Emblaze Ltd. v. Apple Inc.

Filing 394

ORDER GRANTING-IN-PART APPLE'S MOTION TO STRIKE INFRINGEMENT THEORIES FROM DR. MADISETTI'S by Judge Paul S. Grewal granting-in-part 304 (psglc2, COURT STAFF) (Filed on 3/14/2014)

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

EMBLAZE LTD.,

12

Plaintiff,

13
14

)
)
)
)
)
)
)
)
)
)

v.
APPLE INC.,

15

Defendant.

16

Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART
APPLE’S MOTION TO STRIKE
INFRINGEMENT THEORIES FROM
DR. MADISETTI’S EXPERT REPORT
(Re: Docket No. 304)

Before the court is Defendant Apple Inc.’s motion to strike infringement theories from

17
18

Dr. Madisetti’s expert report. 1 Plaintiff Emblaze Ltd. opposes. 2 The parties appeared for a

19

hearing. 3 As set forth below, after considering the parties’ arguments the court GRANTS Apple’s

20

motion to strike, but only IN-PART.

21

I. LEGAL STANDARDS

22
23

“Patent Local Rule 3 provides for patent disclosures early in a case and streamlines
discovery by replacing the ‘series of interrogatories that [parties] would likely have propounded’

24
25
1

See Docket No. 304.

2

See Docket No. 310.

3

See Docket No. 316.

26
27
28

1
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION TO STRIKE INFRINGEMENT THEORIES
FROM DR. MADISETTI’S EXPERT REPORT

1

without it.” 4 It is “designed to require parties to crystallize their theories of the case early in the

2

litigation and to adhere to those theories once they have been disclosed.” 5 In so doing,

3

Patent L.R. 3 provides “structure to discovery” and enables “the parties to move efficiently toward

4

claim construction and the eventual resolution of their dispute.” 6 Patent L.R. 3-1(c) requires a

5
6

party claiming patent infringement to serve a “chart identifying specifically where each limitation
of each asserted claim is found within each” accused instrumentality. In inducement cases, Patent

7
8
9
United States District Court
For the Northern District of California

10

L.R. 3-1(d) requires the patent owner to (1) identify “any direct infringement,” (2) describe the acts
“of the alleged indirect infringer that contribute to or are inducing” that direct infringement and, if
applicable, (3) identify the “role” of each induced party in the direct infringement. 7

11

Patent L.R. 3 does not, however, “require the disclosure of specific evidence” or “require a

12

plaintiff to prove its infringement case.” 8 “But to the extent appropriate information is reasonably

13
14

available to it, a patentee must nevertheless disclose the elements in each accused instrumentality
that it contends practices each and every limitation of each asserted claim.” 9 At bottom,

15
16
17
18
19
20
21
22

4

France Telecom, S.A. v. Marvell Semiconductor, Inc., Case No. 3:12-cv-04967-WHA-NC,
2013 WL 1878912, at *1 (N.D. Cal. May 3, 2013) (quoting Network Caching Tech. LLC v. Novell
Inc., Case No. 3:01-cv-02079-VRW, 2002 WL 32126128, at *4 (N.D. Cal. Aug.13, 2002)).
5

Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F.Supp.2d 1121, 1123
(N.D. Cal. 2006).
6

23

Creagri, Inc. v. Pinnaclife Inc., LLC, Case No. 5:11-cv-06635-LHK-PSG, 2012 WL 5389775,
at *2 (N.D.Cal. Nov. 2, 2012).

24

7

25

8

26
27

Creagri, 2012 WL 5389775, at *2 (citing DCG Sys. v. Checkpoint Tech., LLC,
Case No. 5:11-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)).
9

28

Patent L.R. 3-1(d).

Id.

2
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION TO STRIKE INFRINGEMENT THEORIES
FROM DR. MADISETTI’S EXPERT REPORT

1
2

Patent L.R. 3-1 is designed “to require parties to crystallize their theories of the case early in the
litigation and to adhere to those theories once they have been disclosed.” 10
II. DISCUSSION

3

The parties agree that this is a pure Akamai-styled inducement case: Apple is alleged to

4
5
6
7

have induced multiple actors who cumulatively infringed Emblaze’s patent claims. 11 As an
inducement case, Patent L.R. 3-1(d) applies. Emblaze thus had an obligation under the Patent L.R.
to identify Apple’s direct infringement and describe the acts and roles of the induced infringers.

8
9
United States District Court
For the Northern District of California

10

The theory of direct infringement – Apple’s published marketing documents and support of live
streaming – is undisputed.
The dispute centers on whether portions of Madisetti’s report should be struck because the

11
12

report did not hew closely enough to the revised patent disclosures served on Apple January 31,

13

2012. 12 As Apple sees it, Emblaze carried an obligation to build out its theories from its patent

14
15

disclosures. Although Apple concedes Emblaze’s original patent disclosures disclosed some
named content providers, 13 those content providers were removed from Emblaze’s revised patent

16
17
18

10

InterTrust Technologies Corp. v. Microsoft Corp., Case No. 4:01-cv-01640-SBA,
2003 WL 23120174, at *1 (N.D. Cal. Dec. 1, 2003) (citations omitted).

