CES Group, LLC v. Energy Labs, Inc et al

Filing 75

ORDER Re: Discovery Dispute Joint Report #1 60 . Signed by Magistrate Judge Howard R. Lloyd on 2/27/2015. (hrllc1, COURT STAFF) (Filed on 2/27/2015)

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*E-Filed: February 27, 2015*

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

NOT FOR CITATION

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United States District Court

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SAN JOSE DIVISION

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CES GROUP, LLC,
Plaintiff,

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v.

No. C14-02919 BLF (HRL)
ORDER RE: DISCOVERY DISPUTE
JOINT REPORT #1

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ENERGY LABS INC.; et al.,

[Re: Docket No. 60]

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Defendants.
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Plaintiff sues Energy Labs Inc., DMG Corporation, and DMG North, Inc. for infringement

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of U.S. Patent Nos. 7,922,442; 8,414,251; 8,398,365; 8,562,283; 8,694,175; 8,727,700; and

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8,734,086. Under the current scheduling order, Defendants’ invalidity contentions were due on

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February 9, 2015. In late January 2015, Defendants objected to the amount of detail provided in

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Plaintiff’s infringement contentions, and asserted that they were not obligated to serve invalidity

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contentions.

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The parties filed the present Discovery Dispute Joint Report (“DDJR”) regarding this dispute

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on February 6, three days before Defendants’ invalidity contentions were due. Defendants object to

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Plaintiff’s infringement contentions as well as the documents produced therewith. Defendants seek

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an order: (1) requiring Plaintiff to supplement its infringement contentions to be in compliance with

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Patent L.R. 3-1, and (2) stating that Defendants’ invalidity contentions are due 45 days after

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Plaintiff serves infringement contentions that comply with Patent L.R. 3-1.

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

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Inc. v. Solidus Networks, Inc., No. C06–06770 RMW (RS), 2007 WL 1052900, at *2 (N.D. Cal.

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Apr. 5, 2007) (quoting Network Caching Tech., LLC v. Novell Inc., No. C01–2079 VRW, 2002 WL

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32126128, at *4 (N.D. Cal. Aug. 13, 2002)). As such, a plaintiff is required to include in its

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infringement contentions all facts known to it, including those discovered in its Fed. R. Civ. P. 11

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pre-filing investigation. Network Caching Tech., LLC, 2002 WL 32126128, at *4. The rules

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“require parties to crystallize their theories of the case early in litigation and to adhere to those

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theories once they have been disclosed.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467

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For the Northern District of California

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

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United States District Court

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F.3d 1355, 1366 n.12 (Fed. Cir. 2006); see also Atmel Corp. v. Info. Storage Devices, Inc., C95-

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1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. Nov. 5, 1998).

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Patent Local Rule 3-1 requires a plaintiff in a patent infringement action to serve

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infringement contentions setting forth “[e]ach claim of each patent in suit that is allegedly infringed

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by each opposing party” and identifying for each asserted claim “each accused apparatus, product,

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device, process, method, act, or other instrumentality (‘Accused Instrumentality’) of each opposing

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party of which the party is aware.” Patent L.R. 3-1(a), (b). The identification of each Accused

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Instrumentality should be “as specific as possible.” Patent L.R. 3-1(b). “Each product, device, and

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apparatus shall be identified by name or model number, if known. Each method or process shall be

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identified by name, if known, or by any product, device, or apparatus which, when used, allegedly

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results in the practice of the claimed method or process.” Id. In addition, a plaintiff must provide a

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“chart identifying specifically where each limitation of each asserted claim is found within each

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Accused Instrumentality, including for each limitation that such party contends is governed by 35

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U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality

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that performs the claimed function.” Patent L.R. 3-1(c).

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

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

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

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

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elements in each accused instrumentality that it contends practices each and every limitation of each

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

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Here, Plaintiff’s infringement contentions charts fail to satisfy Patent L.R. 3-1(c). First, the

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infringement contentions charts largely parrot the language of each claim limitation and frequently

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cite to over a hundred pages. For instance, for claim 16.D in Exhibit A-2, Plaintiff does not provide

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specifically where in the San Jose Project or brochures are “fan units configured to be ON and

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OFF.” Plaintiff recites the claim language and states that “[t]he control panel includes a motor

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circuit protector for each individual motor that, when tripped, turns the corresponding fan OFF.”

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Plaintiff then cites to approximately two hundred pages. Plaintiff does not sufficiently explain how

For the Northern District of California

United States District Court

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a circuit breaker turns a fan on. Such contentions do not aid in identifying where each claim

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limitation is found within the accused instrumentality. See Droplets, Inc. v. Amazon.com, Inc., No.

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C12-03733 HRL, 2013 WL 1563256, at *3 (N.D. Cal. Apr. 12, 2013) (finding that where

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infringement contentions chart parroted the respective language of each claim limitation and

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included 14 identical screen shots, “[w]ithout the aid of labels or some other indication of how the

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screenshots connect to the limitations, the infringement contentions fail[ed] to provide the factual

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basis of the contentions”).

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Second, the infringement contentions charts do not provide notice of Plaintiff’s theories of

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infringement as to Defendants’ customized air handling units. See FAC ¶¶ 13-15. Plaintiff’s

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infringement contentions only cite to a single “San Jose Project” and generally to Energy Lab’s

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Optiline Fan Arrays brochures. However, Plaintiff’s discovery requests define “Accused Products”

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as “all versions, past and present, of air handling units or fan assemblies that use or include fans in

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an array, including without limitation the Optiline Fan Arrays, that are used, sold, and/or offered to

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sell within the United States, and/or imported into the United States, by You.” The infringement

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contentions “must be sufficient to raise a ‘reasonable inference that all accused products infringe.’”

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Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1025 (N.D. Cal. 2010) (quoting

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Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066, 1075 (Fed. Cir. 2002)).

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In regards to claims asserted under the doctrine of equivalents, Defendants argue that the
infringement contentions contain no allegations other than boilerplate assertions of the doctrine of

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equivalents. Plaintiff, however, asserts that this issue was resolved in the meet-and-confer process.

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According to Plaintiff, Plaintiff told Defendants that its infringement contentions assert literal

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infringement and that, should it become necessary to address the doctrine of equivalents (e.g., based

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on Defendants’ future claim construction positions and/or the Court’s claim constructions), Plaintiff

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would follow the proper procedures to amend. This resolution that the parties reached during the

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meet-and-confer process is sufficient. The Court declines to reach this issue.

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Accordingly, the Court orders Plaintiff to supplement its infringement contentions to be in

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compliance with Patent L.R. 3-1 by March 13, 2015. In regards to Defendants’ request that the

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Court modify the deadline for serving invalidity contentions, this issue will be addressed when the

For the Northern District of California

United States District Court

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Court rules on Plaintiff’s motion to enforce the Court’s scheduling order, which is set for hearing on

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March 10, 2015.

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IT IS SO ORDERED.
Dated: February 27, 2015
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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C14-02919 BLF (HRL) Notice will be electronically mailed to:

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Byron Cain Beebe

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Evan N. Budaj

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Jared Bobrow

[e-mail], [e-mail]

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John L. Haller

[e-mail], [e-mail]

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Mark Andrew Saxon

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Michael D. Kanach [e-mail], [e-mail],
[e-mail]

[e-mail], [e-mail]

[e-mail], [e-mail]

[e-mail]

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Robert P. Andris

[e-mail], [e-mail], [e-mail]

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For the Northern District of California

United States District Court

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Stephen Sandor Korniczky [e-mail],
[e-mail], [e-mail]

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Susan Boensch Meyer

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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.

[e-mail]

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