Motion re: Infringement Contentions Granted in Part

Linex Technologies, Inc. v. Belkin Intern., Inc., --- F.Supp.2d ----, 2008 WL 4372708(E.D.Tex. Sep 19, 2008) (NO. CIV.A. 2:07CV222)
Judge: John Love
Holding: Motion to Strike PICs/Motion to Compel Amended PICs Granted in Part
One of the recurring issues in patent litigation under patent local rules such as those in the Eastern District is determining the sufficiency of infringement or invalidity contentions.  Overlapping partially is the issue of when contentions can be amended.  I say partially because the issue of whether inadequate contentions can be remedied is separate from the issue of when contentions can be amended by adding new products or new prior art, and this opinion addresses the former, but not the latter.
Last September Judge Love issued an opinion in this case which has just been reported on Westlaw, which presents a number of issues with respect to the adequacy question.  Judge Everignham's opinion reviewed the history and purpose of local patent rules, then he explained the context of dispute.  Specifically, the defendant here was complaining about three things.  First, that the plaintiff was using a industry standard (802.11n) as the basis for its infringement contentions; second that the plaintiff provided one generic claim chart for each defendant, not product by product; and third specific claim limitations arguments.
With respect to the first argument, Judge Love found the plaintiff's contentions sufficient but only up to a point, noting that Plaintiff failed to identify where each limitation of each asserted claim is found within each Accused Product.  "In essence," the Court wrote, "Plaintiff sought to rest on the vaguely articulated notion that networks which conform to the draft 802.11n standard conform to the teachings of the '322 patent, and 802.11n-compliant products therefore necessarily infringe the '322 patent."  While using the 802.11n standard as the starting point for infringement is permissible, the Court continued, the Plaintiff failed to demonstrate how each Accused Product conforms to the standard, which it could have done by linking each Accused Product - or even an exemplary Accused Product - to the draft standard.  That would have added the information and specificity needed to comply with the requirements of Patent Rule 3-1. While "[t]here may be times where an industry standard is sufficiently particular to alone be the basis for infringement cases" Judge Love concluded, "[h]ere, however, reliance on this industry standard alone is inappropriate."  The Court did go on to note that to the extent proprietary firmware or software used in the accused products, a plaintiff might have a valid reason for not having sufficiently specific contentions at the outset, but did not find this to be one of those cases.  In conclusion, while "the use of an industry standard as the basis for infringement contentions is permissible, and in certain cases may even be sufficient to put a defendant on notice of the plaintiff's assertions of infringement. Where-as here-an industry standard fails to delineate details which are critical to an assertion or determination of infringement, such a standard will not, alone, suffice as the basis for Infringement Contentions required by this Court's Patent Rules."  (Interestingly, the plaintiff also asserted that products that did not comply with the standard infringed as well - but provided no theory of infringement at all.  Accordingly, Judge Love ordered product by product charts since there was no overall basis for infringement for these products, as there was for the standards-compliant products).
Next up was the defendants' complaint that the plaintiff was using one generic claim chart which they contended didn't take into account the differences among the accused products.  Judge Love agreed with the plaintiff that the use of an exemplar product to outline infringement contentions was permitted, but disagreed that use of the standard - as opposed to an exemplar product, was sufficient in this case, noting that the contentions conspicuously lacked detail.  "At this point in time," the Court decided, "Plaintiff must list each individually Accused Product and go through specific infringement contentions for each. For information not publicly available, Plaintiff must note that such detail is forthcoming pending further discovery and Plaintiff must note from whom such discovery is expected. In doing so, Plaintiff
would meet the requirements of Patent Rule 3-1."
The remaining sections of the opinion deal with specific claim limitations, and here the Court set out the limits of specificity, noting that "At this point in the litigation, Plaintiff is merely required to outline in detail its specific Infringement Contentions regarding particularly Accused Products. As noted above, the Infringement Contentions are not intended to
be a forum for adjudicating the merits of the plaintiff's contentions. The Infringement Contentions are intended to disclose information as a means to expediting the discovery process. As such, the merits of Plaintiff's contentions -that OFDM is a spread spectrum modulation technique- is not at issue in the instant motion. Rather, the issue is whether Plaintiff's Infringement Contentions fulfill the particular requirements of Patent Rule 3-1, by disclosing sufficiently detailed information."  (Internal citation omitted; emphasis mine).
As always, the precise relief granted is worth reviewing.  Judge Love did not strike the Plaintiff's contentions - rather he ordered the plaintiff to supplement its contentions as set forth in the order.