WILLIAM H. ORRICK, District Judge.
Defendants Samsung International, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Research America, Inc., (collectively "Samsung"), have filed a Motion to Strike Infringement Contentions, Compel Supplementation of Patent Local Rule 3-2 Document Production, and Stay Discovery, arguing that plaintiff GeoVector Corporation ("GeoVector")'s infringement contentions do not comply with the Patent Local Rules in various ways and therefore do not put Samsung sufficiently on notice of GeoVector's infringement theories.
In this patent case GeoVector accuses Samsung of direct and indirect infringement of GeoVector's patents related to augmented reality technology. Second Amended Complaint ("SAC") ¶ 2. On November 2, 2016, GeoVector served its infringement contentions on Samsung. Mot. at 2. The infringement contentions assert infringement of Claims 1, 20, 22, and 23 of U.S. Patent No. 6,037,936 ("the `936 Patent"); Claims 1-7 of U.S. Patent No. 7,301,536 ("the `536 Patent"); and Claims 1-18 of U.S. Patent No. 7,916,138 ("the `138 Patent"). Id. They accuse a number of Samsung products by naming particular products by name or model number, but also accuse various groups and categories of Samsung products including (1) all Samsung "smart phones" with a screen, camera processor, compass, and accelerator; (2) the Samsung Galaxy, Galaxy S, Galaxy Note, and Galaxy Tab "product lines"; (3) all Samsung "tablets" shipped between 2010 and 2013; and (4) all Samsung "phablets." Id. The contentions also accuse all "augmented reality (AR) applications" but list only one third-party application, named Layar, in the supporting claim charts. Id. at 3. The charts make reference to other AR applications, listed in Exhibit B, but do not offer any explanation of how those AR applications work or how they infringe the specific claim limitations. GeoVector includes a single chart for each patent in suit, each one listing dozens or hundreds of accused products. Id. For many of the claim limitations GeoVector does not identify a specific component within a particular Samsung product that infringes but instead uses general language to indicate that all accused products infringe the limitation at issue. Id.
On November 15, 2016, Samsung served a letter on GeoVector indicating Samsung's position that the infringement contentions were deficient in an attempt to resolve the issues without court intervention. Mot. at 6. Over the next few weeks, the parties made various attempts to discuss the infringement contentions but were unable to resolve any issues.
Samsung filed this motion to strike on December 7, 2016. It contends that GeoVector's infringement contentions fail to comply with the Patent Local Rules for the following reasons: (1) GeoVector's contentions do not provide sufficient specificity in identifying the accused products, as required by L. R. 3-1(b); (2) GeoVector's contentions improperly combine hundreds of accused products into three claim charts, in violation of L. R. 3-1(c); (3) GeoVector does not identify where each asserted claim limitation is found within each accused instrumentality as required by L. R. 3-1(c); (4) GeoVector's indirect infringement allegations contain only boilerplate and do not meet the standard required by L. R. 3-1(d); and (5) GeoVector asserts the doctrine of equivalents as an alternative theory without explanation in violation of L. R. 3-1(e). Mot. at 9-13. Samsung contends that, as a result of these deficiencies, GeoVector's infringement contentions fail to put Samsung on notice of GeoVector's theories of the case and the precise substance of its allegations. Samsung therefore seeks an order striking GeoVector's Infringement Contentions and staying all discovery directed to Samsung and the accused products, including the obligation to serve invalidity contentions, until after GeoVector has served new infringement contentions that comply with the local rules. Mot. at 16.
In opposition, GeoVector argues that its infringement contentions comply with the local rules because Samsung has been put on notice of what GeoVector's claims are. Oppo. at 15. It notes that Samsung has demonstrated an understanding of GeoVector's claims in hearings and meet and confers, asserts that Samsung is "well-aware of which of its devices contain GeoVector's innovations," and argues that it will supplement its doctrine of equivalents contentions after Samsung provides additional information about its devices through discovery. Id. at 16-17.
In reply Samsung asserts that GeoVector fundamentally misunderstands the standard required by the local rules. Reply at 1 (Dkt. No. 52). It notes that the local rules require a plaintiff to compare a product to each asserted claim and apply each and every element and limitation of the claim to that product. Id. Further, while a plaintiff is not required to reverse engineer a product, it must provide a level of detail that would be obtained through reverse engineering or its equivalent. Id. Samsung asserts that GeoVector's infringement contentions, which combine hundreds of products together in three charts and mix and match different products to various claims and limitations, does not comply with the local rules. Id.
