SSL Services, LLC vs. Cisco Systems, Inc.

Filing 87

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 02/24/2016. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SSL SERVICES, LLC,
v.
CISCO SYSTEMS, INC.

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Case No. 2:15-cv-00433-JRG-RSP

MEMORANDUM ORDER
Before the Court is a Motion to Transfer Venue to the District of Massachusetts filed by
Defendant Cisco Systems, Inc. (“Cisco”). (Dkt. No. 23; “Motion to Transfer”). Also before the
Court is Cisco’s Motion to Compel Amended Infringement Contentions and to Modify the
Docket Control Order. (Dkt. No. 51; “Motion to Compel”).
I. BACKGROUND
This is a patent infringement case brought by SSL Services, LLC (“SSL”) against Cisco,
alleging infringement of U.S. Patent No. 6,158,011 (the “’011 Patent”). The ’011 Patent is
entitled “Multi-Access Virtual Private Network” and relates to methods and systems for
establishing secured communications over an open network between different communications
applications. On July 23, 2015 SSL served Cisco with Infringement Contentions, per Pat. L. R.
3-1, accusing Cisco’s AnyConnect Secure Mobility Solution, AnyConnect VPN, Secure Remote
Access Solution, and SSL VPN products of infringement. (Dkt. No. 51-4 at 3).1
SSL is a Delaware LLC located in Potomac, Maryland. (Dkt. No. 23 at 1). Cisco is a
California corporation headquartered in San Jose, California. (Id.). Cisco’s website lists offices

1

Citations to the docket use CM/ECF page numbers.

across the United States;2 two of the listed offices are located in Massachusetts and five are
located in Texas.
In 2008, SSL filed a lawsuit in this Court against Citrix Systems, Inc. (“Citrix”) alleging
infringement of, inter alia, the ’011 Patent. SSL Services, Inc. v. Citrix Systems, Inc., No. 2:08cv-00158 (E.D. Tex.) (“Citrix Litigation”). The Citrix Litigation proceeded through claim
construction, pretrial, trial, and post-trial motion practice before Judge Ward and Judge Gilstrap
(also the Judge assigned to this case) in the Eastern District of Texas. See (Dkt. No. 23 at 9). The
judgment was appealed to the Court of Appeals for the Federal Circuit, where it was affirmed.
See Citrix Litigation Dkt. No. 334. The original complaint in the Citrix Litigation was filed April
11, 2008, and the Citrix Litigation concluded March 11, 2015, just two weeks before this case
was filed.
II. MOTION TO TRANSFER VENUE
Cisco asserts this case should be transferred to the District of Massachusetts per
28 U.S.C. § 1404(a). (Dkt. No. 23). SSL opposes transfer. After considering the evidence and
weighing the pertinent factors, the Court finds that transfer is not warranted in this case.
A. APPLICABLE LAW
Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil action to any other district or division
where it might have been brought.” 28 U.S.C. § 1404(a). The first step in a Court’s transfer
analysis is deciding “whether the judicial district to which transfer is sought would have been a
district in which the claim could have been filed.” In re Volkswagen AG, 371 F.3d 201, 203 (5th
Cir. 2004) (“In re Volkswagen I”).
2

See http://www.cisco.com/web/siteassets/contacts/offices/us.html

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If that threshold is met, the Court then analyzes public and private factors relating to the
convenience of parties and witnesses and the interests of particular venues in hearing the case.
See Humble Oil & Ref. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir. 1963); In re
Nintendo Co., Ltd., 589 F.3d 1194, 1198 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315, 1319 (Fed. Cir. 2009). The private factors are: 1) the relative ease of access to sources of
proof; 2) the availability of compulsory process to secure the attendance of witnesses; 3) the cost
of attendance for willing witnesses; and 4) all other practical problems that make trial of a case
easy, expeditious, and inexpensive. In re Volkswagen I, 371 F.3d at 203; In re Nintendo, 589
F.3d at 1198; In re TS Tech, 551 F.3d at 1319. The public factors are: 1) the administrative
difficulties flowing from court congestion; 2) the local interest in having localized interests
decided at home; 3) the familiarity of the forum with the law that will govern the case; and 4) the
avoidance of unnecessary problems of conflict of laws or in the application of foreign law. In re
Volkswagen I, 371 F.3d at 203; In re Nintendo, 589 F.3d at 1198; In re TS Tech, 551 F.3d at
1319.
The plaintiff’s choice of venue is not a factor in this analysis. In re Volkswagen of Am.,
Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) (“In re Volkswagen II”). Rather, the plaintiff’s choice
of venue contributes to the defendant’s burden of proving that the transferee venue is “clearly
more convenient” than the transferor venue. In re Volkswagen II, 545 F.3d at 315; In re
Nintendo, 589 F.3d at 1200; In re TS Tech, 551 F.3d at 1319. Although the private and public
factors apply to most transfer cases, “they are not necessarily exhaustive or exclusive,” and no
single factor is dispositive. In re Volkswagen II, 545 F.3d at 314–15.
Timely motions to transfer venue should be “should [be given] a top priority in the
handling of [a case]” and “are to be decided based on ‘the situation which existed when suit was

