Realtime Data LLC v. Rackspace US, Inc. et al
MEMORANDUM OPINION AND ORDER. The Court GRANTS #232 NetApp's MOTION for Leave to File Motion to Strike Portions of Richard Wesel's Expert Report. #231 Defendant's MOTION TO STRIKE PORTIONS OF DR. WESEL'S REPORT REGARDING INFRINGEMENT is DENIED. Signed by Magistrate Judge John D. Love on 10/26/2017. (rlf)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
REALTIME DATA LLC,
NETAPP, INC., AND SOLIDFIRE, LLC,
CIVIL ACTION NO. 6:16-CV-00961-RWS
MEMORANDUM OPINION AND ORDER
Defendants NetApp and SolidFire (“NetApp”) have filed a Motion to Strike Portions of
Dr. Wesel’s Report Regarding Infringement. (Doc. No. 231.) Plaintiff Realtime responded
(Doc. No. 239), NetApp replied, (Doc. No. 242) and Plaintiff filed a Sur-Reply. (Doc. No. 246.)
NetApp also has a pending Motion for Leave to File a Motion to Strike. (Doc. No. 232.)
Realtime did not respond.
On June 29, 2016, Realtime filed this action against NetApp.
(Doc. No. 1.)
November 18, 2016, Realtime disclosed the asserted claims and infringement contentions. (Doc.
No. 117 at 3.) On December 20, 2016, NetApp informed Realtime they were deficient and
supplemental contentions were provided on January 17, 2017. Id. Realtime requested in an
eleven-page letter for more details and provided examples of the deficiencies in the contentions.
Id. at 4. Realtime provided a second amended contention on March 1, 2017. Id. On March 24,
2017, NetApp filed a motion to strike Realtime’s infringement contentions and compel
compliance under Patent L.R. 3-1, (Id.) and it was fully briefed. (Doc. Nos. 146, 149, 152.)
The Court granted the motion in part and ordered Realtime to serve NetApp with clear claim
constructions on what aspect of the accused products satisfied each key claim term. (Doc. No.
156.) Realtime provided the third supplemental contentions (Doc. No. 239-2.) Realtime then
provided NetApp with its expert report for Dr. Wesel on August 18, 2017. (Doc. No. 239-8 at
2.) NetApp filed a response and expert report of James Storer. (Doc. No. 239-9 at 2.)
Under the Eastern District’s Local Patent Rules, a party must file a “Disclosure of
Asserted Claims and Infringement Contentions.” Patent L.R. 3-1. This Rule provides that a
party asserting infringement must, in its disclosure: (a) identify each patent claim that is
infringed; (b) identify each accused product for each claim; (c) provide a chart identifying
specifically where each limitation of each asserted claim is found in each accused product for
each claim; and (d) specify whether infringement is literal or based on the doctrine of
equivalents. See id. 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. Inc. v. Belkin Intern., Inc., 628 F.Supp.2d 703, 713 (E.D. Tex. 2008) (“The Infringement
Contentions are intended to disclose information as a means to expediting the discovery
The expert report cannot introduce theories not previously set forth in infringement
contentions. Roy-G-Biv Corp. v. ABB, Ltd., 63 F.Supp.3d 690, 699 (E.D. Tex. 2014). However,
the scope of infringement contentions and the expert report are not coextensive. Id. The
infringement contentions “need not disclose ‘specific evidence nor do they require a plaintiff to
prove its infringement case.’” Id. (citing EON Corp. IP Holdings, LLC v. Sensus USA Inc., No.
6:09-cv-116, 2010 WL 346218, *2 (E.D. Tex. Jan. 21, 2010)). Whereas, the expert report must
include a complete statement of the expert’s opinions, the basis and reasons for the opinions, and
any data or other information considered when forming them. Fed. R. Civ. P. 26(a)(2)(B).
The court has inherent power to enforce its orders and to impose sanctions if its rules are
violated. Anascape, Ltd. v. Microsoft Corp., No. 9:06-cv-158, 2008 WL 7180756, at *2 (E.D.
