Bradley v. Applied Marine Systems LLC

Filing 45

ORDER DENYING DEFENDANTS MOTION FOR PROTECTIVE ORDER AND GRANTING PLAINTIFFS MOTION TO COMPEL. Signed by Magistrate Judge Jacqueline Scott Corley on 5/7/2014. (ahm, COURT STAFF) (Filed on 5/7/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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REASON BRADLEY,

Case No. 13-cv-03941-JSC

Plaintiff,
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v.
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APPLIED MARINE SYSTEMS LLC,

ORDER DENYING DEFENDANT’S
MOTION FOR PROTECTIVE ORDER
AND GRANTING PLAINTIFF’S
MOTION TO COMPEL
Re: Dkt. No. 41

Defendant.

United States District Court
Northern District of California

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Plaintiff Reason Bradley (“Bradley”) filed this action for patent infringement and unfair

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competition against Defendant Applied Marine Systems LLC (“AMS”). Plaintiff alleges that

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Defendant’s solar mounts, including the Uni-Mount and Hydrographic Survey Sonar Mount,

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infringe Bradley’s 8,094,520 patent (“the ’520 Patent”). The ’520 Patent “generally relates to a

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sonar mount for use with a boat or ship, which allows repeatable, accurate and precise alignment

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of a sonar head to a boat.” (Dkt. No. 1 at ¶¶ 10-11.)

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Now pending before the Court is a joint discovery letter concerning Plaintiff’s requests for

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infringement-related discovery. (Dkt. No. 41.) Defendant seeks a protective order against further

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discovery until Plaintiff provides infringement contentions (“ICs”) that comply with the Patent

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Local Rules, while Plaintiff asks the Court to find his ICs adequate and to compel Defendant to

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comply with its discovery obligations. Upon careful consideration of the record of the case, the

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Court concludes that oral argument is unnecessary, see Civ. L. R. 7-1(b), and DENIES

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Defendant’s motion for a protective order and GRANTS Plaintiff’s motion for an order

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compelling discovery.

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LEGAL STANDARD
Local Rule 3–1 requires, in pertinent part:
[A] party claiming patent infringement shall serve on all parties a

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United States District Court
Northern District of California

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‘Disclosure of Asserted Claims and Infringement Contentions’ . . .
[which] shall contain the following information:
(a) Each claim of each patent in suit that is allegedly infringed by
each opposing party, including for each claim the applicable
statutory subsections of 35 U.S.C. § 271 asserted;
(b) Separately for each asserted claim, each accused apparatus,
product, device, process, method, act, or other instrumentality
(“Accused Instrumentality”) of each opposing party of which the
party is aware. This identification shall be as specific as possible.
Each product, device, and apparatus shall be identified by name or
model number, if known. Each method or process shall be identified
by name, if known, or by any product, device, or apparatus which,
when used, allegedly results in the practice of the claimed method or
process;
(c) A chart identifying specifically where each limitation of each
asserted claim is found within each Accused Instrumentality,
including for each limitation that such party contends is governed by
35 U.S.C. § 112(6), the identity of the structure(s), act(s), or
material(s) in the Accused Instrumentality that performs the claimed
function.
(d) For each claim which is alleged to have been indirectly
infringed, an identification of any direct infringement and a
description of the acts of the alleged indirect infringer that
contribute to or are inducing that direct infringement. Insofar as
alleged direct infringement is based on joint acts of multiple parties,
the role of each such party in the direct infringement must be
described.
(e) Whether each limitation of each asserted claim is alleged to be
literally present or present under the doctrine of equivalents in the
Accused Instrumentality[.]

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“The overriding principle of the Patent Local Rules is that they are designed [to] make

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the parties more efficient, to streamline the litigation process, and to articulate with specificity

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the claims and theory of a plaintiff’s infringement claims.” Bender v. Maxim Integrated Prods.,

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Inc., 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) (alteration in original) (internal citation

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omitted). Patent L.R. 3-1 is a discovery device that “takes the place of a series of interrogatories

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that defendants would likely have propounded had the patent local rules not provided for

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streamlined discovery.” Network Caching Tech., LLC v. Novell, Inc., 2002 WL 32126128, at *4

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(N.D. Cal. Aug. 13, 2002); see Bender, 2010 WL 1135762, at *2. The rule is also intended to

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require the party claiming infringement “to crystallize its theories of the case early in the

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litigation and to adhere to those theories once disclosed.” Bender v. Advanced Micro Devices,
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Inc., 2010 WL 363341, at *1 (N.D. Cal. Feb. 1, 2010). That party is required to include in its

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infringement contentions all facts known to it, including those discovered in its pre-filing

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inquiry. See Renesas Tech. Corp. v. Nanya Tech. Corp., 2004 WL 2600466, at *2 (N.D. Cal.