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instituted.’” In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); In re EMC Corp., Doc.
No. 2013-M142, 2013 WL 324154 (Fed. Cir. Jan. 29, 2013) (quoting Hoffman v. Blaski, 363
U.S. 335, 443 (1960)).
B. ANALYSIS
1. Proper Venue
Neither party disputes that both the Eastern District of Texas and the District of
Massachusetts are proper venues. See (Dkt. No. 23 at 11).
2. Private Interest Factors
a. Relative Ease of Access to Sources of Proof
“In patent infringement cases, the bulk of the relevant evidence usually comes from the
accused infringer. Consequently, the place where the defendant’s documents are kept weighs in
favor of transfer to that location.” In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)
(citation omitted). As Cisco’s brief correctly states, “the physical location of documents and
evidence remains an important factor despite advances in copying and electronic data transfer
technologies” (Dkt. No. 23 at 12); see In re Genentech, 566 F.3d at 1345 (ignoring the physical
location of evidence is improper because it “would render this factor superfluous”).
Cisco represents that some documents related to the accused products “are maintained
locally” in Cisco’s Massachusetts offices. To support this contention, Cisco cites the declarations
of Product Manager Peter Davis (Dkt. No. 23-15; “Davis Dec.”), Engineering Manager Scott
Goldman (Dkt. No. 23-16; “Goldman Dec.”), and Legal Systems Director Daniel Black (Dkt.
No. 23-14; “Black Dec.”). (Dkt. No. 23 at 12). However, none of these declarations state that any
relevant documents are actually located in Massachusetts. Instead, both the Davis and Goldman
declarations state that Massachusetts-based Cisco employees “regularly save documents to and

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retrieve documents from Cisco’s central repository known as EDCS, which can be accessed from
Cisco’s offices in Massachusetts.” 3 Davis Dec. at ¶ 8; Goldman Dec. at ¶ 10; see also (Dkt. No.
23-17 at ¶ 7). The Black Declaration clarifies that “[t]he central repository for Cisco’s technical
documents, a repository called ‘EDCS,’ is stored on servers located at or near Cisco’s office in
San Jose, California.” Black Dec. at ¶ 6. The Black Declaration also states:
Cisco also has other servers for other Cisco documents and databases in other
locations in the United States, including Research Triangle Park (Durham), North
Carolina, Allen, Texas and Richardson, Texas. These servers are used to store
specific types of Cisco databases and documents, regardless of where those
particular documents are created or their author resides. For instance, a database
called “Teradata” that contains revenue information is located in Richardson,
Texas. Human resources documents, contracts, and other non-technical
documents are stored in “Documentum,” which is hosted on servers in Allen,
Texas. The servers located in Research Triangle Park are used for backup and
data replication of various data sources.
Id. at ¶ 7. The data stored on these servers can be accessed “in any of Cisco’s offices.” Id. at ¶ 8.
Cisco’s Motion to Transfer does not take a position on whether the Texas and North Carolina
servers contain potentially relevant evidence. Neither party contests that SSL’s evidence is
located in Maryland and Virginia, not in Massachusetts or Texas. See (Dkt. No. 23 at 13; Dkt.
No. 25 at 19).
Cisco’s Motion to Transfer simultaneously urges the Court to focus on “the physical
location of documents and evidence” while arguing that the EDCS documents stored on Cisco’s
servers should be imputed to Cisco’s Massachusetts office because employees can remotely
access them in Massachusetts. However, Cisco admits that the EDCS documents be accessed “in
3

The Davis and Goldman declarations go on to say: “Employees also have the ability to store
documents locally on their hard drives. Any documents saved locally by [Massachusetts-based
Cisco employees] are located in Boxborough, Massachusetts.” However, neither declaration
states that any documents are in fact saved locally, only that employees “have the ability” to do
so. To the extent documents are in fact saved locally, neither declaration represents that any such
documents are relevant to this case.

