United States District Court, N.D. California, San Jose Division
ORDER GRANTING IN PART DEFENDANT'S MOTION TO STRIKE INFRINGEMENT THEORIES; DENYING PLAINTIFF'S MOTION TO STRIKE INVALIDITY THEORIES [Re: ECF 216, 218]
BETH LABSON FREEMAN, District Judge.
Plaintiff Finjan, Inc. ("Plaintiff") accuses defendant Blue Coat Systems, Inc. ("Defendant") of infringing six of Plaintiff's web security patents: U.S. Patent Nos. 6, 804, 780 (the 780 Patent); 6, 154, 844 (the 844 Patent); 7, 418, 731 (the 731 Patent); 7, 058, 822 (the 822 Patent); 7, 647, 633 (the 633 Patent); and 6, 695, 968 (the 968 Patent). The Court assumes familiarity with the facts of this case, including the asserted patents and accused products, as discussed in the Court's summary judgment order of June 2, 2015. Before the Court are the parties' respective motions to strike infringement and invalidity theories that were not properly disclosed under the Patent Local Rules. Def.'s Mot., ECF 216; Pl.'s Mot., ECF 218. For the reasons stated herein, Defendant's Motion to Strike is GRANTED IN PART and DENIED IN PART. Plaintiff's Motion to Strike is DENIED.
I. LEGAL STANDARD
This district's Patent Local Rules require both parties to provide early identification of their respective infringement and invalidity theories. See Patent L.R. 3-1, 3-3. Once served, the contentions constitute the universe of the parties' respective theories, and those contentions may be amended only by order of the court and upon a showing of good cause. Patent L.R. 3-6.
As has been recognized by many courts, the purpose of these disclosures is to "require parties to crystallize their theories of the case early in the litigation, " O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info. Storage Devices, Inc., No. C 95-1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. 1998)), so as to "further the goal of full, timely discovery and provide all parties with adequate notice of and information with which to litigate their cases, " Genentech, Inc. v. Trustees of Univ. of Pennsylvania, Case No. 10-cv-2037, 2012 WL 424985, at *2 (N.D. Cal. Feb. 9, 2012) (citation and internal quotation marks omitted). "The rules thus seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories." O2 Micro, 467 F.3d at 1366. A district court has wide discretion in enforcing the Patent Local Rules. Id. at 1365-66; SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005).
II. DEFENDANT'S MOTION
Defendant seeks to strike the following from Plaintiff's expert reports and assertions: (1) infringement theories concerning features that were not previously accused or disclosed in Plaintiff's Patent Local Rule infringement contentions; (2) infringement theories under the doctrine of equivalents; and (3) willful infringement assertions. Def.'s Mot. 1. Plaintiff acknowledged in its opposition brief that it "will not assert willful infringement against [Defendant], " thus mooting the third part of Defendant's motion. Pl.'s Opp. 15, ECF 240. The Court will therefore only address Defendant's first two requests.
A. Accusation of Functions Not Disclosed In Infringement Contentions
Patent Local Rule 3-1 provides that a party claiming patent infringement must serve a disclosure of asserted claims and infringement contentions that addresses "[s]eparately 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." Patent L.R. 3-1(b). "The identification shall be as specific as possible." Id. The patentee must further provide "[a] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality." Id. at 3-1(c).
"[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)); see also Blue Spike, LLC v. Adobe Sys., Inc., No. 14-CV-01647-YGR(JSC), 2015 WL 335842, at *4 (N.D. Cal. Jan. 26, 2015). While "[i]nfringement contentions serve as substitutes for interrogatories,  they also act as forms of pleading that disclose the parties' theories of their case and thereby shape discovery and the issues to be determined at trial." Apple Inc. v. Samsung Electronics Co., No. 12-CV-0630-LHK PSG, 2013 WL 3246094, at *3 (N.D. Cal. June 26, 2013). "Parties accordingly need not prove up' their theories by providing evidence beyond the material they have at the time they make their contentions." Id.; see also AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d 1323, 1338 (Fed. Cir. 2014) (a patentee's infringement contentions "do not need to include proof or direct evidence of infringement"). The dispositive inquiry in a motion to strike is thus whether the allegedly undisclosed "theory" is in fact a new theory or new element of the accused product alleged to practice a particular claim that was not previously identified in the plaintiff's contentions, or whether the "theory" is instead the identification of additional evidentiary proof showing that the accused element did in fact practice the limitation. Oracle Am., Inc. v. Google Inc., No. C 10-03561 WHA, 2011 WL 4479305, at *3 (N.D. Cal. Sept. 26, 2011); see also Genentech, 2012 WL 424985, at *2. If the theory is new, prejudice is "inherent in the assertion of a new theory after discovery has closed." Adobe Sys. Inc. v. Wowza Media Sys., No. 11-CV-02243-JST, 2014 WL 709865, at *15 n.7 (N.D. Cal. Feb. 23, 2014).
Defendant asserts that Plaintiff is advancing several theories of infringement that were not identified in its Patent Local Rule infringement contentions served January 16, 2014 and were instead disclosed for the first time in Plaintiff's expert reports served a year later. The Court agrees, in part.
i. WebPulse Cookie2 (844 and 731 Patents) and ProxySG URL Hash Index (731 Patent)
Defendant contends that Plaintiff identified for the first time in its expert reports that Cookie2, a metadata generated by the accused Dynamic Real-Time Rating ("DRTR") feature of WebPulse, satisfies the "security profile" limitation for the 844 and 731 Patents. Def.'s Mot. 5. Plaintiff's infringement contentions do not mention Cookie2. See generally Decl. of Paul Andre, ECF 240-1 Exh. 6. Plaintiff acknowledges this but argues that Cookie2 is simply a part of DRTR, which was clearly disclosed as the feature accused of infringing, and that Plaintiff did not have information about this specific part until after Defendant produced confidential technical information relating to the accused product. Pl.'s Opp. 5-6.
Indeed, Plaintiff disclosed DRTR as the infringing functionality in its infringement contentions, citing publicly available documents indicating that DRTR provides "real-time rating" of new content wherein the feature "disassembles a web page and analyzes its components" to extract information such as language, document type, character set, content words, and scripts. See, e.g., Andre Decl. Exh. 6 at 5. It is undisputed that Cookie2 is a metadata generated by DRTR that stores information from DRTR's analysis. Def.'s Reply 2, ECF 247. Defendant furthermore does not contest that Plaintiff would not have had access to more specific information about Cookie2 without discovery but rather appears to suggest that Plaintiff should have moved for leave to amend its contentions once it obtained that discovery. Id. at 2. While greater specificity is certainly preferable, the Patent Local Rules do not require perfect clarity, only reasonable notice that is "as specific as possible" given the information of which a plaintiff is aware. Patent L.R. 3-1(b). Plaintiff's contentions reasonably placed Defendant on notice that DRTR generates and stores information that meets the "security profile" limitation, and Plaintiff's expert report subsequently clarified that the ...