Blue Spike, LLC v. Adobe Systems, Inc.

Filing 57

ORDER by Magistrate Judge Jacqueline Scott Corley granting 51 Motion to Strike (ahm, COURT STAFF) (Filed on 1/26/2015)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 BLUE SPIKE, LLC, Case No. 14-cv-01647-YGR (JSC) Plaintiff, 8 v. 9 10 ADOBE SYSTEMS, INC., et al., Defendants. Re: Dkt. No. 51 11 United States District Court Northern District of California ORDER GRANTING MOTION TO STRIKE PLAINTIFF BLUE SPIKE'S INFRINGEMENT CONTENTIONS AND STAY DISCOVERY 12 13 This patent infringement case has been referred to the undersigned magistrate judge for the 14 purpose of discovery. (Dkt. No. 38.) Defendant Adobe Systems, Inc. (“Adobe”) has filed a 15 Motion to Strike the Infringement Contentions (“ICs”) filed by Plaintiff Blue Spike, LLC (“Blue 16 Spike”) and to stay discovery. (Dkt. No. 51.) Instead of responding to the substance of Adobe’s 17 motion, Blue Spike submitted an amended claims chart along with a one-page opposition asking 18 the Court to deny as moot Adobe’s motion without prejudice to re-filing the same motion after 19 having an opportunity to meet and confer with Blue Spike regarding the amendments. (Dkt. No. 20 53.) Adobe contends that the ICs—even as amended—still suffer from a number of defects that 21 warrant them stricken and require discovery stayed pending further amendment. Having carefully 22 considered the filings in this case, and having the benefit of oral argument on January 22, 2015, 23 the Court GRANTS the motion, but also grants Blue Spike limited leave to amend the Amended 24 ICs in the manner set forth below. 25 BACKGROUND 26 The procedural history of this case has been far from simple. On August 22, 2012, 27 Plaintiff filed this suit against Adobe in the Eastern District of Texas claiming direct and indirect 28 willful infringement. (Dkt. No. 1.) The matter was then consolidated for all pretrial purposes with 1 dozens of infringement cases that Blue Spike filed against unrelated defendants regarding the 2 same patents. (Dkt. No. 11.) This case—and several others—was then severed from the 3 consolidated matter and transferred to the Northern District of California in March of 2014. (Dkt. 4 No. 14.) As of the filing of the First Amended Complaint (“FAC”) on September 15, 2014, Blue 5 Spike claims infringement of five of its U.S. patents: Nos. 7,346,472 (the “‘472 patent”); 6 7,660,700 (the “‘700 patent”); 7,949,494 (the “‘494 patent”); 8,214,175 (the “‘175 patent”); and 7 8,712,728 (the “‘728 patent,” and together, the “Patents-in-Suit”). The Patents-in-Suit are all 8 titled “Method and Device for Monitoring and Analyzing Signals”; they share a common 9 specification, though the claims differ. 10 The products at issue in this case involve ad insertion software technology—i.e., a “video United States District Court Northern District of California 11 advertising platform” or “ad insertion technology”—for streamed online video content that allows 12 the owner of the content to insert advertisements about the original source of the content, where to 13 buy it legally, and other related information whenever and wherever the content is streamed on the 14 internet in order to monetize the streaming. The case also involves software technology that 15 enables a computer to recognize that content in the first instance. One method of content 16 recognition is called “digital fingerprinting,” which enables online rapid content recognition by 17 comparing streamed content to “fingerprints” of source material—that is, comparing certain 18 characteristics of the streamed content to content catalogued in a database. In the FAC, Blue 19 Spike alleges infringement by four of Adobe’s products that identify, manage, and monetize 20 online media content: Adobe Auditude, Project Primetime, Auditude’s Connect 2.0, and 21 Auditude’s Connect Platform. (Dkt. No. 43 ¶ 27.) Some background into the development of 22 these fingerprinting and video ad platform technologies is relevant to the instant dispute. 23 Specifically, the FAC alleges that a company called Auditude, Inc. (“Auditude”), which 24 Adobe acquired in 2011, created the infringing technologies. Auditude developed both digital 25 fingerprinting technology—under the guise of programs like Content ID and Connect 2.0—and ad 26 insertion technology—which became Adobe Auditude. (Dkt. No. 52-13 ¶ 4.) In their briefing and 27 at oral argument, Adobe emphasized the discrete nature of the two technologies. Adobe also 28 underscored that Auditude divested itself of the digital fingerprinting side of its business, which a 2 1 company called IntoNow, Inc. (“IntoNow”) took over. (Id. ¶ 6; Dkt. No. 51 at 9.) Yahoo!, a 2 former defendant in this matter, acquired IntoNow and the fingerprinting technology along with 3 the former Auditude team that developed that technology. (Dkt. No. 52-13 ¶¶ 6-8.) By contrast, 4 Adobe acquired what remained of Auditude— the ad insertion technology—and, at least 5 according to Adobe, ceased its involvement in any fingerprinting technology.1 (Id. ¶ 9.) In other 6 words, Adobe contends that its Auditude ad insertion technology does not perform the 7 fingerprinting that Auditude initially developed, which landed in IntoNow’s wheelhouse and 8 involved different products altogether.2 Notably, Blue Spike filed its first set of ICs while this litigation was still in the Eastern 9 District of Texas, and in these Texas contentions it asserted over 100 claims. (See Dkt. No. 52-2.) 