Pagemelding, Inc v. ESPN, Inc.

Filing 111

ORDER DENYING MOTION FOR SANCTION OF DISMISSAL by Hon. William Alsup denying 95 Motion for Sanctions.(whalc1, COURT STAFF) (Filed on 1/4/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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PAGEMELDING, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,
v.

ORDER DENYING MOTION FOR
SANCTION OF DISMISSAL

ESPN, INC.,
Defendant.
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No. C 11-06263 WHA

INTRODUCTION
In this patent action involving customized web pages, defendant requests that the action

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be dismissed as a sanction for plaintiff’s alleged failure to cure inadequate infringement

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contentions. Both sides move for fees and costs on the briefing. For the reasons explained

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below, the motions are DENIED.

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STATEMENT
This action’s background has been described in prior orders (Dkt. Nos. 38, 48, 56, and

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71). In brief, plaintiff PageMelding, Inc. is the owner of United States Patent No. 6,442,577.

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The ’577 patent “enables internet service and content providers to form mutually beneficial

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collaborations wherein website content is customized in accordance with those collaborations.”

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Plaintiff asserts that examples of defendant ESPN’s infringement include, but are not limited to,

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defendant’s ESPN3 and WatchESPN websites.

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On August 3, 2012, PageMelding served its infringement contentions pursuant to Patent

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Local Rule 3-1. ESPN subsequently filed a motion to compel PageMelding to provide more

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detail in its infringement contentions. At a November 16 hearing, the undersigned granted

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PageMelding an opportunity to cure the alleged deficiencies by serving amended infringement

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contentions.

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Following service of PageMelding’s amended infringement contentions, ESPN filed the

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instant motion for a sanction of dismissal. ESPN contends that PageMelding’s amended

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infringement contentions: (i) fail to identify the specific web pages it accuses of infringement;

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(ii) improperly rely on activity by one product to allege infringement against both products; and
(iii) fail to identify the software and hardware associated with the alleged infringement.

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For the Northern District of California

United States District Court

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ANALYSIS

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1.

LEGAL STANDARD.

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Patent Local Rule 3-1(c) requires “[a] chart identifying specifically where each limitation

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of each asserted claim is found within each Accused Instrumentality, including for each

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limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the

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structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed

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function.”

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The patent local rules are designed “[to] make the parties more efficient, to streamline the

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litigation process, and to articulate with specificity the claims and theory of a plaintiff’s

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infringement claims.” Rule 3-1 “takes the place of a series of interrogatories that defendants

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would likely have propounded had the patent local rules not provided for streamlined discovery.”

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Bender v. Maxim Integrated Prods., Inc., No. 09-CV-01152, 2010 WL 1135762, at *2 (N.D. Cal.

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Mar. 22, 2010) (Judge Illston). To satisfy Rule 3-1, a “plaintiff [must] compare an accused

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product to its patents on a claim by claim, element by element basis for at least one of each

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defendant’s products[;] . . . reverse engineering or its equivalent are required.” Network Caching

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Tech. LLC v. Novell, Inc., No. 02-CV-012079, 2002 WL 32126128, at *3–4 (N.D. Cal. Aug. 13,

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2002) (Judge Walker).

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“If a party fails to obey an order to provide discovery, the court may dismiss the action,

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‘rendering a judgment by default against the disobedient party.’” In re Exxon Valdez, 102 F.3d

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429, 432 (9th Cir. 1996) (citing FRCP 37(b)(2)). “Dismissal, however, is authorized only in

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‘extreme circumstances’ and only where the violation is ‘due to willfulness, bad faith, or fault of

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the party.’” Ibid.

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Before imposing the harsh sanction of dismissal, the district court must weigh
several factors: (1) the public’s interest in expeditious resolution of litigation;
(2) the court’s need to manage its dockets; (3) the risk of prejudice to the
party seeking sanctions; (4) the public policy favoring disposition of cases on
their merits; and (5) the availability of less drastic sanctions. . . . Due process
concerns further require that there exist a relationship between the sanctioned
party’s misconduct and the matters in controversy such that the transgression
“threaten[s] to interfere with the rightful decision of the case.”

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omitted). The Federal Rules also authorize lesser sanctions for failure to heed a discovery order,
For the Northern District of California

United States District Court

Anheuser Bush, Inc., v. Natural Beverage Distribs., 69 F.3d 337, 348 (9th Cir. 1995) (citations
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including the sanction of preclusion. FRCP 37(b)(2)(A)(ii).
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2.

PRECLUSION AND COMPULSION.

