Uniloc USA, Inc. et al v. Apple Inc.

Filing 110

ORDER GRANTING MOTION TO STRIKE PLAINTIFF'S INFRINGEMENT CONTENTIONS (granting (76) Motion to Strike in case 3:18-cv-00363-WHA; granting (81) Motion to Strike in case 3:18-cv-00360-WHA; granting (76) Motion to Strike in case 3:18-cv-00365-WHA; granting (78) Motion to Strike in case 3:18-cv-00572-WHA). Signed by Judge Alsup. (whalc2, COURT STAFF) (Filed on 7/2/2018)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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For the Northern District of California

United States District Court

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UNILOC USA, INC.; and UNILOC
LUXEMBOURG, S.A.,
Plaintiffs,

Defendant.

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No. C 18-00360 WHA
No. C 18-00363 WHA
No. C 18-00365 WHA
No. C 18-00572 WHA
ORDER GRANTING MOTION
TO STRIKE PLAINTIFF’S
INFRINGEMENT
CONTENTIONS

v.
APPLE INC.,

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/

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INTRODUCTION

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In this patent infringement action, defendant moves to strike patent owner’s

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infringement contentions for failure to comply with Patent Local Rule 3-1. For the reasons

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stated below, defendant’s motion to strike is GRANTED.

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STATEMENT

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These patent disputes originated in the Eastern District of Texas in May 2017, when

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patent owner Uniloc filed the first two of multiple actions against defendant Apple. In August

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2017, the Eastern District of Texas consolidated these actions. In January 2018, the cases were

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transferred to our district. Six of the cases against Apple were reassigned to the undersigned

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judge. Four of the cases, now related, are relevant for the purposes of this order.1 These cases

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The case involving the ’422 patent was dismissed on June 28, 2018 (Case No. 18-cv-00359-WHA,
Dkt. No. 129).
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involve the following patents: 7,092,671 (’671 patent); 6,662,018 (’018 patent); 6,161,134

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(’134 patent); 6,446,127 (’127 patent); and 6,216,158 (’158 patent).

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On May 10, 2018, Uniloc served its disclosures of asserted claims and infringement

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contentions and infringement charts on Apple pursuant to Patent Local Rule 3-1 (see Dkt. No.

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81-2 ¶¶ 3–13).2

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On May 23, 2018, Apple moved to strike Uniloc’s infringement contentions and

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requested a partial stay of discovery. The motion was denied in part on May 30.3 Apple argues

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that Uniloc’s disclosures under PLR 3-1 are non-compliant. Specifically, Apple contends that

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Uniloc’s infringement contentions violate PLR 3-1 by (1) offering boilerplate recitation of
claim language, using improper cross-references, and mixing multiple different products and

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For the Northern District of California

United States District Court

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features into a single claim chart; (2) failing to identify the accused instrumentalities with

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specificity; (3) failing to adequately disclose Uniloc’s indirect infringement theory; and (4)

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failing to adequately disclose Uniloc’s doctrine of equivalents theory.

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Uniloc opposes Apple’s motion to strike, arguing that the infringement contentions for

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the ’158, ’671, and ’134 patents were adequately disclosed.4 Uniloc, however, effectively

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concedes that its disclosure for the ’127 patent was deficient (Dkt. No. 104 at 10–11).

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This order follows full briefing and oral argument.

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ANALYSIS

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1.

CLAIM CHART DEFICIENCIES.

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“[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.

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2d 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)). PLR 3-1(c) requires “[a] chart identifying specifically where and

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how each limitation of each asserted claim is found within each Accused Instrumentality,

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Docket numbers in this order refer to Case No. 18-cv-00360-WHA.

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Apple’s request for partial stay of discovery was denied on May 30, 2018 (Dkt. No. 87).

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Uniloc no longer asserts the ’018 patent against Apple (Dkt. No. 104 at 15).

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

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

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the claimed function.”