11 United States District Court Northern District of California 10 At the first Case Management Conference after the transfer to this District, which occurred in July 12 of 2014, the district court cautioned that such a “kitchen sink approach” would not be 13 countenanced and that Blue Spike may well need to redraft the Texas ICs to bring them into 14 compliance with this District’s Local Rules. (Dkt. No. 52-4.) The district court also squarely 15 rejected Blue Spike’s request to inspect the source code of Adobe’s products prior to serving ICs. 16 (Dkt. No. 52-4.) Blue Spike served its initial set of ICs on September 26, 2014. (Dkt. No. 52-1.) These 17 18 initial ICs contend that four products—Adobe Auditude, Project Primetime, Auditude’s Connect 19 2.0, and Auditude’s Connect Platform—infringe 30 claims across the five Patents-in-Suit.3 The 20 ICs included a single claim chart for all four accused products; that is, instead of separately 21 identifying which claims it was asserting over which product, the chart grouped them all together. 22 Adobe immediately wrote to Blue Spike identifying deficiencies in the ICs in an effort to have 23 Blue Spike amend them without Court intervention. (See Dkt. Nos. 52-5.) Blue Spike refused to 24 1 25 26 At oral argument, Adobe noted that even after the IntoNow divestment, Auditude retained a few residual fingerprinting clients using IntoNow’s technology, but ceased any fingerprinting activity whatsoever in 2012. 3 27 28 Specifically, the claim chart in these initial ICs asserts that Adobe’s four accused products infringe Claims 3 and 4 of the ‘472 patent; Claims 1-8, 40, and 51 of the ‘700 patent; Claims 1-5, 11, and 24 of the ‘494 patent; claims 11-16 of the ‘175 patent; and claims 1, 12, and 25-30 of the ‘728 patent. (Dkt. No. 49-1.) 3 1 supplement the ICs without engaging in discovery—namely, until it had the opportunity to inspect 2 source code for Defendant’s products—precisely what the district court had already denied. (See 3 Dkt. Nos. 52-6, 62-7.) After several weeks of informal communication between the parties, 4 Adobe sought to file a joint letter brief in accordance with the Court’s standing order; when Blue 5 Spike did not cooperate with the filing, Adobe filed a statement on its own. (Dkt. No. 49.) Given 6 the complexity of the subject matter, the Court granted Adobe’s request to file a noticed motion 7 regarding this dispute. (Dkt. No. 50.) 8 9 Adobe filed the instant motion on December 15, 2014. (Dkt. No. 51.) At bottom, Adobe contends that Blue Spike’s ICs fail to comply with the Patent Local Rules for the following reasons: (1) the ICs fail to provide a claim chart for each of the accused instrumentalities and 11 United States District Court Northern District of California 10 instead group together all four products in violation of Patent Local Rule 3-1(c); (2) the claim 12 chart cites to exhibits that discuss Auditude’s products generally—both fingerprinting and ad 13 insertion products—without identifying the particular product to which each exhibit refers, 14 rendering the documentary support insufficient under Patent Local Rule 3-2; (3) the ICs chiefly 15 rely on online articles published by third parties that do not specifically identify the accused 16 products and are therefore insufficient under Patent Local Rule 3-2; and (4) the ICs do not 17 properly set forth allegations of infringement under the doctrine of equivalents in violation of 18 Patent Local Rule 3-1(e); and (5) fail to allege indirect infringement, willful infringement, or 19 assert a priority date in accordance with the Patent Local Rules. (Dkt. No. 51 at 6.) The gravamen 20 of Adobe’s argument is that the ICs fail to put Adobe on notice of Blue Spike’s actual theories of 21 the case and the exact substance of its allegations. Accordingly, Adobe seeks an order that: (1) 22 strikes the ICs in their entirety; (2) dismisses Blue Spike’s indirect infringement and willful 23 infringement allegations, or at least precludes Blue Spike from making any further assertion of 24 indirect infringement beyond those alleged in the FAC; (3) precludes Plaintiff from asserting a 25 priority date earlier than September 7, 2000 for the Patents-in-Suit; and (4) stays all discovery as 26 to Adobe and its products until Blue Spike serves ICs that comply with the Patent Local Rules. 