United States District Court, N.D. California
ORDER ON MOTION TO STRIKE
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE.
patent infringement action, accused infringer moves to strike
pro se patent owner's infringement contentions,
to dismiss the instant action with prejudice, and for
attorney's fees. To the extent stated below, accused
infringer's motion is Granted.
order has set forth the background of this case (Dkt. No.
55). In brief, pro se plaintiff Xiaohua Huang owns
United States Patent Nos. 6, 744, 653 (“the '653
patent”) and 6, 999, 331 (“the '331
patent”), which patents generally involve ternary
content addressable memory (“TCAM”) technology
used in the semiconductor chip industry. According to
plaintiff, the patents employ a TCAM design “using
differential match line to achieve high speed and lower power
consumption” (Dkt. No. 65-9 at 11). Plaintiff accuses
defendant's chips of infringing those patents (Compl.
¶¶ 1, 8, 11).
December 2018, plaintiff has been advised by defendant's
counsel multiple times that his infringement contentions were
non-compliant with the patent local rules. The Court has
twice warned plaintiff - including a prior order dated July 9
that struck his third set of contentions for various
deficiencies and offered him one more chance to amend - that
failure to serve proper contentions would likely result in
dismissal of his action (Dkt. No. 55 at 9). Plaintiff timely
served his fourth set of infringement contentions (Dkt. No.
59). According to this new set of contentions, plaintiff
accuses defendant's “Aries MT3250 Family, Aries
Hybrid ToR Switch, Taurus Family NP8360 Series, Taurus ToR
and Fabrics Switch” products of infringing Claims 1, 5,
8, 12, 15, and 17 of the '653 patent and Claims 1 and 9
of the '331 patent (Dkt. No. 59-1 at 1, 7).
now moves to strike (for a second time) plaintiff's
latest amended infringement contentions for failure to comply
with Patent Local Rules 3-1(c)-(e), for dismissal with
prejudice, and for an award of attorney's fees (Dkt. No.
65). This order follows full briefing and oral argument.
Patent Local Rule 3-1 Noncompliance.
contends that plaintiff's fourth set of infringement
contentions are still 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.
65 at 1-2). 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 Comput. Int'l v. Round Rock
Research, LLC, No. C 12-02099 JST (NC), 2014 WL 1463609,
at *1 (N.D. Cal. Apr. 11, 2014) (Magistrate 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) (Magistrate Judge
Claim Chart Deficiencies.
Local Rule 3-1(c) requires plaintiff to provide “[a]
chart identifying specifically where and how each limitation
of each asserted claim is found within each Accused
order finds that plaintiff's fourth set of infringement
contentions under Patent Local Rule 3-1(c) are deficient for
failure to provide the required limitation-by-limitation
analysis. As before, the claim charts here for both
patents-in-suit are still mainly self-referential. That is,
they primarily consist of plaintiff's opinion about how a
claim limitation relates to a figure in the specification.
The chart for ...