Summary
holding Patent L.R. 3-1 does not require a claim chart for every accused product; plaintiff need only provide enough information to "permit a reasonable inference that all accused products infringe."
Summary of this case from Avago Technologies, Inc. v. Iptronics Inc.Opinion
Case No. C03-05709 JF (HRL).
November 10, 2004
ORDER ON NANYA'S MOTION TO STRIKE RENESAS' PATENT LOCAL RULE 3-1 PRELIMINARY INFRINGEMENT CONTENTIONS
On November 2, 2004, this court heard defendant Nanya Technology Corporation's (Nanya) Motion to Strike Renesas' Patent Local Rule 3-1 Preliminary Infringement Contentions. Plaintiff Renesas Technology Corporation (Renesas) opposed the motion. Based upon the papers submitted, and the arguments of counsel, the court GRANTS the motion IN PART.
BACKGROUND
Renesas filed a complaint against Nanya on December 16, 2003, alleging Nanya infringed seven of its patents. On April 28, 2004, Renesas served its Preliminary Infringement Contentions (PICs) pursuant to Patent L.R. 3-1. Believing the PICs to be deficient, Nanya sent Renesas a letter on May 14, 2004, requesting that the parties meet and confer to discuss the perceived deficiencies. The resulting meet and confer sessions lead to an agreement that Renesas would provide revised PICs, which were served on June 4, 2004.Renesas' revised PICs divided the 160 allegedly infringing products into four groups, found in Tables 1-4. Table 1 contains the "A" version products, Table 2 contains the "B" version products, and Tables 3 and 4 contain very new and miscellaneous products. After reverse engineering two "A" version products and one "B" version product, Renesas prepared Figures 1 and 2, respectively, detailing what it claimed to be infringing circuitry. See Decl. of M. Miura ¶¶ 17-18. It claims that all "A" group products have the same infringing circuitry, and that the later "B" version products use essentially the same infringing circuitry as the "A" versions, with only minor changes. Opp. at 4. It also claims that the products listed in Tables 3 and 4 "appear to use the common circuitry contained in Nanya's `A' and `B' versions of the same products." Opp. at 4. Renesas prepared composite schematics to show the circuitry common to Figures 1 and 2. See Decl. of M. Miura ¶ 18.
Renesas asserts that it is industry practice that, throughout the manufacturing lifetime of a product, additional models are produced as a result of improvements in the manufacturing process or to reduce costs. Thus, an "A" version of a product will initially be manufactured, followed by subsequent "B" and possibly "C" versions. Opp. at 2.
For each of its seven asserted patents, Renesas provided a claim chart, along with portions of Figures 1 and 2 and the composite schematics that "focus on the relevant circuitry for that patent." Opp. at 10. Each patent's claim chart maps onto the figures.
Nanya alleges that the revised PICs are deficient in that:
1. Renesas failed to provide a separate chart for each accused product, as required by Patent L.R. 3-1(c);
2. The chart that Renesas does provide does not comply with Patent L.R. 3-1(c);
3. Renesas failed to provide complete file histories as required by Patent L.R. 3-2.
The motion, which was noticed before Judge Fogel, was referred to this court as the "primary relief [Nanya] seeks is an order compelling [Renesas] to provide adequate disclosures." See Judge Fogel's Sept. 20, 2004 Order at 3.
The motion also alleges that Renesas improperly added 64 additional products in its amended PICs, and requests that the court dismiss these claims from the litigation. In his order referring this motion to the court, Judge Fogel stated that he would consider this request after this court rules on the motion to strike. See Judge Fogel's Sept. 20, 2004 Order at 4 n. 3.
DISCUSSION
I. Patent Local Rule 3-1
Patent L.R. 3-1 provides that a plaintiff in a patent infringement action must serve PICs setting forth "[e]ach claim of each patent in suit that is allegedly infringed by each opposing party" and identifying for each claim "each accused apparatus, product, device, process, method, act, or other instrumentality ('Accused Instrumentality') of each opposing party of which the party [claiming infringement] is aware." Patent L.R. 3-1(a) (b). A plaintiff must also provide a "chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality." Id. at 3-1(c).
