Federal Circuit: Absent bad faith, court cannot condition allowing patentee to supplement preliminary infringement contentions upon paying accused infringer’s fees

AntiCancer, Inc. v. Pfizer, Inc. (Newman, Auth; Reyna; Taranto) is probably not new law, but is of interest.

The District Court relied upon its inherent power to enter an order holding that the patentee could not, in accordance with local rules, supplement its preliminary infringement contentions without first agreeing to pay the accused infringer’s fees it incurred in preparing a motion for summary judgment based upon the lack of specificity of those PICs.  If the patentee chose not to supplement and pay fees, the court ordered summary judgment would be entered against it. The patentee objected; the district court entered summary judgment against it.

The panel unanimously reversed, recognizing that a court can rely on inherent power only where there is bad faith.  Further, the Ninth Circuit’s law required an express finding of bad faith.  Thus, reversal seemed pretty clearly required.

What makes the case interesting is the court tried to put the role of PICs in some context, emphasizing that they  are intended to identify the issues in need of further discovery but are not, themselves, evidence.  Further, because the PICs were due five days after filing an amended complaint, the court emphasized that doing the best that was possible did not require a whole lot where there was a method claim involved and so access to the accused infringer’s method was limited as a practical matter.  Finally, the panel emphasized that the district court should have considered the additional detail provided in the opposition to summary judgment; instead, the district court viewed the fact that additional details were present in the opposition indicated the PICs were incomplete.

My takeaway is that if you’re going to oppose summary judgment, you need to follow Rule 56 and, before discovery at least, come forward with evidence negating an element of the claim.  Local rules can’t trump rule 56.


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.