TPK Touch Solutions, Inc v. Wintek Electro-Optics Corportation et al

Filing 70

STIPULATION AND ORDER re 69 STIPULATION WITH PROPOSED ORDER Granting Plaintiff TPK Touch Solutions, Inc.'s Request to Amend P.L.R. 3-1 Infringement Contentions filed by TPK Touch Solutions, Inc. Signed by Judge Jon S. Tigar on February 18, 2014. (wsn, COURT STAFF) (Filed on 2/18/2014)

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Bijal V. Vakil (Cal. Bar No. 192878)
[e-mail]
Shamita D. Etienne-Cummings (Cal. Bar No. 202090)
[e-mail]
Kao-Yu Hsu (Cal. Bar No. 264997)
[e-mail]
WHITE & CASE LLP
5 Palo Alto Square, 9th Floor
3000 El Camino Real
Palo Alto, CA 94306
Telephone: [phone]
Facsimile: 650.213.8158

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SILI CON VA LL EY

ATTO RNEY S AT LAW

W HITE & C ASE LLP

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Attorneys for Plaintiff
TPK Touch Solutions, Inc.
Scott R. Mosko (State Bar No. 106070)
[e-mail]
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Stanford Research Park
3300 Hillview Avenue
Palo Alto, California 94304-1203
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendants
Wintek Electro-Optics Corporation and
Wintek Corporation
UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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TPK TOUCH SOLUTIONS, INC.
Plaintiff,

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vs.
WINTEK ELECTRO-OPTICS CORPORATION AND

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WINTEK CORPORATION.
Defendants.

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CIVIL CASE NO.: 3:13-CV-02218-JST
STIPULATION AND [PROPOSED
ORDER] GRANTING PLAINTIFF TPK
TOUCH SOLUTIONS, INC.’S
REQUEST TO AMEND P.L.R. 3-1
INFRINGEMENT CONTENTIONS

STIPULATION REGARDING TPK’S REQUEST TO AMEND P.L.R. 3-1
INFRINGEMENT CONTENTIONS-3:13-CV-02218-JST

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WHEREAS, Plaintiff Touch Solutions, Inc. (“TPK”) served its P.L.R. 3-1 infringement
contentions on January 2, 2014 pursuant to the Court’s Scheduling Order (Dkt. No. 43);
WHEREAS, Defendants Wintek Corporation and Wintek Electro-Optics Corporation
(collectively “Wintek”) alleges that TPK’s infringement contentions, which in part reads:

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Each and every Wintek Single Sided Indium-Tin Oxide (“SITO”)
Capacitive Touchscreen [from] August 2007, including but not
limited to the Wintek SITO Touchscreens identified in Exhibits A - D,
the Wintek products identified in any of Wintek’s responses to TPK’s
discovery requests . . . and the Wintek Touchscreens sold to those
customers identified in the market reports that are publicly available,

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are deficient because:
a.

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SILI CON VA LL EY

ATTO RNEY S AT LAW

W HITE & C ASE LLP

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Contentions could be read to apply to literally hundreds of Wintek products;
b.

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c.

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TPK has violated Patent L.R. 3-1(c) by failing to provide “a chart identifying

specifically where each limitation for each asserted claim is found within each Accused
Instrumentality…”; and
d.

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TPK has violated Patent L.R. 3-1(b) by failing to sufficiently identify each

accused apparatus by name or model number,

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Without providing the details required by the Patent Local Rules, these

To the extent TPK is relying upon the four (4) claim charts it did attach to its

Infringement Contentions to support a claim that these charts represent the characteristics of the
hundreds of other products these Contentions identify, there are no bases provided to support any
argument that said claim charts are in fact, representative of any product other than the ones to
which they are tied;
WHEREAS, TPK disagrees with Wintek’s allegations and maintains that TPK’s P.L.R. 3-1
infringement contentions served on January 2, 2014 are sufficient at least because of the following
reasons:
a.

