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Case No. 5:10-Cv-02863-EJD ) 13 Plaintiffs, ) ORDER GRANTING-IN-PART 14 ) MOTION to STRIKE-IN-PART V

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Case No. 5:10-Cv-02863-EJD ) 13 Plaintiffs, ) ORDER GRANTING-IN-PART 14 ) MOTION to STRIKE-IN-PART V Case 5:10-cv-02863-EJD Document 684 Filed 08/05/15 Page 1 of 20 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 10 NORTHERN DISTRICT OF CALIFORNIA 11 SAN JOSE DIVISION 12 AVAGO TECHNOLOGIES, INC., et al., ) Case No. 5:10-cv-02863-EJD ) 13 Plaintiffs, ) ORDER GRANTING-IN-PART 14 ) MOTION TO STRIKE-IN-PART v. ) AVAGO’S INFRINGEMENT 15 ) CONTENTIONS; GRANTING IPTRONICS INC., et al., ) MOTION FOR LEAVE TO AMEND 16 ) AND GRANTING MOTION TO United States District Court 17 Defendants. ) COMPEL ) For the Northern District of California For the Northern District 18 ) (Re: Docket Nos. 564, 584, 597) 19 Not happy with the latest infringement contentions served by Plaintiffs Avago 20 Technologies Inc., et al. on March 5, Defendant IPtronics Inc., et al. moves to strike. IPtronics 21 takes particular issue with Avago for not showing how uncharted products are represented by 22 charted products, for failing to explain and specify indirect infringement and for not showing how 23 some products practice a single element of an asserted claim. Avago disputes IPtronics’ assertions, 24 25 but moves to amend its contentions to address at least some of IPtronics’ concerns. Avago also 26 moves to compel IPtronics to produce next-generation evaluation kits related to its latest 27 contentions. After considering the parties’ arguments, the court GRANTS-IN-PART IPtronics’ 28 1 Case No. 5:10-cv-02863-EJD ORDER GRANTING-IN-PART MOTION TO STRIKE-IN-PART AVAGO’S INFRINGEMENT CONTENTIONS; GRANTING MOTION FOR LEAVE TO AMEND AND GRANTING MOTION TO COMPEL Case 5:10-cv-02863-EJD Document 684 Filed 08/05/15 Page 2 of 20 motion to strike, GRANTS Avago’s motion for leave to amend and GRANTS Avago’s motion to 1 2 compel. 3 I. 4 Under Patent L.R. 3-1, a party asserting patent infringement must provide “[a] chart 5 identifying specifically where each limitation of each asserted claim is found within each Accused 6 Instrumentality.”1 A party asserting indirect infringement must identify, for each claim, any direct 7 infringement and a description of the acts of the alleged indirect infringer that contribute to or 8 induce the direct infringement.2 Both direct and indirect infringement contentions must be 9 10 sufficiently specific to “provide reasonable notice to the defendant why the plaintiff believes it has 11 a ‘reasonable chance of proving infringement.’”3 The purpose of the rules is to “‘provide structure 12 to discovery and enable the parties to move efficiently toward claim construction and the eventual 13 14 15 16 United States District Court 17 For the Northern District of California For the Northern District 1 18 Patent L.R. 3-1(c) (“A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party 19 contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function”). 20 2 See Patent L.R. 3-1(d) (“For each claim which is alleged to have been indirectly infringed, an 21 identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct 22 infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.”). 23 3 Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025 (N.D. Cal. Dec. 20, 24 2010) (quoting View Eng’g., Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)) (Parties must “crystallize their theories of the case early in litigation and . adhere to those 25 theories once they have been disclosed.”) (quoting O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006)); see also Logic Devices, Inc. v. Apple, Inc., Case 26 No. 13-cv-02943-WHA, 2014 WL 491605 at *3 (N.D. Cal. Feb. 4, 2014); France Telecom, S.A. v. Marvell Semiconductor, Inc., Case No. 12-cv-04967-WHA, 2013 WL 1878912 at *1 (N.D. Cal. 27 May 3, 2013). 