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UNITED STATES DISTRICT COURT
4
NORTHERN DISTRICT OF CALIFORNIA
5
SAN JOSE DIVISION
6 7
FINISAR CORPORATION,
Case No. 13-cv-03345-BLF
Plaintiff, 8 v. 9 10
NISTICA, INC., Defendant.
ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO STRIKE PORTIONS OF EXPERT REPORTS [Re: ECF 276, 292]
United States District Court Northern District of California
11 12 Before the Court are motions to strike portions of expert reports by Plaintiff Finisar Corp.
13 14
(“Finisar”) and Defendant Nistica, Inc. (“Nistica”). Pl.’s Mot., ECF 276; Def.’s Mot., ECF 292.
15
Finisar moves this Court to strike portions of Nistica’s expert report of Dr. Keith Goossen (“the
16
Goossen Report”) that reference newly disclosed prior art references and combinations and
17
inherent anticipation theories. Nistica seeks to have portions of Finisar’s expert reports of Dr.
18
Katherine Hall (“the Hall Report”) and Dr. Benjamin Goldberg (“the Goldberg Report”) that
19
reference previously rejected or newly presented infringement theories stricken. For the reasons
20
stated herein, Finisar’s motion to strike is GRANTED IN PART AND DENIED IN PART and
21
Nistica’s motion to strike is GRANTED IN PART AND DENIED IN PART.
22 23
I.
LEGAL STANDARD This district’s patent local rules require both parties to provide early identification of their
24
respective infringement and invalidity theories. See Patent L.R. 3-1, 3-3. Once served, the
25
contentions constitute the universe of the parties’ respective theories, and those contentions may
26
be amended only by order of the court and upon a showing of good cause. Patent L.R. 3-6.
27 28
As has been recognized by many courts, the purpose of these disclosures is to “require parties to crystallize their theories of the case early in the litigation,” O2 Micro Int’l Ltd. v.
1
Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info.
2
Storage Devices, Inc., No. C 95–1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. 1998)), so as to
3
“further the goal of full, timely discovery and provide all parties with adequate notice of and
4
information with which to litigate their cases,” Genentech, Inc. v. Trustees of Univ. of
5
Pennsylvania, Case No. 10–cv–2037, 2012 WL 424985, at *2 (N.D. Cal. Feb. 9, 2012) (citation
6
and internal quotation marks omitted). “The rules thus seek to balance the right to develop new
7
information in discovery with the need for certainty as to the legal theories.” O2 Micro, 467 F.3d
8
at 1366. A district court has wide discretion in enforcing the patent local rules. Id. at 1365-66;
9
SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005).
United States District Court Northern District of California
10
II.
DISCUSSION FINISAR’S MOTION TO STIRKE
11
A.
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Finisar seeks to strike the following from Nistica’s expert report of Dr. Keith Goossen on
13
invalidity: (1) new prior art references and invalidity theories; (2) inherent anticipation theories;
14
and (3) an anticipation theory that relies on two prior art references. Pl.’s Mot. 1, ECF 276.
15 16
i.
New Prior Art References and Invalidity Theories
Finisar moves to strike portions of the Goossen Report on the basis that it relies on several
17
prior art references and invalidity theories that were not previously disclosed. Id. at 5-8. Nistica
18
counters that these references are not being asserted as prior art but are rather being used to show
19
the background of the art and the knowledge of one of ordinary skill in the art. Def.’s Opp. 4,
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ECF 288. Nistica argues that because these references are not being used to meet specific claim
21
limitations, these references did not need to be disclosed under the patent local rules. Id. at 6.
22
Nistica also notes that even though it was not required to disclose these prior art references, it
23
disclosed all but three of the references. Id. at 4-5.
24
Several courts in this district have allowed parties to use undisclosed references to show
25
the background of the art or the knowledge of one of ordinary skill in the art. See Fujifilm Corp. v
26
Motorola Mobility LLC, Case No. 12-cv-03587-WHO, 2015 WL 757575, at *30 (N.D. Cal. Feb.
27
20, 2015) (collecting cases). In Digital Reg of Texas, LLC v. Adobe Sys., Inc., Case No. 12-1971-
28
CW, 2014 WL 4090550, at *9 (N.D. Cal. Aug. 19, 2014), Adobe sought to use previously 2
United States District Court Northern District of California
1
undisclosed references to show limitations not covered by the prior art references. Adobe argued
2
that these references did not need to be previously disclosed because they were being used to show
3
the background and scope of the prior art and the knowledge held by one of ordinary skill in the
4
art. Id. The court held that a reference “demonstrating a separate limitation is disclosed in the
5
prior art, constitutes another prior art reference that should have been disclosed in [Adobe’s] Prior
6
Art Election… holding otherwise would allow Adobe to completely circumvent the limits of that
7
Election and add unlimited extra references. This would defeat the purpose of limiting the number
8
of prior art references that each side must review.” Although parties cannot use undisclosed
9
references to meet claim limitations, undisclosed references can be used “for other purposes, e.g.,
10
to show the knowledge of a [person having ordinary skill in the art].” See ASUS Computer Int’l v
11
Round Rock Research, LLC, 12-cv-02099-JST-NC, 2014 WL 1463609, at *8 (N.D. Cal. Apr. 11,
12
2014).
