United States District Court, N.D. California
ORDER GRANTING DEFENDANT'S MOTION TO STRIKE AND
DENYING PLAINTIFF'S MOTION FOR SANCTIONS
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE
patent infringement action, accused infringer moves to strike
pro se patent owner's infringement contentions
and to dismiss the instant action with prejudice. Pro
se patent owner moves for sanctions against accused
infringer. Accused infringer's motion to strike is
Granted to the extent stated below and
patent owner's motion for sanctions is
se plaintiff Xiaohua Huang owns United States Patent
Nos. 6, 744, 653 (“the '653 patent”) and 6,
999, 331 (“the '331 patent”). The patents
generally involve ternary content addressable memory
(“TCAM”) technology used in the semiconductor
chip industry. According to the complaint, from October 2014
to November 2014, plaintiff had several meetings with the
design team of “MediaTek” to discuss TCAM design.
In 2016, part of MediaTek's design team became defendant
Nephos Inc., which plaintiff sued for infringement of the
'653 and '331 patents in November 2018 (Dkt. No. 1
¶¶ 1, 8, 10).
December 18, 2018, plaintiff served his preliminary
infringement contentions (Dkt. Nos. 42-1 ¶ 3; 42-2).
Defendant's counsel advised plaintiff that those
contentions were both premature and non-compliant with the
patent local rules (Dkt. No. 42-3). During the initial case
management conference held on March 21, defendant's
counsel raised the issue of the inadequacy of plaintiff's
then-infringement contentions under Patent Local Rule 3-1,
and the Court warned plaintiff of his obligation to comply
with the local rules or risk dismissal of the instant action
(Dkt. No. 42-4 at 9-10). Plaintiff subsequently served
substantially the same contentions on April 2
(compare Dkt. No. 42-5 with Dkt. No. 42-2).
After defendant's counsel advised plaintiff again that
defendant believed the contentions to be insufficient under
Patent Local Rule 3-1 and offered plaintiff an opportunity to
amend (Dkt. No. 42-6), plaintiff again served essentially the
same infringement contentions, with additional summaries for
certain dependent claims (compare Dkt. No. 42-8
with Dkt. No. 42-5).
now moves to strike plaintiff's latest amended
infringement contentions. It further contends that given that
plaintiff has already had repeated chances to comply with the
patent local rules, the instant action should be dismissed
with prejudice (Dkt. No. 42 at 1). For his part, plaintiff
moves for sanctions under Rule 11. Plaintiff takes issue with
defendant's corporate disclosure statement, which he
believes contained false statements. He further asserts that
defendant moved to strike his infringement contentions
“in order to increase [plaintiff's] expense and
delay the case” (Dkt. No. 44 at 1-2). This order
follows full briefing and oral argument.
Defendant's Motion to Strike.
contends that plaintiff's amended infringement
contentions are deficient under (1) Patent Local Rule 3-1(c)
for failure to provide “chart[s] identifying
specifically where and how each limitation of each asserted
claim is found within each Accused Instrumentality”;
(2) Patent Local Rule 3-1(d) for failure to identify
“any direct infringement and a description of the acts
of the alleged indirect infringer that contribute to or are
inducing that direct infringement” for each asserted
claim alleged to be indirectly infringed; and (3) Patent
Local Rule 3-1(e) for failure to demonstrate “[w]hether
each limitation of each asserted claim is alleged to be
literally present or present under the doctrine of
equivalents in the Accused Instrumentality” (Dkt. No.
42 at 5). See Patent L.R. 3-1(c)-(e). This order
Local Rule 3 requires patent disclosures early in a case and
streamlines discovery by replacing the series of
interrogatories that parties would likely have propounded
without it.” Huawei Techs., Co, Ltd v. Samsung
Elecs. Co, Ltd., 340 F.Supp.3d 934, 945-46 (N.D. Cal.
2018) (quoting ASUS Computer Int'l v. Round Rock
Research, LLC, No. C 12-02099 JST (NC), 2014 WL 1463609,
at *1 (N.D. Cal. Apr. 11, 2014) (Judge Nathanael Cousins)).