II. Failure to Provide Infringement Charts Pursuant to Patent L.R. 3-1(c)
A. Parties' Arguments
Nanya first argues that Renesas' Patent L.R. 3-1(c) chart is improper. It argues that, as Renesas has provided only a single claim chart, it has not addressed each product separately. However, the text of Patent L.R. 3-1(c) only requires "a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality," and not a separate chart for each individual product. Nanya's real complaint appears to be with Renesas' pre-filing investigation. It asserts that, while Renesas argues that the infringing circuitry is the same for the accused products, it has no basis for this allegation, due to its insufficient investigation. It argues that Renesas only reverse engineered 3 of the 160 accused products, and relied on Nanya's Part Numbering Guide and website to accuse the remaining 157 products. Nanya also notes that Renesas uses equivocal language in its PICs, like accusing products on "information and belief" and stating that products have "identical or equivalent circuitry."
Renesas states that its investigation was proper, and disputes that reverse engineering of each product is required. It alleges that, notwithstanding the different model numbers assigned to each product, all the allegedly infringing products "fall within two groups for purposes of an infringement analysis." Opp. at 7. It alleges that further investigation is unnecessary, and that compelling multiple charts "would result in 160 copies of identical circuitry as related to the discrete elements charged with infringement." Opp. at 7.
B. Legal Standard
Patent L.R. 3-1 is essentially a "discovery device" intended to streamline the discovery process by "tak[ing] the place of a series of interrogatories that defendants would likely have propounded." Network Caching Technology, LLC v. Novell, Inc., No. C-01-2079 VRW, 2002 WL 32126128 **3-4 (N.D. Cal. Aug. 13, 2002). As such, a plaintiff is required to include in its PICs all facts known to it, including those discovered in their Fed.R.Civ.P. 11 pre-filing inquiry. Id. at *4.
The Federal Circuit has held that, in the context of patent litigation, Rule 11 requires a party to "apply the claims of each and every patent that is being brought into the lawsuit to an accused device and conclude that there is a reasonable basis for a finding of infringement of at least one claim of each patent so asserted." View Engineering, Inc. v. Robotic Vision Systems, Inc., 208 F.3d 981, 986 (Fed. Cir. 2000) (applying Ninth Circuit law). See also Network Caching, 2002 WL 32126128 *5. To satisfy Rule 11 and Patent L.R. 3-1, courts in this district have held that a "plaintiff [must] compare an accused product to its patents on a claim by claim, element by element basis for at least one of each defendant's products." Id. To make such a comparison, "reverse engineering or its equivalent is required." Id.
A sufficient investigation, however, does not require a plaintiff to reverse engineer every accused product. See id. Rather, a plaintiff need only provide "sufficient evidence to convince the court that reverse engineering would not provide more detail regarding any potential infringement." Id. Plaintiff's investigation "must be sufficient to permit a reasonable inference that all accused products infringe." Antonious v. Spaulding Evenflo Cos., 275 F.3d 1066, 1075 (Fed. Cir. 2002). Essentially, a plaintiff must be able to show "why it believed before filing the claim that it had a reasonable chance of proving infringement." View Engineering, 208 F.3d at 986.
C. Analysis
Renesas' investigation appears to be sufficient concerning the products in Tables 1 and 2. Renesas reverse engineered two "A" version products and one "B" version product. From this investigation, it derived Figures 1 and 2, respectively. Renesas alleges that the relevant circuitry was the same between the "A" and "B" versions, and that the differences between the two did not implicate the patents at issue. Opp. at 4. It further alleges that it is "extremely likely" that all the products listed in Tables 1 and 2 (the remaining "A" and "B" products) have substantially the same circuitry as the products that were reverse engineered, and that the different model numbers are simply a result of various product options (including different data widths, speeds, and packaging) that do not change the relevant circuitry. See Decl. of W. Dalley, ¶¶ 24-26, 14-18.
