Brandywine Communications Technologies, LLC v. AT&T Corp. et al

Filing 197

ORDER by Judge Claudia Wilken CONSTRUING CLAIMS; GRANTING 149 MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS; DENYING 128 MOTION TO STRIKE INFRINGMENT CONTENTIONS. Plaintiff is required to E-FILE the amended document. (ndr, COURT STAFF) (Filed on 4/18/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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BRANDYWINE COMMUNICATIONS
TECHNOLOGIES, LLC,
Plaintiff,

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No. C 12-2494 CW

v.
AT&T CORP., et al.,
Defendants.
________________________________/

United States District Court
For the Northern District of California

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ORDER CONSTRUING
CLAIMS; GRANTING
MOTION FOR LEAVE
TO AMEND
INFRINGEMENT
CONTENTIONS;
DENYING MOTION TO
STRIKE INFRINGMENT
CONTENTIONS
(Docket Nos. 68,
128, 149)

Plaintiff Brandywine Communications Technologies, LLC brought

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this action against Defendants AT&T Corporation and SBC Internet

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Services, Inc. for patent infringement.

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meaning of sixteen claim terms in five of Brandywine’s patents:

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U.S. Patent Nos. 5,251,328 (‘328 patent), 5,812,537 (‘537 patent),

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6,970,501 (‘501 patent), 7,894,472 (‘472 patent), and 5,828,657

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(‘657 patent).

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oral argument, the Court construes the disputed terms as set forth

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below.

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leave to amend its infringement contentions and denies Defendants’

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motion to strike.

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The parties dispute the

After considering the parties’ submissions and

In addition, the Court grants Brandywine’s motion for

BACKGROUND
This case is one of over forty lawsuits that Brandywine has

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filed around the country over the past two years alleging

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“infringement of six patents that generally relate to networking

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protocols, techniques, and systems for use in the provision of

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1

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The parties represent that they do not dispute the meaning of any
claims in the sixth patent in suit, U.S. Patent No. 5,206,854.

Internet connectivity via digital subscriber line (DSL)

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technology.”

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Litig., 959 F. Supp. 2d 1377, 1378 (J.P.M.L. 2013).

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actions have been voluntarily dismissed pursuant to settlement

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agreements.

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cases to reach the claim construction stage.

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construction order regarding these patents was issued by a court

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in the Middle District of Florida in April 2013.

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Commc’ns Technologies, LLC v. CenturyTel Broadband Servs., LLC,

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United States District Court
For the Northern District of California

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Civil Case No. 12-0286, Docket No. 96 (M.D. Fla. April 17, 2013)

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(CenturyTel).2

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In re Brandywine Commc’ns Techs., LLC, Patent

Id.

Most of these

As a result, this is only the second of these
The first claim

Brandywine

The parties in this action originally filed their motions for

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claim construction in April and May 2013.

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were pending, however, Brandywine filed a motion for

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centralization of its various patent infringement actions with the

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Judicial Panel on Multidistrict Litigation.

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motion, this Court vacated the scheduled claim construction

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hearing and stayed the present action pending a decision by the

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Panel on whether to centralize these cases.

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Panel denied Brandywine’s motion.

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various actions were “being litigated in a manner that is likely

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to lead to their resolution, whether through settlement or other

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means, within a relatively short period of time” and thus

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concluded that “centralization of this litigation might hinder the

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orderly and efficient resolution of these cases.”

While those motions

In light of that

In August 2013, the

It noted that Brandywine’s

In re

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Brandywine has submitted a copy of the CenturyTel court’s
unpublished claim construction order as Exhibit F to the Declaration of
Lei Sun. See Docket No. 68-7.

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Brandywine Commc’ns Techs., LLC, Patent Litig., 959 F. Supp. 2d at

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1378.

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for claim construction in September 2013.

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This Court lifted the stay and heard the parties’ motions

Four months later, in January 2014, Brandywine served

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Defendants with supplemental infringement contentions.

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promptly moved to strike those supplemental infringement

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contentions on the grounds that Brandywine had failed to obtain

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leave of the Court, as required by this Court’s Local Rules.

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Brandywine moved for leave to amend its infringement contentions

United States District Court
For the Northern District of California

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shortly thereafter.

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Defendants

DISCUSSION
I.

Claim Construction

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A.

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The construction of a patent is a matter of law for the

Legal Standard

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Court.

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(1996).

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claims of a patent define the invention to which the patentee is

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entitled the right to exclude.’”

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1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,

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Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115

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(Fed. Cir. 2004)).

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Court first looks to the words of the claims.

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Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

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Generally, the court ascribes the words of a claim their ordinary

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and customary meaning.

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“the ordinary and customary meaning of a claim term is the meaning

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that the term would have to a person of ordinary skill in the art

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in question at the time of the invention, i.e., as of the

Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
“It is a ‘bedrock principle’ of patent law that ‘the

Phillips v. AWH Corp., 415 F.3d

Accordingly, in construing disputed terms, the

Id.

Vitronics Corp. v.

The Federal Circuit instructs that

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1

effective filing date of the patent application.”

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F.3d at 1313.

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assist in determining the meaning of a claim term.

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“Because claim terms are normally used consistently throughout the

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patent, the usage of a term in one claim can often illuminate the

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meaning of the same term in other claims.”

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Phillips, 415

Other claims of the patent in question can also
Id. at 1314.

Id.

The Federal Circuit also instructs that claims “must be read

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in view of the specification, of which they are a part.”

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1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,

Id. at

United States District Court
For the Northern District of California

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979 (Fed. Cir. 1995) (en banc)).

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description of the invention that is clear and complete enough to

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enable those of ordinary skill in the art to make and use it, and

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thus the specification is “always highly relevant” to the Court’s

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claim construction analysis.

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“Usually, [the specification] is dispositive; it is the single

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best guide to the meaning of a disputed term.”

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cases, the specification may reveal that the patentee has given a

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special definition to a claim term that differs from its ordinary

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meaning; in such cases, “the inventor’s lexicography controls.”

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Phillips, 415 F.3d at 1316.

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patentee’s intentional disclaimer or disavowal of claim scope.

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“In that instance as well, the inventor has dictated the correct

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claim scope, and the inventor’s intention, as expressed in the

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specification, is regarded as dispositive.”

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are not limited to the preferred embodiment described in the

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specification.

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775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc; plurality opinion).

The specification must contain a

Vitronics, 90 F.3d at 1582.

Id.

In some

The specification also may reveal the

Id.

However, claims

See SRI Int’l v. Matsushita Elec. Corp. of Am.,

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4

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While emphasizing the importance of intrinsic evidence in

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claim construction, the Federal Circuit has authorized courts to

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rely on extrinsic evidence, which consists of “all evidence

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external to the patent and prosecution history, including expert

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and inventor testimony, dictionaries, and learned treatises.”

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Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).