27 (Id. at 7-8.) 28 Blue Spike filed a one-page opposition asking the Court to deny Adobe’s motion as moot 4 because it has since served an amended claims chart—which the Court construes as amended ICs 2 (“AICs”)—that, from Plaintiff’s perspective, “specifically address[ ]Defendant’s concerns.” (Dkt. 3 No. 53 at 1.) Blue Spike notes that changes set forth in its AICs only addressed a fraction of 4 Adobe’s objections to the ICs—that is, the lament that the ICs contained a single claim chart 5 addressing all four accused products. (See id. (“Blue Spike has reduced the number of accused 6 products to address Adobe’s main issue[.]”).) In the AICs, Blue Spike removed the reference to 7 Adobe’s four accused products and instead lists only “Auditude’s Video Advertising Platform”— 8 i.e., Adobe Auditude—as the accused product, removing references to the other three Auditude 9 products (Project Primetime, Connect 2.0, and the Connect Platform). (See Dkt. No. 53 at 1; see, 10 e.g., Dkt. No. 53-2 at 2.) Plaintiff also added another exhibit. (Dkt. No. 53-2 at 114.) The AICs 11 United States District Court Northern District of California 1 are otherwise identical to the initial ICs; they cite to the same exhibits and include the same 12 language concerning the doctrine of equivalents, willful infringement, indirect infringement, and 13 the stated priority date. (Compare Dkt. No. 49-1 with Dkt. No. 52-1.) In fact, Blue Spike appears 14 to concede that Adobe may well have lingering objections to the AICs, but asks the Court to 15 require Adobe to re-file any motion to strike the AICs after a meet and confer between the parties. 16 (Dkt. No. 53 at 1.) 17 In its reply, Adobe maintains that the AICs do not moot its motion because, despite 18 narrowing the claims chart to one accused product the AICs are still defective and insufficient 19 under the Local Rules, and requiring them to further meet and confer with Blue Spike would serve 20 no purpose given that party’s history of refusing to cooperate with Adobe. (Dkt. No. 54 at 2, 8.) 21 Moreover, because Blue Spike’s one-page opposition did not substantively address the arguments 22 set forth in Adobe’s motion to strike, Adobe asks the Court to deem a number of these issues 23 conceded. (See id. at 6-7.) Adobe also asks the Court to deny Blue Spike leave to further amend 24 its infringement contentions given that it filed the AICs without seeking leave to amend in 25 violation of Patent Local Rule 3-6. (Id. at 8.) 26 The Court held a hearing on Adobe’s motion on January 22, 2015. 27 28 5 1 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 LEGAL STANDARD Patent Local Rule 3-1 requires, in pertinent part: [A] party claiming patent infringement shall serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions[ ]’ . . . [which] shall contain the following information: (a) Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted; (b) Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known. Each method or process shall be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process; (c) A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function. (d) For each claim which is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement. Insofar as alleged direct infringement is based on joint acts of multiple parties, the role of each such party in the direct infringement must be described. (e) Whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the Accused Instrumentality 22 “The overriding principle of the Patent Local Rules is that they are designed [to] make the parties 23 more efficient, to streamline the litigation process, and to articulate with specificity the claims and 24 theory of a plaintiff’s infringement claims.” Bender v. Maxim Integrated Prods., Inc., No. C 09- 25 01152 SI, 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010) (alteration in original) (internal 26 citation omitted). Patent L.R. 3-1 is a discovery device that “takes the place of a series of 27 interrogatories that defendants would likely have propounded had the patent local rules not 28 provided for streamlined discovery.” Network Caching Tech., LLC v. Novell, Inc., No. C-016 1 2079-VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug.13, 2002); see Maxim Integrated Prods., 2 2010 WL 1135762, at *2. The rule is also intended to require the party claiming infringement “to 3 crystallize its theories of the case early in the litigation and to adhere to those theories once 4 disclosed.” Bender v. Advanced Micro Devices, Inc., No. C-09-1149 MMC (EMC), 2010 WL 5 363341, at *1 (N.D. Cal. Feb. 1, 2010). The party is required to include in its infringement 6 contentions all facts known to it, including those discovered in its pre-filing inquiry. See Renesas 7 Tech. Corp. v. Nanya Tech. Corp., No. C03-05709-JFHRL, 2004 WL 2600466, at *2 (N.D. Cal. 8 Nov. 10, 2004). “[A]ll courts agree that the degree of specificity under Local Rule 3-1 must be sufficient to 10 provide reasonable notice to the defendant why the plaintiff believes it has a ‘reasonable chance of 11 United States District Court Northern District of California 9 proving infringement.’” Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 12 1025 (N.D. Cal.2010) (quoting View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981, 986 13 (Fed. Cir. 2000)). While the patent rules do not “require the disclosure of specific evidence nor do 14 they require a plaintiff to prove its infringement case, . . . a patentee must nevertheless disclose 15 what in each accused instrumentality it contends practices each and every limitation of each 16 asserted claim to the extent appropriate information is reasonably available to it.” DCG Sys. v. 17 Checkpoint Techs., LLC, No. C 11-03792 PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr.16, 18 2012); see also Shared Memory Graphics, 812 F. Supp. 2d at 1025 (stating that patent holder 19 “must map specific elements of Defendants’ alleged infringing products onto the Plaintiff's claim 20 construction”). 21 22 DISCUSSION Where appropriate, courts treat a motion to strike as a motion to compel amendment to 23 include additional information infringement contentions. See, e.g., Innovative Automation LLC v. 24 Kaleidescape, Inc., No. C13-05651 JD, 2014 WL 5408454, at *3 (N.D. Cal. Oct. 23, 2014); 25 France Telecom, S.A. v. Marvell Semiconductor, Inc., No. 12-cv-04967 WHA (NC), 2013 WL 26 1878912, at *2 (N.D. Cal. May 3, 2013) (citations omitted); FusionArc, Inc. v. Solidus Networks, 27 Inc., No. 06-cv-06760 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007); see also 28 Renesas Tech. Corp., 2004 WL 2095698, at *1 (referring motion to strike preliminary 7 1 infringement contentions to assigned magistrate judge “[b]ecause the primary relief Defendants 2 seek is an order compelling Plaintiff to provide adequate disclosures”). Here, the relief that Adobe 3 seeks is adequate notice of how its products allegedly infringe, and Adobe specifically seeks an 4 order directing Blue Spike to amend or supplement its contentions in accordance with the Patent 5 Local Rules. Accordingly, the Court treats Adobe’s request as a motion to strike, and in the 6 alternative, to compel amendment. The Court will consider the AICs that Blue Spike filed along with its opposition to 8 Adobe’s motion to strike, despite Blue Spike’s failure to seek leave to amend as the Patent Local 9 Rules require.4 See Patent L.R. 3-6 (“Amendment of the Infringement Contentions . . . may be 10 made only by order of the Court upon a timely showing of good cause.”). Adobe contends that 11 United States District Court Northern District of California 7 Blue Spike’s ICs are deficient under Rules 3-1 and 3-2 for a number of reasons, including: (1) 12 failure to comply with Rule 3-1(c) by providing a single claim chart instead of a chart for each 13 accused instrumentality; (2) failure to properly support the ICs in the claim chart through evidence 14 as Rule 3-2 requires; (3) failure to set forth proper allegations of infringement under the doctrine 15 of equivalents as Rule 3-1(e) requires; (4) failure to provide a basis for claims of willful 16 infringement as Rule 3-1(d) requires; (5) failure to provide a basis for claims of indirect 17 infringement as Rule 3-1(e) requires; and (f) failure to comply with Rule 3-1(f) by providing a 18 specific priority date. 19 20 21 4 22 23 24 25 26 27 28 To demonstrate good cause for leave to amend ICs, the Court’s Local Rules require that the moving party must show that it was diligent in amending its contentions and then that the nonmoving party will not suffer undue prejudice if the motion to amend is granted. See 02 Micro Int’l Ltd. v. Monolithic Pwr. Sys., Inc., 467 F.3d 1355, 1366-68 (Fed. Cir. 2006) (upholding the Northern District of California’s Patent Local Rules). Relevant to this determination, among other things, is whether the request to amend is motivated by gamesmanship. See Acco Brands, Inc. v. PC Guardian Anti-Theft Prods., Inc., No. C 04-03526 SI, 2008 WL 2168379, at *1 (N.D. Cal. May 22, 2008) (citation omitted). Although, under the circumstances presented here, it appears that Blue Spike’s continued delay and refusal to amend its ICs was, perhaps, motivated by gamesmanship, the requested amendment nonetheless fulfills the purpose of the Local Rules by reducing the number of Accused Products, thereby “crystalliz[ing]”—at least in comparison to its initial ICs—“their theories of the case[.]” 