13
Here, Nistica may use references, regardless of whether they have been previously
14
disclosed, to show the background of the art or the knowledge of one of ordinary skill in the art.
15
However, Nistica may not use references in excess of the limit on prior art references to meet
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claim limitations. The Court finds that in some paragraphs the Goossen report uses the disputed
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references to show the background of the art or the knowledge of a person having ordinary skill in
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the art and in other paragraphs, the Goossen report uses the disputed references to meet specific
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claim limitations. Accordingly, the Court’s rulings on Finisar’s motion to strike are set forth in
20
the table below:
21 22 23 24 25 26 27 28
Table 1: New References Produced for the First Time with the Goossen Report Reference Cited in Paragraphs Ruling 1. U.S. Patent No. 2,222,937 333 DENIED (“‘937 patent”) 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 2. U.S. Patent No. 2,303,113 333 DENIED (“‘113 patent”) 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 3. Jones et al., “A Cooled 333 DENIED Grating Spectrometer Using 391, 392, 399, 400, 405, 406, GRANTED 3
1 2 3
Cylindrical Optics,” Publications of the Astronomical Society of the Pacific, Vol. 94, p. 207-1982 (“Jones”)
414, 415, 420, 421, 428, 584, 601, 607, 610, 613
4 5 6 7 8 9 10
United States District Court Northern District of California
11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Table 2: References Encompassed in Bates Ranges in Footnote 2 of Nistica’s Final Contentions Reference Cited in Paragraphs Ruling 1. Ahderom et al., 446 DENIED “Applications of Liquid 515, 532, 538 GRANTED Crystal Spatial Light Modulators in Optical Communications,” IEEE (2002) 2. Ahderom et al., 446 DENIED “Reconfigurable 515, 532, 538 GRANTED MicroPhotonic Add/Drop Multiplexer Architecture,” DELTA (2004) 3. Huang et al., “Performance 243, 244 DENIED of a Liquid-Crystal Optical 297, 300, 303, 306 GRANTED Harmonic Equalizer”, OFC Vol. 4 (2001) 4. Ichikawa et al., “Dynamic 34, 38, 446 DENIED Space-Variant Optical 64, 515, 532, 538 GRANTED Interconnections Using Liquid Crystal Spatial Light Modulators”, Optics Comm. (1992) 5. Lelic et al., “Smart EDFA 243, 244 DENIED with Embedded Control,” 297, 300, 303, 306 GRANTED LEOS (2001) 6. NIST00804525-804537 and 70, 150 DENIED NIST804538- 804545 (Yoder 215, 221, 232, 233 GRANTED et. al., “DLP Technology: Applications in Optical Networking”) 7. Patel et al., “Liquid Crystal 38, 446 DENIED and Grating-Based Multiple515, 532, 538 GRANTED Wavelength Cross-Connect Switch”, IEEE Photonics Tech. Letters (1995) 8. U.S. Patent No. 3,216,313 333 DENIED 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 4
1
9. U.S. Patent No. 5,170,269
2
10. U.S. Patent No. 6,025,951
3
11. U.S. Patent No. 6,097,859
4
12. U.S. Patent No. 6,204,946
5
13. U.S. Patent No. 6,222,954
6 7 8
14. U.S. Patent No. 6,268,952 15. U.S. Patent No. 6,275,623
9 10
United States District Court Northern District of California
11
16. U.S. Patent No. 6,501,877
12 13 14
17. U.S. Patent No. 6,529,307
15
18. U.S. Patent No. 6,694,073
16
19. U.S. Patent No. 7,006,279
17
20. U.S. Patent No. 7,058,251
18 19 20 21 22 23 24 25 26 27 28
21. U.S. Patent Publication No. 2002/0171917 22. WO 03/032071 23. Wolffer et al., “Holographic Switching Between Single Mode Fibres Based on Electrically Addressed Nematic Liquid Crystal Gratings with High Deflection Accuracy”, Optics Comm. (1999) 24. Yun et al., Dynamic Erbium-Doped Fiber Amplifier Based on Active
35 64 35 64 38, 70, 150, 331, 446 392, 400, 406, 415, 421, 428 70, 150,151, 331, 446 514, 531, 537 38, 70, 150 64, 66 34, 35, 38 64 34, 70, 150, 151, 244, 331, 446, 447 297, 300, 303, 306, 392, 400, 406, 415, 421, 428, 514, 515, 531, 532, 537, 538 70, 150, 331, 332, 333, 446 391, 392, 395, 399, 400, 405, 406, 410, 414, 415, 420, 421, 425, 428, 518, 584, 601, 607, 610, 613
DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED
70, 150, 331, 446
DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED
392, 400, 406, 415, 421, 428 38 64 151, 446 515, 532, 538 332, 333 391, 392, 399, 400, 405, 406, 414, 415, 420, 421, 428, 518, 584, 601, 607, 610, 613 244 297, 300, 303, 306 446 515, 532, 538 34, 38 64
243, 244 297, 300, 303, 306
5
GRANTED
DENIED GRANTED
DENIED GRANTED DENIED GRANTED DENIED GRANTED
DENIED GRANTED
1 2
Gain Flattening with Fiber Acoustoptic Tunable Filters”, IEEE Photonics Tech. Letters (1999)
3 4 5 6
Table 3: References Asserted Against New Patents Reference Cited in Paragraphs 1. U.S. Patent 6,263,123 244 297, 300, 303, 306 2. U.S. Patent 6,760,511 514, 518, 531, 537
Ruling DENIED GRANTED GRANTED
3. U.S. Patent 6,798,941
GRANTED
7 8
514, 531, 537
9 10
United States District Court Northern District of California
11
Table 4: U.S. Patent No. 6,795,182 Reference Cited in Paragraphs 1. U.S. Patent No. 6,795,182 392, 400, 406, 415, 421, 428
12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
ii.
Ruling MOOT as Nistica agrees to withdraw reference to the ’182 patent in these paragraphs. Pl.’s Opp. 1-2, ECF 288.
Inherent Anticipation Theories
Finisar argues that Nistica’s use of boilerplate language in reference to inherent anticipation in its Final Contentions did not provide fair notice to Finisar. Pl.’s Mot. 8-9, ECF 276. Finisar also claims that Nistica abandoned its inherent anticipation theories. Id. Nistica argues that it complied with the patent local rules by disclosing all of its inherent anticipation theories in its Invalidity Contentions and that it did not abandon any of its inherent anticipation theories. Def.’s Opp. 9-10, ECF 288. The Court agrees with Nistica and finds that it sufficiently disclosed its inherent anticipation theories. While Finisar cites caselaw requiring more specific disclosures for parties asserting doctrine of equivalents, see Pl.’s Mot. 8, ECF 276, unlike inherent anticipation, the patent local rules require doctrine of equivalents to be separately disclosed. See Patent L.R. 31(e). It was also unreasonable for Finisar to conclude that Nistica abandoned its inherent anticipation theories as Nistica disclosed its inherent anticipation theories in every claim chart attached to Nistica’s Amended Invalidity Contentions. Ex. 2 to Decl of Tonkovich, ECF 288-4. To the extent, Finisar thought Nistica’s disclosures were lacking, Finisar could have brought a 6
1
motion to compel to clarify Nistica’s disclosures. Finisar chose not to and the Court DENIES
2
Finisar’s motion to strike the inherent anticipation theories in the Goossen Report.
3
Anticipation Theory Based on Two Prior Art References
4
Finally, Finisar argues that Nistica cannot use U.S. Patent No. 6,795,182 (“the ’182
5
patent”) in connection with U.S. Pub. No. 2003/0011,769 (“the ’769 publication”) to show
6
anticipation. Pl.’s Mot. 9-10, ECF 276. Nistica argues that the ’182 patent issued from the ’769
7
publication and it is only using the ’182 patent to clarify a typographical error in the ’769
8
publication. Def.’s Opp. 1-2, ECF 288.
9
United States District Court Northern District of California
iii.
Ordinarily, “in order to demonstrate anticipation, the proponent must show ‘that the four
10
corners of a single, prior art document describe every element of the claimed invention.’” See Net
11
MoneyIN, Inc. v VeriSign, Inc., 545 F3d 1359, 1369 (Fed. Cir. 2008). However, “extrinsic
12
evidence may be considered when it is used to explain, but not expand, the meaning of a
13
reference.” See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). “Thus, although
14
references cannot be combined for purposes of anticipation, additional references may be used to
15
interpret the allegedly anticipating reference and shed light on what it would have meant.” Ciba-
16
Geigy Corp. v. Alza Corp., 68 F.3d 487, at *2 (Fed. Cir. 1995). Nistica is using the ’182 patent to
17
explain the meaning of the ’769 publication and not in combination with the ’769 publication for
18
purposes of anticipation. Accordingly, the Court DENIES Finisar’s motion to strike the use of the
19
’182 patent in the anticipation section of the Goossen Report. NISTICA’S MOTION TO STRIKE
20
B.
