The Regents of the University of California v. St. Jude Medical, Inc.

Filing 56

ORDER DIRECTING AMENDMENT OF INFRINGEMENT CONTENTIONS IN RESOLUTION OF DISCOVERY DISPUTES; EXTENDING DEFENDANTS' PATENT L.R. 3-4 DOCUMENT PRODUCTION DEADLINE. Signed by Judge Yvonne Gonzalez Rogers on 5/5/17. (fs, COURT STAFF) (Filed on 5/5/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiff,

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vs.

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ST. JUDE MEDICAL, INC.,
Defendant.

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United States District Court
Northern District of California

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THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiff,

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vs.
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CASE NO. 16-cv-06210-YGR

BOSTON SCIENTIFIC CORPORATION,

CASE NO. 16-cv-6266-YGR
ORDER DIRECTING AMENDMENT OF
INFRINGEMENT CONTENTIONS IN
RESOLUTION OF DISCOVERY DISPUTES;
EXTENDING DEFENDANTS’ PATENT L.R. 3-4
DOCUMENT PRODUCTION DEADLINE

Defendant.
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In the above-captioned, related patent actions, defendants St. Jude Medical, Inc. (“SJM”)

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and Boston Scientific Corporation (“BSC”) have each raised objections to the Disclosure of

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Asserted Claims and Infringement Contentions (ICs) of plaintiff The Regents of the University of

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California (“the Regents”), and the parties have submitted joint discovery letters as required by

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this Court’s Standing Order. (See SJM Dkt No. 49; BSC Dkt. No. 55.) The Court held a hearing

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and tutorial on May 2, 2017, in connection with these discovery disputes. The Court having

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considered the parties’ joint submission and arguments, and good cause appearing, ORDERS that

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the Regents amend their ICs as stated herein.

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I.

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APPLICABLE STANDARDS
The Patent Local Rules of this District provide for a “‘streamlined’ mechanism to replace

the ‘series of interrogatories that defendants would likely have propounded’ in its absence.”

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FusionArc, Inc. v. Solidus Networks, Inc., No. C06-06770 RMW (RS), 2007 WL 1052900, at *2

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(N.D. Cal. Apr. 5, 2007) (quoting Network Caching Tech., LLC v. Novell Inc., No. C01-2079

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VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug. 13, 2002)). The rules “require parties to

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crystallize their theories of the case early in litigation and to adhere to those theories once they

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have been disclosed.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366

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n.12 (Fed. Cir. 2006).
Patent Local Rule 3-1 requires that a party claiming patent infringement serve a

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“Disclosure of Asserted Claims and Infringement Contentions” which identifies:

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1. each claim of each patent allegedly infringed and the applicable statutory
subsections of 35 U.S.C. §271 asserted;
2. each accused product, act, or other instrumentality of infringement of the
opposing party, for each asserted claim, as specifically as possible.

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United States District Court
Northern District of California

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Pat. L.R. 3-1(a), (b). Methods or processes must be identified by name. Id. at (b). Where the

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claim is practice of a method or process, what must be identified is the product, device, or

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apparatus which allegedly results in the practice of the patented method or process when used. Id.

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at (b).

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Rule 3-1 also requires that the disclosures include a chart “identifying specifically where

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and how each limitation of each asserted claim is found” within each accused product, act, or

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instrumentality, including the identity of the structures, acts, or materials in the accused product,

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act, or instrumentality that perform the claimed function. Pat. L.R. 3-1(c). For claims of indirect

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infringement, the disclosures must identify the direct infringement and the “acts of the alleged

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indirect infringer that contribute to or are inducing that direct infringement.” Pat. L.R. 3-1(d).

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These rules do not “require the disclosure of specific evidence nor do they require a

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plaintiff to prove its infringement case.” See DCG Sys. v. Checkpoint Tech., LLC, No. C11-03729

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PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (internal quotation marks omitted). But

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to the extent appropriate information is reasonably available to it, a patentee must nevertheless

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disclose the elements in each accused instrumentality that it contends practices each and every

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limitation of each asserted claim. Cf. FusionArc, Inc., 2007 WL 1052900, at *1.

