UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
July 16, 2012
NAZOMI COMMUNICATIONS, INC.,
NOKIA CORPORATION ET AL., DEFENDANTS.
The opinion of the court was delivered by: Ronald M. Whyte United States District Judge
ORDER DENYING DEFENDANT'S MOTION TO STRIKE [Re Dkt No. 351]
United States District Court For the Northern District of California
Defendant Nokia Corporation ("Nokia") seeks to strike portions of plaintiff Nazomi Communications, Inc.'s ("Nazomi") preliminary infringement contentions ("PICs"). The court has 19 heard the arguments of the parties and considered the papers submitted. For the reasons set forth 20 below, the court denies the motion.
As discussed in the court's prior orders, Nazomi owns patents claiming an invention
"capable of" executing stack- or Java-based instruction sets. See Dkt. No. 1, Ex. 1. Nazomi alleges 24 that its patents are infringed by products containing certain ARM processor cores that include 25 technology called "Jazelle." In its Second Amended Complaint ("SAC"), Nazomi asserts that the Nokia 6350 ("6350") cell phone incorporates an ARM processor core and infringes one or more claims of the patents-in-suit. See Dkt. No. 286. 28
On July 25, 2011, Nazomi served its PICs, listing the Nokia 6350 and forty-four other
Nokia products as accused instrumentalities.*fn1 The PICs allege that "the Nokia devices, which 3 include ARM processors with the Jazelle technology, are capable of executing register based 4 instructions . and stack-based instructions." Dkt. No. 351, Ex. 1 at 2. The PICs also assert that 5
In addition, the PICs include a screenshot of the "JBenchmark ACE testing result on the Nokia 6350," showing that the device is "Jazelle enabled." Id. at 2. As explained at oral argument, 8 "the exemplary Nokia 6350 . can execute . Java-based applications." Id. at 1. JBenchmark ACE is a computer program that can be helpful, but not conclusive, in determining 9 whether a device uses the Jazelle architecture contained in the ARM core. Nazomi did not run the 10 On May 25, 2012, Nokia moved to strike Nazmoi's PICs, arguing that Nazomi failed to undertake a reasonable investigation as to whether any product other than the 6350 infringed its 13 patents.
JBenchmark ACE test on any product other than the 6350.
Patent Local Rule 3--1 provides that a plaintiff in a patent infringement action must serve
PICs setting forth "[e]ach claim of each patent in suit that is allegedly infringed by each opposing 17 party" and identifying for each claim "each accused apparatus, product, device, process, method, 18 act, or other instrumentality ('Accused Instrumentality') of each opposing party of which the party 19 Fed. R. Civ. P. 11, PICs must "permit a reasonable inference that all accused products infringe." 21 Nov. 10, 2004) (quoting Antonious v. Spaulding & Evenflo Cos., 275 F.3d 1066, 1075 (Fed. Cir. 23 2002)). A plaintiff must be able to show "why it believed before filing the claim that it had a 24 reasonable chance of proving infringement." View Engineering Inc. v. Robotic Vision Systems Inc., 25 208 F.3d 981, 986 (Fed. Cir. 2000) (applying Ninth Circuit law). However, a party claiming 26 infringement does not have to "reverse engineer" every one of the accused products. Id. 27
[claiming infringement] is aware." Patent L.R. 3--1(a) & (b).In order to satisfy Local Rule 3-1 and 20 Renesas Tech. Corp. v. Nanya Tech. Corp., No. 03-05709, 2004 WL 2600466, at *2 (N.D. Cal. 22 The court finds that Nazomi's PICs satisfy the requirements of Local Rule 3-1 and Rule 11.
As Nazomi has emphasized throughout this litigation, because its patents claim an invention that is 3 merely "capable of" conducting certain operations, its infringement case turns on the presence of 4
Jazelle-circuitry in an accused product, not whether Jazelle is enabled. Nokia does not dispute that 5 each of the products identified in the PICs contain Jazelle. Thus, while Nazomi may have been 6 able to discern whether Jazelle was enabled by conducting further JBenchmark testing or 7 consulting publicly available databases, the fact that each product contained Jazelle is enough to 8 show a "reasonable chance of proving infringement" under Nazomi's current theory. View 9 Similarly, Nokia's assertion that many of the accused products are not Jazelle enabled does not warrant striking the PICs. The Patent Local Rules are "intended to hasten resolution on the merits, they are not a mechanism for resolving the merits of the parties' dispute." FusionArc, Inc. 13 v. Solidus Networks, Inc., No. 06-06760, 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007). The 14 question of whether Nazomi's patents cover products that are not Jazelle enabled has been hotly 15 debated, but it is not the proper subject of a motion to strike under Local Rule 3-1. Indeed, several 16 dispositive motions, which the court is scheduled to hear on August 9, 2012, have been filed on the 17 issue. Thus, while Nokia's contentions may ultimately prove correct, the court does not address 18 them at this time. Engineering, 208 F.3d at 986. 10
For the foregoing reasons the court denies Nokia's motion to strike.