02 Micro, 467 F.3d at 1366 n.12. Accordingly, the Court will consider whether the AICs—in particular, the revised claim chart that Blue Spike submitted with its opposition—conforms to the Local Rules. 8 DISCUSSION 1 2 3 4 I. THE CLAIM CHART FAILS TO COMPLY WITH THE PATENT LOCAL RULES Adobe challenges Blue Spike’s AICs on several fronts. A careful analysis of Blue Spike’s AICs indicates that they fail to comply with the Patent Local Rules in a number of respects. 5 A. Specificity of Claims & Supporting Documentation 6 Adobe contends that Blue Spike’s claim chart does not provide the level of specificity Patent Local Rule 3-1 requires and that the documents submitted in support of the contentions are 8 insufficient under Rule 3-2. To comply with these rules, a plaintiff must identify how the 9 defendant’s products infringe “with as much specificity as possible with the information currently 10 available to it.” Creagri, 2012 WL 5389775, at *3; accord FusionArc, 2007 WL 1052900, at *3 11 United States District Court Northern District of California 7 (denying defendant’s motion to strike ICs where the plaintiff had “provided all of the information 12 in its possession as to how” defendant’s product infringed and “disclosed, to the extent of its 13 present knowledge, where it believes the infringement lies”). This disclosure is generally 14 performed in a claim chart, which is supposed to “identify specifically where each limitation of 15 each asserted claim is found within [the challenged product] . . . which necessitates a level of 16 detail that reverse engineering or its equivalent would provide.” Infineon Techs. v. Volterra 17 Semiconductor, No. C 11-06239 MMC (DMR), 2013 WL 322570, at *4 (N.D. Cal. Jan. 28, 2013) 18 (emphasis in original) (internal quotation marks and citation omitted). However, Patent Local 19 Rule 3-1(c) “does not require [a plaintiff] to reverse engineer every product it has accused.” 20 France Telecom, 2013 WL 1878912, at *3 (citation omitted); see also Bender v. Freescale 21 Semiconductor, Inc., No. 09-cv-01156 PHJ (MEJ), 2010 WL 1689465, at *4 (N.D. Cal. Apr. 26, 22 2010) (noting that reverse engineering is not a per se requirement). What matters is whether the 23 plaintiff has included enough information in the ICs to reveal its theory of infringement “on a 24 claim by claim, element by element basis[.]” Freescale Semiconductor, 2010 WL 1689465, at *4. 25 This disclosure may be accomplished by relying exclusively on the defendant’s advertising or 26 marketing materials for the facts of its contentions, if those materials provide enough information. 27 See France Telecom, 2013 WL 1878912, at *3; see, e.g., Creagri, Inc. v. Pinnaclife, Inc., No. 11- 28 cv-06635 LHK(PSG), 2012 WL 5389775, at *3 (N.D. Cal. Nov. 2, 2012) (finding the plaintiff’s 9 1 ICs sufficient where they relied exclusively on the defendant’s advertising materials to determine 2 how the accused product operated); FusionArc, Inc. v. Solidus Networks, Inc., No. 06-cv-06760 3 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007) (finding the plaintiff’s ICs 4 sufficient where they relied on the defendant’s marketing materials to determine how the accused 5 product operated); see also France Telecom, 2013 WL 1878912, at *4 (finding the plaintiff’s ICs 6 sufficient where they relied primarily on industry standards to determine how the accused product 7 worked). To that end, the Patent Local Rules provide some flexibility for a plaintiff given that 8 “there are times when [a] plaintiff’s preparation is restricted by defendants’ sole possession of the 9 information plaintiffs need.” France Telecom, 2013 WL 1878912, at *4 (citation omitted). This is particularly true in cases involving allegedly-infringing source code. See Theranos, Inc. v. 11 United States District Court Northern District of California 10 Fuisz Pharma LLC, No. 11-cv-05236-YGR, 2012 WL 6000798, at *6 n.7 (N.D. Cal. Nov. 30, 12 2012) (citation omitted) (noting “courts’ ‘recognition’ that there are situations where a plaintiff is 13 constrained by defendants’ sole possession of information” which “relates to cases involving 14 allegedly-infringing source code”); see also DCG Sys., 2012 WL 1309161, at *2 n.13. Still, 15 Patent Local Rule 3-1(c) requires more than an “infringement contention that simply mimics the 16 language of the claim.” Network Caching Tech. LLC v. Novell Inc., No. 01-cv-02079 VRW, 2002 17 WL 32126128, at *6 (N.D. Cal. Aug. 13, 2002). 