Bluestone Innovations, LLC v. LG Electronics, Inc. et al

Filing 140

ORDER by Judge Elizabeth D. Laporte granting 130 Discovery Letter Brief (lrc, COURT STAFF) (Filed on 11/15/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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BLUESTONE INNOVATIONS LLC,

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Plaintiff,

United States District Court
For the Northern District of California

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No. C -13-01770 SI (EDL)
ORDER: RE DISCOVERY DISPUTE
REGARDING ADEQUACY OF
“REPRESENTATIVE” CLAIM CHARTS

v.
LG ELECTRONICS INC, et al.,
Defendants.

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Before the Court on referral is a dispute between Plaintiff Bluestone Innovations, LLC and

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Defendants LG Electronics, Inc., and LG Electronics U.S.A., Inc., (collectively “LGE”) regarding

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Plaintiff’s use of representative claim charts in its patent infringement suit about light emitting diode

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(“LED”) technology. (Dkt. 130.) Under Local Patent Rule 3-1, a party claiming patent

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infringement must disclose “[a] chart identifying specifically where each limitation of each asserted

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claim is found within each Accused Instrumentality.” Patent L.R. 3-1(c). The contentions must be

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sufficient to provide “reasonable notice to the defendant why the plaintiff believes it has a

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reasonable chance of proving infringement,” and “raise a reasonable inference that all accused

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products” infringe. Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025

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(N.D. Cal. 2010) (internal quotation marks omitted). Claim charts may, however, with adequate

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support, place accused products into representative categories. See, e.g., Bender v. Maxim

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Integrated Prods., Inc., Case No. 09-1152 SI, 2010 U.S. Dist. LEXIS 32115, at *7-*8 (N.D. Cal.

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2010). The party claiming infringement “bears the burden of explaining why its claim chart is

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representative of all accused products.” Digital Reg of Tex., LLC v. Adobe Sys., Inc., Case No. 12-

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1971 CW (KAW), 2013 U.S. Dist. LEXIS 23447, at *16 (N.D. Cal. Feb. 20, 2013).
LGE argues that Plaintiff has not demonstrated why the claim charts covering only four

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accused LGE products are sufficient to represent LGE’s other 196 accused products. Plaintiff

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counters that LGE’s request for additional information is untimely and that it may properly rely on

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representative claim charts because the four LGE products that it reverse engineered have common

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structural and chemical attributes with respect to infringement of the patent in suit. Plaintiff also

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relies on declarations that it submitted after losing a similar dispute about representative claim charts

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in the related case of Bluestone Innovations LLC v. Nichia Corp., 12-00059 SI (EDL) (Dkt. 339;

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345). Plaintiff asserts that the cost of reverse engineering every accused LGE product would exceed

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$1,000,000.

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Plaintiff has not met its burden of showing that its limited claim charts adequately represent

United States District Court
For the Northern District of California

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all the accused LGE products. In its infringement contentions, Plaintiff merely asserts that the

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structures and features identified in the representative claim charts are commonly present in each of

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the accused products. (Dkt. 130-1 at 5.) Plaintiff does not provide any real support for this

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assertion, even in the face of the district court’s order rejecting a similar assertion as insufficient to

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justify Plaintiff’s use of representative claim charts in Nichia. See Case No. 12-00059 SI (Dkt. 339).

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Further, Plaintiff’s reliance on the declarations that it submitted in response to the court order in

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Nichia is unavailing because those declarations addressed Nichia’s accused products, not LGE’s

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accused products. The two Defendants are not similarly situated insofar as Nichia supplies LED

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components, while LGE incorporates LED components from a variety of suppliers into its accused

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products. Finally, LGE did not delay unreasonably in raising this issue, and Plaintiff has not

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identified how it is prejudiced by the timing of the Joint Letter Brief.

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Plaintiff has not justified its refusal to show that the limited investigation that it did with

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respect to only two percent of the products that it has chosen to accuse of infringement reasonably

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applies to the other ninety-eight percent of accused products. Its truncated approach to its disclosure

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obligations frustrates the purpose of requiring claim charts by not giving adequate notice to the

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accused infringer and failing to “crystallize [its] theories of the case early in the litigation.” Atmel

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Corp. v. Information Storage Devices, Inc., Case No. 95-1987 FMS, 1998 U.S. Dist. LEXIS 17564,

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at *7 (N.D. Cal. Nov. 4, 1998). While the degree of detail required should be guided by the

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touchstones of reasonableness and proportionality, and will not necessarily require any further
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reverse engineering (especially of all the accused products), Plaintiff must provide evidence to show

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that the charted products are actually representative. Accordingly, Plaintiff must show by expert

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declarations or other reliable means no later than December 4, 2013, why its claim charts are

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representative.

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IT IS SO ORDERED.
Dated: November 14, 2013
ELIZABETH D. LAPORTE
United States Magistrate Judge

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United States District Court
For the Northern District of California

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