Patent Local Rule 3-1 requires:
"The overriding principle of the Patent Local Rules is that they are designed [to] make the parties more efficient, to streamline the litigation process, and to articulate with specificity the claims and theory of a plaintiff's infringement claims." Bender v. Maxim Integrated Prods., No. 09-c-01152-SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) (alteration in original) (internal citation omitted). Patent Local Rule 3-1 is intended to require the plaintiff "to crystallize its theories of the case early in the litigation and to adhere to those theories once disclosed." Bender v. Advanced Micro Devices, Inc., No. 09-c-1149-EMC, 2010 WL 363341, at *1 (N.D. Cal. Feb. 1, 2010). It "takes the place of a series of interrogatories that defendants would likely have propounded had the patent local rules not provided for streamlined discovery." Network Caching Tech., LLC v. Novell, Inc., No. 01-c-2079-VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13, 2002).
"[A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a `reasonable chance of proving infringement.'" Shared Memory Graphics LLC v. Apple, Inc., 812 F.Supp.2d 1022, 1025 (N.D. Cal. 2010) (quoting View Eng'g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)). The local rules do not "require the disclosure of specific evidence nor do they require a plaintiff to prove its infringement case . . . a patentee must nevertheless disclose what in each accused instrumentality it contends practices each and every limitation of each asserted claim to the extent appropriate information is reasonably available to it." DCG Sys. v. Checkpoint Techs., LLC, No. 11-c-03792-PSG, 20112 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012).
After reviewing the infringement contentions and the parties' briefs, I conclude that GeoVector's infringement contentions do not comply with a number of the Local Rules' requirements.
Patent Local Rule 3-1(b) requires a party asserting infringement to identify "[s]eparately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality . . . of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process." Patent L. R. 3-1(b).
Here, although GeoVector identifies some accused products by name or model number, it also states that these are "examples" of infringing products and also accuses (1) Samsung "smart phones" with a screen, camera, processor, compass, and accelerometer; (2) all "tablets" shipped between 2010 and 2013; the Samsung Galaxy, Galaxy S, Galaxy Note, and Galaxy Tab "product lines"; (3) all "phablets"; and (4) all Augmented Reality applications that are like those expressly listed in Exhibit B to the infringement contentions.
Rule 3-1(b) does not permit parties to identify accused products by using categorical or functional identifications, or limited, representative examples. See e.g., Vigilos LLC v. Sling Media Inc., No. 11-c-04117-SBA (EDL), 2012 WL 9973147, at *4 (N.D. Cal. July 12, 2012) ("Plaintiff's general list of products by category or functionality is insufficient, and Plaintiff must provide a list of accused products."); Oracle Am., Inc. v. Google Inc., No. 10-c-03561-WHA, 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011) (The Patent Local Rules [do] not tolerate broad categorical identification like `mobile devices running Android,' nor [do] they permit the use of mere representative examples. Representative examples may be a useful tool for proving an infringement case at trial, but a full list of accused products must be disclosed as part of a party's infringement contentions.").
GeoVector's attempt to identify products by broad category or functionality does not meet the specificity requirements of Local Rule 3-1(b).
Patent Local Rule 3-1(c) requires an accusing party to provide "[a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Patent L. R. 3-1(c). Under this rule, the accusing party "must compare an accused product to its patents on a claim by claim, element by element basis for at least one of each defendant's products." Finjan, Inc. v. Proofpoint, Inc., No. 13-c-05808-HSG, 2015 WL 9023166, at *1 (N.D. Cal. Dec. 16, 2015). While under certain circumstances a plaintiff may use a single chart to chart a number of representative products, plaintiff must still, at a minimum, "chart a single product against all elements." Cap Co. v. McAfee, Inc., No. 14-c-05068-JD, 2015 WL 4734951, at 2* (N.D. Cal. Aug. 10, 2015). A plaintiff does not satisfy this requirement by "mixing and matching between different accused products" in its claim charts, as "[i]nfringement cannot be shown by a muddled hash of elements from different products." Id.