18 Here, as written, the claim chart in the AICs does not sufficiently “‘crystallize[s] 19 [Plaintiff’s] theories of the case’” as the Patent Local Rules require. LG Elecs., Inc. v. Q-Lity 20 Comp., Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002). Although Blue Spike has superficially 21 addressed Adobe’s primary challenge to the initial claim chart by naming only one accused 22 instrumentality, “Adobe’s Auditude Video Advertising Platform,” and eliminating the others (see, 23 e.g., Dkt. No. 53-2 at 2-3), this amendment does little else to clarify the contentions. The heart of 24 the problem is the exhibits on which Blue Spike relies. While under the circumstances here it 25 could be appropriate to rely on marketing or advertising materials, see France Telecom, 2013 WL 26 1878912, at *3, the materials cited here fail to specify what product is being described or describe 27 a product other than the accused. As a result, the AICs do not disclose why Plaintiff believes 28 Adobe Auditude—the only product at issue—infringes the Patents-in-Suit. (See, e.g., Dkt. Nos. 10 1 2 49-1 at 88.) One key example is the “comparing” limitation, which is found in every claim and 3 involves the fingerprinting function. Blue Spike cites to two exhibits—numbers 2 and 5—to 4 support their contention that Adobe Auditude has such a “comparing” function, but neither of 5 these exhibits discusses this technology in particular; rather, both refer to Auditude’s products 6 generally, and the exhibits date from 2008 when Auditude had both fingerprinting and ad insertion 7 programs. Moreover, the exhibits focus heavily on the fingerprinting technology and include just 8 a passing reference to ad insertion. (Dkt. No. 49-1 at 100-01 (describing content recognition then 9 noting that “[o]nce the clip is identified Auditude will overlay an ad within the video”).) When asked at oral argument to identify an exhibit that specifically discussed Adobe Auditude, the only 11 United States District Court Northern District of California 10 product now at issue, Plaintiff’s counsel cited Exhibit 1, but that document is an advertisement for 12 Auditude Connect 2.0, a product that Blue Spike removed from its AICs and thus this lawsuit. 13 (Dkt. No. 53-2 at 84-85.) Based on the vague materials that refer mostly to products that Blue 14 Spike has actually removed from its ICs, Blue Spike has not adequately explained how Adobe 15 Auditude infringes the Patents-in-Suit. Citing to exhibits that do not discuss the accused product 16 is not sufficient. 17 Blue Spike does not offer any meaningful arguments to the contrary, and appears to 18 concede that there may be lingering deficiencies in its AICs such that Adobe can renew its motion 19 to strike in the near future. The Court sees no reason to delay the inevitable. Because the AICs 20 fail to comply with the Patent Local Rules, they must be stricken. However, because it is not clear 21 at this juncture that the deficiencies identified above cannot be cured, Blue Spike shall submit 22 Second Amended Infringement Contentions—including a cover page and claims chart—by 23 February 6, 2015. Leave is granted only as to Adobe Auditude. Plaintiff may not reassert 24 products it voluntarily removed from its contentions. 25 C. Doctrine of Equivalents 26 Adobe further argues that Blue Spike failed to comply with Patent Local Rule 3-1(e), 27 which requires it to state “[w]hether each limitation of each asserted claim is alleged to be literally 28 present or present under the doctrine of equivalents in the Accused Instrumentality.” “The 11 1 doctrine of equivalents exists to prevent fraud on the patent” and not “to give a patentee a second 2 shot at proving infringement” if it is not “literally present.” Creagri, 2012 WL 5389775, at *6 3 (citation omitted). For that reason, the plaintiff must explain why the doctrine of equivalents 4 might lead to infringement in the absence of direct infringement. Id. 5 Here, Blue Spike’s AICs repeat the same boilerplate language for each of its contentions, 6 noting in the alternative that “this element infringes directly or under the doctrine of equivalents.” 7 (See, e.g., Dkt. No. 53-2 at 1-4.) Although, to be sure, Blue Spike has asserted separately that the 8 doctrine applies to every single limitation, it provides no further description or explanation as to 9 why it applies. Absent an explanation, such boilerplate language is not enough. See Creagri, 2012 WL 5389775, at *6. Despite Adobe having raised this defect in informal communications, a 11 United States District Court Northern District of California 10 discovery letter to the Court, and a formally noticed motion, Blue Spike has done nothing to 12 further explain the basis for these contentions. Accordingly, given Blue Spike’s failure to take any 13 action to amend this language or otherwise respond to Adobe’s argument, the doctrine of 14 equivalents contentions are stricken without leave to amend at this time. See O2 Micro Int’l Ltd. 15 v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006) (noting that, under 16 Northern District of California Patent Local Rule 3-6, to obtain leave to amend, the moving party 17 must “proceed with diligence in amending [the] contentions”); see also Ardente, Inc. v. Shanley, 18 No. 07-4479 MHP, 2010 WL 546485, at *6 (N.D. Cal. Feb. 9, 2010) (“Plaintiff fails to respond to 19 this argument and therefore concedes it through silence.”). 