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ESPN has identified several deficiencies in PageMelding’s infringement contentions.
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These deficiencies persist despite PageMelding being allowed an opportunity to amend and a
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clear warning that it would not be allowed to amend a second time. From the present record,
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however, the extent to which PageMelding could cure these deficiencies using publicly available
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information is unclear. It further appears that the adequacy of certain disclosures may hinge on
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claim construction. The Court is also mindful that less drastic sanctions than dismissal remain
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practicable.
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This order concludes that, under the circumstances, a sanction of dismissal is
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unwarranted. For the specific deficiencies raised by ESPN, this order provides additional detail
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and guidance below. In some instances, PageMelding shall be strictly limited to the specific
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disclosures contained in its amended infringement contentions. In other instances, this order
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construes ESPN’s request as a motion to compel specific disclosures.
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A.

Identification of Infringing Products.

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ESPN first contends that PageMelding failed to heed the admonition that PageMelding
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must specifically identify each individual web page it accuses of infringement. PageMelding
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responds that doing so is impossible because ESPN’s website is updated to add and to remove

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web pages on an ongoing basis, and because ESPN forms different web pages for the same

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address. In its reply brief, ESPN abandons this objection, which shall be deemed withdrawn.

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ESPN simultaneously advances a more nuanced objection. The problem, ESPN also

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asserts, is that PageMelding is unwilling in its infringement contentions to specify something

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like “domain espn.go.com/watchespn and all subdomains thereof.” Instead, PageMelding refers

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to examples of alleged infringement that it has witnessed and hedges on the remainder, stating

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that “[a]ll known instances of infringement via the WatchESPN webpages . . . are pages within

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the domain http://espn.go.com/watchespn.” ESPN complains that PageMelding’s wording
leaves it free to accuse “any one of hundreds of web pages under the domain espn.go.com” based

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For the Northern District of California

United States District Court

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on claim charts that only refer to examples from within “espn.go.com/watchespn.”

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PageMelding’s use of example web pages and ambiguous wording in its infringement

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contentions is problematic, but it does not merit the extreme sanction of dismissal. Although

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ESPN attempts to disclaim its initial objections, the underlying practical issue remains:

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PageMelding cannot exhaustively identify the allegedly infringing web pages. For this reason,

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ESPN’s reliance on Oracle America, Inc. v. Google Inc., No. 10-3561, 2011 WL 4479305, at

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*1–2 (N.D. Cal. Sept. 26, 2011), is misplaced. There, Oracle failed to specifically identify

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several phone models running Android that it later contended were infringing. Those models

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actually existed at the time Oracle served its infringement contentions and could have been

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identified. Here, PageMelding cannot confidently identify particular web pages or subdomains

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because they may not exist from one day to the next. In its opposition, PageMelding does not

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address ESPN’s further concern that PageMelding could enlarge its infringement contentions to

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cover ‘all of ESPN’ based on the ambiguous wording.

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Given that PageMelding has already had the opportunity to amend, identification of

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infringing web pages by a few representative examples is inadequate. This order holds that

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PageMelding’s infringement contentions shall be limited to pages within the domain

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“espn.go.com/watchespn.” Given the particular circumstances of the alleged infringement, this

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limitation provides specificity sufficient to satisfy the local rule. ESPN also concedes that this
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limitation would be acceptable to it and that the limitation would encompass both WatchESPN

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and ESPN3, the two ESPN “products” identified in PageMelding’s infringement contentions.

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Contentions Based on WatchESPN vs. ESPN3.

ESPN contends that although PageMelding has accused two distinct “products” or

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“online services” of infringement — WatchESPN and ESPN3 — PageMelding’s claim charts

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rely only on activity from ESPN3. Specifically, PageMelding uses the same URLs to refer to

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infringement by both products.

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PageMelding responds that WatchESPN infringement occurs via co-branding, and
ESPN3 infringement occurs via the delivery of separate audio/video content. These alleged
infringements can exist separately or on the same web page, and PageMelding provides

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For the Northern District of California

United States District Court

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examples of alleged WatchESPN infringement that does not rely on ESPN3. In its reply brief,

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ESPN does not address PageMelding’s responses to its objection.

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Upon review, it appears that the infringement contention charts address separate
infringements by separate products. This order holds that they are sufficient under the local rule.

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C.

Identification of Infringing Hardware.

Discovery is this action is ongoing, and ESPN has not yet produced confidential technical

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information to PageMelding regarding ESPN’s network of servers. Nevertheless, according to

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ESPN some information about ESPN’s servers is publicly available, such as the domain names

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and IP addresses of those servers. ESPN faults PageMelding for not identifying the accused

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hardware by IP address and/or domain name, as well as for not addressing the roles of such

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identified servers in the alleged infringement.