21
Nistica seeks to strike the following from Finisar’s expert reports of Dr. Katherine Hall and
22
Dr. Benjamin Goldberg on infringement: (1) new infringement theories for U.S. Patent No.
23
7,123,833 (“the ’833 patent”); (2) newly accused product
24
infringement in the Hall Report; (4) new theories of infringement under 35 U.S.C. § 271(f) in the
25
Hall Report; (5) new theories of infringement for “spatial separating means” in the Hall Report;
26
(6) new theory of infringement for claim 14 of U.S. Patent No. 7,092,599 (“the ’599 patent”) in
27
the Hall Report; (7) new theories of infringement relating to claims 30 and 32 of U.S. Patent No.
28
6,956,687 (“the ’687 patent”) in the Hall Report; (8) new theories of infringement for claim 1 of 7
; (3) new theories of indirect
1
U.S. Patent No. 7,126,740 (“the ’740 patent”) in the Hall Report; and (9) newly accused products
2
in the Hall Report. See generally Def.’s Mot., ECF 291-4.
3
United States District Court Northern District of California
4
i.
New Infringement Theories for the ’833 Patent
Nistica argues that Finisar should not be allowed include infringement theories that Judge
5
Corley ruled cannot be added into the case through an amendment to Finisar’s infringement
6
contentions. Def.’s Mot. 3, ECF 291-4. According to Nistica, Finisar previously sought to amend
7
its infringement theories by amending its theory that the “processor” limitations of the ’833 patent
8
is met in the accused products by a
9
amending the source code it relies on to prove infringement of claims 1, 2 and 18 of the ’833
10
patent. Id. Judge Corley denied these proposed amendments and found that Finisar was not
11
diligent in pursuing these amendments and that Nistica would be prejudiced. Order at 7-14, ECF
12
272. Finisar counters that Judge Corley considered diligence and prejudice but did not consider
13
whether Finisar is presenting a different theory of infringement or including additional supporting
14
evidence of theories already disclosed. Pl.’s Opp. 10-11, ECF 307-4. Finisar claims that the
15
disputed theories are not new but are additional supporting evidence of its existing theories. Id.
16
rather than a
and
In determining whether to strike an expert report, the “threshold question [is] whether the
17
expert has permissibly specified the application of a disclosed theory or impermissibly substituted
18
a new theory altogether.” Digital Reg of Texas, LLC., 2014 WL 1653131, at *2. Here, Finisar’s
19
attempt to assert theories that were previously stricken is merely a disguised argument for
20
reconsideration of Judge Corley’s order denying Finisar’s motion to amend its infringement
21
contentions. As Judge Corley noted when Finisar argued that its theories were not different or
22
new, “the Court has been down this road before with Finisar: if that were the case, there would be
23
no need to amend in the first instance.” Order at 9, ECF 272. Moreover, Judge Corley found that
24
Nistica would be prejudiced by allowing Finisar to amend its infringement contentions because
25
“[r]equiring a defendant to adjust to new theories of infringement in the face of an upcoming
26
discovery deadline tends to result in a finding of prejudice.” Id. (emphasis added). Accordingly,
27
the Court GRANTS Nistica’s motion to strike the new infringement theories for the ’833 patent.
28
ii.
Newly Accused Product 8
1
Nistica argues that Finisar has refused to drop
2
though Judge Corley denied Finisar’s motion to add the
3
Mot. 5, ECF 291-4.
4
Mot. 9 n.7, ECF 307-4. Accordingly, the Court finds Nistica’s motion to strike
5
MOOT.
6 7 8
iii.
10
as an accused product. Def.’s
In response, Finisar has clarified that this product is not in this case. Pl.’s
New Theories of Indirect Infringement in the Hall Report
Nistica argues that the Hall Report includes a new theory of indirect infringement alleging that Nistica contributes to and induces to directly infringe the asserted patents. Def.’s Mot. 5,
9
ECF 291-4. Nistica also claims that the Hall Report impermissibly alleges that Nistica . Id. According to
11 United States District Court Northern District of California
from the Hall Report even
12
Nistica, Finisar’s Infringement Contentions did not mention
13
direct infringer as required by the patent local rules. Id. Finisar argues that it was not required to
14
identify third party direct infringers in its infringement contentions and that the local patent rules
15
did not require it to identify device components with no substantial non-infringing uses shipped
16
abroad. Pl.’s Opp. 5, ECF 307-4.