28 2 Case No. 5:10-cv-02863-EJD ORDER GRANTING-IN-PART MOTION TO STRIKE-IN-PART AVAGO’S INFRINGEMENT CONTENTIONS; GRANTING MOTION FOR LEAVE TO AMEND AND GRANTING MOTION TO COMPEL Case 5:10-cv-02863-EJD Document 684 Filed 08/05/15 Page 3 of 20 resolution of their dispute.’”4 The rules do not “‘require the disclosure of specific evidence[,] nor 1 5 2 do they require a plaintiff to prove its infringement case.’” 3 “Striking a patentee’s infringement contentions is a severe sanction that should be used 4 sparingly and only for good cause.”6 Accordingly, “[w]here appropriate, the [c]ourt will treat a 5 7 motion to strike as a motion to compel amendment.” Under Patent L.R. 3-6, an “[a]mendment of 6 the Infringement Contentions . may be made only by order of the Court upon a timely showing 7 of good cause.”8 The court must consider first whether the moving party was diligent in amending 8 its contentions and second whether allowing such amendment would prejudice the non-moving 9 9 10 party. “In considering the party’s diligence, the critical question is whether the party ‘could have 11 12 4 DCG Sys. v. Checkpoint Techs., LLC, Case No. 5:11-cv-03792-PSG, 2012 WL 1309161, at *2 13 (N.D. Cal. April 16, 2012) (quoting O2 Micro Int’l Ltd., 467 F.3d at 1366 n.12). 5 14 Id. (quoting Whipstock Service, Inc. v. Schlumberger Oilfield Services, Case No. 6:09-cv-113- JDL, 2010 WL 143720, at *1 (E.D. Tex. Jan. 8, 2010)). The burden of satisfying the court is on the 15 party asserting the infringement contention. See Silicon Labs., Inc. v. Cresta Tech. Corp., Case No. 5:14-cv-03227-PSG, 2015 WL 846679, at *3 (N.D. Cal. Nov. 10, 2004); Network Prot. Sciences, 16 LLC v. Fortinet, Inc., Case No. 12-cv-01106-WHA, 2013 WL 5402089, at *3 (N.D. Cal. Sept. 26, 2013); Bluestone Innovations LLC v. Nichia Corp., Case No. 12-cv-00059-SI, 2013 WL 8540910, United States District Court 17 at *1 (N.D. Cal. Sept. 25, 2013). For the Northern District of California For the Northern District 6 18 Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 WL 1517920, at *11 (N.D. Cal. Apr. 2, 2015); see, e.g., Bender v. Advanced Micro Devices, Inc., Case No. 09-cv-1149-EMC, 2010 19 WL 363341, at *1-2 (N.D. Cal. Feb. 1, 2010) (denying defendant’s motion to strike which would “impose the draconian sanction of striking the infringement contentions” but rather compelling 20 plaintiff to amend the contentions); DCG Sys., 2012 WL 1309161, at *2 (finding that dismissing a plaintiff’s indirect infringement claim is unwarranted where the plaintiff’s infringement 21 contentions disclose information sufficient for defendant to determine the plaintiff’s theories of infringement). 22 7 Finjan, 2015 WL 1517920, at *12; see also Blue Spike, LLC v. Adobe Sys., Inc., Case No. 14-cv- 23 01647-YGR, 2015 WL 335842, at *4 (N.D. Cal. Jan. 26, 2015) (“Where appropriate, courts treat a motion to strike as a motion to compel amendment to include additional information infringement 24 contentions”); see also France Telecom, 2013 2013 WL 1878912, at *2 (same); FusionArc, Inc. v. Solidus Networks, Inc., Case No. 06-cv-6760-RMW, 2007 WL 1052900, *2 (N.D. Cal. Apr. 5, 25 2007) (same). 8 26 Id. 9 27 See O2 Micro Int’l, 467 F.3d at 1366-68. 28 3 Case No. 5:10-cv-02863-EJD ORDER GRANTING-IN-PART MOTION TO STRIKE-IN-PART AVAGO’S INFRINGEMENT CONTENTIONS; GRANTING MOTION FOR LEAVE TO AMEND AND GRANTING MOTION TO COMPEL Case 5:10-cv-02863-EJD Document 684 Filed 08/05/15 Page 4 of 20 discovered’ the new information ‘earlier had it acted with the requisite diligence.’”10 “If the court 1 2 finds that the moving party was not diligent in amending its infringement contentions, there is no 3 need to consider the question of prejudice to the non-moving party, although a court in its 4 discretion may elect to do so.”11 5 Five years ago, Avago sued IPtronics, alleging infringement of United States Patent Nos. 6 5,359,447 and 6,947,456.12 Roughly speaking, the patents cover an optical communication 7 network and a laser driver, respectively.13 A few months later, Avago served infringement 8 contentions.14 After IPtronics complained about the contentions and various discovery responses,15 9 16 10 the court granted Avago leave to supplement its contentions, which Avago did shortly 11 thereafter.17 12 13 14 10 15 Id. at *2 (quoting Google Inc. v. Netlist, Inc., No. 4:08-cv-04144-SBA, 2010 WL 1838693, at *2 (N.D. Cal. May 5, 2010)). The burden is on the moving party to show diligence. Pharmaceutica 16 Par Pharm., Inc. v. Takeda Pharm. Co., Case No. 13-cv-01927-LHK, 2014 WL 3704819, at *2 (N.D. Cal. July 23, 2014). United States District Court 17 11 O2 Micro Int’l, 467 F.3d at 1366-68; ASUS Computer Int’l v. Round Rock Research, LLC, Case For the Northern District of California For the Northern District 18 No.
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