Yufa v. Lighthouse Worldwide Solutions Inc.

Filing 104

ORDER by Judge Maria-Elena James denying without prejudice 94 Defendant's Motion for Summary Judgment; setting deadlines for Plaintiff's infringement contentions; setting case management conference for March 13, 2014. (mejlc2, COURT STAFF) (Filed on 12/2/2013)

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UNITED STATES DISTRICT COURT

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Northern District of California

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ALEKSANDR L. YUFA,
Plaintiff,

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v.
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LIGHTHOUSE WORLDWIDE SOLUTION,

No. C 09-00968 MEJ
ORDER DENYING MOTION FOR
SUMMARY JUDGMENT WITHOUT
PREJUDICE; SETTING CASE
MANAGEMENT DEADLINES

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Defendant.
_____________________________________/

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For the Northern District of California

UNITED STATES DISTRICT COURT

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On October 10, 2013, Defendant Lighthouse Worldwide Solution filed a Motion for Summary

14 Judgment, arguing that its products do not infring on Plaintiff Aleksandr Yufa’s ‘983 Patent and that
15 the ‘983 Patent in invalid for lack of enablement. Dkt. No. 94. In its Motion, Defendant argues that
16 Plaintiff’s July 24, 2013 Infringement Contentions failed to conform to the requirements of Patent
17 Local Rule 3-1. Id. at 13. Defendant did not previously object to Plaintiff’s filing as inadequate.
18 Reviewing Plaintiff’s infringement contentions, the Court agrees with Defendant that they fail to
19 meet the requirements of Rule 3-1. Significantly, as a result of Plaintiff’s failure to specifically
20 identify which of Defendant’s products purportedly infringe on the ‘983 Patent and how those
21 products infringe, Defendant’s Motion seeks judgement of noninfringement as to all of its products
22 on the ground that each of its particle detectors uses a reference voltage to eliminate noise and thus
23 do not literally infringe claims 6-8 of the ‘983 Patent. Mot. at 21. Plaintiff argues in his Opposition
24 that Defendant’s products do infringe, but does not identify which product(s) and precisely how the
25 product(s) infringe. Thus, the parties expect this Court to make a general ruling about whether
26 Defendant’s products infringe. This then leads back to the fact that Plaintiff failed in the first
27 instance to identify which products are at issue in this case, forcing Defendant to mount a broad
28 defense encompassing all of its products. See Digital Reg of Texas, LLC v. Adobe Sys. Inc., 2013 WL

1 3361241, at *2 (N.D. Cal. July 3, 2013) (“[Courts in this district generally do not order defendants to
2 proceed with discovery in patent cases until the plaintiff provides infringement contentions that
3 comply with Patent L.R. 3-1.”); InterTrust Tech. Corp. v. Microsoft Corp., 2003 WL 23120174, at *
4 1 (N.D. Cal. Dec. 1,2003) (noting that infringement contentions “require parties to crystallize their
5 theories of the case early in the litigation and to adhere to those theories once they have been
6 disclosed.”) After carefully considering the parties’ briefs and based on the oral argument presented,
7 the Court finds that Defendant’s Motion is premature at this stage. Rather, before the Court may
8 make any determination regarding infringement, Plaintiff must specifically identify which of
9 Defendants products literally infringe on the ‘983 Patent.

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Defendant’s Motion for Summary Judgment is DENIED WITHOUT PREJUDICE.

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For the Northern District of California

Accordingly, the Court HEREBY ORDERS as follows:

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UNITED STATES DISTRICT COURT

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2.

Plaintiff shall serve infringement contentions that fully comply with Patent Local Rule

13 3-1 by January 13, 2014. Plaintiff has filed multiple patent infringement lawsuits in this District and
14 should be familiar with such requirements. Failure to file infringement contentions that conform to
15 Rule 3-1 may result in dismissal of this action. Plaintiff must also produce any documents required
16 under Patent Local Rule 3-2 that were not previously produced by January 13, 2014.
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Defendant’s invalidity contentions shall be served by February 27, 2014, in

18 compliance with Patent Local Rule 3-4.
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4.

The Court sets this matter for a case management conference on March 13, 2014 at

20 10:00 a.m. in Courtroom B. At the case management conference the Court will address what
21 additional discovery needs to be taken and deadlines for discovery, any claim construction hearing,
22 and dispositive motions. The parties shall file a joint case management statement by March 6, 2014,
23 advising the Court of the status of this matter.
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IT IS SO ORDERED.

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26 Dated: December 2, 2014
_______________________________
Maria-Elena James
United States Magistrate Judge

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