Tex. May 1, 2008). However, the interpretation of discovery provisions of the Local Patent
Rules should not conflict with, and should harmonize with, discovery provisions of the Federal
Rules of Civil Procedure. Id. Deciding if the expert report should be struck is akin to excluding
evidence due to a discovery violation. Id. Therefore, the court considers a non-exclusive list of
factors before it decides to impose such sanctions. Id. at *3 (granting a motion to strike expert
report because of a failure to disclose infringement contentions).
NetApp argues that Realtime’s Expert opined on new theories that were not disclosed in
Realtime’s Infringement Contentions. (Doc. No. 231.) Specifically, NetApp first states that
Realtime did not identify SolidFire’s zero-block deduplication in its contentions for the ’513
patent and only focused on inline deduplication. Id. at 5–6. Realtime argues that NetApp
admitted in its discovery response that it was aware of the contentions of zero-block
deduplication. (Doc. No. 239 at 16.) Realtime maintains inline deduplication is a sufficient
disclosure because “SolidFire, inline zero-block deduplication and inline deduplication are
essentially two parts, or two aspects, of the broader inline deduplication process.” Id. at 17.
Realtime maintains it identified SolidFire’s “Global thin provisioning” feature, which includes
zero-block deduplication. Id.
NetApp fails to show there was no notice of zero-block deduplication in the infringement
contentions. NetApp’s argument relies on the fact that the word zero-block deduplication is
never stated in the infringement contentions. However, Realtime specifically identifies the
Global thin provisioning feature (Doc. No. 239-2 at 10), and NetApp’s witness admits at
deposition that zero-block deduplication is part of this feature. (See Doc. No. 239-8 at 12
(“Wesel’s Report”) (quoting Randall Depo. 188-191)). This shows that NetApp had some
awareness that zero-block deduplication was at issue.
Although Realtime may not have
disclosed the word specifically, unlike expert reports, infringement contentions are not meant as
a vehicle to litigate the merits of an infringement position. Linex, 628 F.Supp.2d at 713. Rather,
the vehicle to investigate theories is the discovery avenues provided for in the federal rules,
interrogatories, depositions and expert reports. Considering the narrow purpose infringement
contentions are meant to serve, Realtime provided sufficient notice regarding zero-block
Second, NetApp argues that Realtime failed to disclose an infringement contention
stating that the accused instrumentality is comprised of two devices. (Doc. No. 231 at 9.)
NetApp cites language stating “[t]he Accused Instrumentality includes the memory device” and
the “[t]he Accused Instrumentality includes the data accelerator,” as representing that the
accused device is a single device. Id. at 10. NetApp argues the report “abandons the theory 
and instead relies on two NetApp devices working together in a specific configuration” and this
expands the theory and affects discovery. Id. at 10–11. Realtime argues that the two-device
configuration is shown in an infringement contention diagram. (Doc. No. 239 at 9.) Realtime
further maintains that the contention never indicates it is the same device or only one device, and
NetApp is improperly inserting limiting language into the term “Accused Instrumentality.” Id. at
The infringement contention diagrams show a two-device configuration comprised of two
“On Premises” devices where one device sends information to the secondary device:
(Doc. No. 239-2 at 31.) NetApp argues that the diagram is insufficient to put it on notice
because in ruling on an earlier motion brought by NetApp, the Court stated screenshots are
insufficient to comply with the requirements for infringement contentions. (Doc. No. 242 at 2.)
While the Court found that “Realtime cannot fill in the gaps with screen shots,” (Doc. No. 153 at
3), it did not address whether the contentions disclosed only a one device configuration. Nor
does such a finding amount to a conclusion that the screenshot referenced above does not
provide some notice to NetApp of a two device configuration. See Finjan, Inc. v. Proofpoint,
Inc., No. 13-cv-05808, 2016 WL 612907, at *8 (N.D. Cal. Feb. 16, 2016) (finding a screenshot
was adequate notice). In its infringement contentions, Realtime provides some background on
its contentions, and
then includes three screen shots with information on the accused
instrumentality, along with the above exhibit showing two devices. (Doc. No. 239-2 at 29–32)
(providing contentions for the ’530 Patent citing NetApp features on improving storage
utilization, NetApp’s optional features, and figures on their data management). The one or
single device configuration appears to be NetApp’s characterization of the theory. Because there
is no characterization that the accused instrumentality is a singular device, and considering the
diagram and description above, the contentions provide sufficient notice of a two device
Third, NetApp claims that Realtime’s infringement contentions do not disclose a theory
for the ’530 patent that relies on post-process deduplication. (Doc. No. 231 at 11–12.) NetApp
states that it specifically questioned Realtime in a letter about this deficient disclosure, saying
that Realtime “did not specify what was accused as a first or second compression technique.” Id.