20 D. Priority Date 21 The same result follows with respect to Blue Spike’s assertion of an open-ended priority 22 date in the AICs. The Local Rules of the Court require a patentee to provide “[f]or any patent that 23 claims priority to an earlier application, the priority date to which each asserted claim allegedly is 24 entitled.” Patent L.R. 3-1(f). For any earlier priority date identified pursuant to that rule, the 25 patentee must produce documents “evidencing the conception, reduction to practice, design, and 26 development of each claimed invention, which were created on or before the date of application 27 for the . . . priority date identified[.]” Patent L.R. 3-2(b). This rule requires a patentee to assert a 28 particular date—not a start date, end date, or date range. See id. Here, however, Blue Spike 12 1 asserts that “each asserted claim of the patents-in-suit [is] entitled to a priority date no later than 2 September 7, 2000.” (Dkt. No. 49-1 at 4 (emphasis added).) Adobe’s concern is that Blue Spike 3 may use the “no later than” language to assert a much earlier priority date further down the line in 4 this litigation—as it appears Blue Spike has done in the related Texas cases. (See Dkt. No. 51 at 5 20-21 & n.5.) Blue Spike does not address this argument in its opposition, nor did it meaningfully 6 respond to it during oral argument. Accordingly, the language “no later than” shall be stricken 7 from the AICs without leave to amend. See O2 Micro Int’l, 467 F.3d at 1365-66; see also 8 Ardente, 2010 WL 546485, at *6. The asserted priority date is September 7, 2000. 9 10 E. Indirect Infringement The same conclusion holds true for Blue Spike’s claims of indirect infringement. Patent United States District Court Northern District of California 11 Local Rule 3-1(d) requires plaintiffs to disclose for each claim “any direct infringement and a 12 description of the acts of the alleged indirect infringer that contribute to or are inducing that direct 13 infringement.” It is well established in this District that boilerplate language asserting indirect 14 infringement does not satisfy Patent Local Rule 3-1(d). See, e.g., France Telecom, 2013 WL 15 1878912, at *4; Creagri, 2012 WL 5389775, at *5. Nor are “generic allegations” that recite the 16 elements of or general theory behind indirect infringement sufficient under the local rule. DCG 17 Sys., 2012 WL 1309161, at *2. Instead, put simply, “Rule 3-1(d) requires facts.” France 18 Telecom, 2013 WL 1878912, at *5 (citations omitted); see Patent L.R. 3-1(d) (requiring a 19 “description of the acts of the alleged indirect infringer” and stating that “the role of each party 20 must be described”). For example, courts in this District have upheld indirect infringement 21 contentions so long as the plaintiff discloses sufficient information to set forth its theory of 22 infringement, identifies a particular product line that was sold to customers, and contends that the 23 indirect infringement occurs when the customer uses the technology. See, e.g., DCG Sys., 2012 24 WL 1309161, at *2. 25 Here, assuming that the AICs incorporate the cover page of the ICs initially filed, the ICs 26 cite to the FAC for the description of indirect infringement. (See Dkt. No. 49-1 at 3.) In the FAC, 27 Blue Spike alleges that Adobe has been indirectly infringing “by, among other things, making, 28 using, importing, offering for sale, and/or selling, without license or authority, products for use in 13 1 systems that fall within the scope of one of more claims of the [Patents-in-Suit].” (Dkt. No. 43 2 ¶¶ 34, 42, 50, 58, 66.) This general assertion of the elements of indirect infringement is plainly 3 insufficient. See France Telecom, 2013 WL 1878912, at *5 (rejecting the plaintiff’s disclosure of 4 indirect infringement where it was merely a “bare-boned recitation of the essential elements of a 5 claim for indirect infringement”). Moreover, although Blue Spike included advertisements for 6 Adobe’s products in support of its ICs, it neither specifies which particular product each 7 advertisement endorsed nor indicates which advertisement led to infringing behavior. Such 8 circumstances create only insufficient boilerplate allegations of indirect infringement. See 9 Creagri, 2012 WL 5389775, at *5 (finding indirect infringement contentions that stated defendant advised third parties to use the products in an infringing manner but failed to identify which 11 United States District Court Northern District of California 10 advertisements led to infringing behavior was insufficient “boilerplate” language). Despite 12 Adobe’s repeated informal requests and formal arguments about the insufficiency of the indirect 13 infringement contentions, Blue Spike does not address this argument in its opposition, nor did it 14 meaningfully respond to it during oral argument. Accordingly, the indirect infringement 15 contentions shall be stricken from the AICs without leave to amend. See O2 Micro Int’l, 467 F.3d 16 at 1365-66; see also Ardente, 2010 WL 546485, at *6. 