Solannex, Inc. v. MiaSole, Inc.

Filing 186

ORDER GRANTING-IN-PART MOTION TO COMPEL INFRINGEMENT CONTENTIONS. Signed by Judge Paul S. Grewal on April 18, 2013. (psglc1, COURT STAFF) (Filed on 4/18/2013)

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1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 United States District Court For the Northern District of California 8 SAN JOSE DIVISION 11 SOLANNEX, INC., 12 Plaintiff, 13 v. 14 MIASOLÉ, INC., 15 Defendant. 16 ) ) ) ) ) ) ) ) ) ) Case No.: 11-CV-00171-PSG ORDER GRANTING-IN-PART MOTION TO COMPEL SUPPLEMENTAL INFRINGMENT CONTENTIONS (Re: Docket No. 64) In this patent infringement case, Defendant MiaSolé (“MiaSolé”) moves to compel Plaintiff 17 18 Solannex (“Solannex”) to supplement its infringement contentions to comply with the specificity 19 requirements under Patent L.R. 3–1. Solannex responds that its contentions are sufficient to meet 20 its burden. The matter was submitted without oral argument pursuant to Civ. L.R. 7-1(b). Having 21 reviewed the parties' papers and Solannex’s infringement contentions and after considering oral 22 arguments, the court GRANTS-IN-PART MiaSolé’s motion. The court sets forth its reasoning 23 24 below. 25 26 27 28 1 Case No.: 11-00171-PSG ORDER I. 1 BACKGROUND On January 11, 2011, Plaintiff Solannex (“Solannex”) filed its first patent infringement case 2 3 against Defendant MiaSolé (“MiaSolé”) (“Solannex I”).1 Solannex alleges that MiaSolé’s MR- 4 series photovoltaic modules (MR-100, MR-107, and MR-111) infringe U.S. Patent No. 7,635,810 5 (“the ‘810 patent”) and U.S. Patent No. 7,868,249 (“the ‘249 patent”).2 The asserted patents claim 6 an interconnection structure – and method of manufacturing a portion of that structure – for 7 8 collecting energy from photovoltaic cells used in thin film solar panels. On February 21, 2012, Solannex filed a second case against MiaSolé (“Solannex II”), 9 United States District Court For the Northern District of California 10 alleging infringement of U.S. Patent No. 8,076,568 (“the ’568 patent”) and U.S. Patent No. 11 8,110,737 (“the ’737 patent”), both of which issued after the commencement of Solannex I.3 Both 12 cases involve “the same parties, patents from the same family with many of the same claim terms, 13 14 the same inventor, the same prosecution counsel, the same litigation counsel, many of the same witnesses, and the same accused products.”4 On February 1, 2013, the court issued an order 15 16 consolidating the two cases.5 To support its infringement contentions, Solannex relied mainly on three sources:6 17 18 19 20 1 Solannex, Inc. v. MiaSolé, Inc., Case No. 11-00171 PSG (N.D. Cal. Jan. 11, 2011). 21 2 See Solannex I, Docket No. 1. 22 3 Solannex, Inc. v. MiaSolé, Inc., Case No. 12-00832 PSG (N.D. Cal. Feb. 21, 2012). 23 4 24 25 26 27 Docket No. 168, at 1; see also Docket No. 58, Ex. 1 at ¶ 9 (noting that many the patents are in the same patent family and include many of the same terms, including “pattern,” “sheetlike substrate,” “holes extending through said substrate from said first side to said second side,” “substantially parallel,” and “substantially parallel traces of electrically conductive material.”). 5 Docket No. 168. The parties have consented to magistrate judge jurisdiction in each case. See Docket Nos. 16, 17. 6 28 Docket No. 65-1. 2 Case No.: 11-00171-PSG ORDER 1. “[S]ample of the interconnection component” that MiaSolé presented at the Markman 1 2 hearing in Solannex I and “an identical sample [that MiaSolé provided] to Solannex that 3 demonstrated the combination of the interconnection component with a photovoltaic cell[;]” 4 (collectively as “the Sample”); 5 2. Images on a presentation that MiaSolé made at the same Markman hearing in Solannex I 6 (“MiaSolé CC Presentation”); and 7 3. Images from a five-page presentation that MiaSolé made to the Institute of Electrical and 8 Electronics Engineers on February 8, 2012 (“MiaSolé IEEE Presentation”). 