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any of Cisco’s offices,” including, presumably, its offices in Texas. More importantly, the
Federal Circuit has emphasized that the physical location of evidence remains an important
consideration in the venue analysis irrespective of the ease with which it can be remotely
accessed; else this factor would be “superfluous.” See In re Genentech, 566 F.3d at 1345.
Accordingly, Cisco has not shown that any relevant documentary evidence is located in
Massachusetts. Instead, Cisco’s declarations show that the EDCS evidence is stored on its
servers in San Jose, California. Moreover, the Black Declaration states that “revenue
information” is stored on Cisco’s server in Richardson, Texas and various documents including
“contracts” are stored on Cisco’s server in Allen, Texas.4 Cisco’s Motion to Transfer is silent on
question of whether the evidence stored on its Texas servers is relevant to this case, but it is
reasonable to assume that some discoverable information exists among “revenue information”
and “contracts.”
Cisco’s evidence housed in California—which appears to constitute the most
consequential corpus of evidence for purposes of the venue analysis—is more proximate to
Texas than to Massachusetts and is therefore more readily accessible in this district. SSL’s
evidence is more proximate to Massachusetts than to Texas, but Cisco’s Motion correctly argues
that “the bulk of the relevant evidence usually comes from the accused infringer” so the Court
gives less weight to the location of SSL’s evidence. See In re Genentech, 566 F.3d at 1345.
Finally, Cisco identifies seemingly relevant classes of documents housed in its Eastern District of
Texas servers. Any such evidence is, of course, more accessible in this District than in
Massachusetts. Cisco offers no proof that any evidence is actually located in Massachusetts.
Accordingly, the Court finds that the relevant sources of proof are more readily accessible in the
4

Both offices are located in Collin County in the Eastern District of Texas.

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Eastern District of Texas than in the District of Massachusetts; this factor weighs against
transfer.
b. Cost of Attendance for Willing Witnesses
“The convenience of the witnesses is probably the single most important factor in a
transfer analysis.” In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009). In assessing this
factor, the Court considers the convenience of the party and non-party witnesses.

The

convenience of the non-party witnesses carries the greatest weight in the analysis. Aquatic
Amusement Assoc., Ltd. v. Walt Disney World Co., 734 F. Supp. 54, 57 (N.D.N.Y. 1990); see
also 15 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 3851 (3d ed.
2012). “A district court should [also] assess the relevance and materiality of the information the
witness may provide” but should not require the movant to identify “key witnesses,” or show
“that the potential witness has more than relevant and material information . . . .”

In re

Genentech, 566 at 1343–44.
SSL does not appear to contest the following factual assertions made in Cisco’s Motion
to transfer: (1) “Cisco is not aware of any party or non-party witnesses located in Texas”; (2) “it
appears that all of Cisco’s witnesses are located in the District of Massachusetts”; and (3) “SSL
and all identified third party witnesses are located in Maryland or Virginia.” (Dkt. No. 23 at 14–
16; Dkt. No. 25 at 15–16).
SSL does argue, however, that the Eastern District of Texas is a more convenient forum
for the identified third party witnesses, none of whom are located in Massachusetts. (Dkt. No. 25
at 15–16). First, SSL argues that the same third party witnesses identified in Cisco’s Motion to
Transfer (the named inventors of the ’011 Patent and representatives of the predecessor company
to SSL) were willing and able to travel to this district for the prior Citrix Litigation. Second, SSL

