Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 839

RESPONSE in Opposition re 815 Opposed MOTION for Leave to File Supplement to its PR 3-1 Infringement Contentions with Respect to Google Music and Google+Opposed MOTION for Leave to File Supplement to its PR 3-1 Infringement Contentions with Respect to Google Music and Google+ [Corrected] filed by Google Inc.. (Attachments: # 1 Declaration of Han Xu, # 2 Exhibit A - Music Beta, # 3 Exhibit B - Google +, # 4 Exhibit C - Davis-Lynch, # 5 Exhibit D - Power-One, # 6 Exhibit E - Eon Corp, # 7 Text of Proposed Order)(Jones, Michael)

Exhibit E

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Only the Westlaw citation is currently available.
United States District Court,
E.D. Texas,
Tyler Division.
EON CORP. IP HOLDINGS, LLC,
v.
SENSUS USA INC., et al.
No. 6:09-cv-116.
Jan. 21, 2010.
MEMORANDUM OPINION & ORDER
JOHN D. LOVE, United States Magistrate Judge.
*1 Before the Court are Defendant Sensus USA
Inc.'s (“Sensus”) Motion to Compel Testimony Under
Federal Rule of Civil Procedure 30(b)(6); Alternatively, Sensus's Motion to Strike Plaintiff EON Corp.
IP Holdings, LLC's (“EON”) Infringement Contentions (Doc. Nos.88, 89) and Sensus's Motion for Protective Order Against Discovery Related to Its
One-Way Water and Gas Meter Products (Doc. No.
90). Both motions are fully briefed (Doc. Nos.102,
103, 110, 111, 112, 113). Having considered the parties' submissions, the Court DENIES without prejudice Sensus's Motion to Compel or Strike (Doc.
Nos.88, 89) and DENIES Sensus's Motion for Protective Order (Doc. No. 90). However, the Court
ORDERS EON to supplement its infringement contentions pursuant to this order.
BACKGROUND
EON has alleged Sensus literally infringes claims
1-3, 8, 9, 12, 14, and 16-18 of U.S. Patent Nos.
5,388,101 (“the '101 patent”) and claims 1-3 and 5-14
of U.S. Patent Nos. 5,481,546 (“the '546 patent”). The
'546 patent is a continuation of the '101 patent. Both
patents are entitled “Interactive Nationwide Data
Service Communication System for Stationary and
Mobile Battery Operated Subscriber Units” and are
directed at base stations for processing communications from portable, low-power subscriber units. '101
Patent col. 3:32-4:21; '546 Patent 3:28-4:14. EON has
accused Sensus's water, gas, and electric meters that
utilize its “FlexNet” wireless communication system.

On October 9, 2009, EON served its P.R. 3-1 infringement contentions (Doc. No. 59). EON disclosed
each claim that is allegedly infringed, identified accused instrumentalities, and provided a chart purporting to identify where claim elements were found
within some of the accused instrumentalities. Sensus
contended these disclosures were deficient and noticed a deposition under Federal Rule of Civil Procedure 30(b)(6). EON objected to the deposition and
refused to produce a witness. The parties' meet and
confer attempts were unsuccessful, and Sensus
brought this motion to compel, or, alternatively, to
strike.
The parties' dispute over the sufficiency of EON's
infringement contentions has contributed in part to a
discovery dispute and Sensus's motion for a protective
order. EON identified water, gas, and electric meters
as accused instrumentalities. EON subsequently
sought discovery regarding these products. Sensus
opposed EON's discovery requests. Sensus believed
the identification of water and gas meters as accused
instrumentalities was improper because the meters
were incapable of two-way communication, as Sensus
argued the asserted claims required. Sensus brought
this motion for a protective order to shield it from the
time and expense of providing the requested discovery, or, alternatively, to require EON to pay the production costs.
DISCUSSION
I. Insufficiency of EON's Infringement Contentions
Sensus attacks the sufficiency of EON's infringement contentions on several grounds. Sensus
notes some of the accused instrumentalities identified
pursuant to P.R. 3-1(b) were not charted pursuant to
P.R. 3-1(c). Sensus objects to EON's reliance on
documents that allegedly refute EON's infringement
case because they describe gas and water meters that
are incapable of two-way communication. Sensus
argues EON failed to identify where certain claim
elements were met in the accused instrumentalities.
Finally, Sensus challenges EON's use of block quotes
from and extensive string citations to Sensus documents.