GeoVector's infringement contentions fail to meet the requirements of Local Rule 3-1(c) as they fail to chart a single Samsung product against all elements of GeoVector's patents. For example, in Claim 1 of the `938 Patent GeoVector identifies a long list of accused Samsung products and product categories, including many smart phones, tablets, and phablets. GeoVector explains that the first limitation for Claim 1 is located "in the video capability of the devices, together with the software and apps that operate that capability." Infringement Contentions, Exhibit A at 1 (Dkt. No 46-1). It then explains that each infringing product has a computer and lists the computer processors for some, but not all, of the accused products. Id. For Claim 1's "field region" and "periphery" limitations, GeoVector does not list any Samsung product, but instead explains that those limitations are found "in the Layar and other applications, such as those listed in Exhibit B, which come pre-loaded on the infringing devices." Id. at 9. For the limitation that the field region be "an area fractional portion of the display field" GeoVector does not offer the location of this limitation in any product, only stating "The infringing devices contain displays and software that can show each field region as a fraction of the display field, which is enclosed by a periphery." Id. In this way, to map the limitations for Claim 1, GeoVector mixes and matches elements of Samsung products, third-party applications, and sometimes fails to identify any particular product at all. This hodgepodge of different attributes from various different accused products and third-party sources is insufficient to chart a single product against all elements of Claim 1.
Further, while representative charts are sometimes permissible, "representative products may only be charted `when supported by adequate analysis showing that the accused products share the same critical characteristics.'" Cap co., 2015 WL 4734951, at 2* (quoting Network Protection Sciences, LLC v. Fortinet, Inc., No. 12-c-01106-WHA, 2013 WL 5402089, at *3 (N.D. Cal. Sept. 26, 2013). "That analysis cannot just be based on the patentee's say-so." Cap Co., 2015 WL 4734951, at 2*. "[I]n order to rely on a claim that one accused product represents another for purposes of Rule 3-1(c), a patentee must do more than state as much. A patentee must state how." Silicon Labs., Inc. v. Cresta Tech. Corp., No. 14-c-03227-PSG, 2015 WL 846679, at *2 (N.D. Cal. Feb. 25, 2015).
GeoVector has attempted to use a single chart for each patent to chart claims against hundreds of products. Infringement Contentions, Exhibit A. These products include various kinds of cell phones, tablets, and phablets. Id. GeoVector does not offer any analysis why these products, many of which are not even the same general type of product, can be charted representatively except to conclusorily state that "the infringing devices contain" the various claim limitations. See e.g., id. at 9. ("The infringing devices contain a combination of a computer vision system and a graphical user interface."). And, in some circumstances GeoVector admits that certain products are not representative or do not meet certain claim limitations. See e.g., id. at 11 (noting that the Samsung Galaxy Nexus does not meet the planar image field limitation for Claim 20 of the `936 Patent). GeoVector has failed to provide sufficient analysis to justify the use of representative charts.
GeoVector does not chart a single Samsung product against every element of GeoVector's asserted claims. It therefore fails to meet the requirements of Local Rule 3-1(c). Further, although representative charts could be appropriate in this case, GeoVector must first chart at least one product against every element of a claim and must offer analysis justifying why representative charts are appropriate. Because GeoVector has failed to do either of these things, its representative charts do not meet Rule 3-1(c)'s requirements.
GeoVector's primary defense of its infringement contentions is that, based on communications prior to the filing of this case, informal correspondence, and discussions among counsel, Samsung already understands what its contentions are. Whether Samsung's counsel actually understands GeoVector's infringement contentions, based on outside information not contained in the contentions themselves, is not relevant. The Patent Local Rules require plaintiffs to formulate their infringement contentions in particular ways to ensure they "crystalize their theories of the case early in litigation and adhere to those theories once they have been disclosed." Finjan v. Proofpoint, 2015 WL 1517920 at *1. This is not only so that defendants can properly respond to the claims against them, but "so that the Court can make a principled decision on whether discovery will proceed." Bender v. Maxim Integrated Prods., 2010 WL 1135762 at *2. Even if GeoVector is correct that Samsung understands its contentions, it must still formally articulate these contentions in the proper format. GeoVector's bare assertion that Samsung understands its infringement contentions and so is "on notice" is not sufficient to meet Patent Local Rule 3-1's substantial requirements.