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contends that third party witnesses would incur lower travel and lodging costs travelling to rural
East Texas than they would traveling to urban Massachusetts, notwithstanding the witnesses’
closer physical proximity to Massachusetts.
Although the Court does not discount the relevance of SSL’s arguments, they are not
sufficient to overcome the uncontested facts: no witnesses are located in this district, Cisco’s
witnesses are located in Massachusetts, and identified third party witnesses reside closer to
Massachusetts that to Texas. See In re Volkswagen I, 371 F.3d at 204–205 (“inconvenience to
witnesses increases in direct relationship to the additional distance to be traveled”). Accordingly,
this factor weighs in favor of transfer.
c. Availability of Compulsory Process to Secure the Attendance of Witnesses
The Court may command a person who “resides, is employed, or regularly transacts
business in person” in Texas to attend trial in Marshall if she “would not incur substantial
expense.” Fed. R. Civ. P. 45(c)(1)(B). The Court also may command a person to attend a
deposition at a location “within 100 miles of where the person resides, is employed, or regularly
transacts business in person.” Fed. R. Civ. P. 45 (a)(2); see id. (c)(1)(A), (d)(3)(a). Party
witnesses normally do not require compulsory process. The Court’s analysis of this factor
therefore focuses on third-party witnesses. See In re Hoffman-La Roche, Inc., 587 F.3d 1333,
1337–38 (Fed. Cir. 2009).
Cisco’s Motion to Transfer admits that “all [third party witnesses] are in Maryland or
Virginia and thus are not subject to the subpoena power of either the transferor or transferee
forum.” (Dkt. No. 23 at 14). However, Cisco reiterates its argument that third party witnesses
will be more inconvenienced traveling to Texas than they would traveling to Massachusetts. (Id.)

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This factor does not focus on witness convenience; the issue of convenience was considered and
addressed supra.
Because neither this district nor the proposed transferee district would have subpoena
power over third party witnesses, this factor is neutral.
d. All Other Practical Problems that Make Trial of a Case Easy, Expeditious, and
Inexpensive
The parties hotly contest this factor, focusing on the effect of the prior Citrix Litigation.
SSL argues that the Citrix Litigation overlaps significantly with the present case: “this Court has
devoted substantial time and resources to become knowledgeable and familiar with SSL and its
’011 Patent family, and issues concerning that Patent’s interpretation, validity, infringement, and
file/reexamination history.” (Dkt. No. 25 at 12). SSL contends this Court’s familiarity with the
’011 Patent from the Citrix Litigation is “alone” sufficient to deny transfer under controlling
precedent. (Dkt. No. 25 at 11–12); In re Vicor Corp., 493 Fed. Appx. 59, 61 (Fed. Cir. 2012)
(“We have held that the existence of multiple lawsuits involving the same issues is a paramount
consideration when determining whether a transfer is in the interest of justice. . . . Judicial
economy may be served even when two related cases before the same court may not involve the
same defendants and accused products.”) (citations omitted); In re Vistaprint Ltd., 628 F.3d
1342, 1347 (Fed. Cir. 2010) (“it is entirely within the district court’s discretion to conclude that
in a given case the § 1404(a) factors of public interest or judicial economy can be of ‘paramount
consideration,’ and as long as there is plausible support of record for that conclusion we will not
second guess such a determination, even if the convenience factors call for a different result”)
(citations omitted).
Cisco takes the position that any judicial economy benefits from the Citrix Litigation are
insignificant: “it has been three years since the trial in the Citrix case. That trial involved

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different products than this case, and thus none of the evidence regarding the question of
infringement will overlap. It has been almost four years since claim construction in the Citrix
case was completed by Judge Ward.” (Dkt. No. 23 at 18). Cisco also contests the applicability of
SSL’s cases—the Vicor, Vistaprint, and Dell5 opinions all involved co-pending litigation, not
prior litigation that had concluded. (Dkt. No. 31 at 2–3). Accordingly, Cisco argues “[a]ny
judicial efficiency gained from SSL’s prior lawsuit in this District is negligible.” (Dkt. No. 23 at
18).
Judicial economy is not “alone” dispositive of the venue question in this case; the Citrix
litigation is not co-pending and it involved different accused products. However, judicial
economy unambiguously weighs against transfer. Over the course of the Citrix Litigation this
Court acquired familiarity with the technology of the ’011 Patent and construed its claims.
Moreover, although the defendant and accused products are different in this case than in the
Citrix Litigation, there remain technical and legal commonalities between the two cases pertinent
to issues such as infringement and validity. This Court’s familiarity with the Citrix Litigation,
acquired over approximately seven years, will have no small effect on the efficiency and
expedience with which this Court can manage the present case. Accordingly, this factor weighs
against transfer.
3. Public Interest Factors
a. Local Interest in Having Localized Interests Decided at Home
Cisco cites no ties between SSL and either Texas or Massachusetts. (Dkt. No. 23 at 19).
Likewise, Cisco cites no connection between any third party witness and either Texas or
Massachusetts. (Id.) As previously discussed, Cisco has offices in both the District of
5