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While extrinsic evidence may be useful to the Court, it is less

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significant than intrinsic evidence in determining the legally

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operative meaning of claim language.

Phillips, 415 F.3d at 1317-

United States District Court
For the Northern District of California

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18; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858,

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862 (Fed. Cir. 2004).

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to lead to a reliable interpretation of claim language unless

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considered in the context of the intrinsic evidence.

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415 F.3d at 1319.

Furthermore, extrinsic evidence is unlikely

Phillips,

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B.

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When a signal is transmitted through a communications

‘328 Patent

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channel, its waveform or amplitude may be altered during the

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transmission process.

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as “distortions.”

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(4th ed. 1999) (defining a “distortion” as the “undesirable change

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in the waveform of a signal”).

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technique for compensating for distortion introduced in a portion

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of a communications channel.”

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Undesirable alterations are typically known

See generally Microsoft Computer Dictionary 146

The ‘328 patent discloses “a

‘328 patent col. 1:7-:10.

The parties dispute four of the ‘328 patent’s claim terms.

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Claim 2 illustrates the patent’s usage of two of these terms, both

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of which are highlighted in bold below:

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A method for use in a transceiver of a
communications system wherein a
communications channel through which a
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signal is transmitted introduces amplitude
distortion, said method comprising the
steps of
determining less than all of the amplitude
distortion introduced within said
communications channel in response to a
signal received from said communications
channel using apparatus [sic] designed to
determine less than all of the amplitude
distortion introduced within said
communications channel; and
predistorting a transmitted signal from said
transceiver in response to said determined
amplitude distortion.

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3
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‘328 patent col. 6:6-:18.

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United States District Court
For the Northern District of California

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15
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Claim 15 illustrates how the other two disputed terms are
used:
A method for use in a communications system
wherein a signal is transmitted from a
transmitter through a communications
channel to a receiver, said communications
channel including a plurality of serially
connected channel sections which introduce
amplitude distortion into a transmitted
signal including the section adjacent said
receiver, said method comprising the steps
of
receiving a training sequence including at
least one a priori known signal and
determining the amplitude distortion
introduced only in the communications
channel section adjacent said receiver in
response to said received training
sequence.

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‘328 patent col. 7:8-:21.

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3, 15, and 21 of the patent.

The disputed terms appear in claims 2,

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25
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27
28
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1.

1
2
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“Communications Channel Including a Plurality of
Serially Connected Channel Sections Which Introduce
Amplitude Distortion into a Transmitted Signal”
(Claims 3, 15)3

The parties dispute whether every section of the

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“communications channel” described in this term must introduce

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distortion into the transmitted signal.

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every “section” of the communications channel must introduce

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distortion because the subject of the verb “introduce” appears to

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be “sections” rather than “plurality.”

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argues that the term may describe any communications channel in

Defendants argue that

Brandywine, in contrast,

United States District Court
For the Northern District of California

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which “at least one” section introduces distortion.

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CenturyTel court adopted Defendants’ proposed construction.

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Decl., Ex. F, April 2013 CenturyTel Order, at 14 (holding that

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“the grammatical construction of the sentence forecloses the

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possibility that just one channel section can introduce amplitude

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distortion”).

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The
Sun

The Court finds that Defendants’ proposed construction is

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overly restrictive because it effectively construes the word

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“plurality” to mean “all” rather than simply “a large number,”

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which is its ordinary meaning.

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International Dictionary 1745 (Philip Babcok Gove ed. 1993).

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assuming that “sections” is the intended subject of “introduce,”

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as Defendants contend,

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distortion is still constrained by the word “plurality.”

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See Webster’s Third New
Even

the number of “sections” that introduce

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The term, “sections,” as it is used in this and other claims from
the ‘328 patent, is construed separately below.
4 While Defendants are correct that “plurality” is a singular
noun -- and, as such, cannot correctly be the subject of “introduce” -native English writers frequently treat collective nouns like
“plurality” as though they are plural. See Valerie Krishna, “The Syntax
of Error,” 1 J. Basic Writing 43, 44 (1975) (observing that collective
nouns are a common source of grammatical error).

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The Court therefore adopts Brandywine’s proposed construction

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for this claim term, which reads as follows: “communications

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channel including a plurality of serially connected channel

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sections, at least one of which introduces amplitude distortion

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into a transmitted signal.”

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2.

“Determining” claims (Claims 2, 15, 21)

The ‘328 patent specification discloses a method for

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“determining the distortion introduced within a portion of a

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communications channel” and then using that determination “to

United States District Court
For the Northern District of California

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predistort the signal transmitted by that transceiver to

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compensate for all or a part of the determined amplitude

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distortion.”

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claims use the term “determining” to describe the first part of

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this process, during which the level of amplitude distortion is

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initially determined.

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‘328 patent col. 2:9-:15.

Three of the patent’s

The parties dispute whether the “determining” steps can be

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performed by analyzing a signal that has traveled through only

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part of the communications channel, rather than the entire

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channel.

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the entire channel.

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invention described in the specification requires both the

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transmission and receipt of “known signals” (sometimes called a

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“training sequence”) through a given communications channel in

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order to determine the level of amplitude distortion introduced by

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that communications channel.

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that this description shows that the “determining” steps require

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an examination of a “training sequence” that has been transmitted

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through the entire communications channel.

Defendants contend that the signal must travel through
They note that a preferred embodiment of the

Id. col. 2:17-:20.

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Defendants argue

Two of the disputed

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claims, however, do not contain this limitation and Defendants

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have not identified anything in the prosecution history to suggest

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that the “determining” steps should be construed so narrowly.

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Moreover, several of the patent’s other claims disclose a specific

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apparatus that uses a “training sequence” to determine the

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amplitude distortion.

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the “determining” steps in the three disputed claims -- two of

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which do not refer specifically to any “training sequence” -- were

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not meant to be construed as narrowly as Defendants suggest.

United States District Court
For the Northern District of California

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See id. col. 8:14-:25.

This suggests that

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Thus, because Defendants’ proposed limitation is based on a

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preferred embodiment of the invention, their argument that the

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“determining” claims require a known signal to traverse the entire

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communications channel must be rejected.

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Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir.

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1985) (en banc; plurality opinion) (recognizing that preferred

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embodiments in the specification should not be used to limit claim

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language).

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in its claim construction order.

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See SRI Int’l v.

The CenturyTel court likewise rejected this argument
See CenturyTel Order 14-17.

The Court therefore adopts the following constructions of the
“determining” terms in claims 2, 15, and 21.

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5

Defendants note that Brandywine misapplied the doctrine of claim
differentiation when it raised this argument in its opening brief
because claim 19 is not dependent on any of the specific claims in
dispute here. Even if the doctrine is inapplicable here, however, the
underlying logic of Brandywine’s argument remains correct: the
inventor’s use of a more specific term -- “training sequence” -- in the
undisputed claims suggests that he deliberately omitted that term from
the disputed claims.
6 The Court rejects the alternative constructions proposed by
Defendants in their supplemental post-hearing brief because all of their
alternative constructions use a grammatical structure that is likely to
cause confusion.

