The opinion of the court was delivered by: Honorable Janis L. Sammartino U.S. District Judge
ORDER GRANTING NESSCAP CO. LTD.'S MOTION TO COMPEL [Doc. No. 36]
Presently before the Court is Plaintiff NessCap Co., Ltd.'s ("NessCap") motion to compel compliance with Patent Local Rule 3.4(a). Doc. No. 36. NessCap filed its motion on December 14, 2007, pursuant to an expedited briefing schedule issued by this Court [Doc. No. 35]. Defendant Maxwell Technologies, Inc. ("Maxwell") timely opposed the motion [Doc. No. 37] and NessCap filed its reply on December 28, 2007 [Doc. No. 38]. The Court found the motion suitable for decision on the papers and took the matter under submission pursuant to Civil Local Rule 7.1(d)(1). Doc. No. 35.
Having considered all of the briefing and supporting documents presented, and for the reasons set forth below, NessCap's motion to compel [Doc. No. 36] is GRANTED.
NessCap initiated this patent infringement action on December 14, 2006, alleging Maxwell's infringement of NessCap patent number 6,743,544 ("the '544 patent"). Doc. No. 1 (case transferred from the District of Delaware). In its complaint, NessCap alleges that Maxwell has infringed the '544 patent through its manufacture and sale of Boostcap(r) ultracapacitors. Id. Maxwell has asserted defenses of noninfringement and invalidity, among others. Id.
On June 13, 2007, this Court issued an Amended Case Management Conference Order in this case. Doc. No. 17. Paragraphs 2 and 3 of that order required Maxwell to serve its preliminary invalidity contentions on NessCap on or before October 19, 2007, along with the documents required by Patent Local Rule 3.4(a)*fn1 . Maxwell timely served its preliminary invalidity contentions, but NessCap argues that Maxwell's accompanying document production failed to comply with Patent Local Rule 3.4(a) and Paragraph 3 of this Court's Order.
The instant dispute centers around the scope of the production requirement imposed by Patent Local Rule 3.4(a), which applies to patent cases proceeding before the United States District Court for the Southern District of California. Patent Local Rule 3.4 provides:
With the "Preliminary Invalidity Contentions," the party opposing a claim of patent infringement must produce or make available for inspection and copying:
a. Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspect or elements of any Accused Instrumentality identified by the patent claimant in its Patent L.R. 3.1c chart; . . .
This Court's Patent Local Rules are relatively new and, as a result, there is a dearth of binding precedent addressing the scope and application of Patent Local Rule 3.4(a). Accordingly, because the Southern District's Patent Local Rule 3.4(a) is similar in all material respects to the corresponding patent local rules promulgated by the Northern District of California and the Northern District of Georgia, this Court relies on published and unpublished precedent from these courts as persuasive authority. In Cryptography Research, Inc. v. Visa Int'l Serv. Assoc., 2005 WL 1787421 (N.D. Cal. 2005), the Northern District of California explained that patent local rules "are not like other forms of discovery which require a formal request by the opposing party. Rather, it is the responsibility of the party itself to make disclosures that satisfy the [r]ules." Additionally, the court construed its patent local rule 3-4(a), which is identical to this Court's Patent Local Rule 3.4(a), as requiring the alleged infringer to turn over "any and all documents describing the operation or structures of [the patentee's] accused devices. . .." IXYS Corp. v. Advanced Power Tech., Inc., 2004 WL 1368860, *3 (N.D. Cal. 2004).
The Northern District of Georgia has explained that what is sufficient to show the operation of the accused device will vary depending on the technology at issue. McKesson Info. Solutions LLC v. Epic Sys. Corp., 495 F. Supp. 2d 1329, 1333 (N.D. Ga. 2007). More specifically, it instructed that:
The requirement that the alleged infringing party provide whatever information is "sufficient to show the operation" of the accused device or method carries with it a good faith obligation to provide the types of information that will enable the party asserting infringement to reasonably determine the ...