Huang v. Nephos Inc.

          ORDER GRANTING DEFENDANT'S MOTION TO STRIKE AND DENYING PLAINTIFF'S MOTION FOR SANCTIONS

          WILLIAM ALSUP UNITED STATES DISTRICT JUDGE

         INTRODUCTION

         In this 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 Denied.

         STATEMENT

         Pro 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).

         On 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).^[1]

         Defendant 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.

         ANALYSIS

         1. Defendant's Motion to Strike.

         Defendant 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 agrees.

         “Patent 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 Grewal).

         A. Claim Chart Deficiencies.

         As 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).

         Plaintiff's amended infringement contentions are thus insufficient to put defendant on reasonable notice of his infringement theories.

         To 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 operation.	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 implement.

         And, 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. which read (1) the TCAM use the differential Match line sensing,

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 and [sic]

This claim gives one example how the differential sense amplifier in claim1 is implemented, which is not necessary to be designed the same way. ...