United States District Court, N.D. California
ORDER DENYING PLAINTIFF'S REQUEST TO SUPPLEMENT EXPERT REPORT Re: Dkt. Nos. 164, 165, 167
WILLIAM H. ORRICK, District Judge.
Plaintiff France Telecom S.A. alleges that several of defendant Marvell Semiconductor Inc.'s products infringe upon Claims 1 and 10 of U.S. Patent No. 5, 446, 747 ("the '747 patent"). France Telecom seeks leave to supplement the infringement report of its expert in light of my claim construction order, which adopted Marvell's proposed construction of the term at issue. Because France Telecom was aware of the risk that I would adopt Marvell's proposed construction nine months before France Telecom served its expert report, its expert should have fully addressed infringement under Marvell's proposed construction in his original report. France Telecom's request is DENIED as it has not shown good cause for supplementing the report now.
Patent Local Rule 3-1 provides for disclosure of infringement contentions early in a case and streamlines discovery. 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." Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F.Supp.2d 1121, 1123 (N.D. Cal. 2006). Patent Local Rule 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...." The party must disclose "[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).
France Telecom submitted its Patent Local Rule 3-1 infringement contentions in February 2013. Dkt. No. 72. France Telecom contended that Claims 1 and 10 of the 747 patent are literally infringed by Marvell. Id. at ECF page 9. France Telecom also purported to reserve the right to assert a theory of infringement under the doctrine of equivalents, noting:
To the extent Marvell alleges that any given element of the above-identified claims is not literally present in the accused Marvell products, France Telecom contends that any alleged differences between such claim element and Marvell's accused products are insubstantial. Marvell's accused products perform substantially the same function, in substantially the same way, to yield substantially the same result as the asserted claims, and therefore also infringe under the doctrine of equivalents. France Telecom reserves the right to assert a theory of infringement of any claim under the doctrine of equivalents following claim construction.
Id. On May 3, 2013, Judge Nathanael Cousins rejected this "formulaic statement of the doctrine of equivalent infringement" as insufficient under the Local Rules. Dkt. No. 79 at 9-10. Judge Cousins explained that "France Telecom must add facts and specify in what way Marvell's accused products infringe Claims 1 and 10 under the doctrine of equivalents...." Id. at 10.
Also on May 3, 2013, the parties exchanged preliminary proposed claim constructions. Dkt. No. 57 (claim construction schedule); Dkt. No. 81-1 (joint claim construction statement). The parties disputed the construction of the term "systematic convolutional coding" from Claim 1 of the 747 patent. France Telecom proposed that no construction was necessary, or if the Court concluded that construction was necessary, that it be construed as "convolutional coding in which the source data elements are transmitted jointly with coded data elements." Dkt. No. 81-1 at 1. In contrast, Marvell proposed that it be construed as "convolutional coding where the output includes both the coded data and the current input data." Id.
In response to Judge Cousins's order, on May 10, 2013, France Telecom served amended infringement contentions alleging that Marvell literally infringes and that, should the Court adopt Marvell's proposed construction of "systematic convolutional coding, " Marvell still infringes Claim 1 of the 747 patent under the doctrine of equivalents
because the coding steps of, e.g., Figure 4 of the 3GPP standard and the accused Marvell devices perform substantially the same function (providing xk along with zk and z'k from the 1st and 2nd constituent encoders) in substantially the same way (i.e., implementing the steps to provide xk, zk, and z'k ) to achieve substantially the same result (providing xk along with zk, and xk along with z'k ) as would this claim limitation under Marvell's May 3, 2013 constructions.
Dkt. No. 165-2 at 4. The deadline for completing fact discovery passed on January 31, 2014.
France Telecom served the infringement report of its expert, Professor Michael Mitzenmacher, on February 14, 2014. Professor Mitzenmacher's report stated that he had "been apprised of the claim constructions offered by both France Telecom and Marvell" and that he agreed with France Telecom's proposed construction of "systematic convolutional coding." Koehl Decl., Ex. 1 ¶¶ 118, 120 (Mitzenmacher infringement report). Professor Mitzenmacher's report stated that "even under Marvell's construction... the Marvell products clearly infringe." Id. ¶ 120. Professor Mitzenmacher's report went on to describe how, in his opinion, the claim limitations are "met by the Marvell products even with Marvell's construction." Id.
Marvell contends that Professor Mitzenmacher's report "briefly addressed literal infringement by Marvell's accused chips using Marvell's construction of systematic convolutional coding' but failed to address literal infringement by the 3GPP standard or infringement under the doctrine of ...