NetApp maintains that Realtime’s expert improperly dropped Realtime’s prior
infringement allegations to rely on a combination of post-process compression and post-process
deduplication for two compression techniques. Id. Realtime counters that NetApp admitted in
fact discovery that the contentions for the ’530 patent included post-process deduplication.
(Doc. No. 239 at 10.)
Realtime argues that post-process deduplication is a form of
deduplication, and the mere fact it identified additional examples does not mean it intended to
exclude post-process deduplication.
Id. at 10–11.
Realtime concludes that its contentions
identification of “deduplication” actually refers to post-process deduplication. Id.
A review of the contentions reveals that NetApp was on sufficient notice of post-process
deduplication as a theory. NetApp’s argues that Realtime only identified two compression
techniques, but the contentions state that the deduplication “includes inline deduplication and
zero block deduplication,” not that they are limited to these two forms. (Doc. No. 239-2 at 38)
Although Realtime may not have explicitly used the term post-process
deduplication, in its infringement contentions Realtime referred generally to deduplication and
its contention described post-process deduplication.
Id. at 54 (“NetApp deduplication is a
process that can be scheduled to run when it is most convenient[.]”); see Fenner Investments,
Ltd. v. Hewlett-Packard Co., No. 6:08-cv-273, 2010 WL 786606 at *3 (E.D. Tex. Feb. 26, 2010)
(finding that Defendant was on notice other operating systems may be part of an accused server
when it only listed one system as an example).
Fourth, NetApp alleges that Realtime’s expert mixed the various features to “derive three
alternative sets of infringing combinations.” (Doc. No. 231 at 12–13.) NetApp argues the expert
had twenty-one possible combinations of its features that were not previously disclosed and raise
questions for discovery and claim construction. Id. at 13. Realtime states that it disclosed two
compression techniques and three deduplication techniques in its contentions and this provides
notice of the different combinations. (Doc. No. 239 at 12.) Further, Realtime counters that Dr.
Wesel’s opinion narrows the theories in contentions by setting forth three different combinations
for each patent. Id. at 12–13.
The purpose of infringement contentions is to provide notice of infringement theories
resulting in more efficient and streamlined discovery. Linex, 628 F.Supp.2d at 713. The vehicle
to investigate theories is the discovery avenues provided for in the federal rules, interrogatories,
depositions and expert reports. NetApp’s argument relies on the fact that naming three types of
compression and three types of deduplication does not provide notice that these compressions
and deduplications will be mixed and matched.
However, NetApp fails to show that this
contention was presented in a way that excluded combining these techniques.
Fifth, NetApp argues that the expert identified two new features at step one of claim 1 of
the ’530 patent: (1) a check of whether a block was previously compressed; and (2) a check of
whether a block is all zeroes. (Doc. No. 231 at 14.) NetApp maintains that Realtime stated that
its infringement contentions only allowed for compression applied to a data block if a threshold
amount of space was saved. Id. Realtime argues that it cites NetApp’s own documents that state
“compression groups are tested for compressibility” and this includes checking if the previously
block was compressed, which provided adequate notice. (Doc. No. 239 at 13.) Realtime argues
that it cites source code that specifically identifies a check of whether the block is all zeroes. Id.
at 13–14. Realtime notes that it contentions specifically state that the Accused Instrumentality
identifies if the data block consists of zeroes at step two analysis, and NetApp’s expert
recognized that step one and step two analysis are the same. Id. at 14.
As to whether Realtime sufficiently disclosed a zero block check, Realtime’s
infringement contentions state that the accused instrumentality looks at the data block to see if it
consists of all zeroes. (Doc. No. 231-4 at 36.) Although NetApp argues this is directed to the
second analyzing step, Realtime notes that NetApp’s own expert stated the analysis is the same
as the analysis of the first step. (Doc. No. 239-9 at 5 (“Storer invalidity report”).)