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*2 In response, EON contends its infringement
contentions are sufficient. EON states the accused
instrumentalities allegedly absent from its charts are
adequately described and, in many cases, are substantially identical to the disclosed materials.FN1 EON
disputes Sensus's characterization of documents relating to gas and water meters. EON argues Sensus's
accusation that it failed to identify where certain claim
elements are met is an attempt to litigate dispositive
issues. Finally, EON contends its use of quoted material and string citations is adequate because Sensus
can readily analyze referenced product specifications
to determine correspondences between the accused
instrumentalities and the patent language.
FN1. EON states in its response that it was
also submitting proposed amended P.R.
3-1(c) charts that explicitly identify each
accused instrumentality. This submission
was not attached to EON's pleadings. See
also DEF.'S REPLY at 2 (“Yet now, in response to Sensus's Motion, based on the very
deficiencies Sensus previously provided,
EON concedes its contentions are deficient
and offers ‘amended ICs,’ which were not
filed with the Court as part of its Response,
which Sensus has not received or reviewed,
and which, in any event, have not been authorized by the Court under P.R. 3-6”).
“[T]he Patent Rules are designed to streamline the
discovery process.” American Video Graphics, L.P.
v. Elec. Arts, Inc., 359 F.Supp.2d 558, 560
(E.D.Tex.2005). The Rules “requir[e] plaintiffs to
disclose their [ ] infringement contentions before
discovery has even begun.” Id. Patent Rule 3-1 requires disclosure of infringement contentions, including:
(a) Each claim of each patent in suit that is allegedly
infringed by each opposing party;
(b) Separately for each asserted claim, each accused
apparatus, product, [or] device ... (“Accused Instrumentality”) of each opposing party of which the
party is aware. This identification shall be as specific as possible.... Each product, device, and apparatus must be identified by name or model number, if known ...
(c) A chart identifying specifically where each

element of each asserted claim is found within each
Accused Instrumentality ...
P.R. 3-1.
Proper infringement contentions provide a defendant with notice of a plaintiff's infringement theories. Linex Techs., Inc. v. Belkin Int'l, Inc., 628
F.Supp.2d 703, 706 (E.D.Tex.2008) (noting “enough
specificity is required to give an alleged infringer
notice of the patentee's claims”). This notice focuses
discovery and narrows issues for claim construction,
summary judgment, and trial. Connectel, LLC v. Cisco
Sys., Inc., 391 F.Supp.2d 526, 526 (E.D.Tex.2005).
The Rules do not require the disclosure of specific
evidence nor do they require a plaintiff to prove its
infringement case. Realtime Data, LLC v. Packeteer,
Inc ., No. 6:08-cv-144, 2009 WL 2590101, at *5
(E.D.Tex. Aug. 18, 2009) (stating “[i]nfringement
contentions are not intended to require a party to set
forth a prima facie case of infringement and evidence
in support thereof”); see also Balsam Coffee Solutions
Inc. v. Folgers Coffee Co., No. 6:09-cv-089, 2009 WL
4906860, at *3 n. 2 (E.D.Tex. Dec. 9, 2009) (observing “P.R. 3-1 does not require the disclosure of evidence and documents supporting infringement contentions ...”); Realtime Data, LLC v. Packeteer, Inc.,
No. 6:08-cv-144, 2009 WL 5216909, at *2 n. 3
(E.D.Tex. July 20, 2009) (explaining the identification
of evidence obtained during discovery can aid in satisfying the notice function of infringement contentions); Samsung SDI Co. v. Matsushita Elec. Indus.
Co., No., 2006 WL 5097360, at *1 (C.D. Cal. June 5,
2006) (explaining “[t]he plaintiff is not ... required to
produce evidence of infringement ... or to provide
evidentiary support for its contentions” (quotations
omitted)). “Infringement contentions are not meant to
provide a forum for litigation of the substantive issues;
they are merely designed to streamline the discovery
process.” Linex Techs., 628 F.Supp.2d at 713 (citing
STMicroelectronics, Inc. v. Motorola, Inc., 308
F.Supp.2d 754, 755 (E.D.Tex.2004)) (quotations
omitted).
*3 EON's infringement contentions are deficient
because they fail to identify each accused instrumentality in its 3-1(c) chart. The infringement contentions
include one claim chart for each asserted claim. The
accused system identified by each claim chart is
simply described as “Sensus FlexNet and compatible
equipment.” The description of the accused system