9 United States District Court For the Northern District of California 10 In addition to the above sources, Solannex also referenced a 70-second MiaSolé ’s video on 11 Youtube entitled “MiaSolé Reshaping Solar” and a “sample MiaSolé panel” procured by 12 Solannex.7 A few of Solannex’s infringement contentions, however, were alleged only on 13 information and belief, and failed to cite any factual basis.8 14 On January 15, 2013, MiaSolé filed this motion to compel Solannex to further specify its 15 16 infringement contentions, because Solannex “parroted the claim language, and then it cited three 17 items of support with no further specificity.”9 According to MiaSolé, Solannex “cut and pasted the 18 same support for 58 claims.”10 MiaSolé seeks to compel Solannex to supplement its contentions in 19 the following manner:11 20 1. Insert photographs of the “Sample” (as defined in Solannex’s claim chart) in the claim chart 21 and specifically identify the sub-components of the “Sample” that meet each claim element; 22 23 7 Id. at 24, 30 24 8 Id. at 1-31. 9 Docket No. 64 at 2. 25 26 10 Id. 11 Id. at 1. 27 28 3 Case No.: 11-00171-PSG ORDER 2. Specifically identify where in each of the two images in the “MiaSolé CC Presentation” (as 1 defined in Solannex’s claim chart) each of the claim elements are located; 2 3. Specifically identify which image(s), and which element within such image(s), in the 3 4 “MiaSolé IEEE Presentation” (as defined in Solannex’s claim chart) meets each claim 5 limitation; and 6 7 8 9 4. Provide factual support for all contentions made “on information and belief.” As to what constitutes “identify,” MiaSolé defined the term with the examples of “drawing arrows, circling, or otherwise highlighting.”12 II. United States District Court For the Northern District of California 10 LEGAL STANDARDS The Patent Local Rules of this District provide for a “streamlined mechanism to replace the 11 12 series of interrogatories that accused infringers would likely have propounded in its absence.”13 13 These rules “require parties to crystallize their theories of the case early in litigation and to adhere 14 to those theories once they have been disclosed.”14 They “provide structure to discovery and enable 15 16 17 the parties to move efficiently toward claim construction and the eventual resolution of their dispute.”15 The requirements for disclosure of a patentee’s infringement theories are set forth in Patent 18 19 Local Rule 3-1. Rule 3-1(c) requires a party claiming infringement to provide, in chart format, 20 21 12 22 13 Docket No. 64 at 7, n. 1. 23 FusionArc, Inc. v. Solidus Networks, Inc., Case No. C 06–06770 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal. Apr. 5, 2007) (quoting Network Caching Tech., LLC v. Novell Inc., Case No. C– 01–2079–VRW, 2002 WL 32126128 at *4 (N.D. Cal. Aug. 13, 2002)). 24 14 25 26 27 28 O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n. 12 (Fed. Cir. 2006); see also Atmel Corp. v. Info. Storage Devices, Inc., Case No. C 95–1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. Nov. 5, 1998). 15 Am. Video Graphics, L.P. v. Elec. Arts, Inc., 359 F. Supp. 2d 558, 560 (E.D. Tex. 2005); see also Network Caching Tech., 2002 WL 32126128, at *5 (noting that Patent Local Rule 3–1 are designed to “facilitate discovery”). 4 Case No.: 11-00171-PSG ORDER 1 2 “where each limitation of each asserted claim is found within each Accused Instrumentality.” Rule 3-1(d) requires a party claiming indirect patent infringement to identify: [a]ny 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. 3 4 5 6 Rule 3-1(e) requires the party to state “[w]hether each limitation of each asserted claim is alleged 7 to be literally present or present under the doctrine of equivalents in the Accused Instrumentality.” 8 These rules do not, however, “require the disclosure of specific evidence nor do they 9 United States District Court For the Northern District of California 10 require a plaintiff to prove its infringement case.”16 But to the extent appropriate information is reasonably available to it, a patentee must nevertheless disclose the elements in each accused 11 12 instrumentality that it contends practices each and every limitation of each asserted claim.17 III. 13 DISCUSSION MiaSolé takes issue with Solannex’s infringement contentions for two primary reasons: (1) 14 15 Solannex’s contentions based “on information and belief” are improper, and (2) Solannex fails to 16 identify how any of its purported sources of support for its infringement contentions map onto the 17 claim language. 