Nazomi Communications Inc v. Nokia Corporation et al

Filing 381

ORDER DENYING DEFENDANT'S MOTION TO STRIKE re 351 (rmwlc2, COURT STAFF) (Filed on 7/16/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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NAZOMI COMMUNICATIONS, INC.,
Plaintiff,

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v.
NOKIA CORPORATION et
al.,
Defendants.

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Case No.: 10-CV-04686-RMW
ORDER DENYING DEFENDANT’S
MOTION TO STRIKE

[Re Dkt No. 351]

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Defendant Nokia Corporation (“Nokia”) seeks to strike portions of plaintiff Nazomi

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Communications, Inc.’s (“Nazomi”) preliminary infringement contentions (“PICs”). The court has

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heard the arguments of the parties and considered the papers submitted. For the reasons set forth

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below, the court denies the motion.

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I. BACKGROUND

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As discussed in the court’s prior orders, Nazomi owns patents claiming an invention

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“capable of” executing stack- or Java-based instruction sets. See Dkt. No. 1, Ex. 1. Nazomi alleges

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that its patents are infringed by products containing certain ARM processor cores that include

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technology called “Jazelle.” In its Second Amended Complaint (“SAC”), Nazomi asserts that the

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Nokia 6350 (“6350”) cell phone incorporates an ARM processor core and infringes one or more

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claims of the patents-in-suit. See Dkt. No. 286.

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CVH

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Case No.: 10-CV-04686-RMW
ORDER DENYING DEFENDANT’S MOTION TO STRIKE

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On July 25, 2011, Nazomi served its PICs, listing the Nokia 6350 and forty-four other

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Nokia products as accused instrumentalities. 1 The PICs allege that “the Nokia devices, which

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include ARM processors with the Jazelle technology, are capable of executing register based

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instructions … and stack-based instructions.” Dkt. No. 351, Ex. 1 at 2. The PICs also assert that

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“the exemplary Nokia 6350 … can execute … Java-based applications.” Id. at 1.

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In addition, the PICs include a screenshot of the “JBenchmark ACE testing result on the

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Nokia 6350,” showing that the device is “Jazelle enabled.” Id. at 2. As explained at oral argument,

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JBenchmark ACE is a computer program that can be helpful, but not conclusive, in determining

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whether a device uses the Jazelle architecture contained in the ARM core. Nazomi did not run the

United States District Court
For the Northern District of California

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JBenchmark ACE test on any product other than the 6350.

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On May 25, 2012, Nokia moved to strike Nazmoi’s PICs, arguing that Nazomi failed to

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undertake a reasonable investigation as to whether any product other than the 6350 infringed its

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patents.

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II. DISCUSSION

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Patent Local Rule 3–1 provides that a plaintiff in a patent infringement action must serve

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PICs setting forth “[e]ach claim of each patent in suit that is allegedly infringed by each opposing

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party” and identifying for each claim “each accused apparatus, product, device, process, method,

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act, or other instrumentality (‘Accused Instrumentality’) of each opposing party of which the party

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[claiming infringement] is aware.” Patent L.R. 3–1(a) & (b). In order to satisfy Local Rule 3-1 and

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Fed. R. Civ. P. 11, PICs must “permit a reasonable inference that all accused products infringe.”

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Renesas Tech. Corp. v. Nanya Tech. Corp., No. 03-05709, 2004 WL 2600466, at *2 (N.D. Cal.

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Nov. 10, 2004) (quoting Antonious v. Spaulding & Evenflo Cos., 275 F.3d 1066, 1075 (Fed. Cir.

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2002)). A plaintiff must be able to show “why it believed before filing the claim that it had a

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reasonable chance of proving infringement.” View Engineering Inc. v. Robotic Vision Systems Inc.,

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208 F.3d 981, 986 (Fed. Cir. 2000) (applying Ninth Circuit law). However, a party claiming

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infringement does not have to “reverse engineer” every one of the accused products. Id.

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Nazomi’s identification of accused instrumentalities lists 48 model names, but for the purposes of
this motion, three pairs of products are treated as the same (N95 8GB/ N95-1, N81 8GB/N81, and
5800 Navigation Edition/5800 XpressMusic). See Dkt. No. 351.
CVH
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Case No.: 10-CV-04686-RMW
ORDER DENYING DEFENDANT’S MOTION TO STRIKE

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The court finds that Nazomi’s PICs satisfy the requirements of Local Rule 3-1 and Rule 11.

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As Nazomi has emphasized throughout this litigation, because its patents claim an invention that is

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merely “capable of” conducting certain operations, its infringement case turns on the presence of

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Jazelle-circuitry in an accused product, not whether Jazelle is enabled. Nokia does not dispute that

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each of the products identified in the PICs contain Jazelle. Thus, while Nazomi may have been

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able to discern whether Jazelle was enabled by conducting further JBenchmark testing or

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consulting publicly available databases, the fact that each product contained Jazelle is enough to

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show a “reasonable chance of proving infringement” under Nazomi’s current theory. View

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Engineering, 208 F.3d at 986.

United States District Court
For the Northern District of California

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Similarly, Nokia’s assertion that many of the accused products are not Jazelle enabled does

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not warrant striking the PICs. The Patent Local Rules are “intended to hasten resolution on the

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merits, they are not a mechanism for resolving the merits of the parties’ dispute.” FusionArc, Inc.

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v. Solidus Networks, Inc., No. 06-06760, 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007). The

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question of whether Nazomi’s patents cover products that are not Jazelle enabled has been hotly

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debated, but it is not the proper subject of a motion to strike under Local Rule 3-1. Indeed, several

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dispositive motions, which the court is scheduled to hear on August 9, 2012, have been filed on the

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issue. Thus, while Nokia’s contentions may ultimately prove correct, the court does not address

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them at this time.

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III. ORDER

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For the foregoing reasons the court denies Nokia’s motion to strike.

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Dated:__7/16/12_________

_____________________________________
RONALD M. WHYTE
United States District Judge

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CVH

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Case No.: 10-CV-04686-RMW
ORDER DENYING DEFENDANT’S MOTION TO STRIKE