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

Filing 79

ORDER Re: 61 Plaintiff's Motion to Enforce the Court's Scheduling Order. Signed by Magistrate Judge Howard R. Lloyd on 3/6/2015. (hrllc1, COURT STAFF) (Filed on 3/6/2015)

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*E-Filed: March 6, 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NOT FOR CITATION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.
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No. C14-02919 BLF (HRL)
ORDER RE: PLAINTIFF’S MOTION
TO ENFORCE THE COURT’S
SCHEDULING ORDER

ENERGY LABS INC.; et al.,
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[Re: Docket No. 61]
Defendants.
____________________________________/
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. The parties filed Discovery Dispute Joint Report #1 regarding this dispute on February

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6, three days before Defendants’ invalidity contentions were due. On February 27, 2015, the Court

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found that Plaintiff’s infringement contentions failed to comply with Patent L.R. 3-1, and ordered

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Plaintiff to amend its infringement contentions by March 13, 2015.

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Presently before the Court is Plaintiff’s motion to enforce the Court’s scheduling order.

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Plaintiff requests that the Court require Defendants to comply with the Court’s scheduling order and

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serve their Patent L.R. 3-3 and 3-4 disclosures immediately. The motion is deemed suitable for

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determination without oral argument. The March 10, 2015 hearing is vacated. Civ. L.R. 7-1(b).

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Patent L.R. 3-3 and 3-4 require a party opposing a claim of patent infringement to serve its

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invalidity contentions and related documents no later than forty-five days after it receives service of

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infringement contentions under Patent L.R. 3-1. “The service of invalidity contentions is contingent

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on the production of infringement contentions that comply with Rule 3-1. Courts in this district

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routinely excuse defendants from producing invalidity contentions until the plaintiff serves

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infringement contentions that unambiguously meet the requirements of Rule 3-1.” Cal. Inst. of

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Computer Assisted Surgery, Inc. v. MedSurgical Servs., No. C10-05067, 2011 U.S. Dist. LEXIS

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154627, at *10 (N.D. Cal. Sept. 1, 2011); see also Infineon Technologies v. Volterra Semiconductor,

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No. C11-06239, 2013 WL 322570, at *5 (N.D. Cal. Jan. 28, 2013) (“Courts generally stay a patent

For the Northern District of California

United States District Court

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defendant’s discovery obligations until the plaintiff meets the burden of providing infringement

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contentions compliant with Patent L.R. 3-1.”) (internal quotation marks and alterations omitted)).

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Here, the Court has found that Plaintiff’s previously served infringement contentions do not

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comply with Patent L.R. 3-1 in its Order Re: Discovery Dispute Joint Report #1, Dkt. No. 75.

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Accordingly, Defendants are not required to produce invalidity contentions until Plaintiff serves

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

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Defendants request that their invalidity contentions be due forty-five days after Plaintiff

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serves infringement contentions that comply with Patent L.R. 3-1. This request asks for too much.

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Because Defendants have had “ample time to prepare [their] invalidity contentions, which do not

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depend for their substance on plaintiff’s infringement contentions,” Defendants are ordered to

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produce invalidity contentions within fourteen (14) days of Plaintiff’s production of its amended

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infringement contentions. Tessenderlo Kerley, Inc. v. OR-Cal, Inc., No. C11-04100, 2012 WL

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1253178, at *6 (N.D. Cal. Apr. 13, 2012) (ordering the defendant to serve its invalidity contentions

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within fourteen days following the service of the plaintiff’s amended infringement contentions).

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IT IS SO ORDERED.
Dated: March 6, 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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