Patent Local Rule 3-1, which sets forth the requirements for
disclosing asserted claims and preliminary infringement
contentions, “require[s] the party claiming
infringement to crystallize its theories of the case early in
the litigation and to adhere to those theories once
disclosed.” Shared Memory Graphics LLC v. Apple,
Inc., 812 F.Supp.2d 1022, 1024 (N.D. Cal. 2010) (quoting
Bender v. Advanced Micro Devices, Inc., No. C
09-1149 MMC (EMC), 2010 WL 363341, at *1 (N.D. Cal. Feb. 1,
2010) (Judge Edward Chen)). Though a plaintiff need not
supply evidence of infringement, “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.” Id. at 1025; Creagri, Inc.
v. Pinnaclife Inc., LLC, No. C 11-06635 LHK (PSG), 2012
WL 5389775, at *3 (N.D. Cal. Nov. 2, 2012) (Judge Paul
Claim Chart Deficiencies.
defendant points out, plaintiff's charts largely consist
of plaintiff's opinions regarding (1) how a claim element
relates to the specification or other claims; (2) how a claim
element is or is not required to be present in a product; and
(3) the accused products' allegedly claimed features
generally, without a single reference to defendant's
documents or website or specific analysis of the accused
products tying specific features to the claim language. They
do not contain the limitation-by-limitation analysis required
by Patent Local Rule 3-1(c).
amended infringement contentions are thus insufficient to put
defendant on reasonable notice of his infringement theories.
highlight a few non-exhaustive examples of the aforementioned
deficiencies, plaintiff's chart for Claims 2, 7, 11, and
14 of the '653 patent simply states as follows (Dkt. No.
42-8 at 14-15, 17-18):
2. The CAM cell of claim 1, wherein
the comparison circuit further includes
a first pair of transistors configured to
receive the detected bit value and
provide a drive for the output
transistor, and a second pair of
transistors configured to receive the
inverted detected bit value and provide
a drive for the dummy transistor.
This claim further describe that how the
dummy CAM cell which also perform the
“Valid bit” function works. This cell is
supporting both “Valid bit” and
differential match line sensing of using a
differential sense amplifier. This claim
read (1) the TCAM use the differential
Match line sensing,
7. The CAM cell of claim 5, wherein an output of the
pair of dummy transistors are OFF during sensing
This claim further describe of Claim 5.
This claim read (1) the TCAM use the
differential Match line sensing,
11. The CAM cell of claim 10, wherein the dummy
transistors are approximately half the dimension of
the output transistors.
This claim further describe of Claim 10
14. The sense circuit of claim 13,
wherein the match line and the dummy
line are pre-charged prior to being
sensed by the sense circuit.
This claim is the common way to
plaintiff's charts for the asserted claims of the
'331 patent fare no better, as illustrated by the
following examples for Claims 1 (as to the first limitation)
and 6 (Dkt. No. 42-8 at 21, 24):
[1.] (1) an array of TCAM cells
arranged in a plurality of rows and
a plurality of columns;
a plurality of match lines, one match line for each
row of TCAM cells and operatively coupled to a
plurality of output transistors for the TCAM cells
in each row; a plurality of dummy lines, one dummy
line for each row of TCAM cells and operatively
coupled to a plurality of dummy transistors for the
TCAM cells in each row;
(1) This element of claim describe Fig.1.B in U.S.
patent 6999331, which is the basic structure of
CAM, Ternary CAM to use differential sense
amplifier to sense MATCH(HIT) line,
it also cover “Valid bit” function.
(1) the TCAM use the differential Match line
6. The TCAM of claim 1, wherein the
sense amplifier connected to the match
line and the dummy line in each row
comprises: two inverters connected to
each other in a way of positive
feedback; and a P type transistor
serially connected to both inverters
This claim gives one example how the differential
sense amplifier in claim1 is implemented, which is
not necessary to be designed the same way.