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Apple moves to strike Uniloc’s infringement contentions on all claims of the ’127, ’134,

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and ’158 patents and claims 5, 6, 13, and 14 of the ’671 patent. It argues that contentions for

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these claims are deficient by “offering only boilerplate recitation of the claim language,

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unexplained screenshots, and a brief statement about Apple’s products” as well as “baseless

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cross-references” (Dkt. No. 81 at 4). This order agrees. Uniloc’s infringement contentions “are

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largely comprised of generic marketing literature and screenshots of the type routinely rejected
by courts in this District.” Finjan, Inc. v. Proofpoint, Inc., No. C 13–05808 HSG, 2015 WL

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For the Northern District of California

United States District Court

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1517920, at *6 (N.D. Cal. Apr. 2, 2015) (Judge Haywood Gilliam, Jr.). Uniloc’s infringement

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contentions are thus insufficient under PLR 3-1(c).

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A.

’158 Patent.

Apple argues that Uniloc’s chart for the ’158 patent is self-contradictory and thus failed

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to provide reasonable notice as to Uniloc’s infringement theory (Dkt. No. 81 at 11). For

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example, Uniloc’s chart stated for the claim 1 preamble that “Apple provides the App store for

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downloading applications (services) from Apple servers. These applications include Apple TV

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Remote app, iMovie, etc.” (Dkt. No. 81-13 at 1) (emphasis added). This seemingly identified

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applications such as the Apple TV Remote app as the pertinent “service” Uniloc further

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repeatedly refered to the Apple TV Remote app as the “service” (see, e.g., Dkt. No. 81-13 at 4,

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6, 10). Uniloc next cryptically stated for the claim 1 preamble that “The Apple TV Remote app

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executing on the iPhone, controlling the media content playback on Apple TV from the iPhone”

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(Dkt. No. 81-13 at 2) (emphasis added). For the last step of claim 1, however, Uniloc then

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seemingly identified the Apple TV device (or the tvOS operating system) as the “service” (Dkt.

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No. 81-13 at 12).

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Uniloc now argues that the pertinent exemplar “service” is not the Apple TV Remote

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app, which it now purports exemplified “the program code for controlling the service,” but

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rather “the media content playback of Apple TV” (Dkt. No. 104 at 6). This flies in the face of
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the above. As such, Uniloc’s disclosure for the ’158 patent did not readily put Apple on notice

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of Uniloc’s infringement theories.

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B.

’134 Patent.

Apple contends that for the ’134 patent, Uniloc failed to show where and how the

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claims’ limitations are found in the accused products. This order agrees. Uniloc counters that

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the four-minute video cited in the chart “explains in detail” how the accused product works

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(Dkt. No. 81-11 at 8–9). This misses the mark. The cited video, which explains how the

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accused feature operates at a high level, did not by itself specify where and how Uniloc believes

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the infringing elements lie in the accused products. “[D]irecting Defendant to a video, without
describing the content of the video or explaining how the content of the video supports its

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For the Northern District of California

United States District Court

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infringement contention, is inadequate to satisfy Rule 3–1(c).” GN Resound A/S v. Callpod,

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Inc., No. C 11–04673 SBA, 2013 WL 1190651, at *4 (N.D. Cal. Mar. 21, 2013) (Judge Saundra

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Armstrong).

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C.

’671 Patent.

Apple argues that for claims 5, 6, 13 and 14 of the ’671 patent, Uniloc improperly made

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bare-bones cross-references to other claims involving different limitations. This order agrees.

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For example, claim 5 includes a “management program” limitation. Yet Uniloc merely cross-

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references claim 5 to claim 3, which does not involve the “management program” limitation.

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Uniloc raises in its opposition that the limitation is met by the “Contacts” application on the

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iPad, which is referenced (in passing in a video) in claim 1, which claim 2 depends on, which in

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turn claim 3 depends on (Dkt. No. 104 at 8). Uniloc asserts this limitation “should have been

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perfectly clear” (ibid.) Far from it. PLR 3-1 demands more than this.
FAILING TO IDENTIFY THE ACCUSED INSTRUMENTALITIES WITH SPECIFICITY.

