United States District Court, N.D. California
ORDER RE MOTION TO STRIKE AND MOTION TO AMEND
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE
action for declaratory judgment of patent noninfringement,
plaintiff moves to strike the patent owners' infringement
contentions for failure to comply with Patent Local Rule 3-1.
The patent owners oppose and separately move to amend their
infringement contentions. Plaintiff's motion to strike is
Granted in part and Denied in part. The patent owners'
motion to amend is Granted subject to the conditions stated
patent dispute began in October 2015, when defendants OpenTV,
Inc., and Nagravision SA, both subsidiaries of Kudelski SA,
approached plaintiff Comcast Cable Communications, LLC, to
negotiate a licensing deal based on the premise that certain
Comcast products infringed Kudelski's patent portfolio.
October 2016, Comcast filed this action for declaratory
judgment of noninfringement of certain patents from
an initial case management conference, a case management
order set forth a procedure for pilot summary judgment
motions from both sides as to one chosen claim per side (Dkt.
No. 82). Since then, the parties have agreed to cross-move
for early summary judgment as to the same claim (claim 1 of
the '595 patent) (Dkt. No. 114). The patent owners have
also notified Comcast of their intent to provide covenants
not to sue on four of the patents asserted in this case
(id. at 1 n.1). Under the current case management
schedule, fact discovery for the pilot summary judgment
motions will close on June 2 and the motions will be filed on
June 26, to be heard on August 3 (Dkt. No. 135).
March 27, the patent owners answered and counterclaimed for
infringement of the '082, '139, '327, '389,
'461, '586, and '595 patents. On April 3, Comcast
moved to dismiss count four of the counterclaim, which
concerns the '139 patent (Dkt. No. 96). On April 17, the
patent owners opposed the motion to dismiss and separately
cross-moved to amend their infringement contentions for the
'139 patent (Dkt. Nos. 99-100). On April 24, the patent
owners filed a first amended answer and counterclaim (Dkt.
No. 105), thereby mooting the motion to dismiss and the
cross-motion to amend infringement contentions for the
'139 patent (see Dkt. No. 138 at 11:25-12:21).
April 19, the patent owners filed another motion to amend
their infringement contentions as to the '586 patent
(Dkt. No. 101). On April 20, Comcast moved to strike the
infringement contentions as to the '082, '139,
'461, '586, and '595 patents with prejudice (Dkt.
No. 102). This order follows full briefing and oral
Comcast's Motion to Strike.
preliminary matter, the patent owners contend Comcast's
motion to strike should be denied as “procedurally
deficient” because Comcast did not meet and confer
prior to filing pursuant to Civil Local Rule 37-1(a) (Dkt.
No. 111 at 5-7). That rule falls under CLR 37, which concerns
“motions to compel disclosure or discovery or for
sanctions, ” and states, “The Court will not
entertain a request or a motion to resolve a disclosure or
discovery dispute unless, pursuant to Fed.R.Civ.P. 37,
counsel have previously conferred for the purpose of
attempting to resolve all disputed issues.” The patent
owners posit that CLR 37-1(a) applies to Comcast's motion
to strike because “[a] motion to strike a party's
disclosure of asserted claims and infringement
contentions, by definition, constitutes a ‘disclosure
or discovery dispute.'” (Dkt. No. 111 at 6
(emphasis in original)).
myopic focus on the word “disclosure” ignores the
substance and context of CLR 37. Each provision of that rule
(save and except for CLR 37-4, which concerns motions for
sanctions) unambiguously concerns discovery disputes
and motions to compel discovery. Furthermore,
Federal Rule of Civil Procedure 37, which provides the
context for CLR 37, makes clear that motions to compel
“disclosure” thereunder contemplate
discovery disclosures required by FRCP 26(a).
See F.R.C.P. 37(a). Thus, contrary to the patent
owners, mere overlap of the word “disclosure”
between CLR 37 and PLR 3-1 does not suggest that the
meet-and-confer requirement of the former should apply to the
latter. None of the decisions cited by the patent owners so
held. This order therefore declines to deny as
“procedurally deficient” Comcast's motion to
strike and proceeds to consider the motion on its
contends the patent owners' infringement contentions
violate PLR 3-1 by (1) relying too much on “information
and belief, ” (2) charting asserted claims for only one
or two accused products despite purporting to accuse more
products of infringement, (3) asserting indirect infringement
theories in generic terms by merely tracking the pertinent
statutory language, (4) using only boilerplate language to
assert infringement under the doctrine of equivalents, and
(5) failing to specifically identify the patent owners'
own “instrumentalities and products purportedly
embodying the '139 Patent” (Dkt. No. 102 at 3).
Allegations Upon “Information and
argues that the patent owners' infringement contentions
should be stricken for lack of “pre-suit
investigation” because their reliance on
“information and belief” violates PLR 3-1(c)
(see Dkt. No. 102 at 5-10). That rule requires only
“[a] chart identifying specifically where and how 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.” It does not prohibit allegations made upon
“information and belief.” Indeed, reading PLR 3-1
as a whole makes clear that it requires specific
allegations but not evidence of ...