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Claim 2: “determining less than all of the amplitude

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distortion introduced within said communications channel in

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response to a signal received from said communications channel” is

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construed as “determining less than all of the amplitude

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distortion introduced within said communications channel in

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response to a signal which was received from said communications

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channel and traveled through all or part of that communications

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channel.”

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Claim 15: “determining the amplitude distortion introduced

United States District Court
For the Northern District of California

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only in the communications channel section adjacent said receiver

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in response to said received training sequence” is construed as

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“determining the amplitude distortion introduced only in the

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communications channel section adjacent said receiver in response

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to said received training sequence, which traveled through all or

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part of that communications channel.”

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Claim 21: “determining the amplitude distortion introduced

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within only one of said communications channel sections in

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response to a signal received from said communications channel” is

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construed as “determining the amplitude distortion introduced

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within only one of said communications channel sections in

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response to a signal which was received from said communications

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channel and traveled through all or part of that communications

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channel.”

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3.

“Predistorting a Transmitted Signal from Said
Transceiver” (Claims 2, 21)

The parties’ disagreement concerning the meaning of the
“predistorting” terms has two parts.

First, they dispute whether

the “predistorting” step disclosed in claims 2 and 21 requires
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that the predistortion be based on the “inverse of the amplitude

2

distortion.”

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whether the “predistorting” steps in these claims must be

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performed by the same transceiver that performs the “determining”

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steps discussed above.

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Defs.’ Claim Constr. Brief 23.

Second, they dispute

Regarding the first dispute, Defendants argue that the

7

specification expressly requires that the “predistorting” steps be

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based on an “inverse of the amplitude distortion.”

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they cite language from the specification which states, “In

For support,

United States District Court
For the Northern District of California

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certain system applications, it is desirable to predistort the

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transmitted signal from transceiver 102 based on the exact inverse

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of the determined distortion characteristic.”

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5:1-:18 (emphasis added).

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is misplaced, however, because the sentence’s prefatory clause --

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“In certain applications” -- makes clear that it is only

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describing a preferred embodiment of the invention.

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added).

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proposed limitation into the “predistorting” steps.

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CenturyTel court reached the same conclusion.

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11-13.

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‘328 patent col.

Defendants’ reliance on this sentence

Id. (emphasis

The claims themselves do not incorporate Defendants’
The

CenturyTel Order

Regarding the parties’ second dispute, the Court finds that

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the “determining” and “predistorting” steps must both be performed

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by the same transceiver.

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construction because it refers only to one transceiver.

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discloses a “method for use in a transceiver” for “determining

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less than all of the amplitude distortion introduced” by a given

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communications channel.

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added).

The language of claim 2 supports this
Claim 2

‘328 patent col. 6:6-:11 (emphasis

The same claim discloses a method for “predistorting a
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1

transmitted signal from said transceiver in response to said

2

determined amplitude distortion.”

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added).

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single transceiver.

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United States District Court
For the Northern District of California

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Id. col. 6:16-:18 (emphasis

This suggests that the two steps are performed by a

This interpretation is consistent with the specification’s
“Summary of the Invention,” which states,
the present invention covers the notion of
determining the distortion introduced within a
portion of a communications channel between
two signal transceivers by processing the
received signal at a transceiver and then
using the results of this processing to
predistort the signal transmitted by that
transceiver to compensate for all or a part of
the determined amplitude distortion.

12

Id. col. 2:8-:15 (emphasis added).

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the “predistorting” step is performed by the same transceiver that

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performs the “determining” step.

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reached a different conclusion, it did not explain its reasoning.

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The Court therefore adopts the following construction, which

This language indicates that

Although the CenturyTel court

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omits Defendants’ proposed limitation and makes clear that the

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“predistorting” and “determining” steps are performed by the same

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transceiver: “adjusting a signal, to be transmitted from the same

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transceiver that determined the amplitude distortion, to

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compensate for amplitude distortion before the introduction of the

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amplitude distortion.”

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4.

“Section(s)” (Claims 15, 21)

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The parties dispute whether the term “section(s)” should be

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construed as “subscriber loops,” as Defendants contend, or given

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its plain and ordinary meaning, as Brandywine contends.

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CenturyTel court did not discuss this term in its claim

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construction order.
12

The

1

Because the patent claims clearly distinguish between

2

“section(s)” and “subscriber loops,” Defendants’ proposed

3

construction must be rejected.

4

specifically to a communications channel that “includes two

5

subscriber loops and the communications channel section adjacent

6

said apparatus is a subscriber loop.”

7

If “section” were construed to mean “subscriber loop,” as

8

Defendants have proposed, then this claim language would be

9

redundant.

United States District Court
For the Northern District of California

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Claim 6 of the patent refers

‘328 patent col. 6:44-:46.

The Court therefore finds that this term should be construed
according to its plain and ordinary meaning.

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C.

13

When a signal is transmitted over a communications channel,

‘537 Patent

14

an unwanted “echo” of that signal is sometimes transmitted back to

15

the sender.

16

and apparatus” intended to reduce these unwanted signals.

17

patent col 1:66.

18

used in this patent and the ‘657 patent, means “a reflected signal

19

that is transmitted by one receiver, reflected by something on the

20

transmission line, and then received by the same transceiver.”

21

The ‘537 patent discloses an “echo canceling method
‘537

The parties agree that the term “echo,” as it is

The parties dispute four of the ‘537 patent’s claim terms.

22

All four of these terms appear in claim 1 of the patent, which

23

reads as follows:

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26
27
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Data communications equipment apparatus
comprising:
an echo canceler for processing an echocorrupted signal to provide an echocanceled signal, wherein the echo canceler
has a set of tap coefficients, each tap
coefficient having an initial value
determined during a half-duplex portion of
a training sequence;
13

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5
6
7
8
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For the Northern District of California

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circuitry for detecting the presence of a
residual echo signal in the echo-canceled
signal during full-duplex transmission that
is subsequent to said half-duplex portion
of the training sequence; and
a processor, coupled to the circuitry, for
adjusting each initial value of each tap
coefficient by a fixed amount when the
detected residual echo signal during full
duplex transmission is greater than a
predetermined amount.
‘537 patent col. 7:40-:55.

The disputed claim terms also appear

in claims 2, 6, 7, 12, 13, and 19.
1.

“Fixed Amount” (Claims 1, 6, 12, 19)

Defendants contend that this term should be construed as
“predefined, non-variable amount.”

Brandywine, in contrast,

contends that it should be given its plain and ordinary meaning.
The Court finds that this term should be given its plain and
ordinary meaning because, as the CenturyTel court explained, the
term “does not have a technical meaning that would cause jury
confusion.”

