InteraXon Inc. et al v. Neurotek, LLC et al

Filing 135

ORDER by Judge Kandis A. Westmore Regarding 127 130 Discovery Letter Briefs. (kawlc2, COURT STAFF) (Filed on 9/21/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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INTERAXON INC., et al.,

Case No. 15-cv-05290-KAW

Plaintiffs,
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v.

ORDER REGARDING DISCOVERY
LETTER BRIEFS

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NEUROTEK, LLC, et al.,

Re: Dkt. Nos. 127, 130

Defendants.

United States District Court
Northern District of California

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Currently pending before the Court are Plaintiff InteraXon's discovery letter brief and

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Defendant Jonathan Cowan's response. (Dkt. Nos. 127, 130.) The Court deems the matter

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suitable for disposition without a hearing pursuant to Civil Local Rule 7-1(b). Having reviewed

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the papers filed by the parties and the relevant legal authority, the Court resolves the parties'

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discovery disputes as set forth below.

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I.

BACKGROUND

Plaintiffs InteraXon and InteraXon U.S., Inc. (collectively, "InteraXon") filed this suit

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against Defendants NeuroTek, LLC, MindWaves, Ltd., and Dr. Jonathan D. Cowan (collectively,

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"Defendants") on November 18, 2015, seeking a declaration of non-infringement and a declaration

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of invalidity as to Patent No. 5,983,129 ("'129 Patent"). (Compl., Dkt. No. 1.) InteraXon

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manufactures the MUSE Headband. (Compl. ¶ 4.) Around October 2013, Defendants accused

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InteraXon of infringing on the '129 Patent, and offered to license it. (Compl. ¶ 29.) In November

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2014, Defendants demanded that InteraXon "cease and desist" from infringing on the '129 Patent,

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or enter into a licensing agreement. (Compl. ¶ 30.) The parties began negotiations for a license,

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during which Defendants withdrew the cease and desist demand, but InteraXon alleges that

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Defendants threatened to reinstate that demand around May 2015. (Compl. ¶ 32.) InteraXon then

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filed the instant suit. Cowan has filed a counterclaim for infringement on the '129 Patent.

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(Answer, Dkt. No. 63 ¶ 45.)

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II.

DISCUSSION

The parties' letters concern Cowan's Infringement Contentions, as required by Patent Local
Rule 3-1. Patent Local Rule 3-1 "governs the disclosure of asserted claims and infringement

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contentions ('ICs')." Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1024

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(N.D. Cal. 2010). It requires the party asserting infringement to: "(a) identify each claim that is

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being infringed; (b) identify each accused product for each claim; (c) provide a chart identifying

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specifically where each limitation of each asserted claim is found in each accused product; and (d)

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specify whether infringement is literal or based on the doctrine of equivalents." Id.; see also Pat.

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United States District Court
Northern District of California

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L.R. 3-1. To satisfy the rule, the party asserting infringement "is required to include in its

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

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Id. Further, the specificity required by Rule 3-1 "must be sufficient to provide reasonable notice

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to the defendant why the plaintiff believes it has a reasonable chance of proving infringement,"

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and "to raise a reasonable inference that all accused products infringe." Id. at 1025 (internal

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quotations omitted). Thus, a patent holder "must map specific elements of [the] alleged infringing

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products onto the Plaintiff's claim construction." Id.

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First, Plaintiffs contend that Cowan has failed to provide a meaningful claim chart

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identifying where each limitation of each asserted claim is found within the accused infringing

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product. (Dkt. No. 127 at 2.) Cowan responds that he needs more information to comply, and

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seeks to complete all discovery before being required to modify his ICs. (Dkt. No. 130 at 2, 5.)