17
or identify
as a
Under Patent L.R. 3-1(d), any claim of indirect infringement must identify any direct
18
infringement and “description of the acts of the alleged indirect infringer that contribute to or are
19
inducing that direct infringement.” See also Fujitsu Ltd. v. Belkin Int’l, Inc., No. 10-CV-03972-
20
LHK, 2012 WL 4497966, at *8 (N.D. Cal. Sept. 28, 2012) (“Under the Patent Local Rules of this
21
District, a patentee’s Infringement Contentions must identify the alleged third-party direct
22
infringers in order to allege indirect infringement.”); Avago Techs., Inc. v. IPtronics Inc., 10-CV-
23
02863-EJD, 2015 WL 4647923, at *7-*8 (N.D. Cal. Aug. 5, 2015); Bender v. Maxim Integrated
24
Prods., Inc., No. 09-01152-SI, 2010 WL 1135762, at *3 (N.D. Cal. Mar. 22, 2010); but see
25
Largan Precision Co., Ltd. v. Genius Elec. Optical Co., No. 13-cv-02502-JD, 2014 WL 6882275,
26
at *8 (N.D. Cal. Dec. 5, 2014).
27 28
The Court agrees with Nistica and finds that Patent L.R. 3-1(d) requires an identification of any direct infringement including the identity of the alleged third-party direct infringers. Without 9
1
identifying the third-party direct infringers, Nistica is deprived of having fair notice as to Finisar’s
2
indirect infringement claims. Since Finisar did not identify
3
infringers, the Court GRANTS Nistica’s motion to strike theories of indirect infringement
4
involving
5
in the Hall Report. iv.
New Theories of Infringement Under 35 U.S.C. § 271(f) in the Hall Report
6
Nistica argues that the Hall Report includes new theories of infringement under 35 U.S.C.
7
§ 271(f) that were not previously disclosed in Finisar’s Infringement Contentions. Def.’s Mot. 6,
8
ECF 291-4. Finisar counters that it provided disclosure of its infringement theory under 35 U.S.C.
9
§ 271(f) in its Patent L.R. 3-1(d) contentions. Pl.’s Opp. 6, ECF 307-4.
10
United States District Court Northern District of California
as a third-party direct
Under 35 U.S.C. § 271(f)(1), a party is liable for infringement if it supplies “all or a
11
substantial portion” of the components of a patented invention in such a manner that “actively
12
induces the combination of such components.” Under 35 U.S.C. § 271(f)(2), a party is also liable
13
for infringement if the supplied components are “especially made or especially adapted for use in
14
the invention” and not a “staple article of commerce.”
15
The Court finds that Finisar did not sufficiently disclose its infringement theories under 35
16
U.S.C. § 271(f). While Finisar argues it made sufficient disclosures in its Patent L.R. 3-1(d)
17
contentions, liability under 35 U.S.C. § 271(f) is not a form of indirect infringement that would
18
fall under Patent L.R. 3-1(d). Unlike indirect infringement, section 271(f) does not require proof
19
of a separate act of direct infringement. Thus, Finisar cannot rely on its disclosures in its Patent
20
L.R. 3-1(d) contentions to support its 35 U.S.C. § 271(f) claim. However, even if Finisar could
21
rely on its disclosures in its Patent L.R. 3-1(d) contentions, the disclosures are still insufficient.
22
Patent L.R. 3-1(d) requires the identification of “any direct infringement” and a “description of the
23
acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.”
24
Finisar did not comply with the requirements under Patent L.R. 3-1(d). Accordingly, the Court
25
GRANTS Nistica’s motion to strike Finisar’s theories of infringement under 35 U.S.C. § 271(f).
26 27
v.
New Theories of Infringement for “Spatial Separating Means” in the Hall Report
Nistica argues that the Hall Report discloses a new theory of infringement for the 28 10
1
limitation “spatial separating means for simultaneously separating at least a first and second group
2
of light from said series of optical signals” of claim 1 of the ’980 patent. Def.’s Mot. 6, ECF 291-
3
4. According to Nistica, based on Finisar’s Infringement Contentions and subsequent
4
correspondence, Nistica understood Finisar to be relying on the
5
components as the “first and second group of light.” Id. at 6-7. Nistica argues that Finisar
6
changed its infringement theory in the Hall Report, which alleges the are the “first and second group of light.” Id. 7-8. In response, Finisar argues
7 8
that its infringement contentions and subsequent communications clearly and consistently
9
disclosed that the
10
4-5, ECF 307-4.
United States District Court Northern District of California
11 12 13
constituted the “first and second group of light.” Pl.’s Opp.