CenturyTel Order 18; see also Phillips, 415 F.3d at

1314 (“In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of
commonly understood words.”).
2.

“Predetermined Amount” (Claims 1, 19)

Defendants contend that this term should be construed as
“threshold error level determined before training to indicate
incorrect training.”

Brandywine asserts that it should be given

its plain and ordinary meaning.

The CenturyTel court did not

discuss this term in its claim construction order.

28
14

1

Because this term does not have a technical meaning that is

2

likely to cause confusion, the Court finds that this term should

3

be construed according to its plain and ordinary meaning.

4

Phillips, 415 F.3d at 1314.

5
6

3.

“Residual Echo” (Claims 1, 2, 6, 7, 12, 13)

Defendants contend that the term should be construed as

7

“uncanceled echo resulting from a non-linear condition during

8

half-duplex training not present during full-duplex training”

9

while Brandywine contends that it should be construed as “portion
7

United States District Court
For the Northern District of California

10

of an echo that remains after filtering.”

11

did not discuss this term in its claim construction order.

12

The CenturyTel court

Defendants’ proposed construction would improperly limit the

13

meaning of the disputed term by requiring that the residual echo

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result from “a non-linear condition.”

15

any compelling reasons to impose such a limitation here.

16

Furthermore, Defendants’ proposed construction would add confusing

17

and redundant language to the disputed claims by attempting to

18

describe the residual echo’s relationship to the training

19

sequences.

20

See, e.g., ‘328 patent col. 7:47-:50 (claiming “circuitry for

21

detecting the presence of a residual echo signal in the echo-

22

canceled signal during full-duplex transmission that is subsequent

23

to said half-duplex portion of the training sequence”).

Defendants have not offered

The disputed claims already contain similar language.

Thus,

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7

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26
27
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Brandywine originally proposed that this term be construed
according to its plain and ordinary meaning. At the hearing, however,
the Court noted that many jurors would not be familiar with the plain
and ordinary meaning of “residual echo” and directed the parties to
propose an alternative construction for this term. Brandywine thus
proposed a new construction in a supplemental brief that it submitted
jointly with Defendants after the hearing. The Court considers
Brandywine’s alternative proposed construction here.

15

1

because Defendants’ proposed construction is unjustifiably narrow

2

and likely to confuse the jury, it must be rejected.

3

Brandywine’s proposed construction, unlike Defendants’, does

4

not impose any improper limitations on the scope of the disputed

5

term.

6

because it uses the word “filtering,” which does not appear in any

7

of the patent’s other claims.

8

adopts a modified version of Brandywine’s proposal and construes

9

the disputed term as follows: “portion of an echo that remains

United States District Court
For the Northern District of California

10

It still has the potential to cause confusion, however,

To address this problem, the Court

after an echo-cancelation process.”

11

4.

12
13

“Adjusting the Initial Value of (Each One of the
Set of) Tap Coefficient (of the Echo Canceler) by a
Fixed Amount” (Claims 1, 12, 15, 19, 22)

Defendants contend that the “adjusting” process described in

14

these claims is “distinct from the continued adaptation of the

15

echo canceler.”

16

that this construction improperly limits the scope of the disputed

17

term.

18

this term should be construed according to its plain and ordinary

19

meaning.

20

Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010)).

21

Defs.’ Claim Constr. Resp. 31.

Brandywine argues

The CenturyTel court agreed with Brandywine and found that

CenturyTel Order 19 (citing Finjan, Inc. v. Secure

This Court rejects Defendants’ proposed construction for the

22

same reasons as the CenturyTel court.

23

cautioned against narrowing the scope of a claim when the

24

“additional negative limitation finds no anchor in the explicit

25

claim language.”

26

1314, 1322 (Fed. Cir. 2003).

27

negative limitation to a claim unless it finds an “express

28

disclaimer or independent lexicography in the written description

The Federal Circuit has

Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
A court, therefore, should not add a

16

1

[of the invention] that would justify adding that negative

2

limitation.”

3

such justification here.

4

specification stating that the process of adaptive adjustment is

5

costly and difficult to implement.

6

(“Full-duplex training of the echo canceler, while theoretically

7

possible, is not practical from a price/performance viewpoint in

8

the design of data communications equipment.”).

9

language does not rise to the level of an “express disclaimer” and

Id. at 1323.

Defendants have not identified any

Instead, they point to a sentence in the

See ‘537 patent col. 3:16-:20

This broad

United States District Court
For the Northern District of California

10

therefore does not support the limitation Defendants seek to

11

impose.

12

language in the patent specification suggesting that the invention

13

is capable of adaptive adjustment.

14

inventive concept is also applicable to an echo canceler that

15

adapts in the data phase, since, typically, the echo canceler

16

adapts too slowly to the changes in the echo signal.”).

17

Defendants’ proposed construction must be rejected.

18

Indeed, this limitation would conflict with other

See id. col. 7:33-:36 (“[T]he

Thus,

The Court finds that this term should be construed according

19

to its plain and ordinary meaning.

20

understanding of the plain and ordinary meaning of this term,

21

however, the Court adopts the parties’ agreed upon definition of

22

“tap coefficients”: “settings that define the operating

23

characteristics of the echo canceler.”

To facilitate the jury’s

24

D.

25

Like the ‘537 patent, the ‘657 patent also relates to echo

‘657 Patent

26

cancellation technology.

27

from this patent: namely, “pilot signal,” which appears in claims

The parties dispute only one claim term

28
17

1

1, 3, 4, 5, and 6.

2

the patent:

3

Data communications equipment apparatus
comprising:
an echo canceler that is trained during an
echo-canceler training phase of a half
duplex training sequence with a far-end
data communications equipment while the
communication channel is operating in a
linear mode; and
a filter that filters a received signal during
the echo-canceler training phase to remove
a pilot signal transmitted by the far-end
data communications equipment before
application of the received signal to the
echo canceler to train the echo canceler on
an echo signal component thereof.

4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12

Claim 1 illustrates how the term is used in

‘657 patent col. 8:8-:21.
The parties here dispute whether this “pilot signal”8 must

13

cause “linear operation of the communications channel.”

14

Claim Const. Brief 16.

15

required by the specification, which states, “This pilot tone is

16

of a high enough signal level to cause the above-mentioned

17

compander to achieve its linear range.”

18

Brandywine argues that the term should be construed as “a signal

19

wave transmitted over the system to indicate control or its

20

characteristics.”

21

proposed construction, finding that Brandywine’s proposed

Defs.’

Defendants contend that this limitation is

‘657 patent col. 2:7-:9.