In re Dell Inc., 600 Fed. Appx. 729 (Fed. Cir. 2015) (unpublished).

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Massachusetts and the Eastern District of Texas. Cisco admits its products are sold throughout
the United States. (Id.)
The only local interest Cisco identifies in Massachusetts is the presence of Cisco
personnel who “designed and developed” the accused products. (Id.)6 The Court has already
taken into account the location of relevant Cisco personnel when assessing the convenience of
witnesses. However, the fact that the product was originally designed and developed in
Massachusetts provides a connection to that forum and weighs slightly in favor of transfer.
b. Administrative Difficulties Flowing From Court Congestion
Cisco’s Motion to Transfer observes: “[t]he most recent Federal Judicial Caseload
Statistics show that the median time to resolve a case is 9.2 months in the District of
Massachusetts and 9.0 months in the Eastern District of Texas, and the median time to trial in
civil cases is slightly longer in the District of Massachusetts (27.1 months) compared with the
Eastern District of Texas (25.9 months).” (Dkt. No. 23 at 18–19). Cisco’s statistics cover the
twelve-month period ending March 31, 2014. (Dkt. No. 23-13). SSL argues that more recent
statistics, from the twelve-month period ending March 31, 2015, show “the median time from
filing to a civil trial in Massachusetts was 29.1 months, with a median average of 30.1 months
over the last six years. In this Court, it was only 22.9 months, with a median average of 23.2
months over the last six years.” (Dkt. No. 25 at 19).
Irrespective of the statistic used, it is clear that the time to trial in this District is
somewhat shorter than in the District of Massachusetts. However, the difference is not large, and
this factor therefore weighs only slightly against transfer.

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Cisco also represents that “documents relevant to this dispute” are located in Massachusetts,
but again cites no evidence to support this contention.

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c. Familiarity of the Forum With the Law that Will Govern the Case and
Avoidance of Unnecessary Problems of Conflict of Laws or in the Application of
Foreign Law
Neither party cites anything relevant to this factor (other than this Court’s familiarity with
the Citrix Litigation, which has already been accounted for). (Dkt. No. 23 at 19; Dkt. No. 25 at
20). Accordingly, this factor is neutral.
C. CONCLUSION
A motion to transfer venue should only be granted upon a showing that one venue is
“clearly more convenient” than another. In re Nintendo Co., 589 F.3d at 1197; In re Genentech,
566 F.3d at 1342. Here, two factors favor transfer (one only slightly), three factors oppose
transfer (one only slightly), and two are neutral. After weighing the evidence as a whole, the
Court finds Cisco has not shown that the District of Massachusetts would be a “clearly more
convenient” forum for this litigation. Accordingly, Cisco’s Motion to Transfer is DENIED.
III. MOTION TO COMPEL
Cisco moves to compel SSL to supplement its Patent Local Rule 3-1 infringement
contentions, arguing that the disclosures in SSL’s Pat. L.R. 3-1(c) chart are insufficient. (Dkt.
No. 51). Cisco also moves to significantly extend7 all deadlines in the Docket Control Order to
account for SSL’s allegedly deficient disclosures. For the following reasons, the Court holds
SSL’s disclosures are sufficient under the Local Rules and denies Cisco’s requested relief.
A. APPLICABLE LAW
The local rules of this district require a party claiming patent infringement to serve on all
parties “[a] chart identifying specifically where each element of each asserted claim is found

7

“Cisco requests that the dates in DCO be extended by the equivalent amount of time that passed
from the original service of the deficient Infringement Contentions on July 23, 2015 to the date
that SSL provides the amended Infringement Contentions.” (Dkt. No. 51 at 18).