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explicitly references only six of the eleven disclosed
accused instrumentalities. For example, the infringement contentions identify a Tower Gateway Base
Station and a Model 510X FlexNet SmartPoint
Transmitter. The '101 patent claim chart describes the
operation of the Tower Gateway Base Station, e .g.
Doc. No. 88-3 at 58, but never describes or otherwise
references the Model 510X FlexNet SmartPoint
Transmitter. P.R. 3-1(c) requires EON to specifically
explain how each accused instrumentality meets the
asserted claim elements. EON's infringement contentions fail because they do not identify every of the
accused instrumentalities. EON argues unidentified
instrumentalities are essentially described in the chart
and that providing the requested descriptions will
result in repetitive descriptions. If certain portions of
EON's chart are applicable to more than one of the
accused instrumentalities, then EON should clearly
indicate as much. EON need not unnecessarily duplicate its efforts, as such repetition is inefficient and
does not advance the notice function.
EON's use of block quotes from and string citations to Sensus documents is likewise insufficient to
satisfy the notice function intended by P.R. 3-1 infringement contentions. The six referenced instrumentalities appear in block quote excerpts from
product specifications and reports. The referenced
instrumentalities also appear in the titles of documents
EON routinely string cites. The block quote excerpts
describe the operation of the referenced instrumentalities and their features, but EON does not otherwise
explain its theories of how the accused instrumentalities satisfy the asserted claim elements. The purpose
of infringement contentions is to provide notice of
EON's infringement theories. Linex Techs., 628
F.Supp.2d at 706. Identification of evidence supporting an infringement theory may aid the notice function. Realtime Data, LLC v. Packeteer, Inc., No.2009
WL 5216909, at *2 n. 3. Simply block quoting references, however, does not necessarily advise a defendant of where a plaintiff believes asserted elements are
found in an instrumentality. Similarly, although citing
documents has a role and may further notice, it does
not, in and of itself, fulfill the notice function. EON
must put forward its position as to where it believes
particular limitations are met by the accused instrumentalities. EON's theories may be bolstered or further illuminated by citations to documents and evidence, but identification of evidence alone does not
independently satisfy the notice function of the rules.

