114 F. Supp. 3d 842
N.D. Cal.2015Background
- Plaintiffs (PDS) sued Samsung and LG alleging infringement of three microprocessor patents (U.S. Pat. Nos. 5,809,336; 5,440,749; 5,530,890) and served Patent L.R. 3-1 infringement contentions accusing ~800 Samsung and ~437 LG products.
- Contentions included one claim chart per patent, an Exhibit A list of accused products, and limited identification of specific microprocessors for only some products. Plaintiffs relied on public materials and expert Oklobdzija’s opinions.
- Defendants refused broad discovery beyond the few microprocessors actually charted and moved to strike the contentions for noncompliance with Patent L.R. 3-1; they alternatively sought narrowing to products containing particular identified processors.
- Plaintiffs moved to compel production of technical and ITC discovery; many accused products were also at issue in a prior ITC investigation where the ALJ and Commission found noninfringement and Plaintiffs did not appeal.
- The court found three principal deficiencies: (1) failure to map each claim limitation to each accused instrumentality; (2) reliance on conclusory, ‘‘information and belief’’ assertions and generic public materials rather than product-specific analysis; (3) improper inclusion of hundreds of products that were never made, sold, used, or imported into the U.S., or released after certain patent expirations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether contentions comply with Patent L.R. 3-1 mapping requirement | Plaintiffs: single charts per patent + representative-processor approach give sufficient notice; public docs and expert analysis suffice | Defendants: charts are generic, do not map each limitation to each accused product; insufficient to permit meaningful defense or targeted discovery | Held: Contentions inadequate; plaintiffs must specifically identify where each limitation is found in each accused instrumentality and provide a separate chart at least for each accused microprocessor |
| Whether representative-product approach is acceptable without showing substantial similarity | Plaintiffs: accused processors are substantially similar and representative; reliance on public ARM materials and expert opinion supports that | Defendants: accused products contain many different processor families and models; plaintiffs failed to show substantial similarity or chart non-listed processors | Held: Representative approach deficient absent demonstration of similarity; plaintiffs must either chart each processor or show how others are substantially similar for each claim limitation |
| Whether conclusory ‘‘information and belief’’ allegations and public sources satisfy Rule 3-1 | Plaintiffs: need not prove infringement at pleading stage; public materials and expert analysis put defendants on notice | Defendants: conclusory statements, Wikipedia, and generic citations do not meet Rule 3-1 specificity requirement | Held: Must provide more than conclusory assertions; reliance on ‘‘information and belief’’ and cursory public-source citations is insufficient |
| Whether plaintiffs may accuse products not made/sold/imported in U.S. or released after patent expiry | Plaintiffs: assumed earliest possible U.S. activity; defendants best positioned to show release/import dates; plaintiffs were diligent | Defendants: many accused products were never in U.S. or were released after expiration; listing them without basis is improper and burdensome | Held: Plaintiffs must exclude any product for which they lack a good-faith basis to believe infringement occurred in the U.S. during the patent term |
Key Cases Cited
- Antonious v. Spalding & Evenflo Cos., 275 F.3d 1066 (Fed. Cir. 2002) (standard on using "information and belief" and insufficiency of mere conclusory allegations)
- View Eng'g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981 (Fed. Cir. 2000) (Patent Local Rules aim to give accused infringers reasonable notice of infringement theory)
- Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (general rule that making and selling a product abroad does not constitute U.S. patent infringement)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371 (Fed. Cir. 2014) (discussing strong policy against extraterritorial patent liability)
- Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022 (N.D. Cal. 2010) (Patent L.R. 3-1 designed to articulate specific infringement claims and theories)