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within each Accused Instrumentality.” Pat. L.R. 3-1(c). The purpose of Rule 3-1 is to “require
parties to crystallize their theories of the case early in the litigation so as to prevent the ‘shifting
sands’ approach to claim construction.” Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d
1025, 1035 (Fed. Cir. 2015) (citations omitted).
Rule 3-1 contentions “must be reasonably precise and detailed . . . to provide a defendant
with adequate notice of the plaintiff's theories of infringement, [but] they need not meet the level
of detail required, for example, on a motion for summary judgment on the issue of
infringement.” ROY-G-BIV Corp. v. ABB, Ltd., 63 F. Supp. 3d 690, 699 (E.D. Tex. 2014). “The
Rules do not require the disclosure of specific evidence nor do they require a plaintiff to prove its
infringement case. . . . Infringement contentions are not intended to require a party to set forth a
prima facie case of infringement and evidence in support thereof.” EON Corp. IP Holdings, LLC
v. Sensus USA Inc., Case No. 6:09-cv-116, Dkt. No. 122 at 4 (E.D. Tex. Jan. 21, 2010).
“Infringement contentions are not intended to act as a forum for argument about the substantive
issues but rather serve the purpose of providing notice to the Defendants of infringement theories
beyond the mere language of the patent claim.” Motion Games, LLC v. Nintendo Co., Case No.
6:12-cv-878, Dkt. No. 303 at 4 (E.D. Tex. Apr. 16, 2015) (citing Linex Techs. Inc. v. Belkin Int’l,
Inc., 628 F. Supp. 2d 703, 713 (E.D. Tex. 2008)).
B. ANALYSIS
1. Patent Local Rule 3-1(g)
The parties contest the import and applicability of Patent Local Rule 3-1(g). At the outset,
the Court notes that Rule 3-1(g) is inapplicable to the parties’ present dispute.
Patent Local Rule 3-1(g) is not, strictly speaking, a Local Rule of the Eastern District of
Texas. Instead, Rule 3-1(g) is an addendum to the Local Rules provided in the Sample Discovery

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Order for Patent Cases Assigned to Judge Rodney Gilstrap and Judge Roy Payne.8 Rule 3-1(g) is
present in the Agreed Discovery Order entered in this case:
P.R. 3-1(g): If a party claiming patent infringement asserts that a claim element is
a software limitation, the party need not comply with P.R. 3-1 for those claim
elements until 30 days after source code for each Accused Instrumentality is
produced by the opposing party. Thereafter, the party claiming patent
infringement shall identify, on an element-by-element basis for each asserted
claim, what source code of each Accused Instrumentality allegedly satisfies the
software limitations of the asserted claim elements.
(Dkt. No. 42 at 2–4).
Rule 3-1(g) is designed to ameliorate the “unique challenges” present in some software
cases, in which a plaintiff requires access to source code for the accused products in order to
comply with its disclosure obligations under Rule 3-1. See Am. Video Graphics, L.P. v. Elec.
Arts, Inc., 359 F. Supp. 2d 558, 560 (E.D. Tex. 2005). To invoke Rule 3-1(g), a party must
“assert[] that a claim element is a software limitation” in some overt way, preferably in its
infringement contentions. The party invoking Rule 3-1(g) need not comply with Rule 3-1 for the
limitation(s) that it has asserted are software limitations, but must supplement its infringement
contentions within 30 days of the production of source code to make its contentions compliant.
Here, SSL did not invoke rule 3-1(g) when it served its infringement contentions, and it
argues it “has already provided contentions that comply with P.R. 3-1.” (Dkt. No. 59 at 5).
Moreover, Cisco’s source code appears to have been available since September 30, so the 30-day
deadline has long since lapsed. (Dkt. No. 54 at 18 n.48). Accordingly, Rule 3-1(g) is not
applicable.9

8

Available at: http://www.txed.uscourts.gov/cgi-bin/view_document.cgi?document=22243

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SSL is not necessarily precluded from amending its infringement contentions to cite source
code. Although SSL cannot amend its contentions as of right pursuant to Rule 3-1(g), it may
nevertheless seek leave of Court to amend by showing good cause. Pat. L.R. 3-6(b).

