West v. Ultimate Metals Co. et al

Filing 75

Discovery Order re: 73 Discovery Letter Brief JOINT filed by Peora. Signed by Judge Maria-Elena James on 4/10/2014. (cdnS, COURT STAFF) (Filed on 4/10/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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TRENT WEST,

Case No. 13-cv-03651-WHO (MEJ)

Plaintiff,
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DISCOVERY ORDER

v.

Re: Dkt. No. 73

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ULTIMATE METALS CO., et al.,
Defendants.

United States District Court
Northern District of California

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On April 8, 2014, the parties filed a joint discovery dispute letter regarding Plaintiff Trent

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West’s Patent Local Rule 3-1 infringement contentions. Dkt. No. 73. The parties previously

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submitted this dispute to the Court on February 11 (Dkt. No. 66), but the Court found it was not

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ripe for resolution as Plaintiff had recently provided amended infringement contentions. Dkt. No.

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69. Instead, the Court ordered the parties to meet and confer in an attempt to resolve their dispute

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based on the amended contentions. In the current letter, Defendants Peora and Zenga Inc. contend

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that Plaintiff has refused to comply with the Court’s previous order and the patent local rules.

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They seek a protective order against further discovery (including Defendants’ invalidity

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contentions) until Plaintiff complies with the requirements of Patent Local Rule 3-1 to provide

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sufficient infringement contentions.

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In its February 12 Order, the Court advised Plaintiff that “[i]t is not enough for West to

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respond that the method is not found in the accused products; instead he must provide an

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identification of ‘specifically where each limitation of each asserted claim is found within each

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Accused Instrumentality.’” Dkt. No. 69 at 2. The Court also instructed that if there is more than

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one “viable way” for making the accused rings, Plaintiff’s reference to a “commercially viable

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way” does not meet the requirement of Rule 3-1 for an identification of “specifically where each

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limitation of each asserted claim is found within each Accused Instrumentality.” Id.
Defendants argue that Plaintiff’s infringement contentions provide only vague and

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unsupported assertions. Jt. Ltr. at 2. Rather than follow the Court’s previous order, Defendants

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argue that Plaintiff’s contentions mimic the language of the asserted claims without providing a

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description of the specific acts he alleges constitute infringement. Id. Defendants point to

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Plaintiff’s statement that the accused method is known as the “press and sinter” method that is

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“known in the industry,” without a description of the specific acts that method entails. Id.

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Defendants request that the Court order Plaintiff to provide all reasonable information that is

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available to him. Id.

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In response, Plaintiff argues that he has met his obligation under the patent local rules

United States District Court
Northern District of California

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because he has disclosed his infringement theory and disclosed all relevant information “to the

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extent appropriate.” Id. at 5. Plaintiff further argues that Rule 3-1 does not take into account

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offshore process patent infringers. Id. He cites to 35 U.S.C. § 295, which provides that a product

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shall be presumed to have been made from a process patented in the United States if “a substantial

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likelihood exists that the product was made by the patented process” and “the plaintiff has made a

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reasonable effort to determine the process actually used in the production of the product and was

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unable to so determine.” Plaintiff argues that he “anticipates” he will invoke § 295 because

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Defendants do not manufacture the rings – they are manufactured in China by non-party

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companies. Id.

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The patent local rules do not “require the disclosure of specific evidence nor do they

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require a plaintiff to prove its infringement case.” DCG Sys. v. Checkpoint Techs., LLC, 2012 WL

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1309161, at *2 (N.D. Cal. Apr. 16, 2012) (internal citation and quotations omitted). “But a

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patentee must nevertheless disclose what in each accused instrumentality it contends practices

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each and every limitation of each asserted claim to the extent appropriate information is

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reasonably available to it.” Id. The purpose of Rule 3-1 is be “nit picky, to require a plaintiff to

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crystalize its theory of the case and patent claims.” Intertrust Techs. Corp. v. Microsoft Corp.,

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2003 WL 23120174, at *3 (N.D. Cal. 2003); Atmel Corp. v. Info. Storage Devices, Inc., 1998 WL

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775115, at *2 (N.D. Cal. 1998) (Rule 3-1(c) is designed to “require parties to crystallize their
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theories of the case early in the litigation and to adhere to those theories once they have been

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disclosed.”). This requires that a plaintiff compare an accused product to its patents on a claim by

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claim, element by element basis for at least one of defendant’s products. Intertrust, 2003 WL

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23120174, at *2. To make such a comparison, “a plaintiff must put forth information so specific

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that either reverse engineering or its equivalent is required.” Id.; see also Implicit Networks, Inc.

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v. HewlettPackard Co., 2011 WL 3954809, at *3 (N.D. Cal. 2011).

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Here, it is not clear that Plaintiff’s infringement contentions provide all readily available
information. While Plaintiff states that he has provided “all relevant information to the extent

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appropriate,” it is not Plaintiff’s role to determine what information in his possession is

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appropriate to provide; instead, he must disclose all information in his possession that is

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United States District Court
Northern District of California

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reasonably available. DCG Sys., 2012 WL 1309161, at *2. For instance, if Plaintiff claims that

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all of Defendants’ rings listed in his infringement contentions “consist of at least 50 weight

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percent to less than 85 weight percent tungsten carbide,” and the actual weight percent tungsten

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carbide in each ring is information that is reasonably available to him, he must provide that

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information as part of his disclosures. Network Caching Tech. LLC v. Novell, Inc., 2002 WL

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32126128, at *5-6 (N.D. Cal Aug. 13, 2002) (requiring further detail where infringement

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contentions were “replete with vague discussions of claim terms” and merely “mimic[ked] the

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language of the claim”); Shared Memory Graphics LLC v. Apple, Inc., 812 F.Supp.2d 1022, 1026

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(N.D. Cal. 2010) (“vague contentions and conclusory statements” which invite defendants and the

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court to assume that a limitation exists fall short of providing a “meaningful description of its

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theories” under Patent L.R. 3-1).

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As another example, Plaintiff contends that “the method of making the accused rings [is]

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what is known in the industry the ‘press and sinter’ method and subsequently finishing by

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grinding, polishing, and/or attaching additional features, such as gemstones,” yet this provides no

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description of the specific acts that Plaintiff alleges constitute infringement. Plaintiff states that

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“press and sinter” is “known in the industry” but fails to say what “press and sinter” is actually

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known as. Thus, Plaintiff’s contentions do not provide the “nit picky” level of detail that the

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“reverse engineering or its equivalent” standard requires. Intertrust, 2003 WL 23120174, at *2-3;
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GN Resound A/S v. Callpod, Inc., 2013 WL 1190651, at *4 (N.D. Cal. Mar. 21, 2013).
As to Plaintiff’s 35 U.S.C. § 295 argument, the Court finds it premature at best. Rule 3-1

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only requires Plaintiff to disclose information that is reasonably available to him. This does not

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include information from Chinese manufactures that is not already in his possession. Regardless,

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Plaintiff contends he has determined the actual process use to make the accused product, namely,

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the “press and sinter method.” Thus, by his own reasoning, § 295 does not excuse him from

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compliance with Rule 3-1.

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Accordingly, Defendants’ request is GRANTED. Plaintiff shall have 21 days to amend his
contentions.
IT IS SO ORDERED.

United States District Court
Northern District of California

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Dated: April 10, 2014
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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