Renesas' investigation is sufficient to support a reasonable inference that the accused products in Tables 1 and 2 infringe. See Antonious, 275 F.3d at 1075. Its reverse engineering of three products (in conjunction with its industry knowledge and examination of Nanya's Part Numbering Guide) constitutes sufficient evidence that all accused products need not be reverse engineered to obtain more information about the alleged infringement. The court finds that Renesas performed a sufficient inquiry concerning the products in Tables 1 and 2, and that the corresponding PICs, as well as Figures 1 and 2, are sufficient.
Renesas' investigation seems less thorough with respect to the products in Tables 3 and 4 (the "C" version and miscellaneous products). Concerning the "C" version products in Table 3, Renesas asserts that the "A" version products and the "B" version products have the same infringing circuitry, and that the only differences between them are "minor changes not involving the patented inventions." Opp. at 4. It now contends that, since the infringing circuitry remained the same between the "A" and "B" versions, "it is expected that version `C' would differ from version `B' only in minor ways." Decl. of W. Dalley ¶ 27.
Renesas claims that Table 4 lists additional Nanya products that differ from the products in Tables 1-3 based on size, power level, or interface. Id. at ¶ 28. It asserts that the infringing circuitry remains the same, basing this on its "extensive knowledge" of Nanya's products, obtained through reverse engineering earlier Nanya products, prior litigation and license negotiations between the two parties, studying reverse engineering reports and Nanya's website, and general industry knowledge. See Renesas' First Amended Disclosure of Asserted Claims and Preliminary Infringement Contentions at 7-8. Based upon this knowledge and the investigation previously conducted in this case, Renesas states that it was "able to derive a common set of infringing circuitry" that is present in all accused products, and prepared composite schematics showing the common circuitry between the "A" and "B" versions. Id.; see also Decl. of M. Miura at ¶ 18.
These composite schematics are listed as Figures A-3, B-3, C-3, D-3, E-3, F-3, G-3, and G-4 in Renesas' PICs.
Renesas' investigation of the products in Tables 3 and 4, while less thorough, still appears to meet Rule 11 standards. As noted above, a party claiming infringement does not have to reverse engineer every one of a defendant's products. Instead, a plaintiff must only demonstrate "why it believed before filing the claim that it had a reasonable chance of proving infringement." View Engineering, 208 F.3d at 986. Here, Renesas has provided declarations in support of its contentions that all products infringe, stating that it is the practice of this industry not to change product circuitry when going from one version of a product to the next. Because of this, plaintiff argues that requiring it to reverse engineer additional products would simply be burdensome and expensive, and would provide no additional information.
The court finds that Renesas has presented sufficient evidence to "permit a reasonable inference that all accused products infringe." Antonious, 275 F.3d at 1075. At this point, that is all that is required. Nanya's argument that it is improper to accuse products by relying on sources other than the accused products is unpersuasive, given that Renesas reverse engineered three products in addition to consulting other materials.
Nanya's argument that the investigation was insufficient because not all accused products exist is also unpersuasive. Plaintiff has presented evidence that the products at least exist and were offered for sale. Furthermore, the issue before the court is whether the investigation was sufficient, and not whether products are properly in the case.
II. Failure to Comply with Patent L.R. 3-1(c)
A. Parties' Arguments
Nanya next complains that Renesas' chart suffers from a multitude of deficiencies. It argues that, instead of identifying where functional elements of the claim are found in the accused products, Renesas simply mimics the claim language. It objects to Renesas' use of both derived product figures and derived voltage graphs, arguing that they are incomplete, and that the voltage graphs do not disclose the testing methods and procedures used. It states that Renesas has not specifically identified the location of various elements, as required by Patent L.R. 3-1(c). Nanya finally alleges that many of Renesas' contentions are confusing and incomplete. It alleges that Renesas lacks support for these contentions, and that the figures do not support the contentions.
Renesas responds that its chart is sufficient to set forth its theories of infringement. It argues that it has gone beyond merely mimicking the claim language, by mapping claim language onto focused schematics that relate specifically to the patent at issue. It argues that Nanya is seeking proof of infringement, which is not required at this stage. It also alleges that it does not need to provide support for its contentions at this point, as PICs are not meant to be a forum for deciding substantive issues.