The CenturyTel court rejected Defendants’

22
23
24
25
26
27
28

8

According to the General Service Administration’s (GSA) Glossary
of Telecommunications Terms, a pilot signal is a “signal, usually a
single frequency, transmitted over a communications system for
supervisory, control, equalization, continuity, synchronization, or
reference purposes.” GSA, Telecommunications: Glossary of
Telecommunications Terms (1996), http://www.its.bldrdoc.gov/fs-1037/fs1037c.htm (last visited April 14, 2014, 4:00 p.m.). Federal courts
routinely use the GSA Glossary to aid in their construction of patents
issued in the telecommunications field. See, e.g., Northpoint Tech.,
Ltd. v. MDS Am., Inc., 413 F.3d 1301, 1316 (Fed. Cir. 2005) (citing
glossary for claim construction purposes).

18

1

construction was closer to the term’s plain and ordinary meaning.

2

See CenturyTel Order 19-21.

3

This Court likewise rejects Defendants’ proposed
construction.

5

for support applies only to an embodiment of the invention which

6

is designed specifically to address situations where the compander

7

is “not linear in the signal range of the returned far-end echo

8

signal during the half-duplex training phase.”

9

While the pilot signal might cause “linear operation of the

10
United States District Court
For the Northern District of California

4

communication channel” in this embodiment, the claims do not

11

require that it does so in every embodiment of the invention.

12

Accordingly, Defendants’ proposed construction is too narrow and

13

must be rejected.

14

The “pilot tone” description that Defendants cite

Id. col. 4:3-:4.

The Court therefore adopts the following construction of

15

“pilot signal,” which is a modified version of Brandywine’s

16

proposed construction: “a signal transmitted over the system for

17

control or reference purposes.”

18

E.

19

When multiple communications providers share a common

‘501 Patent

20

communication channel -- for instance, when two telephone

21

companies share a single telephone wire -- those providers

22

typically use different ranges of the frequency spectrum to avoid

23

interfering with each other’s transmissions.

24

1:23-:41.

25

different frequency ranges is known as “spectrum management.”

26

‘501 patent relates generally to “spectrum management” technology.

27

Id.

‘501 patent col.

The process by which such providers select and use

28
19

The

1

The parties dispute four of the ‘501 patent’s claim terms.

2

Three of these disputed terms appear in claim 1 of the patent,

3

which reads as follows:

4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

An apparatus comprising:
a modem connected to a subscriber loop, the
modem being capable of operating in one or
more modes that are compatible with one or
more spectrum management classes defined by
a standard, each spectrum management class
defining power spectral density (PSD)
requirements, the modem being configured to
automatically select a mode that is
compatible with at least one of the
spectrum management classes;
a plurality of transceivers, each transceiver
corresponding to one of the modes, wherein
the modem electrically couples a
corresponding transceiver to the subscriber
loop upon selecting one of the modes;
a selector, the selector selecting one of the
transceivers to be electrically coupled to
the subscriber loop; and
an Automatic Class Measurement device in
communication with the selector, the
Automatic Class Measurement device being
configured to automatically select a mode
that is compatible with at least one of the
spectrum management classes and to cause
the selector to select one of the
transceivers to be electrically coupled to
the subscriber loop.
‘501 patent col. 11:65-12:18.
The fourth disputed claim term appears in claim 12, which is
quoted and discussed below.

Every claim of the ‘501 patent

contains one or more disputed terms.
1.

“A Plurality of Transceivers (Each Transceiver
Corresponding to One of the Modes)” (Claims 1, 5,
12)

Brandywine contends that the phrase “a plurality of
transceivers,” as it is used in this term, means “two or more

27
28
20

1

hardware and/or software transceivers.”9

2

“plurality of transceivers” means “two or more hardware

3

transceivers.”

4

construction because it found that a “transceiver” is a piece of

5

physical hardware.

6

to read additional possibilities into the claim language that

7

negate the clear language and intent of the claim.”).

8

similarly concludes that a “plurality of transceivers” means “two

9

or more hardware transceivers.”

United States District Court
For the Northern District of California

10

Defendants argue that

The CenturyTel court adopted Defendants’ proposed

CenturyTel Order 6-7 (“The Court is unwilling

This Court

Brandywine contends that the CenturyTel court’s reasoning is

11

flawed because its construction was based on a dictionary

12

definition of “transceiver,” rather than intrinsic evidence in the

13

patent and the prosecution history.

14

Newton, Newton’s Telecom Dictionary (11th ed. 1996)).

15

CenturyTel court’s reliance on the dictionary definition, however,

16

was entirely proper because it relied on the definition for a

17

limited purpose -- namely, to determine whether a transceiver

18

constituted a “physical device” -- and the definition it cited did

19

not conflict with any intrinsic evidence.

20

F.3d at 1584 n.6 (“Judges are free to consult [extrinsic evidence]

21

at any time in order to better understand the underlying

22

technology and may also rely on dictionary definitions when

23

construing claim terms, so long as the dictionary definition does

24

not contradict any definition found in or ascertained by a reading

25

of the patent documents.”).

See id. at 7 (citing Harry
The

Vitronics Corp., 90

The CenturyTel court also noted that,

26
9

27
28

After the claim construction hearing, Brandywine revised its
proposed construction of this term. Its revised proposal must be
rejected for the same reasons that its original proposal must be
rejected.

21

1

at the hearing in that case, “Plaintiff appeared to concede . . .

2

that a transceiver is a physical device.”

3

CenturyTel Order 7 n.3.

Accordingly, the Court adopts Defendants’ proposed

4

construction of the disputed term: “two or more hardware

5

transceivers available for connection, one at a time, to the

6

subscriber line.”

7

2.

8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

10

“Automatic Class Measurement Device” (Claims 1, 5,
12)

This term refers to a device that is part of a larger
apparatus claimed by the ‘501 patent.
scope of the device’s capabilities.

The parties dispute the

Brandywine asserts that the

device is “capable of performing tests to determine which
transceiver should be connected to a subscriber line.”
Claim Constr. Brief 23.

Pl.’s

Defendants contend that the device is

merely capable of “identifying allowable spectrum management
classes based on line tests.”

Defs.’ Claim Constr. Brief 6.

The

CenturyTel court did not discuss this term in its claim
construction order.
The plain language of the disputed claims illustrates that
Brandywine’s proposed construction is overbroad.

Claims 1, 5, and

12 all expressly state that the “Automatic Class Measurement
device” is “configured to automatically select a mode that is
compatible with at least one of the spectrum management classes.”
‘501 patent col. 12:16-:17, 12:55-:58, 14:16-:19 (emphasis added).
In light of this language, Brandywine’s proposed construction,

26
27
10

28

Both parties agreed to the second part of this construction,
beginning with the word “available.”

22

1

which omits any reference to “spectrum management classes,” must

2

be rejected.

3

Similarly, Defendants’ proposal to add the limitation, “based

4

on line tests,” to this term must also be rejected.

5

patent claims nor the specification requires that the “Automatic

6

Class Measurement device” rely exclusively on “line tests” to

7

identify spectrum management classes or select an appropriate

8

mode.