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2.

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Apple contends that Uniloc failed to comply with PLR 3-1 by (1) improperly using a

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“representative” product to chart all accused products for each patent; (2) using open-ended

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language in its lists of accused products; and (3) offering inconsistent product identifications for

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certain patents (Dkt. No. 81 at 16–17).

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First, PLR 3-1(c) does not necessarily require a separate claim chart for each accused

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product. “[R]epresentative infringement contentions may suffice” when “supported by

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adequate analysis showing that the accused products share the same critical characteristics.”

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Network Protection Sciences, LLC v. Fortinet, Inc., No. C 12–01106 WHA, 2013 WL 5402089,

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at *3 (N.D. Cal. Sept. 26, 2013). Here, however, Uniloc merely asserts in a footnote for each

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claim chart that the dozens of accused products “operate in substantially the same manner with

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respect to the accused functionality” (see, e.g., Dkt. No. 81-4 at 1). This conclusory assertion is

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insufficient. “[I]n order to rely on a claim that one accused product represents another for

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purposes of Rule 3–1(c), a patentee must do more than state as much. A patentee must state
how.” Silicon Labs. Inc. v. Cresta Tech. Corp., No. C 14–03227 PSG, 2015 WL 846679, at *2

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For the Northern District of California

United States District Court

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(N.D. Cal. Feb. 25, 2015) (Judge Paul Grewal) (emphasis in original). Uniloc must explain how

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its laundry list of accused products operate in the same manner for infringement purposes.

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Second, each of Uniloc’s claim charts includes a section called “Accused Products,”

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which contains a list of categorical products (such as “Apple tablets”) followed by dozens of

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exemplar products (“e.g. iPad 9.7, iPad Air 2, . . . running on iOS 9 or later”). Apple argues

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that “Uniloc’s broad categorical identifications and improper use of open-ended language

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(“e.g.”) should be stricken, and Uniloc’s allegations should be limited to the products

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specifically identified” (Dkt. No. 81 at 17). This order agrees.

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Uniloc contends that the open-ended language is proper, as the list of accused products

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“will have to be updated to include later identified products, such as new Apple devices that are

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released after contentions are served” (Dkt. No. 104 at 12). Such use of strategic open-ended

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language is improper under PLR 3-1. Uniloc will be limited to the accused products actually

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listed in its infringement contentions. See Comcast Cable Commc’ns, LLC v. OpenTV, Inc., No.

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16–cv–06180 WHA, 2017 WL 2630088, at *4 (N.D. Cal. June 19, 2017). If Uniloc believes

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that products released by Apple in the future infringe, it may move for leave to amend its

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infringement contentions.

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Third, Apple argues that certain infringement charts offer inconsistent product

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identifications. This order agrees (as does Uniloc, it seems) (see Dkt. No. 104 at 12). Taking
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the ’158 patent for example, Uniloc’s cover statement identifies Apple’s MacBook laptop

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models but not any Apple TV model (Dkt. No. 81-12 at 2). The corresponding claim chart,

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however, identifies Apple TV models but not any Apple MacBook model (see generally Dkt.

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No. 81-13). To comply with PLR 3-1(b), Uniloc must provide consistent product

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identifications.

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3.

GENERIC INDIRECT INFRINGEMENT THEORIES.

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Apple argues that Uniloc gave only insufficient bare-bones recitation of indirect

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infringement under PLR 3-1(d), which requires disclosure for each claim “any direct

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infringement and a description of the acts of the alleged indirect infringer that contribute to or
are inducing that direct infringement.” Uniloc does not dispute this. Rather, Uniloc insists that

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For the Northern District of California

United States District Court

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its complaints, which Uniloc alleges describe Apple’s acts of alleged indirect infringement in

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more detail, put Apple on adequate notice of its indirect infringement theory (Dkt. No. 104 at

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12–13).

