On August 2, 2012, Magistrate Judge Ramirez issued “findings, conclusion, and recommendation” in H-W Technology v. Apple, Inc. et al relating to H-W Technology’s infringement contentions (decision available here). Defendant Google had filed a motion to strike H-W Technology’s supplemental infringement contentions, and Judge Ramirez found that the motion should be granted in part and denied in part.
After H-W Technology served its infringement contentions, Google pointed out what it considered to be deficiencies in the contentions, and H-W Technology thereafter served supplemental infringement contentions. Google claimed that the Court should strike the supplemental infringement contentions for three reasons: (1) the supplemental infringement contentions fail to provide notice of Plaintiff’s specific theories of infringement; (2) the identification of the accused instrumentalities is not “as specific as possible”; and (3) the claim chart does not identify specifically and in detail where each element of each asserted claim is found within each accused instrumentality.
Judge Ramirez noted the following about the Northern District of Texas’ patent rules (found in Amended Misc. Order No. 62):
- “The rules, like other local patent rules, are designed specifically 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.
- “The purpose of preliminary infringement contentions is to provide notice of the accusing party’s specific theories of infringement. This notice focuses discovery and narrows issues for claim construction, summary judgment, and trial.
- “Infringement contentions are not meant to require a party to prove its case of infringement or provide a forum for litigation of the substantive issues, however. [T]hey are merely designed to streamline the discovery process.” (citations and quotations omitted).
Turning to Google’s assertions, Judge Ramirez found as follows:
Infringement By Sale of Another Company’s Products. Although Google had argued that H-W Technology had not provided any basis for its allegations of Google’s infringement of another company’s products (Nexus X and Nexus One, manufactured by Samsung and HTC, respectively), Judge Ramirez noted that “Google does not have to manufacture the accused instrumentalities to be liable under § 271, and may be found liable simply for selling or offering to sell a patented invention without authority. See 35 U.S.C. § 271(a). As Plaintiff’s supplemental infringement contentions, in part, accuse Google of selling or offering to sell the accused products, they have specified a basis for Google’s alleged infringement of Nexus S and Nexus One.”
Identification of Infringing Products. Google had also argued that H-W Technology’s supplemental infringement contentions “do not identify the products by model, manufacturer, or version, and therefore fail to satisfy the requirement that the identification of the accused instrumentalities be ‘as specific as possible.’” Judge Ramirez rejected Google’s argument, finding that, “[a]lthough Misc. Order No. 62 requires that the accused instrumentalities be as specific as possible, it goes on to explain that each accused instrumentality must be identified by ‘name or model number, if known.’ Id., ¶ 3-1(a)(2) (emphasis added). Plaintiff has met this requirement by identifying the names of the accused instrumentalities. Nothing more is required by the plain language of Misc. Order No. 62.”
Specificity and Detail of Claim Chart. Judge Ramirez reviewed H-W Technology’s claim chart and noted that it had omitted one of the accused instrumentalities (Nexus One) altogether, failed to “identify the Android operating system anywhere,” and “merely recites language from the claims at issue without providing any support for some of their elements.” H-W Technology argued, among other things, that it had adequately put Google on notice of H-W Technology’s infringement theories (in its contentions and during a pre-suit meeting with Google at Google’s headquarters), and that “Google’s claimed confusion is disingenuous at best because Google is one of the most sophisticated technology companies in the world with attorneys having engineering degrees from Ivy League schools[.]” H-W Technology “further contends that at a basic level, this is a simple case that involves the use of Google software to perform certain functions on Google-branded smartphones, and that a simple reading of the 955 patent compared to the accused products makes it abundantly clear what is at stake.”
Judge Ramirez rejected H-W Technology’s arguments:
Although its claim chart recites language from the claims at issue and provides corresponding images with some textual explanations, it still falls short of “identifying specifically and in detail where each element of each asserted claim is found within each accused instrumentality.” Misc. Order No. 62, ¶ 3-1(a)(3). Plaintiff has the burden of providing infringement contentions that identify specifically and in detail where each claim element is found in the accused products, “so that the Court can make a principled decision on whether discovery will proceed.” See Bender v. Maxim Integrated Prods., Inc., 2010 WL 1135762, at *2 (N.D. Cal. Mar. 22, 2010). Simply asserting that attorneys with engineering degrees from Ivy League schools who work for one of the most sophisticated technology companies in the world would understand the infringement contentions is not sufficient. See id. Likewise, Plaintiff’s assertion that it presented its infringement contentions to Google is also insufficient because it does not show that the infringement contentions actually served on Google, and required by Misc. Order No. 62, are of sufficient specificity. The substance of Plaintiff’s presentation to Google is not a matter of record. Finally, Plaintiff’s argument that merely putting Google on notice of its infringement theories complies with the requirement of a claim chart with specific and detailed infringement contentions is unpersuasive.
Accordingly, Judge Ramirez found that H-W Technology’s supplemental contentions were deficient and failed to comply with the patent rules.
Judge Ramirez then took up the issue of whether the supplemental contentions should be stricken under Rule 16(f) for failure to comply with the patent rules. According to Judge Ramirez, “The tests for determining whether to allow a party to supplement infringement contentions and for determining whether to strike infringement contentions are essentially the same. A court must consider the following factors: (1) the reason for the delay and whether the party has been diligent; (2) the importance of what the court is excluding and the availability of lesser sanctions; (3) the danger of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay on judicial proceedings.” (citations and quotations omitted).
After considering each factor, Judge Ramirez found that H-W Technology’s infringement contentions regarding Nexus One (the product H-W Technology failed to chart) should be stricken, and that H-W Technology would be allowed 30 days (from the date of the order accepting Judge Ramirez’s recommendation) to file amended infringement contentions with respect to the remaining accused instrumentalities that comply with Amended Misc. Order No. 62. Judge Ramirez offered the following guidance for H-W Technology when drafting its amended infringement contentions:
The amended infringement contentions should identify each accused instrumentality as specifically as possible, and assert any infringement theories clearly and specifically. The amended infringement contentions should also include a claim chart covering each of the accused instrumentalities. If certain portions of the chart are applicable to more than one of the accused instrumentalities, the claim chart should clearly indicate as such. The claim chart should further identify as specifically as possible (in terms of name, model, version, or manufacturer) the representative products being analyzed. Finally, the claim chart should identify specifically and in detail where each element of each asserted claim is found within each accused instrumentality, keeping in view the deficiencies pointed out in these findings, conclusions, and recommendation.
(Judge Ramirez indicated that, although Google had only moved to strike the infringement contentions, its motion “may be construed as a motion to strike as well as an alternative motion to compel more detailed infringement contentions.”)
H-W Technology is represented by Winston Huff and Arthur Navarro, both of Navarro Huff PLLC.
Google is represented by Craig Tyler, Robin Brewer, and Stefani Shanberg, all of Wilson Sonsini Goodrich & Rosati.