The Court agrees with Finisar and finds that it did not change its infringement theory in the Hall Report. In Finisar’s Infringement Contentions, Finisar disclosed figures showing the . Ex. 2, Finisar Infringement Contentions Exhibit F at 30-31, ECF 307-14. In
14
subsequent correspondence, Nistica sought clarification as to what constituted the “first and
15
second group of light.” Ex. 7 at 2, ECF 291-14. Finisar responded that the Infringement
16
Contentions include
17
291-15. From this communication, Nistica unreasonably assumed that Finisar was relying on the
18
Ex. 8, ECF
as the “first and second group of light” because Finisar’s the “first
19
response could reasonably have been understood to refer to the
20
and second group of light.” Nistica also claims that it expressed its understanding of Finisar’s
21
position in its non-infringement interrogatory responses, Ex. 9 at 112, 115, ECF 291-16, and that
22
Finisar never stated Nistica’s understanding was incorrect. However, Nistica’s interrogatory
23
response indicted that it was aware of other interpretations and that the accused devices were
24
similarly non-infringing under other interpretations. Ex. 9 at 112-113 n. 16, ECF 292-16. Rather
25
than unreasonably assuming Finisar intended one meaning from the Infringement Contentions,
26
Nistica should have sought further clarification as to what constituted the “first and second group
27
of light.” Accordingly, the Court DENIES Nistica’s motion to strike the Hall Report’s
28
infringement theories for “spatial separating means.” 11
vi.
1
New Theory of Infringement for Claim 14 of the ’599 Patent in the Hall Report
Nistica argues that the Hall Report impermissibly includes a new theory of infringement
2 3
for claim 14 of the ’599 patent. Def.’s Mot. 8, ECF 291-4. According to Nistica, Finisar’s
4
Infringement Contentions only disclosed a
5
the Hall Report discloses a new theory based on a modulated beam. Id. Nistica also argues that
6
the Hall Report abandoned the use of the
7
based on a modulated 25 Ghz channel, and uses a new methodology of calculating an aspect ratio.
8
Finisar argues that that Nistica’s arguments are implausible because all the ’599 accused devices
, presents a previously undisclosed theory
and that it did disclose the use of modulated beams in its
9
United States District Court Northern District of California
, while
10
Infringement Contentions. Pl.’s Opp. 1, ECF 307-4. Finisar also claims that the Hall Report relies
11
on the
12
in its Infringement Contentions. Id. at 2.
and that it was not obligated to provide its expert’s full and complete analysis
13
“Infringement contentions need not disclose specific evidence, whereas expert reports must
14
include a complete statement of the expert's opinions, the basis and reasons for them, and any data
15
or other information considered when forming them.” Digital Reg. of Texas, LLC, 2014 WL
16
1653131, at *2 (citing Apple Inc. v. Samsung Electronics Co., Ltd., 12–CV–0630–LHK–PSG,
17
2014 WL 173409, at *1 (N.D. Cal. Jan. 9, 2014).
18 19 20 21
The Court agrees with Finisar and finds that the Hall Report is not presenting a new theory of infringement for claim 14 of the ’599 patent. Despite Nistica’s reliance on the Finisar’s Infringement Contentions disclosed the use of
in the
accused device. Ex 13 at 12, ECF 307-35; Hall Decl. ¶ 10, ECF 307-35. Dr. Hall also used the Hall Decl. ¶ 11, ECF 307-6.
22 23
Finally, Finisar’s Infringement Contentions disclosed a 25 Ghz channel. Ex 13 at 12, ECF 307-35.
24
Although Dr. Hall’s full analysis is not present in Finisar’s Infringement Contentions, Finisar was
25
not required to include Dr. Hall’s complete expert report as part of its Infringement Contentions.
26
Accordingly, the Court DENIES Nistica’s motion to strike the alleged new theory of infringement
27
for claim 14 of the ’599 patent.
28
vii.
New Theories of Infringement Relating to Claims 30 and 32 of the ’687 12
Patent in the Hall Report
1
Nistica argues that the Hall Report asserts several new theories of infringement by relying 2 3
upon new source code to identify the “switching algorithm” in claims 30 and 32 of the ’687 patent. Def.’s Mot. 9, ECF 291-4. Second, Nistica claims that the Hall Report relies on an
4 infringement theory based on 5
which were not
disclosed in Finisar’s Infringement Contentions. Id. 10. Finally, Nistica argues that the Hall
6 Report discloses a new theory of infringement involving sending commands over the 7
which also was not disclosed in Finisar’s Infringement Contentions. Id. In
8 response to all three arguments, Finisar claims that it did not change its infringement theories but 9
rather added supplemental evidence to support its existing infringement theories. Pl.’s Opp. 6-7,
10 ECF 307-4. 11 United States District Court Northern District of California
The Court agrees with Nistica and finds that Finisar is asserting new theories of 12 infringement. Although Finisar claims that the new citations are not new theories but rather 13 14 15 16
additional evidence for existing theories of infringement, “the Court has been down this road before with Finisar: if that were the case, there would be no need to amend in the first instance.” Order at 9, ECF 272. Accordingly, the Court GRANTS Nistica’s motion to strike the new theories of infringement relating to claims 30 and 32 of the ’687 patent.