B. Legal Standard
Patent L.R. 3-1(c) states that a party claiming infringement shall provide a "chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality." "Patent L.R. 3-1 does not require [plaintiff] to produce evidence of infringement or to set forth ironclad and irrefutable claim constructions," nor does it require a plaintiff to provide support for its contentions. Network Caching Technology Corp. v. Novell, Inc., No. C-01-2709 VRW, 2003 WL 21699799 *4 (N.D. Cal. Mar, 21, 2003) ( Network Caching II). Instead, a party need only set forth "particular theories of infringement with sufficient specificity to provide defendants' with notice of infringement" beyond the claim language itself. Id. However, it is inappropriate to "simply mimic the language of the claim," providing "no further information to defendants than the claim language itself." Network Caching, 2002 WL 32126128 *6.
C. Analysis
Renesas has done more than simply recite the claim language. Its claim charts identify its theories of infringement, by mapping claim language onto focused schematics that relate specifically to the patent at issue. While Nanya complains that Renesas has provided no support for its contentions, PICs need not provide support for a party's claims, and are "merely designed to streamline the discovery process." Network Caching II, 2003 WL 21699799 *5 (overruling defendant's objections that the PICs failed to provide support for plaintiff's allegations). That Renesas' contentions are not perfect at this stage is not fatal. See id. (noting that there is "no requirement that [plaintiff] thoroughly present and successfully defend its theories of infringement in the confines of a PIC chart"). Requiring Renesas to prove more, especially with the voltage graphs, seems inappropriate, as it alleges it has not yet received the discovery necessary to run the voltage tests properly.
Nanya's argument that Renesas is accusing products of infringement in order to obtain discovery on them is unpersuasive. Before accusing the products, Renesas investigated the products and found some basis for its claims. See Opp. at 12.
However, Nanya's complaint that Renesas has not identified where each claim is found within the accused products has merit. Patent L.R. 3-1(c) requires a party to identify "specifically where each element of each asserted claim is found within each Accused Instrumentality." While the court notes that the PICs do not need to be perfect at this point, to the extent that Renesas has not specifically identified where in the product each claim is located, it should amend its PICs to do so.
III. Failure to Provide Complete File Histories
Nanya argues that Renesas' production of file histories pursuant to Patent L.R. 3-2(c) for its seven allegedly infringed patents is inadequate. It alleges that the documents produced are disorganized, and that it is unable to determine if complete file histories have been provided. Nanya states that it attempted to obtain the file histories from the U.S. Patent and Trademark Office, which claimed to also have incomplete file histories.
At the hearing, Renesas represented to the court that it produced the Patent and Trademark Office files for the seven asserted patents, just as they were kept by that office. It alleges that it produced the remaining file histories (for the patents that lead to the issuance of the patents at issue) just as they were kept by the Patent and Trademark Office and the prosecuting attorneys.
Patent L.R. 3-2(c) requires a plaintiff to produce "[a] copy of the file history for each patent in suit." As Renesas produced the files just as they were kept, it appears as though it has complied with the rule. However, since it is in a better position to understand the organization of the file histories, it shall submit a declaration for each file history from the person(s) responsible for gathering the documents, explaining as to each as best as possible in what order the documents were stored and produced.
ORDER
Based on the foregoing, IT IS ORDERED THAT:
1. The motion to strike is DENIED concerning the sufficiency of Renesas' investigation. The court finds the investigation was sufficient.
2. The motion is GRANTED IN PART concerning Renesas' Patent L.R. 3-1(c) charts. The charts are adequate, as they go beyond restating the claim language, and map the claims onto focused schematics for each patent. However, to the extent that Renesas has not specifically identified where in each product each claim is found, it shall amend its PICs to do so. If it is unable to do so at this point, it should state the reasons why.
4. The motion is GRANTED IN PART concerning Renesas' production of file histories. Renesas shall submit a declaration for each file history from the person(s) responsible for gathering the documents, explaining as to each as best as possible in what order the documents were stored and produced.
IT IS SO ORDERED.