9

Neither the

The Court therefore adopts the following construction of this

United States District Court
For the Northern District of California

10

term: “a device capable of identifying allowable spectrum

11

management classes to determine which transceiver should be

12

connected to a subscriber line.”

13

3.

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

“Spectrum Management Classes (Defined by a
Standard)” (Claims 1-13)

The parties dispute whether or not the term “spectrum
management classes” is indefinite.

Defendants contend that the

term is indefinite because, when the ‘501 patent was issued, the
Federal Communications Commission (FCC) had not yet finalized its
“deployment rules for identifying the available Spectrum
Management Class or Classes.”

‘501 patent col. 6:31-:32.

Further, the patent itself acknowledges that these rules “even
once finalized, are always subject to change.”

Id. col. 6:32-:33.

Thus, Defendants argue, because these spectrum management rules
lacked a stable and unchanging definition at the time the patent
was issued, the claims that refer to “spectrum management classes”
must be found indefinite.

The CenturyTel court rejected this

argument and found that this term was not indefinite.
Order 4-6.
23

CenturyTel

1

The Federal Circuit has held that claims should only be

2

deemed indefinite if they are “insolubly ambiguous, and no

3

narrowing construction can properly be adopted.”

4

Engineering Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.

5

2001).

6

to make them operable or to sustain their validity.”

7

Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).

8
9

Exxon Research &

At the same time, “courts may not redraft claims, whether
Chef Am.,

Here, the claims that use the term “spectrum management
classes” are not indefinite.

The specification expressly outlines

United States District Court
For the Northern District of California

10

the purpose of these spectrum management classes, noting that they

11

would be defined by a set of standards designed to “minimiz[e] the

12

potential for cross-talk interference in twisted pair subscriber

13

loop cables that are shared by multiple service providers.”

14

patent col. 1:31-:34.

15

these standards would be based on criteria such as “(1) transmit

16

signal power spectral density (PSD) requirements, (2) transmit

17

signal average power requirements, (3) transverse balance

18

requirements, (4) deployment restrictions based upon the

19

subscriber loop characteristics, and (5) loop assignment

20

guidelines.”

21

management classes” is sufficient to illustrate the term’s meaning

22

to a person of ordinary skill in the art.

23

‘501

The specification further explains that

Id. col. 1:42-:47.

This discussion of “spectrum

While Defendants note that the FCC’s specific spectrum

24

management standards are subject to change, this variability in

25

the official standards does not render the patent claims

26

indefinite.

27

would not be considered indefinite merely because they refer to

28

state speed limits that are subject to change.

By way of analogy, the claims of a radar-gun patent

24

As noted above,

1

the ‘501 patent identifies a clear set of measurable criteria on

2

which the “spectrum management classes” are based and the claimed

3

invention purports to have the capacity to distinguish among those

4

classes.

5

based on the same criteria identified in the patent, the claims

6

referring to “spectrum management classes” are sufficiently

7

definite.

8
9

Thus, as long as the “spectrum management classes” are

Defendants’ efforts to analogize this case to Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005), are

United States District Court
For the Northern District of California

10

not persuasive.

11

term “aesthetically pleasing” was indefinite because aesthetic

12

value is not measurable.

13

‘501 patent identifies a specific set of measurable criteria,

14

outlined above, incorporated into the term “spectrum management

15

classes.”

16

In Datamize, the Federal Circuit held that the

Id. at 1347.

Here, in contrast, the

Accordingly, the Court rejects Defendants’ argument that

17

“spectrum management classes” is indefinite and adopts the

18

following construction of this term, which Brandywine proposed in

19

the parties’ post-hearing brief: “requirements for data

20

transmission equipment designed to minimize interference with

21

other nearby data transmitters.”

22
23
24
25
26
27
28

4.

“The Modem Electrically Couples” (Claim 12)

The parties dispute whether this term renders claim 12 of the
patent indefinite.

Claim 12 reads, in relevant part, as follows:

A system for communicating over a subscriber
loop, the system comprising:
a first modem located at a subscriber premise,
the first modem being capable of operating
in one or more modes that are compatible
with one or more spectrum management
classes defined by a standard, each
25

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

spectrum management class defining power
spectral density (PSD) requirements;
a second modem located at a central office,
the second modem being capable of operating
in one or more modes that are compatible
with one or more of the spectrum management
classes;
a subscriber loop electrically coupling the
first modem to the second modem wherein the
first and second modems cooperate with each
other to determine which of the spectrum
management classes are compatible with the
subscriber loop;
a plurality of transceivers, each transceiver
corresponding to one of the compatible
modes, wherein the modem electrically
couples a corresponding transceiver to the
subscriber loop upon selecting one of the
modes; . . . .
‘501 patent col. 13:25-14:14.

Defendants contend that this claim

is indefinite because it fails to identify whether the term “the
modem electrically couples” refers to the first or second modem
mentioned in this claim.

The CenturyTel court agreed and

concluded that “the meaning of this term is not ascertainable by
one of ordinary skill in the art and is thus indefinite.”
CenturyTel Order 9.
As noted above, claims should only be deemed indefinite if
they are “insolubly ambiguous.”
265 F.3d at 1375.

Exxon Research & Engineering Co.,

Brandywine contends that the disputed claim is

not “insolubly ambiguous” because it can simply be construed to
refer to each of the two modems mentioned earlier in the claim.
For support, it points to language from the prosecution history
suggesting that claim 12 -- which combined three previously
asserted claims -- was supposed to contain a preamble that read:
“The system of [another claim], wherein each of the first and
second modems further comprises . . . .”
2004 Claim Amendments, at 8.

Sun Decl., Ex. T, March

According to Brandywine, the patent
26

1

applicant “left off the preamble” in the process of amending these

2

claims.

3

CenturyTel court did not have the benefit of this aspect of the

4

prosecution history when it issued its claim construction order.

5

Pl.’s Claim Constr. Brief 28.

Brandywine notes that the

Brandywine’s analysis of the prosecution history does not

6

support its proposed construction because it does not explain why

7

the preamble was omitted and why it should now be read back into

8

the claim.

9

preamble was omitted due to error by the U.S. Patent and Trademark

Brandywine does not assert, for instance, that the

United States District Court
For the Northern District of California

10

Office (PTO).

11

350 F.3d 1348, 1354 (Fed. Cir. 2003) (holding that, in certain

12

circumstances, a “district court can act to correct an error in a

13

patent by interpretation of the patent where no certificate of

14

correction has been issued”).

15

made such an allegation, this Court would only be permitted to

16

correct the error if it was “evident from the face of the patent.”

17

Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed.

18

Cir. 2005).

19

that claim 12 is missing the omitted preamble that Defendants

20

cite; claim 12 has a preamble.

21

reincorporate that language into the claim, the Court finds that

22

claim 12 is indefinite.