17 18 19 20 21
viii.
New Theories of Infringement for Claim 1 of the ’740 Patent in the Hall Report
Nistica argues that the Hall Report asserts new theories of infringement as to how the “spatial light modulator” is “programmable” and how the Def.’s Mot. 10-11, ECF 291-4. According to Nistica, these theories
22
of infringement were not contained in Finisar’s Infringement Contentions. Id. Finisar responds
23
that it is not changing its infringement theories but rather citing additional evidence in support of
24
its existing infringement theories. Pl.’s Opp. 7, ECF 307-4.
25
At oral argument, Nistica agreed that Finisar’s different evidence could be construed as
26
including additional evidence in support of its existing infringement theories rather than changing
27
theories of infringement. Transcript at 67-68. Nistica also agreed that given the “close call,”
28
Finisar should be given the benefit of the doubt. Id. Accordingly, the Court DENIES Nistica’s 13
1
motion to strike the new theories of infringement relating to claim 1 of the ’740 patent.
2
ix.
Nistica argues that the Hall Report accuses new products of infringement. Def.’s Mot. 11,
3 4
ECF 291-4. Finisar claims that it did not add any new products. Pl.’s Opp. 9, ECF 307-4.
5
According to Finisar, it accused all of Nistica’s line cards containing an infringing WSS module of
6
infringing the WSS patents. Id. Finisar claims that each and that each module is incorporated into line cards
7
Id.
8
Thus, Finisar argues that by accusing each WSS module, it was also accusing each line card that
9
incorporates the WSS modules. Id. Patent L.R. 3-1(b) requires each accused product to be “identified by name and model
10
United States District Court Northern District of California
Newly Accused Products in the Hall Report
11
number” for each asserted claim. The patent local rules “require[] specific identification of
12
particular accused products [and do] not tolerate broad categorical definitions.” Oracle Am. v.
13
Google Inc., No. C-10-03561-WHA, 2011 WL 4479305, *2 (N.D. Cal. Sept. 26, 2011). Finisar does not dispute that it did not specifically identify the newly accused products of
14 15
infringement. Contrary to Finisar’s arguments, the patent local rules require specific identification
16
of products and do not allow for accusations by implication. Accordingly, the Court GRANTS
17
Nistica’s motion to strike the newly accused products.
18
III.
ORDER For the foregoing reasons, Finisar’s motion to strike is GRANTED IN PART AND
19 20
DENIED IN PART and Nistica’s motion to strike is GRANTED IN PART AND DENIED IN
21
PART.
22
Dated: December 1, 2015
23
______________________________________ BETH LABSON FREEMAN United States District Judge
24 25 26 27 28 14
UNITED STATES DISTRICT COURT
4
NORTHERN DISTRICT OF CALIFORNIA
5
SAN JOSE DIVISION
6 7
FINISAR CORPORATION,
Case No. 13-cv-03345-BLF
Plaintiff, 8 v. 9 10
NISTICA, INC., Defendant.
ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO STRIKE PORTIONS OF EXPERT REPORTS [Re: ECF 276, 292]
United States District Court Northern District of California
11 12 Before the Court are motions to strike portions of expert reports by Plaintiff Finisar Corp.
13 14
(“Finisar”) and Defendant Nistica, Inc. (“Nistica”). Pl.’s Mot., ECF 276; Def.’s Mot., ECF 292.
15
Finisar moves this Court to strike portions of Nistica’s expert report of Dr. Keith Goossen (“the
16
Goossen Report”) that reference newly disclosed prior art references and combinations and
17
inherent anticipation theories. Nistica seeks to have portions of Finisar’s expert reports of Dr.
18
Katherine Hall (“the Hall Report”) and Dr. Benjamin Goldberg (“the Goldberg Report”) that
19
reference previously rejected or newly presented infringement theories stricken. For the reasons
20
stated herein, Finisar’s motion to strike is GRANTED IN PART AND DENIED IN PART and
21
Nistica’s motion to strike is GRANTED IN PART AND DENIED IN PART.
22 23
I.
LEGAL STANDARD This district’s patent local rules require both parties to provide early identification of their
24
respective infringement and invalidity theories. See Patent L.R. 3-1, 3-3. Once served, the
25
contentions constitute the universe of the parties’ respective theories, and those contentions may
26
be amended only by order of the court and upon a showing of good cause. Patent L.R. 3-6.
27 28
As has been recognized by many courts, the purpose of these disclosures is to “require parties to crystallize their theories of the case early in the litigation,” O2 Micro Int’l Ltd. v.
1
Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info.