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First, Uniloc failed to incorporate its complaints in its disclosures. What Apple

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allegedly knows from the complaints are irrelevant to the question of the sufficiency of Uniloc’s

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infringement contentions. See GeoVector Corp. v. Samsung Electronics Co. Ltd., No. C

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16–02463 WHO, 2017 WL 76950, at *5, 7 (N.D. Cal. Jan. 9, 2017) (Judge William Orrick).

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Second, Uniloc’s allegations of indirect infringement in the complaints are still deficient under

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PLR 3-1(d). The complaints include lists of websites — while most are generic (e.g.

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www.apple.com), a few are directed to Apple support for certain accused features (see, e.g.,

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Dkt. No. 24 at 4). Uniloc’s indirect infringement allegations, however, are still insufficient.

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“[C]ourts in this District have upheld indirect infringement contentions so long as the plaintiff

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discloses sufficient information to set forth its theory of infringement, identifies a particular

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product line that was sold to customers, and contends that the indirect infringement occurs when

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the customer uses the technology.” Blue Spike, LLC v. Adobe Sys., Inc., No. C 14–01647

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YGR(JSC), 2015 WL 335842, at *7 (N.D. Cal. Jan. 26, 2015) (Judge Jacqueline Corley). Here,

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Uniloc’s contentions did not adequately disclose sufficient information to set forth its

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infringement theory, as explained above. Nor did Uniloc identify the particular product lines
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Apple sold to customers that allegedly led to indirect infringement. PLR 3-1(d) requires more

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specificity.
DOCTRINE OF EQUIVALENTS PLACEHOLDER.

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Apple further argues that Uniloc’s infringement contentions did not adequately disclose

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the asserted theory of infringement under the doctrine of equivalents under PLR 3-1(e) (Dkt.

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No. 81 at 18). “It is improper to assert the doctrine of equivalents with generic ‘placeholder’

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language on the hope that future discovery might support such an assertion.” Finjan, Inc. v.

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Proofpoint, Inc., No. C 13–05808 HSG, 2015 WL 1517920, at *10 (N.D. Cal. Apr. 2, 2015).

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Uniloc’s contentions merely stated that Uniloc “may . . . revise these contentions to
identify an element as present under the doctrine of equivalents” based on the Court’s claim

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For the Northern District of California

United States District Court

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construction or subsequent discovery (see, e.g., Dkt. No. 81-5 at 3). Contrary to Uniloc’s

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protests, this is clearly an impermissible placeholder. If future claim construction or discovery

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prompts a basis for a doctrine of equivalents claim, Uniloc may move to amend its infringement

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contentions.

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PREJUDICE.

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Apple argues that Uniloc’s infringement contentions should be stricken with prejudice.

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Apple contends that it is prejudiced by Uniloc’s non-compliant contentions particularly with

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respect to the ’127 and ’158 patents because Uniloc and Apple have chosen claims from those

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patents, respectively, for the early summary judgment motion procedure. Allowing Uniloc to

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amend its contentions and thus introduce new infringement theories and accused products well

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into, and potentially after, the early summary judgment procedure prejudices Apple.

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Nevertheless, Apple is in its best position to know how its own products work and to

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explain why they do not infringe. Although knowing Uniloc’s infringement theory would be of

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material assistance, that information is not essential if non-infringement is clear-cut. Again,

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Apple has long known how its own products work and has long been able to lay the claims

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alongside them and, using conventional claim construction, explain why they don’t infringe. As

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such, Apple has exaggerated the degree of prejudice. Striking Uniloc’s infringement

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contentions with prejudice is thus unwarranted, at least at this stage.
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CONCLUSION

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For the foregoing reasons, Apple’s motion to strike is GRANTED. As stated at oral

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argument, Uniloc must serve amended infringement contentions as stated herein by JULY 27 AT

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NOON.

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upon showing good cause, allegedly infringing newly released Apple products or a viable

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doctrine of equivalents claim). Uniloc must set forth its best infringement contentions.

Further leave to amend infringement contentions will not be granted (except to add,

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IT IS SO ORDERED.

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Dated: July 2, 2018.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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