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2. SSL’s Infringement Contention Chart
Because Rule 3-1(g) does not apply, the only remaining question is whether SSL’s
contentions comply with the disclosure requirements of Pat. L.R. 3-1. Cisco argues there are two
classes of deficiencies in SSL’s contentions. Cisco previously requested clarification of these
alleged deficiencies, and SSL responded by stating its contentions are sufficiently detailed and
complete. (Dkt. No. 51 at 6).
a. Shim and Session Key Limitations
First, Cisco argues “SSL has not provided any explanation or theory of infringement for
a key limitation that appears in every Asserted Claim: that a ‘shim’ must be arranged to ‘cause’
the generation of a ‘session key’, among other things.” (Id. at 4). Cisco says SSL’s contentions
rely on nothing more than “parrot[ing] back the claim language” and “six pages of unexplained
block quotes.” (Id. at 5). According to Cisco, “There is a total absence of explanation or analysis
of how any alleged ‘shim’ generates a ‘session key’ in response to intercepting function calls and
requests for service.” (Id.).
In some circumstances it may be necessary to supply analysis or narrative to provide the
accused infringer with sufficient notice of the plaintiff’s infringement theories, but that is not the
case here. The evidence cited in SSL’s contentions speaks for itself by repeatedly identifying a
“shim” and a “session key” by name; there is no ambiguity about which structures SSL contends
satisfy these claim elements. See, e.g. (Dkt. No. 51-3 at 2–7) (cited evidence for this limitation
refers to a “shim” at least eleven times); (Dkt. No. 51-5 at 8–58) (cited evidence for this
limitation refers to a “session key” at least five times).
Ultimately, Cisco’s quarrel is about the substance of SSL’s infringement theory, not the
adequacy if its disclosure: “Cisco explained to SSL, the ‘session key’ generated and used in

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Cisco’s Accused Instrumentalities is generated long before any alleged ‘shims’ have any
involvement or function in establishing a virtual private network, and so there can be no causal
connection between any alleged ‘shim’ and the generation of a ‘session key.’” (Dkt. No. 51 at 6).
But infringement contentions “are not meant to provide a forum for litigation of the substantive
issues.” Linex Techs., 628 F. Supp. 2d at 713. Cisco’s disagreements with the factual accuracy or
legal correctness of SSL’s theories have no bearing on the sufficiency of SSL’s contentions.
SSL’s contentions identify the structures in the accused products that it contends satisfy these
claim elements. Whether Cisco believes this constitutes a “viable infringement theory” is of no
moment.
b. Multi-Tier Virtual Private Network
Second, Cisco argues that SSL has not identified the structures corresponding to the three
layers or tiers of the claimed “multi-tier virtual private network”: “(1) ‘applications level
encryption and authentication software’ or an ‘applications program’ (the highest layer); (2)
‘lower level set of communications drivers’ (the lowest layer); and (3) a ‘shim’ (the middle layer
that sits between the other two layers).” (Dkt. No. 51 at 7). Here, Cisco’s dispute with SSL is
transparently one of substance and not of disclosure—Cisco states that SSL has identified the
same structures as satisfying multiple limitations and argues that this infringement theory is not
legally viable. (Id. at 15) (“SSL appears to be alleging that the ‘Transport Layer Security’
(‘TLS’) protocol somehow satisfies both the required highest layer ‘applications’ software and
the claim’s middle layer ‘shim.’ . . . SSL also appears to be generally alleging that a so-called
‘virtual adaptor driver’ can somehow be both the alleged middle layer ‘shim’ and the lower layer
‘set of communications drivers.’”). Cisco argues this theory “makes no sense” because “the
claims require different things at different layers.” (Id.).

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.

Whether the same structure can satisfy multiple limitations is a substantive legal issue—
that Cisco can articulate its substantive disagreements with SSL’s theory demonstrates that Cisco
is on notice of SSL’s theory “beyond the mere language of the patent claim.” Motion Games,
Dkt. No. 303 at 4. This is what the Local Rules require.
C. CONCLUSION
The Court finds that SSL’s contentions comply with the disclosure requirements of Patent
Local Rule 3-1. Accordingly, Cisco’s Motion to Compel is DENIED.
SIGNED this 3rd day of January, 2012.
SIGNED this 24th day of February, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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