GeoVector's direct infringement contentions do not meet the requirements of Patent Local Rule 3-1(c).
Patent Local Rule 3-1(d) requires a plaintiff to indicate "[f]or each claim which is alleged to have been indirectly infringed, an 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." Patent L.R. 3-1(d). GeoVector's infringement contentions assert that Samsung indirectly infringes by "making, using and selling products that infringe the Patents-in-Suit, causing those products to be manufactured and distributed, and providing instruction manuals for those products." Infringement Contentions at 7. It also asserts that Samsung "deliberately incorporated technologies claimed in the GeoVector patents into their products, and provided these technologies to a number of customers and third-party application developers through the Samsung App Store." Id. at 8.
These vague allegations are insufficient to meet the requirements of Local Rule 3-1(d). GeoVector must disclose how exactly Samsung indirectly infringed on GeoVector's patents. Cap Co., 2015 WL 4734951, at *2-3 ("The fact that McAfee designs infringing software and that others run it does not make McAfee an indirect infringer. For example, induced infringement requires evidence of `intent to encourage infringement." ); France Telecom, S.A. v. Marvell Semiconductor, Inc., No. 12-c-04967-WHA (NC), 2013 WL 1878912, at *5 (N.D. Cal. May 3, 2013) (Contentions that defendant induced infringement by "designing the accused products . . . and advertising or representing to third parties that the infringing products are compatible or adapted for use within the United States" were insufficient and only a "bare-boned recitation of the essential elements of a claim for indirect infringement."); Creagri, Inc. v. Pinnaclife Inc., LLC, No. 11-c-06635-LHK (PSG), 2012 WL 5389775, at *5 (N.D. Cal. Nov. 2, 2012) (indirect infringement contentions that asserted defendant used advertisements to promote the use of their product in an infringing manner, but "fail[ed] to identify what advertisements and instructions lead to what infringing behavior" did not meet the standard of Local Rule 3-1(d)). GeoVector's mere assertion that Samsung produced infringing products and sold or promoted these products is insufficient to meet Local Rule 3-1(d)'s requirements.
GeoVector argues that its indirect infringement contentions are sufficient because "Samsung is on notice of the fact that its devices provide an augmented reality platform for app developers and users of those apps" and "in this interconnected world with smartphones that help people connect, it only stands to reason that apps on such devices enable indirect infringement." Oppo. at 17. It also states that it has offered to add cross references to Patent Rule 3-1(d) in its infringement charts so this issue should already be resolved. Id. Neither of these arguments impacts whether GeoVector's infringement contentions meet Rule 3-1(d)'s requirements.
GeoVector cannot rely on what it believes Samsung understands to support the sufficiency of its infringement contentions: the infringement contentions must meet the Local Rules' objective requirements. GeoVector's assumption that "it only stands to reason that apps on [Samsung's] devices enable indirect infringement" is wholly speculative and conclusory and does not disclose how Samsung indirectly infringes. Finally, GeoVector's offer to supplement the infringement contentions is helpful, but supplements exchanged through informal correspondence or pleadings cannot remedy insufficient infringement contentions. GeoVector must supplement its actual infringement contentions so that they comply with the Patent Local Rules.
GeoVector's indirect infringement contentions do not comply with Patent Local Rule 3-1(d).
Patent Local Rule 3-1(e) requires plaintiffs to identify "[w]hether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality." Patent L.R. 3-1(e). Here GeoVector asserts that each claim limitation is literally present or "[a]lternatively . . . present under the doctrine of equivalents." Infringement Contentions at 8. This bare assertion is insufficient to satisfy Local Rule 3-1(e). The doctrine of equivalents does not exist "to give a patentee a second shot at proving infringement if it is not literally present. [Plaintiff] cannot merely add boilerplate language asserting that the doctrine of equivalents has been met as an alternative theory." Creagri, 2012 WL 5389775, at *6 (internal quotation marks omitted).