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PageMelding responds that it cannot confidently identify the hardware at issue based on

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publicly available information. This is because an IP address can correspond to multiple items

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of hardware, such as when a router with a public IP address communicates with multiple internal

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pieces of hardware with private IP addresses. In its reply brief, ESPN lists the public

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information that it believes would be sufficient to identify the hardware at issue.

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Again, dismissing the action as a sanction would be unwarranted. PageMelding’s
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disclosures are inadequate, but it is not clear that PageMelding can supply the specificity

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requested by ESPN. PageMelding is therefore ORDERED to supplement its infringement

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contentions to identify the hardware associated with each claim limitation (c.f. Br. 11–12). For

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any “servers or groups of servers” that PageMelding accuses of infringement, PageMelding must

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identify: “(i) at least one associated IP address; (ii) the function that the server performs; (iii) the

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owner of the domains associated with the server; and, (iv) what PageMelding contends is the role

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of that server — if any — in the allegedly infringing activity” (c.f. Reply 7). If PageMelding is

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unable to supply information corresponding to one of the items in the above list because such

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information is both non-public and has not been produced in discovery, PageMelding shall so
state under oath in detail by an affiant with sufficient knowledge.

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For the Northern District of California

United States District Court

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D.

Identification of Infringing Software.

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In a prior motion challenging the sufficiency of PageMelding’s allegations, ESPN

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asserted that PageMelding could have used publicly-available “generated code” to identify how

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ESPN’s websites infringe (Dkt. No. 42 at 3–4). According to ESPN, by using code viewable

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with a F12 key, PageMelding could have identified “what content is purportedly customized,

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where such content appears within the web pages, and how such content is formed” (id. at 4

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(emphasis in original)). In its present motion, ESPN now asserts that PageMelding’s

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infringement contentions are still inadequate. ESPN contends that PageMelding’s use of

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“generated” code, rather than the original code “transmitted” by ESPN (viewable by means other

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than the F12 key), fails to show that ESPN’s conduct is infringing.

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PageMelding responds that giving ESPN what it asked for was enough and that it had no

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burden to investigate beyond what ESPN requested. PageMelding also insists that regardless of

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ESPN’s objections, PageMelding’s infringement contentions properly set forth its infringement

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theories.

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This order holds that PageMelding’s shall be limited to the “generated” code on which it

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now relies. Put differently, PageMelding shall be PRECLUDED from relying on other publicly-

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available code to prove infringement. To the extent that ESPN contends that the code identified

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by PageMelding is produced by non-parties, and that ESPN therefore cannot infringe, such a

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contention is properly resolved on a motion for summary judgment or at trial.

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ESPN also contends that in “some instances” PageMelding has failed to identify any

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software associated with a claim limitation, but ESPN only provides a single example of this

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alleged deficiency. Regarding this specific example — software related to service requests —

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PageMelding is ORDERED to update its infringement contentions to identify what a “service

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request” is, what receives it, and how it is relayed (c.f. Br. 11, 13). As before, if PageMelding is

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unable to identify specific software associated with its allegations because the software and/or

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code is both non-public and has not been produced in discovery, PageMelding shall so state

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For the Northern District of California

United States District Court

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under oath in detail by an affiant with sufficient knowledge.
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The Parties’ Requests for Attorney’s Fees and Costs.

ESPN’s motion for a sanction of dismissal is unsuccessful. PageMelding is not entitled

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to fees and costs for preparing its opposition, however. ESPN’s motion identifies several

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continuing deficiencies in PageMelding’s infringement contentions. Although ESPN’s opening

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brief relied in part on a spurious contention that PageMelding should exhaustively identify

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individual web pages, this was not ESPN’s primary basis for its motion, and ESPN abandoned

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this argument. Accordingly, PageMelding’s request for fees and costs incurred in responding to

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the motion for sanctions is DENIED.

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ESPN contends that its objections to PageMelding’s infringement contentions

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demonstrate that “PageMelding had no objective basis to file this lawsuit to begin with” (Reply

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5). On this basis, ESPN asks for an award of attorney’s fees and costs associated with preparing

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its own motion for sanctions.

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ESPN’s “me too” request for fees and costs is not well-taken, especially given the denial

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of its motion for a sanction of dismissal. ESPN’s request for fees and costs is likewise DENIED.

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CONCLUSION

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ESPN’s motion for a sanction of dismissal and the parties’ cross motions for fees and
costs are DENIED without prejudice to a fresh look at the issue of sanctions at the end of trial or

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after summary judgment. PageMelding shall update its infringement contentions in accordance

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with the guidance provided by this order no later than JANUARY 11 AT NOON.

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IT IS SO ORDERED.

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Dated: January 4, 2013.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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