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Nov. 10, 2004).
“[A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient

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

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chance of proving infringement.’” Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d

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1022, 1025 (N.D. Cal. 2010) (quoting View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d

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981, 986 (Fed. Cir. 2000)). While the patent rules do not “require the disclosure of specific
evidence nor do they require a plaintiff to prove its infringement case, . . . a patentee must

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Northern District of California

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nevertheless disclose what in each accused instrumentality it contends practices each and every

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limitation of each asserted claim to the extent appropriate information is reasonably available to

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it.” DCG Sys. v. Checkpoint Techs., LLC, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012)

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(internal quotation marks omitted); see also Shared Memory, 812 F. Supp. 2d at 1025 (stating

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that patent holder “must map specific elements of Defendants’ alleged infringing products onto

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the Plaintiff’s claim construction”).
DISCUSSION

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On February 24, 2014, Plaintiff served his Infringement Contentions on Defendant, and

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Defendant served its responses to Plaintiff’s First Request for Production (“RFP”), in which

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Defendant objected to each request in its entirety and refused to produce any documents on the

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grounds that the ICs failed to comply with the Patent Local Rules. Plaintiff provided Defendant

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with Amended ICs on March 13, 2014, and wrote Defendant to again request responses to his first

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RFP. Taking the position that the Amended ICs are still deficient, Defendant moves the Court for

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a protective order staying its discovery obligations until Plaintiff provides ICs that comply with

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L.R. 3-1(c) and (d).

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I.

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Plaintiff’s Claim Charts Comply with Patent L.R. 3-1(c)
Defendant asserts that Plaintiff’s claim chart fails to identify “specifically where” four

particular limitations are found in the accused instrumentality.
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Defendant first takes issue with the limitation regarding “a mechanism [that is operable to

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release said cross tube] to establish any of a selected Z direction and pitch adjustment,” asserting

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that the claim chart and Exhibits B and C “fail to identify ‘specifically where’ in the accused

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instrumentality there is any element that moves in the ‘Z direction’” or explain what “Z direction”

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is. (Dkt. No. 41 at 3.) Plaintiff responds that the claim chart “identified the specific structure that

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is the ‘clamp mechanism,’ identified the cross tube as the specific structure that moves in the Z

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direction, identified precisely which direction is the Z direction, and described in detail how the

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clamp mechanism operates in an infringing manner.” (Dkt. No. 41 at 6.) The Court agrees with

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Plaintiff. The IC for this limitation sufficiently describes the mechanism for releasing the cross
tube, how it operates to move the cross tube in the Z direction—meaning in/out of the basic clamp

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Northern District of California

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and pitch clamp—and how that operation is allegedly infringing.

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Next, Defendant argues that the limitation describing “said clamp mechanism [that] is

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operable to secure said cross tube to maintain said Z direction and/or pitch established adjustment

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during operation of said mount” does not identify “Z direction,” “pitch established adjustment,” or

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“where in the accused instrumentality there is a mechanism for providing a ‘pitch established

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adjustment during operation of said mount.’” (Dkt. No. 41 at 3.) The Court finds no deficiency in

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the claim chart’s description of this limitation. As discussed above with respect to the first

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limitation, the Court understands Plaintiff to assert that “Z direction” is the direction of the cross

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tube moving in/out of the basic clamp and pinch clamp. Defendant’s criticism of the “pitch

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established adjustment” portion of this limitation appears to be based on a misinterpretation of

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Plaintiff’s reading of the text. According to Plaintiff, rather than describing a mechanism for

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performing a “pitch established adjustment,” this language, when read in context with the first part

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of the chart entry discussed above, states that the clamp mechanism secures the cross tube during

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operation of the mount such that it maintains whatever Z direction or pitch is established by using

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the clamp mechanism to release the cross tube—as described in the first part of the chart entry.

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That is, the “pitch established adjustment” is shorthand for the pitch adjustment established in the

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first part by releasing the cross-tube. Plaintiff’s ICs as to these two limitations satisfy Rule 3-1,

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which requires a degree of specificity “sufficient to provide reasonable notice to the defendant
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why the plaintiff believes it has a ‘reasonable chance of proving infringement.’” Shared Memory

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Graphics LLC, 812 F. Supp. 2d at 1025 (N.D. Cal. 2010).