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II.

DISCUSSION
Here, the Regents allege indirect infringement, both contributory and induced, based upon

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the defendants’ acts of marketing and selling devices that practice the patented method, and by

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defendants teaching others (the direct infringers) to perform the patented method. The question

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that arises is whether the required disclosures for an indirect infringement claim must include the

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level of specificity in their description of the underlying direct infringement as would be required

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where the action was for direct infringement, i.e., identification of each accused product, device,

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or apparatus the (non-party) direct infringers use to practice the patented method.

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In circumstances similar to those presented here, courts interpreting the interplay between
Rule 3-1 subsections (b) and (d) have determined that the infringement contentions and claim

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United States District Court
Northern District of California

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chart for a claim of indirect infringement should identify the product names and model numbers,

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to the extent reasonably available. See EON CorpIP Holding LLC v. Sprint Spectrum, L.P., No.

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C-12-01011 JST (EDL), 2014 WL 1022536, at *3-4 (N.D. Cal. Mar. 13, 2014) (“EON Corp. I”)

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(indirect infringer entitled to notice of which of its own devices contribute to or induce

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infringement per Rule 3-1 (b), (d)); Creagri, Inc. v. Pinnaclife Inc., LLC, No. 11-CV-06635-LHK-

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PSG, 2012 WL 5389775, at *3 (N.D. Cal. Nov. 2, 2012) (plaintiff required to identify accused

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indirect infringer’s products or groups of products carrying out the same function that were

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allegedly used in the underlying direct infringement with “as much specificity as possible with the

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information currently available to it[, b]ut is not obligated at this point to supply evidence to

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support its infringement theory.”); see also EON Corp IP Holdings LLC v. Apple Inc., No. 14-CV-

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05511-WHO, 2015 WL 4914984, at *8-9 (N.D. Cal. Aug. 17, 2015) (EON Corp. II)

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(identification of accused indirect infringers’ products). Also, under similar circumstances, a party

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alleging indirect infringement has been required to chart out how its devices practice the alleged

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method on a claim-by-claim basis.

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In the current iteration of the ICs for SJM, the chart for Claim 1 identifies several models
of SJM products for each of the following categories:

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(1) “ablation catheters;”

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(2) “cardiac mapping systems;”
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(3) “RF Ablation Generators;”

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(4) “Diagnostic Mapping Catheters;” and

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(5) “Introducer Sheaths.”

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(SJM Dkt. No. 49, Exh. 1 [SJM ICs] at Chart p. 2-3.) The chart indicates that the categories

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“include” these products, suggesting that there may be other model names and numbers within the

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categories that have not been specified. The chart for Claim 1 then sets forth a list of one

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representative product from each of the five categories,1 and follows with brief descriptions, from

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SJM’s marketing materials, of the functions of certain products in each of the categories.2

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The ICs for BSC are similar. In the chart for Claim 1, the Regents identify certain BSC
product names within each of the above categories. (BSC Dkt. No. 55, Exh. 1 [BSC ICs] at Chart

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United States District Court
Northern District of California

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p. 2.) The chart for Claim 1 then provides descriptions from BSC marketing materials of certain

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BSC catheters (Chilli, Intellinav, INTELLATIP MIFI™), all apparently ablation catheters,

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introducer sheaths (Zurpaz), and a general description of mapping systems and catheters. (BSC

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ICs at Chart p.3.)3

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Under the circumstances here, given that the Regents base their claims not merely on the

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teaching of the patented method, but also on the sales and marketing of devices used to practice

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the patented method, the Regents must identify by model name and number those devices it

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contends are used in the direct infringement. It must identify all products of defendants it

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contends are so used, based upon the information reasonably available to it.