17 F. Willful Infringement 18 Nor is Blue Spike entitled to amend its insufficient claims of willful infringement. In this 19 District, willful infringement requires a patentee to “make out the barest factual assertion of 20 knowledge of an issued patent[.]” IpVenture, Inc. v. Cellco P’ship, No. C 10-04755 JSW, 2011 21 WL 207978, at *2 (N.D. Cal. Jan. 21, 2011). The allegations must assert that the accused 22 infringer had knowledge of the patent before the patent litigation began. See Avocet Sports Tech., 23 Inc. v. Garmin Int’l, Inc., No. C 11-04049 JW, 2012 WL 1030031, at *3 (N.D. Cal. Mar. 22, 2012) 24 (citations omitted); see also In re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007) 25 (noting that “when a complaint is filed, a patentee must have a good faith basis for alleging willful 26 infringement” and the willfulness allegation “must necessarily be grounded exclusively in the 27 accused infringer’s pre-filing conduct”). A “bare recitation of the required elements for willful 28 infringement is insufficient” as is a “mere allegation of actual knowledge, without more[.]” 14 1 Robert Bosch Healthcare Sys., Inc. v. Express MD Solutions, Inc., No. C 12-00068 JW, 2012 WL 2 2803617, at *3 (N.D. Cal. July 10, 2012) (internal quotation marks and citations omitted). Here, in regard to willful infringement, Blue Spike’s infringement contentions refer only to 3 4 the allegations in the FAC. (See Dkt. No. 49-1 at 4.) The FAC, however, bases its willfulness 5 argument on the fact that Adobe “has continued to infringe the [Patents-in-Suit] since receiving 6 notice of their infringement, at least by way of their receiving notice of this lawsuit.” (See, e.g., 7 Dkt. No. 43 ¶ 60.) Thus, the FAC does not include any facts to suggest that Adobe had any 8 knowledge of the Patents-in-Suit prior to the filing of the instant complaint, which is insufficient 9 to serve as the basis for willful infringement. See, e.g., Acovet Sports Tech., 2012 WL 1030031, at *3. Despite Adobe’s repeated informal requests and formal arguments about the insufficiency of 11 United States District Court Northern District of California 10 the willfulness contentions, Blue Spike does not address this argument in its opposition, nor did it 12 meaningfully respond to it during oral argument. Accordingly, the claims of willfulness are 13 stricken without leave to amend. See O2 Micro Int’l, 467 F.3d at 1365-66; see also Ardente, 2010 14 WL 546485, at *6. 15 II. DISCOVERY 16 When a plaintiff’s infringement contentions are insufficient to meet the strictures of the 17 Local Rules, courts in this District have stayed the defendant’s discovery obligations, including 18 the defendant’s obligation to serve invalidity contentions, “[u]ntil [the] plaintiff meets the burden 19 of providing infringement contentions compliant with Patent L.R. 3-1.” Infineon Techs. v. 20 Volterra Semiconductor, No. C 11-06239 (DMR), 2013 WL 322570, at *5 (N.D. Cal. Jan. 28, 21 2013) (citations omitted); see also Shared Memory Graphics, 2011 WL 3878388, at *7 (citation 22 omitted); Bender, 2010 WL 1135762, at *2. Accordingly, the Court stays discovery, including 23 Adobe’s obligation to serve invalidity contentions, until 14 days after Blue Spike serves its revised 24 infringement contentions. 25 26 CONCLUSION For the foregoing reasons, Blue Spike’s Amended Infringement Contentions do not satisfy 27 the Local Rules and must be stricken. Blue Spike’s contentions of indirect and willful 28 infringement, the doctrine of equivalents, and a priority date earlier than September 7, 2000 are 15 1 stricken without leave to amend. The Court grants Blue Spike leave to amend the AICs solely to 2 further specify and sufficiently support its claims of direct infringement by Adobe Auditude. 3 Blue Spike shall submit its Second Amended Infringement Contentions (“SAICs”) by February 6, 4 2015. Discovery in this matter, including the deadline for Adobe to serve invalidity contentions, 5 is stayed until 14 days after Blue Spike serves the SAICs. 6 7 8 9 IT IS SO ORDERED. Dated: January 23, 2015 ______________________________________ JACQUELINE SCOTT CORLEY United States Magistrate Judge 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 16

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