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Having reviewed the ICs, the Court finds that the ICs are not in compliance with Rule 3-1 as they

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fail to specify where the various components and software functions are found. Compare with

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Shared Memory Graphics, 812 F. Supp. 2d at 1025-26 (finding sufficient specificity where the

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plaintiff identified specific chips which constituted particular elements of a claim, but that other

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contentions were too vague because they failed to specifically identify which structures constitute

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the display data distribution bus); contrast with Case No. C-14-775 EMC, Grecia v. Apple Inc.,

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2015 WL 81893, at *2 (N.D. Cal. Jan. 5, 2015) (finding adequate ICs where the plaintiff defined
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what the metadata was and its form, identified specific locations in the accused system that

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practiced the infringing steps of reading from and writing into the metadata (including exemplar

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screenshots), and explained how the read and write requests were made (including screenshots

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with detailed labels showing how the system prompts and confirms requests)). Further, it is

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insufficient to state that the location is "a combination of the answers to 1A-E" as this requires

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Plaintiffs to guess as to what this "combination" is. See Finjan, Inc. v. Proofpoint, Inc., Case No.

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13-cv-5808-HSG, 2015 WL 1517920, at *7 (N.D. Cal. Apr. 2, 2015) ("At a minimum, Finjan was

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required to expressly discuss the particular claim elements in each Claim and map those elements

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onto the features of the allegedly infringing products. . . . Neither the Court nor the Defendants

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should be required to guess which aspects of the accused products allegedly infringe each claim

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United States District Court
Northern District of California

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element."). Cowan also provides no documentation in support of his theory of infringement, as

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required by Patent Local Rule 3-2. As such, Cowan's ICs are inadequate.

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Second, Plaintiffs argue that Cowan cannot assert the doctrine of equivalents without

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explaining why or how it applies. (Dkt. No. 127 at 4-5.) Cowan does not respond. The Court

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agrees that Cowan must describe his bases for asserting the doctrine of equivalents; otherwise,

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"[i]f a plaintiff does not have a factual basis to asset the doctrine of equivalents in its infringement

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contentions at that time, it should not do so. It is improper to assert the doctrine of equivalents

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with generic 'placeholder' language on the hope that future discovery might support such an

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assertion." Finjan, 2015 WL 15174920, at *10. In any case, if Cowan should later find, through

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discovery, sufficient evidence in support of this theory, Cowan can move the Court to amend his

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infringement contentions pursuant to Patent Local Rule 3-6 upon a showing of good cause. See id.

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Therefore, in his revised ICs, Cowan must provide a basis for the doctrine of equivalents or the

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Court will strike the language asserting the doctrine of equivalents.

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Finally, Plaintiffs challenge Cowan's failure to provide a chart or documentation with

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respect to the accused products other than the InteraXon Muse, which Cowan contends is the

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principal infringing product. (Dkt. No. 127 at 5; see also Cowan's Initial Patent Disclosures

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Revision 1A, Dkt. No. 127, Exh. 3 at 2.) Cowan again does not respond. In general, "a separate

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claim chart for each accused product is not mandatory under Patent Local Rule 3-1(c)." Finjan,
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2015 WL 15174920, at *3. A combination chart is permissible "if each accused product allegedly

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infringes in the same way." Id. Here, the additional accused products cannot possibly infringe in

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the same way as the InteraXon Muse; Cowan himself describes the additional products as

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"specialized software for developers . . . which they can use to create and sell adaptions of the

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Muse software," while the InteraXon Muse is a physical product. (Cowan's Initial Patent

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Disclosures Revision 1A at 2.) Cowan's chart then explains that Claim 1A takes place in the EEG

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sensors attached to the Muse's band, a location that would not exist in the software products. (See

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id. at 3.) The InteraXon Muse and the software products are not functionally identical and there is

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no showing that they infringe on each claim in the same way. While Cowan may be able to
provide a single chart for the software products (assuming Cowan makes an adequate showing that

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United States District Court
Northern District of California

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the software products are functionally identical and infringe Patent '129 in the same way), he

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cannot use a single chart for both the InteraXon Muse and the software products.

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III.

CONCLUSION

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For the reasons stated above, the Court finds that Cowan's ICs are inadequate and not in

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compliance with the Patent Local Rules. Cowan is to provide revised ICs within 14 days of the

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date of this Order. Until Cowan serves ICs that are compliant with the Patent Local Rules, the

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Court will not permit Cowan to seek discovery from InteraXon. The Court denies Cowan's

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request for sanctions and additional discovery.

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IT IS SO ORDERED.
Dated: September 21, 2016
__________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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