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To comply with Rule 3-1(c), the Regents must chart which products marketed by SJM and
BSC practice which claims of the patented method. To the extent that certain products are

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TactiCath (Category 1), EnSite Precision (Category 2), Advisor (Category 4), Ampere
(Category 3), and Agilis (Category 5). (SJM ICs at Chart p. 3.)
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Category 1 (TactiCath and FlexAbility); Category 2 (EnSite Precision Cardiac Mapping
System); Category 3 (1500T9-CP V.1.6 Cardiac Ablation Generator, Ampere, Nt2000ix);
Category 5 (Agilis NxT Steerable Introducer); and a description generally ascribed to “looped
Mapping Catheters” (presumably a subset of Category 4). (SJM ICs at Chart p. 3-4.)
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Unlike the SJM claim chart, the BSC chart for Claim 1 contains no functional
descriptions of exemplar products within Category 3, “RF Ablation Generators.”
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properly grouped together by function, and that function is an element of the claim, the Regents

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may define the group once, identifying specifically which products are included within that group,

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and repeat it as appropriate. However, the Regents must set forth how each of the categories of

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products in the alleged “comprehensive system” or product suite of the defendants maps onto the

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claims of the patent, rather than stating in a general manner that all products in all categories

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collectively practice all elements of all claims, as the ICs presently read.

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The Regents argue that their ICs, generally identifying categories or representative model

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names, are sufficient. They contend that “different models numbers of the representative products

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denote immaterial structural differences (such as diameters)” and are not required to be
specifically identified or charted, citing EON Corp II, 2015 WL 4914984, at *7. It is true that a

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United States District Court
Northern District of California

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party claiming indirect infringement by the alleged infringer’s acts of inducing third parties to

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practice a method claim need not accuse any products of the alleged infringer in order to state the

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predicate direct infringement. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d

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1354, 1365 (Fed. Cir. 2004) (alleging indirect infringement in the absence of any accused

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products, where doctors were induced to correlate elevated homocysteine levels with cobalamin

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deficiencies). Likewise, the Regents are not required to name specific doctors alleged to infringe

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directly. In re Bill of Lading, 681 F.3d 1323, 1336 (Fed Cir. 2012). However, here, the claims of

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indirect infringement specifically rely on defendants’ sales and marketing of their own products,

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and therefore rely on those products to establish the measure of damages. Under those

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circumstances, identification of the products used to carry out the direct infringement is necessary.

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With respect to the induced infringement claim, the Court is not persuaded that the

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additional step of identifying the structures in the products that perform the claimed function is

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necessary. Cf. Pat. L.R. 3-1(c) (“including . . . the identity of the structure(s), act(s), or material(s)

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in the Accused Instrumentality that performs the claimed function”). Nor is the Court persuaded,

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given the basis for the alleged induced infringement, that the Regents must chart each product

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against all elements of any asserted claim, since it is not aspects of the individual products that

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give rise to the direct infringement, but the use of a system or “suite” of certain products to carry

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out the patented method.
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However, to the extent that the Regents have asserted contributory infringement based on

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allegations that specific products of SJM and BSC are “especially made or especially adapted” for

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an infringing use of the patented method, the Regents are required to chart out those products on a

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claim-by-claim basis consistent with Rule 3-1(c), identifying specifically how the product, or a

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component of the product, is adapted or designed for use in practicing the limitations of the

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asserted claim. See EON Corp I, 2014 WL 1022536, at *4 (accused indirect infringer entitled to

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notice as to which of its devices contribute to infringement); Ricoh Co. v. Quanta Computer Inc.,

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550 F.3d 1325, 1337 (Fed. Cir. 2008) (indirect infringement established by component specially

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adapted for use in the patented process and with no substantial non-infringing use).

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United States District Court
Northern District of California

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III.

CONCLUSION
The Regents are ORDERED to serve amended infringement contentions as stated herein no

later than May 19, 2017.
With respect Patent L.R. 3-4(a), the Court waives defendants’ obligations to produce

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source code or technical schematics. Given the disclosure that the relevance of the accused

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devices relates to plaintiff’s damages calculation, good faith compliance with Rule 3-4(a) may be

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achieved bearing in mind such limitation. The May 18, 2017 deadline for defendants’ Rule 3-4

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document production shall be extended to June 1, 2017.

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This terminates Docket No. 49 in Regents v. St. Jude Medical Inc., 16-cv-6201-YGR, and
Docket No. 55 in Regents v. Boston Scientific Corporation, 16-cv-6266-YGR.
IT IS SO ORDERED.
Dated: May 5, 2017
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE

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