Order Granting Motion To Compel Supplementation Of Plaintiff's Infringement Contentions, Innovative Automation LLC v. Kaleidescape, Inc., C13-05651-JD (Judge Lloyd)
Plaintiffs in patent cases may feel motivated to cover their bases by trying to sweep in categories of accused devices using representative claim charts. However, this strategy may run afoul of the Northern District's Patent Local Rules for infringement contentions, as illustrated by Magistrate Judge Lloyd's recent decision. Specifically, Magistrate Judge Lloyd granted the defendant's motion to compel the plaintiff to supplement its infringement contentions on October 23, 2014.
Innovative Automation LLC ("Innovative") sued Kaleidescape, Inc. ("Kaleidescape") in 2013, alleging its Kaleidescape Home Entertainment System ("KHES") infringed Innovative's U.S. Patent No. 7,174,362 ("the '362 Patent"). Innovative alleged the KHES—which allows users to purchase movies and music through servers, players, and other components—infringed claims of the '362 patent. In March 2014, Innovative served its preliminary infringement contentions. In its contentions, Innovative identified just three of Kaleidescape products by name—its "Cinema One," "1U," and "3U" products—and also included open-ended language asserting that other broad categories of Kaleidascape products also infringed under the same theories set forth in the Cinema One, 1U and 3U claim charts. As for explaining how the accused products infringed the asserted claims, Innovative recited the claim language and then claimed—without identifying a specific product—that "Kaleidescape" performed the claimed method.
Kaleidescape met and conferred with Innovative and requested that it amend its infringement contentions. Innovative responded by fixing a single typographical error, but otherwise leaving its preliminary infringement contentions unchanged. That prompted Kaleidescape's motion to strike or to compel supplementation of Innovative's infringement contentions.
Judge Lloyd granted Kaleidescape's motion, holding Innovative's infringement contentions were deficient. In so holding, Judge Lloyd reiterated the purpose the preliminary infringement contentions, namely to include all facts known to, including those discovered in its Federal Rules of Civil Procedure 11 prefiling investigation. Judge Lloyd concluded that simply naming three Kaleidescape products as representative examples and categorically referring to other products using open-ended language was insufficient, especially given that Kaleidescape's products were identified by name on its website. In so holding, Judge Lloyd reiterated that the Patent Local Rules prohibit such conduct.
As for Innovative's claims charts, Judge Lloyd held that they were conclusory as they failed to explain how each of the accused products performed the steps of the claimed methods. Innovative's claims charts, moreover, did not actually tie any of Kaleidescape's products to the claim limitations, instead referring generally to "Kaleidescape"—i.e., "Kaleidescape transmits said requests through a network to a computer." Rather than strike Innovative's claims, Judge Lloyd granted Innovative 21 days leave to amend.
This decision underscores the importance of detailed preliminary infringement contentions and the expectation that Northern District judges may require plaintiffs to demonstrate an adequate Rule 11 pre-filing investigation through their infringement contentions.
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