United States District Court, N.D. California, San Jose Division
ORDER GRANTING-IN-PART GRASS VALLEY'S MOTION TO STRIKE (RE: DKT NO. 71)
PAUL S. GREWAL, Magistrate Judge.
Before the court is Defendant Grass Valley USA, Inc.'s motion to strike and compel revised patent infringement contentions. Plaintiff Technology Licensing Corporation opposes. The parties appeared for a hearing. Having considered the arguments, the court GRANTS Grass Valley's motion, but only IN-PART, as explained below.
TLC is a Nevada-based corporation that holds the rights to the four patents in this case. Grass Valley is a California-based corporation that develops video editing and recording products. On November 29, 2012, TLC filed suit and claimed that approximately one hundred of Grass Valley's products infringe four TLC patents. At issue in this motion are TLC's infringement contentions covering the '842 and '539 patents.
II. LEGAL STANDARDS
Any "party claiming patent infringement" in this district must disclose (1) what claims they are asserting and (2) provide a "chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Patent L.R. 3-1 provides a "streamlined' mechanism to replace the series of interrogatories that defendants would likely have propounded' in its absence." The disclosure also provides "early notice" of a plaintiff's "infringement and invalidity contentions" and requires plaintiffs to "proceed with diligence in amending those contentions when new information comes to light in the course of discovery." The rules thus "balance the right to develop new information in discovery with the need for certainty as to the legal theories." That balance sets a framework for discovery enabling "parties to move efficiently toward claim construction and the eventual resolution of their dispute."
"These rules do not, as is sometimes misunderstood, require the disclosure of specific evidence nor do they require a plaintiff to prove its infringement case.'" "But a patentee must nevertheless disclose what in each accused instrumentality it contends practices each and every limitation of each asserted claim to the extent appropriate information is reasonably available to it."
Grass Valley is not satisfied with TLC's contentions. Reduced down, Grass Valley's complaint is three-fold: (1) TLC includes products that are not accused of practicing any claim limitation; (2) TLC relies generally on Grass Valley manuals and catalogs and (3) TLC's claim charts are imprecise. The court will address each issue in turn.
A. Products That are Not Accused of Practicing Any Claim Limitation Should Be Excluded
TLC urges that Grass Valley's overall systems - comprising frames, racks, power supplies, network interface cards and one or more allegedly infringing modules - constitute the accused instrumentalities even though the asserted claim limitations are practiced at the module level. Drawing upon this broad perspective, TLC's infringement contentions sweep in Grass Valley's ancillary equipment. At the same time, TLC's charts do not allege that the ancillary equipment practices any specific claim limitations. TLC instead represents that the ancillary equipment is used "in conjunction with one or more accused products." Patent L.R. 3-1(c) requires the patentee to specifically match claim limitations with an accused instrumentality. The rules do not authorize the addition of accused instrumentalities that do not practice any specific claim limitations. The inclusion of ancillary products within TLC's infringement contentions is not warranted. Any accused instrumentality not tied to a specific claim limitation shall be struck.
B. TLC's May Rely on Grass Valley's Product Manuals
TLC relies upon statements and descriptions from Grass Valley's user manuals to identify where and how TLC believes each Grass Valley product practices claim limitations. Grass Valley urges that TLC's reliance is not warranted because this court requires "reverse engineering or its equivalent." The case law cited, however, specifically held that reverse engineering may not be warranted in all circumstances. And, as TLC points out, the rules do not require disclosure of specific evidence, nor do they require a plaintiff to prove its infringement case. TLC instead must disclose information sufficient for Grass Valley to appreciate its infringement theory.
At this preliminary stage, TLC need only demonstrate a reasonable chance of proving infringement. TLC has laid out a reasonable basis for its assumption that all products in a family practice the same claim limitations: the product manuals themselves suggest that products within a family share similar functionality. At bottom, TLC's reliance on Grass Valley manuals - ...