23

See, e.g., Novo Indus., L.P. v. Micro Molds Corp.,

Further, even if Brandywine had

Here, it is not evident from the face of the patent

Because it would be improper to

Although Brandywine asserts that it is premature to rule on

24

indefiniteness at the claim construction stage, the Federal

25

Circuit has made clear that indefiniteness is a legal question

26

that district courts may decide prior to trial.

27

Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed.

28

Cir. 1998) (“A determination of claim indefiniteness is a legal
27

Personalized

1

conclusion that is drawn from the court’s performance of its duty

2

as the construer of patent claims.”).

3

district have recognized that “it is appropriate for [district

4

courts] to address indefiniteness issues at the claim construction

5

stage.”

6

938511, at *3 (N.D. Cal.).

7

factual disputes sufficient to preclude the Court from finding

8

that claim 12 indefinite at this stage.

9

United States District Court
For the Northern District of California

10

F.

Other courts in this

Eon Corp. IP Holdings LLC v. Aruba Networks Inc., 2014 WL
Brandywine has not identified any

‘472 Patent

The ‘472 patent, like the ‘501 patent, relates to spectrum

11

management technology.

12

specifications.

13

The two patents share nearly identical

The parties dispute three of the ‘472 patent’s claim terms.

14

All three disputed terms appear in claim 1, which reads as

15

follows:

16
17
18
19
20
21
22
23
24

A method comprising:
measuring subscriber loop characteristics;
identifying a first allowable class
corresponding to the measured subscriber
loop characteristics, where the allowable
class is chosen from a group of predefined
spectrum management classes;
selecting an operating transceiver from a
group of transceivers within a device,
where each transceiver is configured to
communicate in a respective at least one
[sic] of the predefined spectrum management
classes, and where the selected operating
transceiver is configured to communicate in
the first allowable class; and
enabling the operating transceiver.

25

‘472 patent col. 11:60-12:5.

26

claims 6, 8-11, 15, 17-19, and 22.

The disputed terms also appear in

27
28
28

1.

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

“(Enabling the / Selecting an) Operating
Transceiver (from a Group of Transceivers Within a
Device)” (Claims 1, 8)

The parties dispute whether the “enabling”/“selecting” steps
described by this term must be “automated.”

Defendants contend

that these steps must be automated because the patent’s title and
abstract both use the words “automatic” and “automatically” to
describe generally how the invention operates.
court rejected this argument.

11

The CenturyTel

See CenturyTel Order 11 (“Upon

consideration of the arguments presented, the Court finds that
Defendants’ proposed construction would require the Court to
inappropriately limit the words of the method steps more than
necessary.”).
This Court, too, rejects Defendants’ proposed construction of
these terms.

The use of the words “automatic” and “automatically”

in the title and abstract is not sufficient to justify the
“automated” limitation that Defendants propose.

These sections of

the patent describe the invention in general terms without
reference to the individual steps disclosed in the disputed
claims.
The language of claims 8 and 13 further suggests that
Defendants’ suggested limitation is improper.

Claim 8 discloses a

“computer-readable medium containing a program designed to perform
the steps of: . . . selecting an operating transceiver from the
group of transceivers . . .; and enabling the operating
transceiver.”

‘472 patent col. 12:28-:43.

11

See ‘472 patent, Title (“Method
selection and operation of a subscriber
(emphasis added)), Abstract (“The modem
operation that is compliant with one or
Classes.” (emphasis added)).

29

Claim 13, which is

and apparatus for automatic
line spectrum class technology”
automatically selects a mode of
more of the Spectrum Management

12

1

dependent on claim 8,

2

“program” is “further designed to perform the step of

3

automatically selecting, based on the measured characteristics,

4

one of the transceivers that is compatible with at least one of

5

the spectrum management classes.”

6

under the doctrine of claim differentiation, it would be improper

7

to construe claim 8 (the independent claim) as limited by the word

8

“automatically,” which appears in claim 13 (the dependent claim).

9

The Court therefore construes these terms according to their

discloses a process wherein the same

Id. col. 12:57-:61.

Thus,

13

United States District Court
For the Northern District of California

10

plain and ordinary meaning, without Defendants’ proposed addition.

11

It construes “enabling the operating transceiver” as “enabling the

12

operating hardware transceiver.”

13

“selecting an operating transceiver from a group of transceivers

14

within a device” as “selecting an operating hardware transceiver

15

from a group of transceivers within a device.”

16

2.

17
18
19

Similarly, it construes

14

“Measuring Subscriber Loop Characteristics” (Claims
1, 6)

The parties dispute whether this term requires that the
“measuring” step in claims 1 and 6 be performed by “analyzing a

20
21
12

22
23
24
25
26
27
28

Technically, claim 13 is dependent on claim 12, which is in turn
dependent on claim 8. This distinction is irrelevant since all of these
claims refer to the same computer “program.”
13
Defendants argue that, if these steps are not performed in an
“automated” manner, these claims would be invalid because they would not
be directed to patentable subject matter under 35 U.S.C. § 101. Because
the parties only addressed this issue cursorily in their claim
construction briefs, the Court reserves judgment on this question until
the parties have briefed the issue more fully.
14 Brandywine’s proposed constructions for these terms referred to
“software” transceivers. The Court has therefore added the word
“hardware” to these constructions to make clear that, as previously
explained, the word “transceiver” refers to a piece of physical hardware
in this context.

30

1

test signal.”

2

by an excerpt from the specification that states:

3

Defendants argue that this limitation is required

Measurement of loop reach may be accomplished
by transmitting from one end of the loop, such
as from the CO 2, a signal with a known
spectral content and measuring at the other
end, such as at the DEC, the level at various
frequencies across the frequency band of
interest.

4
5
6
7

‘472 patent col. 7:52-:63.

8

be construed as “determining subscriber loop characteristics.”

9

The CenturyTel court adopted Brandywine’s proposed construction.

United States District Court
For the Northern District of California

10
11

Brandywine argues that the term should

CenturyTel Order 9-10.
This Court finds that each party’s proposed construction is

12

inadequate here.

13

because the excerpt they cite for support is permissive rather

14

than mandatory and, as such, does not justify the limitation they

15

have proposed.

16

loop reach may be accomplished . . . .” (emphasis added)).

17

Because they fail to identify any other language from the patent

18

to support this limitation, their proposed construction must be

19

rejected.

20

Defendants’ proposed construction is not tenable

See ‘472 patent col. 7:52-:63 (“Measurement of

Brandywine’s proposed construction -- which replaces

21

“measuring” with “determining” -- must also be rejected.

22

Brandywine asserts that “measuring” and “determining” mean the

23

same thing, it has not adequately justified the need for this

24

substitution.

25

and the fact that the patent claims use “determining” and

26

“measuring” in different contexts suggests that the inventor may

27

have understood the two words to have different meanings in the

28

context of the patent.

Although

The word “measuring” is not complex or technical

31

1

Thus, because this term uses straightforward language, the

2

Court finds that “measuring subscriber loop characteristics”

3

should be construed according to its plain and ordinary meaning.