GeoVector seems to concede that its doctrine of equivalents contentions are minimal, but asserts it will supplement these contentions, if necessary, if "Samsung provides GeoVector with added information about each Samsung smart device with any GPS system embedded in it, including all the product information relating to those devices." Oppo. at 17. However, GeoVector cannot assert a doctrine of equivalents contention based solely on information that may be produced during discovery. InteraXon Inc. v. NeuroTek, LLC, No. 15-c-05290-KAW, 2016 WL 5118267, at *2 (N.D. Cal. Sept. 21, 2016) ("It is improper to assert the doctrine of equivalents with generic `placeholder' language on the hope that future discovery might support such an assertion."). GeoVector's doctrine of equivalents contentions are improper.
GeoVector's doctrine of equivalents claims are stricken without leave to amend. This ruling does not impact GeoVector's right to seek leave to amend, after a showing of good cause, under Patent Local Rule 3-6.
In this district, motions to strike initial infringement contents are frequently treated as motions to compel amendment of the infringement contentions. FusionArc, Inc. v. Solidus Networks, Inc., No. 06-c-06760 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007) ("Case precedent recognizes such `motions to strike' as requests that plaintiffs be compelled to amend their preliminary contentions to provide additional information."); Blue Spike v. Adobe Sys., 14-c-01647-YGR (JSC), 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 contentions."). Here, Samsung seeks to strike GeoVector's infringement contentions and allow GeoVector leave to amend only after successfully seeking leave from the court and demonstrating good cause under local rule 3-6. Mot. at 16. However, "[s]triking a patentee's infringement contentions is a severe sanction that should be used sparingly and only for good cause." Finjan v. Proofpoint, 2015 WL 9023166, at *12. While some courts have required a party asserting infringement to show good cause before being granted leave to amend initial contentions, many have simply compelled the asserting party to file compliant infringement contentions. Compare Theranos, Inc. v. Fuisz Pharma LLC, No. 11-c-05236-YGR, 2012 WL 6000798, at *6 (N.D. Cal. Nov. 30, 2012) (striking infringement contentions without leave where asserting party made only vague allegations "on information and belief" and implicitly conceded that it did not have any additional factual support for its claims), with Bender v. Maxim Integrated Prods., 2010 WL 1135762, at *1 (Denying motion to strike and granting motion to compel infringement contentions that comply with Patent Local Rule 3-1). This is the first time Samsung has moved to strike GeoVector's infringement contentions, and although the contentions are clearly deficient, it appears that GeoVector may be able to remedy many of the identified issues with amendment. Striking GeoVector's infringement contentions with prejudice is not warranted at this time.
However, there are some exceptions to this general ruling. GeoVector will not be granted leave to amend its doctrine of equivalents claims or to accuse products not explicitly listed in its initial contentions. If GeoVector wishes to accuse products not explicitly listed in its initial infringement contentions or to reassert its doctrine of equivalents claims, it may only do so after seeking leave and showing good cause under Patent Local Rule 3-6.
GeoVector is ordered to serve Amended Infringement Contentions, subject to the limitations outlined above that comply with the Patent Local Rules by January 30, 2017.
When a plaintiff's infringement contentions are insufficient to meet the requirements of the Patent Local Rules, courts in this district often stay discovery, including a defendant's obligation to serve invalidity contentions "[u]ntil plaintiff meets the burden of providing infringement contentions compliant with Patent L.R. 3-1." Infeneon Techs. v. Volterra Semiconductor, No. 11-c-06239-DMR, 2013 WL 322570, at *5 (N.D. Cal. Jan. 28, 2013) (citations omitted). Samsung's discovery obligations are temporarily stayed pending GeoVector serving amended and compliant infringement contentions. Samsung must file its invalidity contentions by February 20, 2017. The discovery dates and deadlines in this case are adjusted as outlined in the following chart.
For the reasons outlined above, GeoVector's Infringement Contentions do not meet the requirements of the Patent Local Rules and are stricken. GeoVector is ordered to file compliant Amended Infringement Contentions by January 30, 2017. As outlined above, GeoVector is not permitted leave to amend its doctrine of equivalents contentions or to accuse new products not identified in its initial contentions. Should GeoVector wish to reassert its doctrine of equivalents claims or accuse additional products it may do so only in accordance with Patent Local Rule 3-6. Discovery, including Samsung's obligation to serve invalidity contentions, is stayed. Samsung must serve its invalidity contentions by February 20, 2017.
