. Goss, dated June 13, 1996, June 20, 1996, February 21, 1997, and March 4, 1997 (Purina's Supp'l Br., Ex. 9).[1] However, in Oil-Dri's initial infringement contentions, served on March 29, 2017 (and in Oil-Dri's amended initial contentions, served on April 4, 2017), Oil-Dri stated --pursuant to Local Patent Rule ("LPR") 2.2(f) - that all of the asserted claims in the '019 Patent had a "priority date" of August 19, 1997, the date the patent application was filed (Purina's Supp'l Br., Exs. 4, 11).

         On May 16, 2017, Purina served its first set of interrogatories on Oil-Dri. In Interrogatory No. 1, Purina asked Oil-Dri to identify "all alleged dates of conception, subsequent diligence until reduction to practice, dates of actual reduction to practice, and written descriptions or drawings prepared prior to the filing date of the '019 Patent" (Purina's Mot., Ex. C, Interrog. No. 1). In its response, served on June 15, 2017, Oil-Dri stated that Claims 1-3 and 30 were conceived on June 20, 1996, and reduced to practice on February 21, February 24, and March 4, 1997 (Purina's Mot., Ex. D: Oil-Dri's 06/15/2017 Resp. to Interrog. No. I).[2] Oil-Dri also stated that the asserted claims were entitled to a "constructive" reduction to practice date of August 19, 1997, the date the application was filed (Id.)[3]Along with its response, Oil-Dri produced three pages from Dr. Goss's and Ms. Frugoli's lab notebooks that it had not previously produced; these documents were dated February 20, 1997, March 10, 1997, and May 5, 1997 (Purina's Supp'l Br., Ex. 13).

         Between June 15, 2017 and January 31, 2018, Oil-Dri did not amend the asserted dates of conception or reduction to practice for the '019 Patent.[4] During this time, Purina took the deposition of Ms. Frugoli on November 10, 2017, and the deposition of Dr. Goss on October 25 and December 7, 2017 (Purina's Supp'l Br. at 5 and n.5). Oil-Dri served final infringement contentions on December 8, 2017, but on February 26, 2018, on Purina's motion, Judge St. Eve struck them and ordered Oil-Dri to serve amended final infringement contentions by March 5, 2018 (doc. # 323: J. St. Eve 02/26/18 Mem. Op. and Order).

         Prior to that ruling, on January 31, 2018, Oil-Dri amended its response to Purina's Interrogatory No. 1, asserting that Claims 1-30 and 30 were conceived on March 4, 1997 (a later date than asserted in the original interrogatory response) and reduced to practice "by" March 13, 1997 (again, a later date than asserted in the original interrogatory response) (Purina's Mot., Ex. E). Purina posed no objection to this amended response. Two weeks later, on February 15, 2018, Oil-Dri again amended its response to Interrogatory No. 1 in a document entitled "Further Supplemental Revised Response" (Purina's Mot., Ex. F). This time, Oil-Dri asserted that it conceived of Claims 1-3 and 30 on July 25, 1996 (one month later than the date asserted in the original interrogatory response but earlier than the date asserted in the first amended response) and reduced them to practice on July 25, 1996 and March 4, 1997 (earlier dates than asserted in the first amended response) (Id.). In addition, Oil-Dri produced five documents it had not previously produced, including two pages from Ms. Frugoli's lab notebook dated July 23 and July 25, 1996, one page from the lab notebook of another Oil-Dri employee, Robert Soral, and two memoranda from Dr. Goss discussing the previous three pages (Purina's Supp'l Br., Exs. 19-20). On March 5, 2018, Purina filed the instant motion to strike, and the following day, Purina deposed Dr. Goss again.


         In the motion pending before this Court, Purina's lead argument is that Oil-Dri should be bound by the documents and priority date it identified in its initial disclosures and contentions in March 2017 (Purina's Mot. to Strike at 5). Purina contends Oil-Dri violated LPR 2.1(a)(2) and 2.2(f), as well as the "very purpose of the Local Patent Rules which are designed to prevent a 'shifting sands' approach to discovery" (Id.).[5] Alternatively, Purina argues that the Court should strike the further supplemental response and documents Oil-Dri served on February 15, 2018, and hold Oil-Dri to the dates it identified in its first supplemental interrogatory response dated January 31, 2018 (Id. at 11). We address each argument in turn.


         It is true that "[l]ocal patent rules are meant to prevent a shifting sands approach to claim construction by forcing the parties to crystallize their theories of the case early in litigation." 02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (internal citations and quotations omitted). Indeed, the Local Patent Rules in this district state that the purpose of initial disclosures is to supplement the disclosures required by Federal Rule of Civil Procedure 26(a)(1) and "to require the parties to identify the likely issues in the case, to enable them to focus and narrow their discovery requests." LPR 2.0.

         However, initial disclosures and contentions are not intended to be binding upon the parties. We note that on June 9, 2018, Judge Kennelly issued a memorandum opinion and order denying a motion by Oil-Dri to bar Purina from including invalidity defenses in its final contentions that it did not assert in its initial contentions (doc. # 503: 06/09/18 Mem. Op. and Order).[6] In so doing, Judge Kennelly explained that "[h]ad the drafters of the Rules intended the initial contentions to be binding or to, in effect, estop the parties from taking different or contrary positions later, they would not have required the disclosures at such an early stage of the case" (Id. at 2). Although the Local Rules "require a showing of good cause and the absence of unfair prejudice to amend final contentions ... they contain no similar requirement that would effectively bind a party to its initial contentions" (Id.).

         LPR 2.1(a)(2) requires a party asserting a claim of patent infringement to produce, along with its initial disclosures, "all documents" in its possession, custody or control concerning the conception, reduction to practice, design, and development of each claimed invention. However, the LPRs anticipate that initial disclosures and discovery responses may be supplemented. LPR 1.7 adopts Federal Rule of Civil Procedure ...

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