4

Neither party has presented compelling reasons for adopting a

5

different construction for this term.

6

3.

7

The parties’ dispute regarding this term mirrors their

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9

United States District Court
For the Northern District of California

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12
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17
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dispute regarding the same term from the ‘501 patent.

adopt the same construction for this term that it adopted for the
term “spectrum management classes” in the ‘501 patent:
“requirements for data transmission equipment designed to minimize
interference with other nearby data transmitters.”
II.

Brandywine’s Amended Infringement Contentions
A.

of good cause and by order of the Court.

(a) a claim construction by the Court
different from that proposed by the party
seeking amendment; (b) recent discovery of
material, prior art despite earlier diligent
search; and (c) recent discovery of nonpublic
information about the Accused Instrumentality
which was not discovered, despite diligent
efforts, before the service of the
Infringement Contentions.

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24

28

Patent L.R. 3–6.

Examples of good cause include

22

27

Legal Standard

A party may amend its infringement contentions upon a showing

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26

For the

reasons outlined above, see supra Section I.E.3, the Court will

20

25

“(Predefined) Spectrum Management Classes” (Claims
1, 8-11, 15, 17-19, 22)

Patent L.R. 3-6.

Patent Local Rule 3–6 “serves to balance the

parties’ rights to develop new information in discovery along with
the need for certainty in legal theories at the start of the
case.”

Apple, Inc. v. Samsung Elecs. Co., Ltd., 2012 WL 5632618,
32

1

at *2 (N.D. Cal.) (citing O2 Micro Int’l, Ltd. v. Monolithic Power

2

Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)).

3

The good cause inquiry considers first whether “the party

4

seeking leave to amend acted with diligence in promptly moving to

5

amend when new evidence [was] released.”

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1363.

7

question is whether the party ‘could have discovered [the new

8

information] earlier had it acted with the requisite diligence.’”

9

Apple, 2012 WL 5632618, at *6 (citing Google, Inc. v. Netlist,

O2 Micro, 467 F.3d at

“In considering the party’s diligence, the critical

United States District Court
For the Northern District of California

10

2010 WL 1838693, at *2 (N.D. Cal.)).

11

party to show diligence.

12

party was not diligent in amending its infringement contentions,

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it does not need to consider the question of prejudice to the non-

14

moving party.

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district court’s decision refusing leave to amend upon finding the

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moving party was not diligent, without considering the question of

17

prejudice to the non-moving party).

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was arguably not diligent, the court retains discretion to grant

19

leave to amend.

20

amend infringement contentions, even though court found plaintiff

21

failed to establish diligence, because of lack of prejudice to

22

defendant).

Id.

The burden is on the moving

If the court finds that the moving

See 02 Micro, 467 F.3d at 1368 (affirming the

However, even if the movant

Apple, 2012 WL 5632618, at *6 (granting leave to

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B.

24

Brandywine originally filed its infringement contentions in

Analysis

25

October 2012 and served its supplemental infringement contentions

26

on Defendants in January 2014, just over a week before the close

27

of fact discovery.

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flesh out a handful of theories set forth in its original

Its supplemental infringement contentions

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1

infringement contentions and add a new theory based on induced

2

infringement.

3

leave to amend its infringement contentions, it eventually filed a

4

motion for leave to amend in February 2014, soon after Defendants

5

filed their motion to strike the supplemental infringement

6

contentions.

7

Although Brandywine initially failed to move for

Brandywine contends that it served its supplemental

8

infringement contentions on Defendants at the earliest possible

9

opportunity and that its failure to move promptly for leave to

United States District Court
For the Northern District of California

10

amend was inadvertent.

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infringement contentions are based on information that it

12

discovered less than two weeks before it served its supplemental

13

contentions on Defendants.

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infringement theories were based on information that it obtained

15

from third-party depositions and 38,000 pages of documents that

16

Defendants produced in January 2014.

17

According to Brandywine, its supplemental

Specifically, it asserts, its amended

Because Brandywine’s supplemental infringement contentions

18

appear to be based at least in part on newly discovered

19

information, the Court finds that it acted diligently in serving

20

its amended infringement contentions in January 2014 and seeking

21

leave to amend shortly thereafter.

22

that Brandywine could have obtained this information sooner had it

23

acted with greater diligence during discovery, the record does not

24

support this argument.

25

subpoenas at a relatively early stage of discovery but was

26

ultimately delayed in taking depositions of the relevant third

27

parties because this action was stayed only a few days after those

28

subpoenas were issued.

Although Defendants contend

Brandywine served its third-party

34

1

In any event, even if Brandywine was arguably not diligent in

2

seeking to amend its infringement contentions, the Court may still

3

grant it leave to amend because Defendants have not suffered undue

4

prejudice here.

5

Brandywine’s supplemental contentions essentially expand on its

6

previous infringement contentions and do not add any new patent

7

claims or products.

8

Brandywine asserted -- the theory that Defendants induced

9

infringement by competitive local exchange carriers -- was

Apple, 2012 WL 5632618, at *5.

As noted above,

The only new infringement theory that

United States District Court
For the Northern District of California

10

subsequently abandoned because it was not raised or discussed in

11

Brandywine’s expert report.

12

amendments to its infringement contentions were limited in scope.

13

Furthermore, Brandywine proposed these amendments at a relatively

14

early stage in the case, well before Defendants’ expert reports

15

were due and eight months before trial was set to begin.

16

extent that Defendants needed additional time to take discovery or

17

otherwise respond to Brandywine’s proposed changes, they could

18

have sought a stipulation to amend the case management schedule,

19

as they had previously done when they required additional time for

20

discovery.

21

They did not do so and have not shown that they suffered prejudice

22

as a result of their inability to take additional discovery.

23

Accordingly, Brandywine is granted leave to file its supplemental

24

infringement contentions.

25

Hewlett-Packard Co., 2013 WL 5955548, at *2 (N.D. Cal.) (granting

26

motion for leave to amend infringement contentions where the

27

plaintiff’s “proposed amendments to its infringement contentions

28

do not add new patent claims or new products” and the defendants

Thus, Brandywine’s proposed

To the

See Docket No. 97, Stipulation to Amend Case Schedule.

See Linex Technologies, Inc. v.

35

1

had “sufficient time to review [the] amended infringement

2

contentions”).

3

CONCLUSION

4

For the reasons set forth above, the Court construes the

5

disputed claim language in the manner explained; GRANTS

6

Brandywine’s motion for leave to amend its infringement

7

contentions (Docket No. 149); and DENIES Defendants’ motion to

8

strike Brandywine’s supplemental infringement contentions (Docket

9

No. 128).

United States District Court
For the Northern District of California

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The Court will hear all dispositive motions and Daubert
motions on June 5, 2014 at 2:00 p.m.
IT IS SO ORDERED.

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Dated:

4/18/2014

CLAUDIA WILKEN
United States District Judge

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