11

19
20
21
22
23
24
25
26
27
28

See Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1307-08 (Fed. Cir.
2012)
The induced infringement provision of the Patent Act, 35 U.S.C. § 271(b), provides that
“[w]hoever actively induces infringement of a patent shall be liable as an infringer.”
Because section 271(b) extends liability to a party who advises, encourages, or otherwise
induces others to engage in infringing conduct, it is well suited to address the problem
presented by the cases before us, i.e., whether liability should extend to a party who induces
the commission of infringing conduct when no single “induced” entity commits all of the
infringing acts or steps but where the infringing conduct is split among more than one other
entity.
12
13

See Docket No. 304-5, Ex. 2.

See Docket No. 312-1, Ex. A at 5 (“The remainder of the limitations in each of claims 1, 2, 8, 9,
10, 11, 12, 13, 14, 21, 23, 24, 25, 26, 27, 28, 29, 36, 37, 38, 40, 41 of the ’473 patent are performed
by or incorporated in devices operated by the following third parties that contribute to the
infringement by using Apple’s HTTP Live Streaming to stream content to users:
2. ABC News, 47 West 66th Street, New York, NY 10023.
3
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION TO STRIKE INFRINGEMENT THEORIES
FROM DR. MADISETTI’S EXPERT REPORT

1

disclosures. Emblaze counters that its disclosures in this case are sufficient – the revised

2

contentions point out that there may be “additional third parties, unknown to Plaintiff due to

3

defendant’s incomplete document production at this time, that also perform one or more steps of

4

the method recited in the asserted claims of the ’473 patent, and/or make, use or sell apparatus

5

recited in the asserted claims of the ‘473 patent.” 14 Emblaze’s references in both the original and

6
7
8

revised disclosures, coupled with references to content providers in the second amended
complaint, 15 are sufficient.
The court agrees with Emblaze. The issue here is fair notice, not necessarily where it

9
United States District Court
For the Northern District of California

10

originates. To hold otherwise would be to champion form over substance. 16 In this case, Apple

11

has been on notice of Emblaze’s general claims: Emblaze urges Apple’s marketing live streaming

12

technology to end-users and intermediaries – including both content providers and

13
14

content-distribution networks – induced the infringement of Emblaze’s patent claims. Although
the live streams accused in this case are on the surface outward-facing and may be viewed by

15
16
17
18
19
20

3. Akamai Technologies, Inc., 8 Cambridge Center, Cambridge, MA 02142.
4. Brightcove, Inc., One Cambridge Center, Cambridge, MA 02142.
5. CBS Corporation, 51 West 52nd Street, New York, NY 10019-6188.
6. ESPN, Inc., ESPN Plaza, Bristol CT 06010.
7. Internet Video Archive, LLC, 207 White Horse Pike, Haddon Heights, NJ 08035.
8. Major League Baseball, 245 Park Avenue, 31st floor, New York, NY 10167.
Upon information and belief, there are additional third parties, unknown to Plaintiff due to
defendant’s incomplete document production at this time, that also perform one or more steps of
the method recited in the asserted Claims of the ’473 patent, and/or make, use or sell apparatus
recited in the asserted claims of the ’473 patent.”

21

14

22

15

23
24
25
26

See Docket No. 143 at ¶ 30 (“Upon information and belief, Apple and other content providers,
such as the NFL, Major League Baseball, CNN, Fox News, Fox Sports, CBS Sports, ABC News,
NBC Sports, and other third parties unknown at this time, use Apple’s Media Stream Segmenter
software and/or Apple’s Compressor software and/or Apple’s Media File Segmenter software to
stream real-time content to end users, and such content providers, together with end users who
have devices for downloading such content using software implementing the HTTP Live Streaming
protocol, directly infringe at least one or more of claims 1, 2, 8, 9, 10, 11, 12, 13, 14, 21, 23, 24, 25,
26, 27, 28, 29, 36, 37, 38, 40, and 41 of Emblaze’s ’473 Patent.”).
16

27
28

See Docket No. 304-5, Ex. 2 at 5.

See Morrison v. Blitz, Case No. 88-5607-PNL, 1992 WL 75088, at *1 (S.D.N.Y. Apr. 1, 1992)
(“In some circumstances, the denial of a motion because of a party’s failure to heed local rules of
civil practice would be pointless championing of form over substance.”).
4
Case No. 5:11-cv-01079-PSG
ORDER GRANTING-IN-PART APPLE’S MOTION TO STRIKE INFRINGEMENT THEORIES
FROM DR. MADISETTI’S EXPERT REPORT