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Technology Licensing Corp. v. Grass Valley USA, Inc.

United States District Court, N.D. California, San Jose Division

July 30, 2014



PAUL S. GREWAL, Magistrate Judge.

Before the court is Defendant Grass Valley USA, Inc.'s motion to strike and compel revised patent infringement contentions.[1] Plaintiff Technology Licensing Corporation opposes. The parties appeared for a hearing.[2] 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.[3] Grass Valley is a California-based corporation that develops video editing and recording products.[4] On November 29, 2012, TLC filed suit and claimed that approximately one hundred of Grass Valley's products infringe four TLC patents.[5] At issue in this motion are TLC's infringement contentions covering the '842[6] and '539[7] patents.


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."[8] Patent L.R. 3-1 provides a "streamlined' mechanism to replace the series of interrogatories that defendants would likely have propounded' in its absence."[9] 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."[10] The rules thus "balance the right to develop new information in discovery with the need for certainty as to the legal theories."[11] That balance sets a framework for discovery enabling "parties to move efficiently toward claim construction and the eventual resolution of their dispute."[12]

"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.'"[13] "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."[14]


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.[15] 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."[16] 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.[17] Grass Valley urges that TLC's reliance is not warranted because this court requires "reverse engineering or its equivalent."[18] The case law cited, however, specifically held that reverse engineering may not be warranted in all circumstances.[19] 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.[20] TLC instead must disclose information sufficient for Grass Valley to appreciate its infringement theory.[21]

At this preliminary stage, TLC need only demonstrate a reasonable chance of proving infringement.[22] 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.[23] At bottom, TLC's reliance on Grass Valley manuals - while incomplete - provides sufficient notice of TLC's infringement theory across product families.[24]

C. TLC's Claim Charts Are Insufficient, But Only In-Part

The claims of the '842 patent describe how to synchronize two signals that are delayed relative to one another by adjusting one of the signals to match the other.[25] TLC largely supports its infringement contentions for the '842 patent by reference to a functional diagram from a Grass Valley product manual.[26] The diagram shows the paths by which audio and video signals are processed within the allegedly infringing module.[27] The diagram includes blocks labeled "Temporal Conversion" and "Audio Delay Fixed and Adjustable."[28] TLC also refers to a Grass Valley product manual that describes synchronized video output.[29] TLC's use of available Grass Valley publications explains its infringement position within the accused modules with respect to each claim limitation.[30] In sum, TLC has provided sufficient notice of its reasonable basis for asserting Grass Valley's infringement of the '842 patent in compliance with the local rules.

TLC's contentions for the '539 patent also reference Grass Valley product manuals.[31] But in a few key areas, the '539 contentions fall short. TLC refers to components or functionalities that embody claim limitations but are absent from the manuals: for example, (1) clamping an input video signal to an established direct current level, (2) generating a sampling clock for analog-to-digital conversion, (3) use of a digital-to-analog converter with a frame rate determined by an output clock, (4) processing interpolated samples for analog-to-digital video conversion and (5) providing interpolated samples at a rate slower than the sampling clock rate for oversampling.[32] Instead of detailing where these components of functionalities are located, TLC responds that the components or functionalities necessarily must be present.[33] A bare statement that some functionality is necessarily present is insufficient to describe the "structure(s), act(s), or material(s) in the Accused Instrumentality" performing the claimed function.[34] TLC's contentions therefore shall be amended to explain why these limitations are necessarily present and where these limitations are practiced in the accused instrumentalities.

Because TLC's contentions are insufficient, amendment is necessary. Any amended contentions shall be served within 14 days.


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