United States District Court, C.D. California
4355768 Canada Inc
Attorneys for Plaintiffs: Not Present.
Attorneys for Defendants: Not Present.
James V. Selna, J.
CIVIL MINUTES - GENERAL
Proceedings: (IN CHAMBERS) Order Granting Defendant's Motion to Strike Infringement Contentions (fld 12-8-14)
Plaintiff Essociate, Inc. (" Essociate") asserts that Defendant 4355768 Canada, Inc., dba CrakMedia (" CrakMedia") is infringing Essociate's U.S. Patent No. 6, 804, 660 (" '660 Patent"). (Compl., Docket (" Dkt." No. 1.) CrakMedia now moves the Court to strike Essociate's patent infringement contentions. (Mot., Dkt. No. 28.) Essociate opposes. (Opposition to Mot. (" Opp'n"), Dkt. No. 29.) CrakMedia has replied. (Reply, Dkt. No. 33.)
For the following reasons, the Court GRANTS CrakMedia's motion to strike Essociate's infringement contentions.
I. Factual and Procedural Background
On April 30, 2014, Essociate filed an action against CrakMedia for infringing the '660 Patent, which embodies an internet advertising system. (Compl.; Decl. of Ben Davidson (" Davidson Decl."), Ex. 1 ('660 Patent), Dkt. No. 27-2.) The Complaint did not specify which claims of the '660 Patent that CrakMedia allegedly infringed. Pursuant to Patent Local Rule 3-1 and before the deadline set by that rule,  Essociate served CrakMedia the required Infringement Contentions on November 3, 2014. (Decl. of Keith Scully (" Scully Decl., Ex. 1 (Disclosure of Asserted Claims & Infringement Contentions (" Original Infringement Contentions")), Dkt. No. 30; Opp'n, 2:11.) The Original Infringement Contentions clarify that Essociate alleges CrakMedia is infringing Claims 15, 23, 28, and 36 of the '660 Patent. (Original Infringement Contentions, 1.) Throughout the Claim Chart of the Original Infringement Contentions, Essociate discusses an internet advertising affiliate system on VideosZ.com as an example of how CrakMedia allegedly infringes the '660 Patent. (Id. at Claim Chart Ex.) On November 24, 2014 Essociate received a declaration from SCTR Services, LLC, which operates VideosZ.com. (Opp'n, 3:3-7; Scully Decl., Ex. B (Decl. of Clement Picquet (" Picquet Decl.")), Dkt. No. 30.) Without seeking leave of the Court, on December 1, 2014 Essociate served CrakMedia Amended Infringement Contentions. (Scully Decl., Ex. C (Amended Disclosure of Asserted Claims and Infringement Contentions (" Amended Infringement Contentions")), Dkt. No. 30; Opp'n, 3:22.)
CrakMedia now moves this Court to strike Essociate's Amended Infringement Contentions and its Original Infringement Contentions. (Mot., 24:5-10.) CrakMedia also requests that the Court stay infringement-related discovery and CrakMedia's obligation to submit invalidity contentions until Essociate has provided sufficient infringement contentions. (Id.)
II. Legal Standard
The Patent Local Rules require that the " Disclosure of Asserted Claims and Infringement Contentions" contain " [s]eparately for each asserted claim, each accused . . . instrumentality ('Accused Instrumentality') . . . of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known." Patent L.R. 3-1(b). The infringement contentions also must contain " [a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Patent L.R. 3-1(c). This rule is a discovery device that " takes the place of a series of interrogatories that defendants would likely have propounded had the patent local rules not provided for streamlined discovery." Network Caching Tech., LLC v. Novell, Inc., No. C- 01-2079-VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13, 2002) .
" [A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a 'reasonable chance of proving infringement.'" Shared Memory Graphics LLC v. Apple, Inc., 812 F.Supp.2d 1022, 1025 (N.D. Cal. 2010) (quoting View Eng'g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000)). While the patent rules do not " require the disclosure of specific evidence nor do they require a plaintiff to prove its infringement case. . . . 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." DCG Sys. v. Checkpoint Techs., LLC, No. C 11-03792 PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (internal ...