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The third alleged deficiency concerns the limitation describing the “Z tube coupling
mechanism [that] is operable to release said Z tube to establish any of a selected Z direction and

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yaw adjustment.” In particular, Defendants take issue with the reference to “yaw adjustment,”

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arguing that the chart does not mention “yaw adjustment” or identify where the mechanism for

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making the yaw adjustment is located on the accused instrumentality. Instead, the chart states “on

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information and belief, AMS’ sonar mount also includes a yaw adjustment mechanism—as AMS

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claims in its promotional materials—that infringes, literally or under the doctrine of equivalents.”

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(Dkt. No. 41 at 3 (quoting Dkt. No. 41-1 at 8-9).) Defendant faults Plaintiff for failing to provide

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Northern District of California

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the basis of that belief, including the “promotional materials” to which it refers.

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According to Plaintiff, this limitation requires only one of a Z direction or yaw adjustment,

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but not both. Defendant does not dispute that Plaintiff has given notice of how Defendant’s

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product meets the Z direction requirement of this limitation (other than the objections noted

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above). Thus, the IC gives Defendant adequate notice of the basis for Plaintiff’s infringement

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claim. The Court agrees, however, that Plaintiff has not properly given notice how the yaw

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adjustment, if present, is met. Plaintiff purports to “reserve his right” to amend his ICs to more

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particularly identify the yaw adjustment after discovery; however, Plaintiff possesses no such

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“right.” Patent Local Rule 3-6 allows a party to amend its infringement contentions only upon a

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showing of good cause. See MediaTek, Inc. v. Freescale Semiconductor, Inc., 2013 WL 2403644

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*2 (N.D. Cal. May 31, 2013). “The inquiry is two-fold: (1) whether the moving party was diligent

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in amending its contentions; and (2) whether the non-moving party would suffer prejudice if the

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motion to amend were granted.” Id. at *3. Thus, until Plaintiff is granted leave to amend, Plaintiff

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is not proceeding on a theory of infringement involving a yaw adjustment.

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Last, Defendant faults the final limitation in Plaintiff’s claim chart—“wherein said clamp

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mechanism maintains said established cross tube Z direction and/or pitch adjustment relative to

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said tilt mechanism during operation thereof”—on the ground that it simply parrots the claim

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language and refers to Exhibits B and C, neither of which, Defendant notes, refers to “Z direction”
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or “pitch adjustment.” (Dkt. No. 41 at 4.) As discussed above, the Court concludes that the claim

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chart adequately describes both of those terms for the purpose of Rule 3-1(c).

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II.

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Plaintiff Has Not Made an Indirect Infringement Claim
Plaintiff’s complaint includes one claim for relief for patent infringement—a claim for

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direct infringement. (Dkt. No. 1 at ¶ 16 (“AMS has been or is directly infringing the ’520

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Patent”).) It does not include a claim for inducement of infringement. “To allege inducement, the

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complaint must contain facts plausibly showing that defendant specifically intended its customers

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to infringe the asserted patent and knew that the customer’s acts constituted infringement.”

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Logic Devices, Inc. v. Apple, Inc., 2014 WL 491605, at *1 (N.D. Cal. Feb. 4, 2014) (internal
quotation marks and citation omitted). Plaintiff’s complaint does not remotely allege that

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Northern District of California

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Defendant specifically intended its customers to infringe with the knowledge that the customer’s

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acts constituted infringement.

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Despite not making a claim for inducement, Plaintiff’s Amended L.R. 3-1 Disclosure
states:
AMS’ sonar mount has no non-infringing uses. As such, from the time that AMS learned
of the ’520 Patent onward, by selling the infringing sonar mount, AMS not only directly
infringed the ’520 Patent but also induced its customers who used the infringing AMS
sonar mount within the United States to infringe the ’520 Patent.
(Dkt. No. 41-1 at 4.) In his claim chart, Plaintiff states that “AMS’ customers that use AMS’
sonar mount in the United States are also direct infringers of this Claim 1 and, to the extent AMS
was aware of the 520 Patent at the time they sold the infringing mount, AMS induces that
infringement.” (Dkt. No. 41-1 at 6.) As the Complaint does not include a claim for inducement,
these statements are superfluous.
CONCLUSION
As Plaintiff’s infringement contentions satisfy Rule 3-1, as clarified by this Order, the
Court DENIES Defendant’s motion for a protective order staying discovery and GRANTS
Plaintiff’s motion to compel discovery. The Court will hold a further Case Management
Conference on May 22, 2014, at 1:30 pm, which counsel must attend in person. A joint case
management conference shall be filed seven days prior to the conference.
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IT IS SO ORDERED.
Dated: May 7, 2014
______________________________________
JACQUELINE SCOTT CORLEY
United States Magistrate Judge

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United States District Court
Northern District of California

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