United States District Court, N.D. California
ORDER RE MOTION TO STRIKE INFRINGEMENT CONTENTIONS Re: Dkt. No. 48
JAMES DONATO, District Judge.
In this patent infringement case, defendant McAfee moves to strike large portions of plaintiff CAP's infringement contentions. In particular, McAfee objects to CAP's including a single claim chart for each of the two asserted patents, despite accusing over a dozen products per patent as well as its attempt to add new accused products without moving for leave to amend its infringement contentions. McAfee also argues that the infringement contentions inadequately disclose the bases for its indirect, joint, and willful infringement allegations, as well as its allegations under the doctrine of equivalents. The Court finds that CAP's infringement contentions are inadequate, and strikes the portions described below with leave to amend.
In November 2014, CAP filed this suit asserting three patents: U.S. Patent Nos. 8, 544, 078, RE42, 196, and RE44, 249. Complaint, Dkt. No. 1. CAP has since dropped the 249 patent. See Dkt. No. 59 at 2:15-17. CAP's infringement contentions were due on March 27, 2015, see Dkt. No. 64, and CAP served its infringement contentions on March 27 and 28. Declaration of James Valentine ¶ 4, Dkt. No. 48-1. After McAfee objected, CAP provided revised claim charts on April 21. Id. ¶ 12. Both the original and revised charts included only three charts (one for each of the three then-asserted patents), without separating out the 13 products accused of infringing the 078 patent and the 16 products accused of infringing the 196 patents in the revised contentions. Dkt. Nos. 48-3 to -5, 48-7 to -9.
"The local patent rules in the Northern District of California... require[e] both the plaintiff and the defendant in patent cases to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). Under Patent Local Rule 3-1, the party claiming infringement must serve contentions that list (a) each allegedly infringed claim; (b) each accused device, method, or instrumentality; (c) a chart "identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality"; (d) the bases for any claims of indirect or joint infringement; (e) whether each claim is alleged to be infringed literally or under the doctrine of equivalents; (f) the priority date to which each claim is entitled; (g) any of the patentee's own products that allegedly embody the asserted claims; and (h) the basis for any willful infringement claims. Patent L.R. 3-1.
Amendments to the infringement contentions are only permitted by order of the Court upon a timely showing of good cause. See Patent L.R. 3-6. As the Federal Circuit has held in interpreting our district's patent local rules, "good cause' requires a showing of diligence" and "[t]he burden is on the movant to establish diligence rather than on the opposing party to establish a lack of diligence." O2 Micro, 467 F.3d at 1366. Nevertheless, the patent local rules are "not a straitjacket into which litigants are locked from the moment their contentions are served. There is a modest degree of flexibility, at least near the outset." Comcast Cable Communications Corp., LLC v. Finisar Corp., No. C 06-04206 WHA, 2007 WL 716131, at *2 (N.D. Cal. Mar.2, 2007).
I. REPRESENTATIVE PRODUCTS
McAfee initially objects to a number of CAP's claim charts for mixing and matching between different accused products. For example, while most of the elements of claim 10 of the 196 patent are charted against McAfee SiteAdvisor, see Amended Claim Chart for RE42, 196 at 135, 141, 155, 159, Dkt. No. 48-9, the limitation "the connection request is issued by the client system according to information provided from a second web server after the client system is connected to the second web server separated from the first web server" is only charted against a document describing McAfee Complete Endpoint Protection, see id. at 135, while the limitation "treating a file determined to be harmful in the step (c2) and executing the file, if it can be treated, and aborting execution of the file determined to be harmful in the step (c2), if it cannot be treated" is charted against VirusScan Enterprise with the ScriptScan component, see id. at 160-61. Similarly, claim 1 of the 078 patent is charted against a combination of Next Generation Firewall, see Amended Claim Chart for U.S. Patent No. 8, 544, 078 at 50-68, 75-85, Dkt. No. 48-7, McAfee Internet Security, see id. at 70-72, McAfee SaaS/Cloud Protection, see id. at 72-73, and other products. Infringement cannot be shown by a muddled hash of elements from different products, since in order to infringe, "the accused device must contain each limitation of the claim, either literally or by an equivalent." See TecSec, Inc. v. Int'l Business Machines Corp., 731 F.3d 1336, 1351 (Fed. Cir. 2013).
It is true that under certain circumstances, the patentee can chart a representative product instead of each of the accused products individually. See Network Protection Sciences, LLC v. Fortinet, Inc., No. C 12-01106 WHA, 2013 WL 5402089, at *3 (N.D. Cal. Sept. 26, 2013). But that hardly saves CAP's infringement contentions, which in many cases do not even chart a single product against all elements. Moreover, representative products may only be charted "when supported by adequate analysis showing that the accused products share the same critical characteristics." Id. That analysis cannot just be based on the patentee's say-so: "in order to rely on a claim that one accused product represents another for purposes of Rule 3-1(c), a patentee must do more than state as much. A patentee must state how." Silicon Labs., Inc. v. Cresta Tech. Corp., No. 5:14-cv-03227-PSG, 2015 WL 846679, at *2 (N.D. Cal. Feb. 25, 2015). CAP points to no such analysis in its contentions, or even in its opposition. Instead, it merely says that it cites to documents that "often reference generic product components that are included in all the accused products. Opposition to Motion to Strike at 7:7-8, Dkt. No. 51. But "often" is not enough, and even if it were, CAP makes no claim that each of the limitations of the asserted claims are found in the common "generic component, " as it must if it wishes to rely on a single chart with respect to each accused product. The two examples of "generic components" it gives (and they are only examples) - McAfee's Global Threat Intelligence for the 196 patent and ePolicy Orchestrator for the 078 patent - do not even allegedly meet these criteria.
The Court consequently strikes CAP's infringement claim charts.
II. INDIRECT INFRINGEMENT, JOINT INFRINGEMENT, AND DOCTRINE OF EQUIVALENTS
McAfee also moves to strike CAP's contentions with respect to indirect infringement, joint infringement, ...