However, Sensus's objections to EON's use of
documents that Sensus contends refute EON's infringement case lack merit. Sensus argues the documents EON relies on describe gas and water meters
incapable of two-way communication. Sensus opposes the use of these documents because it believes
the asserted claims can only be infringed two-way
devices. These objections raise substantive issues that
are not properly addressed by infringement contentions. Patent Rule 3.1 does not require EON to marshal
evidence or otherwise prove its infringement case.
Realtime Data, LLC, 2009 WL 2590101 at *5.
Whether certain documents support or refute EON's
infringement case is a question for summary judgment
or trial. The use of these documents does not render
EON's infringement contentions deficient.
*4 Sensus also objects to EON's fail to explain its
interpretation of certain claim terms, such as “local
remote receiver,” “portable,” or “lower power.” Sensus argues that it is self-evident that the water, gas, and
electric meters are not portable. Similarly, Sensus
argues its accused meters do not transmit at low
power. Sensus's objections are directed toward claim
construction positions that EON need not disclose
prior to the deadline for P.R. 4-2 disclosures. See P.R.
2-5(a). EON's position regarding the meaning of these
terms are properly reserved for claim construction
briefing.
EON's infringement contentions are deficient for
the reasons discussed above. The appropriate avenue
for correcting these deficiencies is to afford EON the
opportunity to supplement its contentions. Thus, the
requested 30(b)(6) deposition is unnecessary at this
time. Likewise, striking EON's contentions is inappropriate. Sensus is free to renew its request for these
forms of relief if EON's supplemented contentions are
also deficient.
II. Discovery Related to Sensus's One-Way Gas &
Water Meters
As noted above, Sensus opposes EON's discovery
request related to water and gas meters that Sensus
characterizes as “one-way” devices. Sensus submits a
declaration from its director of water and gas meter
development stating the identified gas and water meters are incapable of twoway communication by way
of the FlexNet Network. Sensus argues the gas and
water meters cannot infringe because the asserted

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claims require two-way communication. Sensus further argues EON is not entitled to discovery based on
the mere suspicion or speculation that the gas and
water meters may infringe. Believing the requested
discovery to be unduly burdensome and wasteful,
Sensus moves the Court to shield it from this request
or to order EON to bear the expense of production.
EON contends discovery relating to these devices is
relevant. EON identifies evidence describing the devices as capable of two-way communication via a
handheld programmer that relays messages from the
FlexNet Network. Thus, EON disputes Sensus's representations that the gas and water meters are incapable of two-way communication. EON argues its
discovery request should not be denied because it has
established discovery related to these devices may
lead to relevant evidence. Finally, EON argues Sensus
has failed to show good cause for entry of a protective
order or to show an undue burden justifying a shifting
of discovery expenses.

basis for a theory of infringement by these devices and
is entitled to discovery.
CONCLUSION
For the foregoing reasons, the Court DENIES
without prejudice Sensus's Motion to Compel or
Strike (Doc. Nos.88, 89) and DENIES Sensus's Motion for Protective Order (Doc. No. 90). The Court
ORDERS EON to supplement its infringement contentions pursuant to this order by January 29, 2010.
The Court ORDERS Sensus to comply with EON's
discovery request by February 19, 2010.
So ORDERED.
E.D.Tex.,2010.
EON Corp. IP Holdings, LLC v. Sensus USA Inc.
Slip Copy, 2010 WL 346218 (E.D.Tex.)
END OF DOCUMENT

“Parties may obtain discovery regarding any
nonprivileged matter that is relevant to any party's
claim or defense.” FED. R. CIV. P. 26(b)(1). “A party
... from whom discovery is sought may move for a
protective order in the court where the action is
pending,” and “[t]he court may, for good cause, issue
an order to protect a party ... from ... undue burden or
expense.” FED. R. CIV. P. 26(c)(1). Although “discovery rules are to be accorded a broad and liberal
treatment,” a court “should not neglect [its] power to
restrict discovery” to protect a party from undue burden or expense. Herbert v. Lando, 441 U.S. 153, 177
(1979). “The burden is upon the movant to prove the
necessity of a protective order, ‘which contemplates a
particular and specific demonstration of fact as distinguished from stereotyped and conclusory statements.’ “ Ferko v. Nat'l Ass'n for Stock Car Auto
Racing, Inc., 218 F.R.D. 125, 133 (E.D.Tex.2003)
(quoting United States v. Garrett, 571 F.2d 1323,
1326 n. 3 (5th Cir.1978)).
*5 Sensus has failed to show good cause for entering a protective order shielding it from EON's discovery request. Although complying with discovery
requests can be an expensive endeavor, Sensus has
failed to come forward with a demonstration of fact
that it would be unduly burdened. See Ferko, 218
F.R.D. at 133. Morever, EON has shown that discovery relating to Sensus's gas and water meters may be
relevant to its claims. EON has identified a plausible

© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.