United States District Court, N.D. California, San Jose Division
ORDER GRANTING-IN-PART APPLE'S MOTION TO STRIKE INFRINGEMENT THEORIES FROM DR. MADISETTI'S EXPERT
REPORT (RE: DKT NO. 304)
PAUL S. GREWAL, Magistrate Judge.
Before the court is Defendant Apple Inc.'s motion to strike infringement theories from Dr. Madisetti's expert report. Plaintiff Emblaze Ltd. opposes. The parties appeared for a hearing. As set forth below, after considering the parties' arguments the court GRANTS Apple's motion to strike, but only IN-PART.
I. LEGAL STANDARDS
"Patent Local Rule 3 provides for patent disclosures early in a case and streamlines discovery by replacing the series of interrogatories that [parties] would likely have propounded' without it." It is "designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed." In so doing, Patent L.R. 3 provides "structure to discovery" and enables "the parties to move efficiently toward claim construction and the eventual resolution of their dispute." Patent L.R. 3-1(c) requires a party claiming patent infringement to serve a "chart identifying specifically where each limitation of each asserted claim is found within each" accused instrumentality. In inducement cases, Patent L.R. 3-1(d) requires the patent owner to (1) identify "any direct infringement, " (2) describe the acts "of the alleged indirect infringer that contribute to or are inducing" that direct infringement and, if applicable, (3) identify the "role" of each induced party in the direct infringement.
Patent L.R. 3 does not, however, "require the disclosure of specific evidence" or "require a plaintiff to prove its infringement case." "But to the extent appropriate information is reasonably available to it, a patentee must nevertheless disclose the elements in each accused instrumentality that it contends practices each and every limitation of each asserted claim." At bottom, Patent L.R. 3-1 is designed "to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed."
The parties agree that this is a pure Akamai -styled inducement case: Apple is alleged to have induced multiple actors who cumulatively infringed Emblaze's patent claims. As an inducement case, Patent L.R. 3-1(d) applies. Emblaze thus had an obligation under the Patent L.R. to identify Apple's direct infringement and describe the acts and roles of the induced infringers. The theory of direct infringement - Apple's published marketing documents and support of live streaming - is undisputed.
The dispute centers on whether portions of Madisetti's report should be struck because the report did not hew closely enough to the revised patent disclosures served on Apple January 31, 2012. As Apple sees it, Emblaze carried an obligation to build out its theories from its patent disclosures. Although Apple concedes Emblaze's original patent disclosures disclosed some named content providers,  those content providers were removed from Emblaze's revised patent disclosures. Emblaze counters that its disclosures in this case are sufficient - the revised contentions point out that there may be "additional third parties, unknown to Plaintiff due to defendant's incomplete document production at this time, that also perform one or more steps of the method recited in the asserted claims of the 473 patent, and/or make, use or sell apparatus recited in the asserted claims of the 473 patent." Emblaze's references in both the original and revised disclosures, coupled with references to content providers in the second amended complaint,  are sufficient.
The court agrees with Emblaze. The issue here is fair notice, not necessarily where it originates. To hold otherwise would be to champion form over substance. In this case, Apple has been on notice of Emblaze's general claims: Emblaze urges Apple's marketing live streaming technology to end-users and intermediaries - including both content providers and content-distribution networks - induced the infringement of Emblaze's patent claims. Although the live streams accused in this case are on the surface outward-facing and may be viewed by anyone with an accused Apple device, merely viewing the stream does not divulge the guts of how the stream is generated. At issue in this case, Emblaze needed discovery to tease out whether the content-distribution network or the content provider splices and transmits the feed. Only after deposing Major League Baseball and Akamai did it become clear that most of the content providers splice and transmit the feed in house. Ideally, Emblaze should have sought leave to update its contentions, yet again. Perhaps Emblaze thought that its contentions were already sufficient given it already disclosed both content providers and content distribution networks earlier in the case. In any event, it is clear to the court that Apple was on notice. Indeed, Apple participated in those key depositions.
On balance, striking portions of Madisetti's report is not warranted.
Madisetti's report also presumes that it may include later-model accused products in its report that were not disclosed in the original or revised contentions. In support, Emblaze points to language in the infringement contentions purportedly reserving subsequent generation devices for later inclusion in this ...