18 19 20 21 22 23 24 25 26 27 28 16 See DCG Sys. v. Checkpoint Tech., LLC, Case No. 11–cv–03729–PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (quoting Whipstock Serv., Inc. v. Schlumberger Oilfied Sers., Case No. 6:09–cv–113, 2010 WL 143720, at * 1 (E.D. Tex. Jan. 8, 2010)). 17 Cf. FusionArc, 2007 WL 1052900, at *1 (denying motion to strike infringement contentions where “the record demonstrates that [patentee] Fusion Arc's [infringement contentions] reasonably disclose all of the information it presently possesses”). Where the accused instrumentality includes computer software based upon source code made available to the patentee, the patentee must provide “pinpoint citations” to the code identifying the location of each limitation. See Big Baboon Corp. v. Dell, Inc., 723 F. Supp. 2d 1224, 1228 (C.D. Cal. 2010). In at least one instance, this court has gone further, holding that even when no source code has been made available by the defendant, “reverse engineering or its equivalent” may be required for at least one of the accused products to identify where each limitation of each claim is located. Network Caching, LLC v. Novell, Inc., Case No. C 01–2079 VRW, 2002 WL 32126128, at *5 (N.D. Cal. Aug. 13, 2002). 5 Case No.: 11-00171-PSG ORDER A. Contentions Made “On Information and Belief” 1 The court first addresses the contentions grounded on “information and belief,” which 2 3 MiaSolé challenges that such contentions are insufficient because they lack evidentiary support.18 4 MiaSolé further asserts that regardless of both parties’ involvement in Solannex I, Solannex is 5 required to provide complete infringement contentions for each case. 6 Solannex explains that it only cited to publicly available information in its claim charts 7 8 9 because the parties at the time had not yet to come to an agreement regarding the use of documents produced in Solannex I. In its December 28 letter, Solannex proposed that “following an United States District Court For the Northern District of California 10 agreement to extend Solannex I’s documents’ protected status to the present action, it would 11 provide citations to MiaSolé’s documents and testimony for the elements grounded on information 12 and belief.”19 13 14 Patent L.R. 3-1(c) clearly specifies that “where each limitation of each asserted claim is found within each Accused Instrumentality.” The plaintiff cannot simply respond with “nothing 15 16 more than a conclusion based ‘on information and belief’ that something exists or occurs.”20 As 17 explained in Theranos v. Fuisz, the court found that simply alleging “on information and belief” 18 and representing “vague, conclusory, and confusing statements” does not satisfy the requirement 19 that the identifications be “as specific as possible.”21 20 21 Even though the ’568 patent and the ’737 patents are from the same family as those in Solannex I, they are, after all, different patents containing different claim language. Patent L.R. 3- 22 23 18 Docket No. 64 at 10. 24 19 Docket No. 72 at 11. 25 20 Id. at *5. 26 27 28 21 Theranos, Inc. v. Fuisz Pharma LLC, 11-CV-05236-YGR, 2012 WL 6000798, at *3 (N.D. Cal. Nov. 30, 2012) (quoting Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025 (N.D. Cal. 2010)). 6 Case No.: 11-00171-PSG ORDER 1 1(c) goes so far as to specify the need for infringement contention for “each limitation of each 2 asserted claim,” so different patents would certainly require separate infringement contentions. 3 Although Solannex’s point that “Solannex I discovery is instructive on some common infringement 4 issues because the two litigations concern the same accused products remains valid,”22 a plain 5 reading of the rule still requires separate infringement contentions given that the claims and, as a 6 7 8 9 United States District Court For the Northern District of California 10 result, the theories of infringement, would necessarily differ. As the parties have agreed that Solannex I documents may be used in Solannex II, 23 it would be almost effortless for Solannex to supplement its infringement contentions, as it so promised. Solannex therefore must supplement its infringement contentions grounded “on information and belief” with factual support. 