Cellspin Soft, Inc. v. Fitbit LLC

Background

Defendants in several related patent-infringement cases moved to strike Cellspin’s inventiveness contentions or, alternatively, to require Cellspin to amend them. The opinion identifies the related cases as involving Fitbit, Inc., Moov, Inc., Adidas America, Inc., Nike, Inc., Under Armour, Inc., Fossil Group, Inc., Garmin International, Inc., and Nikon Americas, Inc., among others.

The court had previously found the asserted patents invalid under 35 U.S.C. § 101. The Federal Circuit reversed that ruling based on Cellspin’s allegations of an “inventive concept” under the second step of the framework described in Alice Corp. v. CLS Bank International. The district court then required Cellspin to produce contentions disclosing and supporting those alleged inventive concepts.

The parties’ arguments

The defendants objected to five aspects of Cellspin’s June 19, 2020 contentions: the contentions were allegedly buried in 1,400 pages of charts; they cited evidence the defendants considered inadmissible; Cellspin reserved the right to rely on additional documents in rebuttal; Cellspin reserved the right to rely on inventor and expert testimony; and the contentions allegedly failed to connect the inventive concepts to specific claim limitations.

The court rejected the defendants’ view that contentions must prove Cellspin’s case with admissible evidence or include premature expert discovery. It explained that contentions are intended to make parties identify their legal theories and supporting facts early in the litigation, not to disclose every item of evidence supporting those theories.

The court also rejected Cellspin’s position that it was not bound by its contentions because the defendants bore the ultimate burden of proving invalidity. The court stated that the burden of proof does not determine the scope of discovery. Because Cellspin had better knowledge of the alleged inventive concepts, the court found it appropriate to require Cellspin to disclose them and prevent a changing-theory approach during the litigation.

Ruling

The court reviewed Cellspin’s cover pleading and the chart attached to the defendants’ motion. It found that the pleading identified fourteen alleged inventive concepts and that the chart connected an inventive concept to the relevant limitation. The court could not conclude that Cellspin violated the scheduling order.

The court ordered the parties to meet and confer about any alleged inventive concept for which the underlying limitation or limitations were unclear. It held that Cellspin would be restricted to the inventive concepts disclosed in its contentions and that new theories could be struck under Federal Rule of Civil Procedure 26. The court denied the defendants’ motion to strike or compel amendment. The parties were also directed to advise the court whether the order required any adjustment to the scheduling order. Judge Yvonne Gonzalez Rogers stated that the order terminated docket number 117 in case number 4:17-cv-5934.