SitNet LLC v. Meta Platforms, Inc.

Nature of the order

This is a case-management addendum for a patent-infringement case. It does not decide whether either party infringed a patent, whether any patent claim is valid, or what damages may be available.

Infringement contentions and supporting documents

Unless the parties agreed otherwise, the party claiming infringement had to serve infringement contentions by December 17, 2023. Those contentions had to identify:

- Each asserted patent claim and the applicable provisions of 35 U.S.C. § 271. - Each accused apparatus, product, device, process, method, act, or other instrumentality, identified as specifically as possible. - Where and how each limitation of each asserted claim appeared in each accused instrumentality, including the relevant structure, act, or material for any limitation governed by 35 U.S.C. § 112(f). - The direct infringement underlying any claim of indirect infringement and the alleged indirect infringer’s contributing or inducing acts. - Whether each limitation was allegedly present literally or under the doctrine of equivalents. - The priority date for each claim that claimed priority to an earlier application. - Any product or other instrumentality of the asserting party or its licensee that practiced an asserted claim, if the party wished to preserve the ability to rely on it. - The timing of the first infringement and the beginning and end of claimed damages. - The basis for any willful-infringement allegation.

The party claiming infringement also had to produce or make available documents concerning possible pre-application disclosures, sales, offers to sell, or public uses; conception and development of the claimed inventions; each asserted patent’s file history; ownership of the patent rights; licenses and other transfers; comparable license agreements; damages; marking; and any F/RAND commitment or agreement. “F/RAND” refers to a commitment to license on fair, reasonable, and nondiscriminatory terms.

Invalidity contentions and supporting documents

Unless the parties agreed otherwise, each party opposing infringement had to serve invalidity contentions by January 31, 2024. The contentions had to identify prior art allegedly anticipating each asserted claim or making it obvious, explain any obviousness theory and combinations of prior art, chart where the claim limitations appeared in the prior art, and identify any arguments based on patentable subject matter, indefiniteness, lack of enablement, or inadequate written description.

The opposing party also had to produce or make available materials concerning the operation of the accused instrumentalities, copies or samples of prior art not appearing in the patent file history, comparable license agreements, financial information about accused instrumentalities, and documents supporting its damages case.

Changes to contentions

The court ordered that infringement or invalidity contentions could be amended only by court order after a timely showing of good cause. The addendum gave recent discovery of material prior art despite an earlier diligent search and recent discovery of previously unavailable information about an accused instrumentality as examples that might support good cause, absent undue prejudice. The duty to supplement discovery responses did not eliminate the need to obtain permission to amend the contentions.

Claim construction schedule

Claim construction is the process of determining what disputed patent-claim terms mean. The parties had to exchange disputed claim terms and proposed constructions by February 14, 2024, then meet and confer and file a joint claim-construction chart by February 21, 2024. The parties also had to submit motions asking the court to adopt their stated constructions.

The plaintiff’s opening brief was due to be served on March 20, 2024; the defendant’s answering brief on April 10, 2024; the plaintiff’s reply on April 17, 2024; and the defendant’s sur-reply on April 24, 2024. The parties had to file a joint claim-construction brief by April 26, 2024. By May 1, 2024, lead trial counsel had to meet and confer and file an amended joint chart identifying the terms still disputed, along with a letter describing the conference.

The court set no date in the addendum for the claim-construction hearing. It stated that argument would begin on a date to be supplied later, would generally exclude testimony without prior approval, and would be limited to a total of two hours.

Disposition and effect

The court ordered these additional procedures and deadlines for SitNet LLC and Meta Platforms, Inc. The order was procedural and did not resolve the patent-infringement or patent-validity issues on the merits.