Perfect Surgical Techniques, Inc. v. Olympus Surgical & Industrial America Inc.

Filing 108

ORDER by Judge Hamilton granting in part and denying in part 99 Motion to Strike (pjhlc2, COURT STAFF) (Filed on 10/28/2013)

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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PERFECT SURGICAL TECHNIQUES,
INC.,

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Plaintiff,

No. C 12-5967 PJH

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v.
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OLYMPUS AMERICA, INC., et al.,

ORDER GRANTING MOTION TO
STRIKE IN PART, DENYING MOTION
TO DISMISS

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For the Northern District of California

United States District Court

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Defendants.
_______________________________/
Defendants’ motion to strike plaintiff’s infringement contentions and dismiss plaintiff’s

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claim of infringement of the ’527 patent came on for hearing before this court on October

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23, 2013. Plaintiff Perfect Surgical Techniques, Inc. (“plaintiff” or “PST”) appeared through

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its counsel, Robert Freitas. Defendants Olympus America Inc., Gyrus Medical, Inc., and

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Gyrus ACMI, L.P. (“defendants”) appeared through their counsel, Katie Scott. Having read

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the papers filed in conjunction with the motions and carefully considered the arguments and

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the relevant legal authority, and good cause appearing, the court hereby GRANTS

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defendants’ motion to strike in part and DENIES defendants’ motion to dismiss as follows.

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This is defendants’ second motion to strike plaintiff’s infringement contentions as

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they relate to U.S. Patent No. 6,682,527 (“the ’527 patent”). At the last hearing, on June

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19, 2013, the court ordered plaintiff to supplement its infringement contentions, and

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specifically instructed plaintiff’s counsel that plaintiff was required “to do more than simply

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look at [defendants’] patents, read their user manuals, and talk to your experts.” Dkt. 96 at

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21. The court went on to explain that the local rules required plaintiff to “at least evaluate

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up close each of the accused devices,” and then repeated that plaintiff needed to “look at

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each of the products” to “identify where each limitation is found or met in each of the

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products.” Id. Importantly, plaintiff’s counsel confirmed his understanding of the court’s

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instructions, stating “based on what you’ve said today, that you’re requiring us to test every

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single device,” and noting that “three of them at least have to be acquired from the

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defendants’ sales rep directly.” Id. at 25. Plaintiff’s counsel now argues that “to the extent

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the court intended to order PST to purchase and test each accused generator, PST

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acknowledges that was not its understanding of the court’s order.” Dkt. 103 at 7. Given

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that plaintiff’s counsel himself confirmed, in his own words, that plaintiff was “requir[ed] to

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test every single device,” plaintiff cannot now argue that its counsel did not understand the

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court’s order. The fact that the court did not repeat its instructions in its summary order

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does not aid plaintiff here, as the order specifically states that defendants’ motion was
granted “for the reasons stated at the hearing.” Dkt. 70 at 1. Accordingly, as to the

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For the Northern District of California

United States District Court

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products that plaintiff failed to acquire and test (namely, the ESG-100, G400, and UES-40),

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defendants’ motion to strike is GRANTED without leave to amend.

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Plaintiff did acquire and test one of defendants’ products, the ESG-400. Defendants

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argue that plaintiff’s contentions as to that product are still deficient, and seek an order

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striking those contentions without leave to amend, which would result in the dismissal, with

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prejudice, of the entirety of plaintiff’s infringement claim as to the ’527 patent. However,

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defendants are overreaching here, and are attempting to litigate the merits of plaintiff’s

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infringement allegations, which is premature at this stage of the case. For instance,

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defendants argue that “[t]here is not a shred of evidence suggesting that the accused

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products ‘avoid[] formation of a vapor layer,’” and plaintiff claims that defendants “asked for

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video proof” or an expert declaration regarding the lack of a vapor layer. Dkt. 99 at 15; Dkt.

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103 at 4. But infringement contentions are not intended to provide proof to defendants,

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they are intended to provide notice. See, e.g., Network Caching Tech. v. Novell, Inc., 2003

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WL 21699799 (N.D. Cal. Mar. 21, 2003). The court finds that plaintiff’s infringement

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contentions are largely sufficient, in that they provide adequate notice of its theories of

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infringement. Defendants plainly disagree that their products infringe, and while

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defendants may ultimately prevail, they may not transform a motion to strike into a motion

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for summary judgment.
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However, the court does agree with defendants that plaintiff’s contentions are not

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entirely sufficient under Patent Local Rule 3-1. Specifically, Rule 3-1(c) requires plaintiff to

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identify, “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

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performs the claimed function.” For the “means for automatically increasing power

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delivered to the bipolar forceps” limitation, plaintiff has simply included a screenshot of the

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ESG-400's circuit board, highlighted four integrated circuit chips, and speculated that those

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chips “appear to be memory devices that hold firmware for controlling the power output of

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the ESG-400 generator.” Dkt. 99-1, Ex. 2 at 37-38. Plaintiff argues that it is not required to
“reverse engineer each of the accused products to determine which of the chips on its

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For the Northern District of California

United States District Court

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motherboard actually performs the function of delivering and increasing power to an

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attached bipolar forceps.” Dkt. 103 at 15. But Rule 3-1(c) does indeed require plaintiff to

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identify what structure “performs the claimed function.” Plaintiff is correct that reverse

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engineering is not strictly necessary, but “reverse engineering or its equivalent is required.”

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Intertrust Tech. Corp. v. Microsoft Corp., 2003 WL 23120174 at *2 (N.D. Cal. Dec. 1, 2003)

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(emphasis added). If plaintiff is able to identify the structure that performs the claimed

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function without reverse engineering, that will be enough to satisfy Rule 3-1, but plaintiff’s

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current contentions do not adequately identify said structure. Accordingly, defendants’

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motion to strike is GRANTED with leave to amend with respect to this limitation and this

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device. Plaintiff shall have until November 25, 2013 to serve amended infringement

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contentions in accordance with this order. The contentions must be limited to the ESG-

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400, and no new claims may be added. Because plaintiff is granted leave to amend,

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defendants’ motion to dismiss is DENIED.

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IT IS SO ORDERED.
Dated: October 28, 2013
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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