Oyster Optics, LLC v. Ciena Corporation, AT&T, Inc.

Background

Oyster Optics, LLC sued Ciena Corporation for patent infringement. In its September 2020 infringement contentions—the disclosures identifying the accused products and explaining how they allegedly infringe—Oyster charted the WaveLogic 5 Nano and listed the WaveLogic 5 Extreme, WaveLogic AI, WaveLogic 3, and WaveLogic 3 Extreme products. Oyster later sought technical documents and revenue-and-sales information about all of those products.

Ciena refused to produce the disputed information for the non-WaveLogic 5 Nano products. It argued that the WaveLogic 5 Nano was a newly released, low-volume product that differed meaningfully from the other products. Ciena’s Rule 30(b)(6) witness also testified that the charted and uncharted products had meaningful technical differences.

The case had been stayed while the Patent Trial and Appeal Board reviewed the patents. During the stay, the parties dismissed the claims and counterclaims involving one patent. The Board invalidated several claims of the remaining patent, and Oyster conditionally limited its case to claims 5 and 16 of that patent. The trial court later lifted the stay and proceeded with claim construction on the narrower claim scope.

Discovery and Representativeness

The court considered whether Oyster had shown that the WaveLogic 5 Nano was representative of the other listed products. Under Patent Local Rule 3-1, a party asserting patent infringement generally must identify each accused product and chart where each claim limitation appears in each product. A representative product may be used only when supported by analysis showing that the products share the same critical characteristics.

The court found that Oyster’s contentions merely stated that the products operated in substantially the same manner and that the WaveLogic 5 Nano was exemplary of infringement. Those conclusory statements did not explain how the charted product represented the other products. Ciena, by contrast, provided specific information about differences among the products. The court concluded that the WaveLogic 5 Nano might represent other WaveLogic 5 Nano products, but nothing in the record showed that it represented the non-WaveLogic 5 Nano products. Oyster therefore had not met its burden, and the court denied the request to compel the disputed discovery.

Amendment of Infringement Contentions

Oyster also sought permission to amend its infringement contentions to chart the non-WaveLogic 5 Nano products. Patent Local Rule 3-6 permits amendment only when the party makes a timely showing of good cause. The moving party must establish diligence, and a party’s failure to show diligence generally eliminates the need to consider prejudice, although the court may consider it.

The court found that Oyster knew by at least November 2020 that Ciena disputed the sufficiency of the contentions for the non-WaveLogic 5 Nano products. The information needed to chart those products existed when Oyster served its September 2020 contentions, and Oyster did not explain why it waited so long to amend. The stay did not excuse the delay because the parties had begun discussing amendment before the stay began.

The court also found prejudice. The charted product was new and probably had limited damages, while the other products apparently had a different revenue stream. Ciena’s invalidity contentions and the claim-construction process were based only on the narrower product and claim scope. The court reasoned that allowing amendment would reframe the case and would prejudice Ciena because it could no longer file an inter partes review challenging the asserted patent claims within the statutory filing period.

Disposition

The court concluded that Oyster was not diligent and that amendment would prejudice Ciena and the court’s proceedings. It denied Oyster’s motion to compel discovery and amend its infringement contentions. The order was issued by United States Magistrate Judge Laurel Beeler.