Without the benefits of discovery which has just begun and far from being

complete, especially in the situation where Wintek failed to produce any requested documents
regarding its accused products after TPK served its discovery requests in September 2013 and
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STIPULATION REGARDING TPK’S REQUEST TO AMEND P.L.R.
3-1 INFRINGEMENT CONTENTIONS-3:13-CV-02218-JST

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before TPK’s infringement contentions were due on January 2, 2014, TPK sufficiently identified
representative accused products by name or model number pursuant to Patent L.R. 3-1(b) such as
(i) Wintek SITO Touchscreens identified in Exhibits A - D, (ii) the model numbers of Wintek

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products identified in Wintek’s responses to TPK’s discovery requests such as Wintek’s First

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Supplemental Response to TPK’s First Set of Interrogatories served on December 11, 2013; and

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(iii) Wintek Touchscreens sold to those customers identified in the market reports that are publicly
available.

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b.

charts (i.e., Exhibits A-D) identifying specifically where each limitation for each asserted claim is
found within the exemplary and representative accused products; and

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SILI CON VA LL EY

ATTO RNEY S AT LAW

W HITE & C ASE LLP

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Pursuant to Patent L.R. 3-1(c), TPK has sufficiently provided four claim

c.

Neither Patent L.R. 3-1(c) nor caselaw requires TPK provide claim charts

for each accused product. The four exemplary claim charts attached to TPK’s contentions are
representative for other accused products because through these claim charts TPK has shown that
the accused Wintek Touchscreens used in two different end products in fact implement the same or
substantially similar design or manufacturing process that reads on the asserted claims. TPK also
relies on other evidence in the contentions such as the market reports to show that Wintek provides
the accused SITO Touchscreens to various customers with a structure similar to the two products
analyzed in TPK’s claim charts. TPK thus has good reason to believe that other Wintek accused
products similarly infringe the asserted claims; and

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WHEREAS, TPK and Wintek conferred on January 31, 2014 and agreed that, in order not

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to burden the Court, the parties will stipulate to allow TPK to amend its P.L.R. 3-1 infringement

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contentions.

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IT IS HEREBY STIPULATED AND AGREED, by and between Plaintiff TPK and

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Defendant Wintek, subject to the Court’s approval, that TPK should and will amend its P.L.R. 3-1

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infringement contentions, without waiving its rights to further supplement the infringement

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STIPULATION REGARDING TPK’S REQUEST TO AMEND P.L.R.
3-1 INFRINGEMENT CONTENTIONS-3:13-CV-02218-JST

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contentions in light of the information uncovered through discovery but only to address the issues
stated above, by February 18, 2014.

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Dated: February 13, 2014

Respectfully submitted,

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By:

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/s/ Bijal V. Vakil
Bijal V. Vakil

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Attorneys for Plaintiff
TPK Touch Solutions, Inc.

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Dated: February 13, 2014

Respectfully submitted,

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By:
SILI CON VA LL EY

ATTO RNEY S AT LAW

W HITE & C ASE LLP

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/s/ Scott R. Mosko
Scott R. Mosko
Attorneys for Defendants
Wintek Electro-Optics Corporation and
Wintek Corporation

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I hereby attest that I have received authority from Scott Mosko to attach his e-signature to
this pleading and file it.
/s/ Bijal V. Vakil
Bijal V. Vakil

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STIPULATION REGARDING TPK’S REQUEST TO AMEND P.L.R.
3-1 INFRINGEMENT CONTENTIONS-3:13-CV-02218-JST

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[Proposed] ORDER
Upon good cause shown IT IS HEREBY ORDERED that Plaintiff TPK Touch Solutions
Inc.’s request to amend P.L.R. 3-1 infringement contentions to address Wintek’s alleged
deficiencies, as stated in the second WHEREAS clause in the above stipulation, by February 18,
2014 is GRANTED.

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Dated: February 18, 2014

By:
JON S. TIGAR
UNITED STATES DISTRICT JUDGE

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SILI CON VA LL EY

ATTO RNEY S AT LAW

W HITE & C ASE LLP

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STIPULATION REGARDING TPK’S REQUEST TO AMEND P.L.R.
3-1 INFRINGEMENT CONTENTIONS-3:13-CV-02218-JST