11 B. Specific Identification of Where Each Claim Limitation is Located 12 13 14 MiaSolé argues that Solannex must draw and annotate on the relied-upon sources the components that Solannex believes to meet the limitations of the claims. To understand its complain, consider one example of Solannex’s contentions. Citing the Sample, MiaSolé CC 15 16 Presentation, and MiaSolé’s IEEE Presentation, Solannex alleges that MiaSolé’s products infringes 17 claim 7, containing the limitation “interconnection component comprises a sheetlike substrate 18 having a top, upward facing side and a bottom downward facing side.”24 In the corresponding 19 contention, however, Solannex merely states that “[t]he MiaSolé interconnecting component 20 comprises a sheetlike substrate having a top, upward facing side and a bottom, downward facing 21 side,”25 without highlighting specifically where each claim limitation is located. 22 23 24 26 Docket No. 72 at 12, ll. 14-15. 23 Docket No. 62. 24 Docket No. 64 at 4. 25 25 22 Id. 27 28 7 Case No.: 11-00171-PSG ORDER As mentioned above, Patent Local Rule 3-1 does not “require the disclosure of specific 1 2 evidence nor do they require a plaintiff to prove its infringement case.”26 As a practical 3 implementation, however, “all courts agree that the degree of specificity under Local Rule 3–1 4 must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a 5 ‘reasonable chance of proving infringement.’”27 6 MiaSolé overstates the requirements of Patent L.R. 3–1. MiaSolé is right that Solannex 7 8 9 must identify how MiaSolé's products infringe with as much specificity as possible with the information currently available to it. But Solannex is not obligated at this point to supply concrete United States District Court For the Northern District of California 10 evidence to support its infringement theory by pointing to the specific structures within the accused 11 product that embodies the claim limitations.28 Solannex already provided sufficient factual 12 support, including not only materials publicly available, but also materials supplied by MiaSolé. 13 14 In its infringement contentions, Solannex addressed each limitation separately and provided factual bases for each. The court agrees with MiaSolé that, throughout Solannex’s contention 15 16 chart, certain infringement explanations do closely mirror the claim language. However, the 17 factual support cited by Solannex remains specific and sufficient to put MiaSolé on notice. 18 MiaSolé can still look at pictorials of the Sample, MiaSolé CC Presentation and MiaSolé IEEE 19 Presentation to figure out which substructure within the product contains the claim limitations. 20 21 Moreover, other contentions contain more elaborate explanations on how the accused product embodies the claimed limitation. For example, claim 1 of the ‘737 Patent states that “said 22 interconnection components further characterized as having a collection region and an 23 24 25 26 See DCG Sys., 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (quoting Whipstock Serv., Inc., 2010 WL 143720, at *1). 26 27 27 28 28 Theranos, 2012 WL 6000798, at *3. Cf. Creagri, Inc. v. Pinnaclife Inc., LLC, 11-CV-06635-LHK-PSG, 2012 WL 5389775, at *3 (N.D. Cal. 2012). 8 Case No.: 11-00171-PSG ORDER 1 interconnection structure.” Solannex provided that “[t]he MiaSolé interconnection component has 2 a collection region having structure designed to collect current from the cell surface, as well as 3 structure to interconnect cells.”29 This explanation sufficiently crystallizes Solannex’s theory 4 rather than simply parroting the claim language. Overall, the contentions with factual support meet 5 the L.R. 3–1 standard in putting MiaSolé on notice of Solannex’s infringement theory. 6 IV. CONCLUSION 7 Solannex must supplement its contentions for those grounded on “information and belief.” 8 9 The rest of Solannex's contentions suffice to provide MiaSolé with its theories of infringement. United States District Court For the Northern District of California 10 11 IT IS SO ORDERED. 12 Dated: April 18, 2013 13 14 _________________________________ PAUL S. GREWAL United States Magistrate Judge 15 16 17 18 19 20 21 22 23 24 25 26 27 29 28 Docket No. 64 at 5. 9 Case No.: 11-00171-PSG ORDER

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