United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART MOTION TO STRIKE INFRINGEMENT CONTENTIONS Re: Dkt. No. 118
HAYWOOD S. GILLIAM, Jr., District Judge.
This action arises from eight patents granted to Finjan, Inc., all of which involve software technologies concerning behavior-based internet security ( i.e., the asserted patents "protect networks and endpoints by identifying suspicious patterns and behaviors of content delivered over the Internet"). See Dkt. No. 104 at ¶ 7. Finjan filed the instant lawsuit on December 16, 2013, alleging that numerous products sold by Proofpoint, Inc. and Armorize Technologies, Inc. (the "Defendants") infringe these patents. See Dkt. No. 1.
Finjan served its infringement contentions on April 17, 2014. Defendants moved to strike those contentions as deficient under this District's Patent Local Rules. See Dkt. No. 118. Defendants seek an order striking Finjan's infringement contentions in their entirety and with prejudice, and request the Court stay the case until Finjan demonstrates good cause to amend. See id. For its part, Finjan asserts that its infringement contentions meet all requirements of the Patent Local Rules but, even if they do not, it should be permitted to amend its contentions without a stay and without prejudice. See Dkt. No. 121.
The Court has read and considered the arguments and evidence offered by the parties, both in their written submissions to the Court and at the hearing held on March 19, 2015. For the reasons explained below, this Court GRANTS IN PART and DENIES IN PART Defendants' motion to strike Finjan's infringement contentions.
I. LEGAL STANDARD
The requirements of Patent Local Rule 3-1 provide a "streamlined mechanism to replace the series of interrogatories that accused infringers would likely have propounded in its absence." FusionArc, Inc. v. Solidus Networks, Inc., 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007) (quoting Network Caching Tech., LLC v. Novell Inc., 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13, 2002)). The Rule "require[s] parties to crystallize their theories of the case early in 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). This early disclosure "provide[s] structure to discovery and enable[s] the parties to move efficiently toward claim construction and the eventual resolution of their dispute." Creagri, Inc. v. Pinnaclife Inc., LLC, 2012 WL 5389775, at *2 (N.D. Cal. Nov. 2, 2012) (citation omitted). The Rule reads, in pertinent part:
[A] party claiming patent infringement shall serve on all parties a Disclosure of Asserted Claims and Infringement Contentions[ ]'... [which] shall contain the following information:
(a) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted;
(b) Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality ("Accused Instrumentality") of each opposing party 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. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
(c) A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function.
(d) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described.
(e) Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality;
(h) If a party claiming patent infringement alleges willful infringement, the basis for such allegation.
Pat. L.R. 3-1.
For infringement contentions to satisfy the Local Rule, "plaintiff [must] compare an accused product to its patents on a claim by claim, element by element basis for at least one of each defendant's products... reverse engineering or its equivalent are required." Network Caching, 2002 WL 32126128 at *5; InterTrust Tech. Corp. v. Microsoft Corp., 2003 WL 23120174, at *3 (N.D. Cal. Dec. 1, 2003) ("The purpose of Patent Local Rule 3-1, however, is in fact to be nit picky, to require a plaintiff to crystalize its theory of the case and patent claims."); Bender v. Maxim Integrated Prods., 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) ("[P]laintiff bears the burden of providing infringement contentions that specify the location of every claim element within the accused products, so that the Court can make a principled decision on whether discovery will proceed."). The party claiming infringement is required to include in its infringement contentions "all facts known to it, including those discovered in [its] pre-filing inquiry." Renesas Tech. Corp. v. Nanya Tech. Corp., 2004 WL 2600466, at *2 (N.D. Cal. Nov. 10, 2004).
"[A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient to provide reasonable notice to the defendant [as to] 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) (citation omitted) (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, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012); see also Shared Memory Graphics, 812 F.Supp.2d at 1025 (stating that patent holder "must map specific elements of Defendants' alleged infringing products onto the Plaintiff's claim construction").
Defendants contend that Finjan's infringement contentions do not comply with this District's Patent Local Rules because they: (1) improperly combine multiple products into single claims charts; (2) do not address all accused products; (3) fail to provide a theory of infringement for several allegedly infringing products; (4) fail to sufficiently identify how each accused product infringes each claim element in each asserted patent; and (5) fail to sufficiently assert the doctrine of equivalents, willful infringement, and indirect infringement. A careful review of Finjan's infringement contentions reveals that they suffer from many of the deficiencies asserted by the Defendants.
A. Finjan's Combination Claim Charts
Under Patent Local Rule 3-1(c), the party claiming infringement must serve a "chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function."
Finjan attempted to satisfy this obligation by dividing the Defendants' products into two groups-"Proofpoint Products" and "Armorize Products"- and then creating one claim chart per group per asserted patent. See Opposition at 3. Finjan defines "Proofpoint Products" as "Proofpoint products and services that utilize the Zero-Hour Threat Detection and Malware Analysis Service including but not limited to Proofpoint Enterprise Protection, Proofpoint's Malvertising Protection, Proofpoint's SafeImpressions, Proofpoint's Targeted Attack Protection, Proofpoint Essentials (including the packages of Beginner, Business, and Professional), Proofpoint Protection Server, and Proofpoint Messaging Security Gateway." See, e.g., Dkt. No. 118-3 at 1. "Armorize Products" is defined to mean: HackAlert Anti-Malware, CodeSecure Automated Static Source Code Analysis, SmartWAF Web Application Firewall, SafeImpressions and Malvertising Protection. See, e.g., Dkt. No. 118-8 at 1.
As an initial matter, a separate claim chart for each accused product is not mandatory under Patent Local Rule 3-1(c). Combination claim charts (whereby the party asserting infringement describes how multiple products infringe the asserted patent(s) in a single chart) can provide the required specificity under Patent Local Rule 3-1(c), if each accused product allegedly infringes in the same way. See, e.g., Creargi, 2012 WL 5389775 at *3 (finding a single claim chart for multiple accused products sufficient where the plaintiff specified that all the identified products contained the same chemical compound, which plaintiff asserted was the infringing element of each of the identified products); see also Network Prot. Sciences, LLC v. Fortinet, Inc., 2013 WL 5402089, at *3 (N.D. Cal. Sept. 26, 2013) ("[W]hen supported by adequate analysis showing that the accused products share the same critical characteristics, representative infringement contentions may suffice.").
The issue before Court is whether the two categories of products identified by Finjan's combined claim charts meet this standard. According to the Defendants, Finjan has provided no showing that the accused products are so functionally identical that they infringe on each claim of each of the eight patents in the exact same way. Defendants therefore argue that Finjan must provide separate charts detailing its theory of infringement as to each individual product. Finjan responds with two counter-arguments. As to its Proofpoint Products chart, Finjan asserts that combining seven products into a single chart is appropriate because "[e]ach of the Proofpoint Products' utilize the Zero-Hour Threat Detection and Malware Analysis Service solutions, which Finjan contends is the infringing aspect of the Proofpoint Products.'" Opp. at 11. Second, for the ...