Fenner Investments, Ltd. v. Juniper Networks Inc.

ORDER

LOVE, United States Magistrate Judge.

Before the Court is Fenner Investments, Ltd.’s (“Fenner”), motion to compel worldwide financial information from Defendant, Cisco Systems, Inc. (“Cisco”) (Doc. 239). After considering the parties’ briefing and oral argument, the Court issues the following order.¹

On January 6, 2005, Fenner filed this patent infringement suit against Juniper Networks, Inc., UTStareom, Inc., Nokia Corporation, Nortel Networks, Corp., Lucent Technologies, Inc., and Cisco Systems, Inc. Fenner amended its complaint to add Alcatel USA, Inc. and Ericsson Inc., Ericsson AB, Telefonaktiebolaget LM Ericsson (collectively “Defendants”) on May 17, 2005. See Fen-ner’s third amended complaint (Doc.76). Fenner’s third amended complaint alleges Defendants infringe U.S. Patent No. 5,561,-706 and U.S. Patent No. 6,819,670. The complaint language tracks subsections (a), (b), and (c) of 35 U.S.C. § 271, but Fenner cites the entire section as authority for its suit. On June 3, 2005, pursuant to the Docket Control Order (“DCO”) (Doc. 85) and Local Patent Rule 3-1, Fenner filed is Preliminary Infringement Contentions (“PICs”), and shortly thereafter, the parties began discovery. On February 3, 2006, Fenner filed its motion to compel worldwide financial information from Cisco, arguing that the information is relevant to its claims under 35 U.S.C. § 271(f) (“271(f)”). However, Cisco contends Fenner may not discover information on the basis that it is relevant to 271(f) because Fenner’s PICs do not reflect 271(f).²

The Patent Rules require a high level of preparedness from plaintiffs by mandating disclosure of PICs before discovery has even begun. American Video Graphics, L.P. v. Elec. Arts, Inc., 359 F.Supp.2d 558, 560 (E.D.Tex.2005) (Davis, J.). PICs, in addition to a complaint, are required to provide notice of the accusing party’s specific theories of infringement. STMicroelectronics, Inc. v. Motorola, Inc., 308 F.Supp.2d 754, 755 (E.D.Tex.2004) (Davis, J.). The party’s theories of infringement must be sufficiently particular to provide notice of infringement beyond what is provided by the language of the patent claims themselves. Orion IP, LLC v. Staples, Inc., 407 F.Supp.2d 815, 817 (E.D.Tex.2006) (Davis, J.).

As submitted, Fenner’s PICs lack the type of particularized accusations that would notify Cisco of Fenner’s infringement contentions under 271(f). This subsection provides liability for supplying all or a substantial portion of uncombined components of a patented invention from the United States in a manner that actively induces their combination in such a way that would infringe the patent if such combination occurred within the United States.³ Alternatively, 271(f)(2) provides liability for whoever supplies any component of a patented invention knowing that it is especially made or adapted for use in the invention, which is not suitable for substantial noninfringing use, where such component is uncombined in whole or in part, and intending that such component will be combined outside of the United States in a manner that would infringe if so combined within the United States.⁴ Fenner’s PICs do not identify the components at issue or, in any other way, identify Fenner’s specific theory of infringement under 271(f).

As the 271(f) claim is not currently reflected in Fenner’s PICs, the Court must decide whether to allow Fenner to amend its PICs to include the 271(f) claim before ruling on Fenner’s motion to compel Cisco’s worldwide financial information. Patent Rule 3-7 provides that PICs may be amended or modified, “by order of the Court, which shall be entered only upon a showing of good cause.” Accordingly, the Court ORDERS Fenner to submit a motion to amend its PICs based on a showing of good cause no later than seven (7) days from the date of the hearing, April 27, 2006. Further, Cisco is ORDERED to respond to Fenner’s motion within seven (7) days.

1 . This order memorializes an order issued from the bench on April 27, 2006.

2 . The Court assumes, for the purposes of this order, that Fenner's complaint included a 271(f) claim.

3 . 35 U.S.C. § 271(f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part in such manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

4 . 35 U.S.C. § 271(f)(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer (emphasis added).