Realtime also argues that it provided notice that a feature includes a check on whether a
block was previously compressed through a screenshot of NetApp’s document. (Doc. Nos. 239
at 13, 239-2 at 85.)
In its infringement contentions, Realtime provides examples for the
compression techniques used in its accused instrumentality. (Doc. No. 239-2 at 85.) Realtime
then includes several screen shots detailing how the data compression works. Id. at 84–88. In
one of the screenshots, it notes that the “[c]ompression groups are tested for compressibility
before any compression takes place.” Id. at 86. This screenshot provides sufficient notice of a
check on whether a block was previously compressed. Finjan, Inc., 2016 WL 612907 at *8.
Sixth, NetApp argues the expert identified six additional values that can be a
“characteristic, attribute, or parameter” besides the two given in the Third Supplemental
Infringement Contention for the ’513 patent. (Doc. No. 231 at 15.) NetApp maintains that the
’728 patent has similar values as the ’513 patent but the expert report identifies three new values.
Id. at 15–16. Realtime counters that its infringement contentions show each of the values that
NetApp objects to. (Doc. No. 139 at 14–15.)
Realtime cites to different exhibits in its document that explicates these values. (Doc.
239-2 at 18–20, 91–94.) NetApp argues these are “screenshots” that fail to give adequate notice.
(Doc. No. 242 at 4.) However, Realtime is not charged with developing its litigation positions at
the infringement contention stage; the purpose is to aid in discovery. Linex, 628 F.Supp.2d at
713. In its contentions, Realtime provides examples for the characteristic, attribute, or parameter
of the accused instrumentality.
(Doc. No. 239-2 at 18, 91) (“For example, the Accused
Instrumentality identifies [the stated value.]” (emphasis added)). The contention does not limit
itself to “identify[ing] whether or not a data block is duplicative” or “identify[ing] whether or not
a data block consists of all zeroes,” (Id.) but merely provides certain values as examples of the
values within the accused instrumentality. Fenner, 2010 WL 786606 at *3. Realtime then
provides specific screenshots that detail how the accused product works, identifying the values
NetApp is arguing against. (Doc. 239-2 at 18–20, 91–94) (“Each block of data has a digital
fingerprint, which is compared to all other fingerprints in the flexible volume. If two fingerprints
are found to be the same, then a byte-to-byte comparison is performed on all bytes in the two
blocks represented by the digital fingerprints”). Because the screenshots show other examples of
how the instrumentality works, they are sufficient to provide notice to NetApp. Finjan, Inc.,
2016 WL 612907 at *8. For these reasons, Realtime provided sufficient notice of the six
Seventh, NetApp argues the expert expanded the theories on the ’530 and ’908 patents
past the original infringement contention providing a theory for a “first data descriptor.” (Doc.
No. 231 at 13–14.) Contrary to NetApp’s assertions, additional descriptors were disclosed in
Realtime’s contentions, including “data descriptor indicating whether or not compression was
applied and/or metadata” and “block size and/or medatdata.” (Doc. No. 239 at 10–11) (citing
239-2 at 54–55; 106.) NetApp tries to limit Realtime’s contentions to a specific portion which
are given as an example. (Doc. No. 239-2 at 53, 105.) However, Realtime shows it specifically
identified other descriptors and therefore placed NetApp on notice. (Doc. No. 239 at 10–11)
(citing 239-2 at 54–55; 105–106.) Because Realtime identified these descriptors, NetApp was
provided sufficient notice.
The Court hereby GRANTS NetApp’s Motion for Leave to File its Motion. (Doc. No.
232.) Concerning Defendant’s motion to strike, the Court ultimately concludes that Realtime’s
infringement contentions comply with the requirements of the local patent rules. Thus, it is
unnecessary for the Court to evaluate the factors that relate to whether an expert’s opinion should
be stricken as a sanction for violating the patent rules. Accordingly, Defendant’s Motion to
Strike Portions of Dr. Wesel’s Report Regarding Infringement (Doc. No. 231.) is DENIED.
So ORDERED and SIGNED this 26th day of October, 2017.
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