2
Storage Devices, Inc., No. C 95–1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. 1998)), so as to
3
“further the goal of full, timely discovery and provide all parties with adequate notice of and
4
information with which to litigate their cases,” Genentech, Inc. v. Trustees of Univ. of
5
Pennsylvania, Case No. 10–cv–2037, 2012 WL 424985, at *2 (N.D. Cal. Feb. 9, 2012) (citation
6
and internal quotation marks omitted). “The rules thus seek to balance the right to develop new
7
information in discovery with the need for certainty as to the legal theories.” O2 Micro, 467 F.3d
8
at 1366. A district court has wide discretion in enforcing the patent local rules. Id. at 1365-66;
9
SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005).
United States District Court Northern District of California
10
II.
DISCUSSION FINISAR’S MOTION TO STIRKE
11
A.
12
Finisar seeks to strike the following from Nistica’s expert report of Dr. Keith Goossen on
13
invalidity: (1) new prior art references and invalidity theories; (2) inherent anticipation theories;
14
and (3) an anticipation theory that relies on two prior art references. Pl.’s Mot. 1, ECF 276.
15 16
i.
New Prior Art References and Invalidity Theories
Finisar moves to strike portions of the Goossen Report on the basis that it relies on several
17
prior art references and invalidity theories that were not previously disclosed. Id. at 5-8. Nistica
18
counters that these references are not being asserted as prior art but are rather being used to show
19
the background of the art and the knowledge of one of ordinary skill in the art. Def.’s Opp. 4,
20
ECF 288. Nistica argues that because these references are not being used to meet specific claim
21
limitations, these references did not need to be disclosed under the patent local rules. Id. at 6.
22
Nistica also notes that even though it was not required to disclose these prior art references, it
23
disclosed all but three of the references. Id. at 4-5.
24
Several courts in this district have allowed parties to use undisclosed references to show
25
the background of the art or the knowledge of one of ordinary skill in the art. See Fujifilm Corp. v
26
Motorola Mobility LLC, Case No. 12-cv-03587-WHO, 2015 WL 757575, at *30 (N.D. Cal. Feb.
27
20, 2015) (collecting cases). In Digital Reg of Texas, LLC v. Adobe Sys., Inc., Case No. 12-1971-
28
CW, 2014 WL 4090550, at *9 (N.D. Cal. Aug. 19, 2014), Adobe sought to use previously 2
United States District Court Northern District of California
1
undisclosed references to show limitations not covered by the prior art references. Adobe argued
2
that these references did not need to be previously disclosed because they were being used to show
3
the background and scope of the prior art and the knowledge held by one of ordinary skill in the
4
art. Id. The court held that a reference “demonstrating a separate limitation is disclosed in the
5
prior art, constitutes another prior art reference that should have been disclosed in [Adobe’s] Prior
6
Art Election… holding otherwise would allow Adobe to completely circumvent the limits of that
7
Election and add unlimited extra references. This would defeat the purpose of limiting the number
8
of prior art references that each side must review.” Although parties cannot use undisclosed
9
references to meet claim limitations, undisclosed references can be used “for other purposes, e.g.,
10
to show the knowledge of a [person having ordinary skill in the art].” See ASUS Computer Int’l v
11
Round Rock Research, LLC, 12-cv-02099-JST-NC, 2014 WL 1463609, at *8 (N.D. Cal. Apr. 11,
12
2014).
13
Here, Nistica may use references, regardless of whether they have been previously
14
disclosed, to show the background of the art or the knowledge of one of ordinary skill in the art.
15
However, Nistica may not use references in excess of the limit on prior art references to meet
16
claim limitations. The Court finds that in some paragraphs the Goossen report uses the disputed
17
references to show the background of the art or the knowledge of a person having ordinary skill in
18
the art and in other paragraphs, the Goossen report uses the disputed references to meet specific
19
claim limitations. Accordingly, the Court’s rulings on Finisar’s motion to strike are set forth in
20
the table below:
21 22 23 24 25 26 27 28
Table 1: New References Produced for the First Time with the Goossen Report Reference Cited in Paragraphs Ruling 1. U.S. Patent No. 2,222,937 333 DENIED (“‘937 patent”) 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 2. U.S. Patent No. 2,303,113 333 DENIED (“‘113 patent”) 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 3. Jones et al., “A Cooled 333 DENIED Grating Spectrometer Using 391, 392, 399, 400, 405, 406, GRANTED 3
1 2 3
Cylindrical Optics,” Publications of the Astronomical Society of the Pacific, Vol. 94, p. 207-1982 (“Jones”)
414, 415, 420, 421, 428, 584, 601, 607, 610, 613
4 5 6 7 8 9 10
United States District Court Northern District of California
11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
Table 2: References Encompassed in Bates Ranges in Footnote 2 of Nistica’s Final Contentions Reference Cited in Paragraphs Ruling 1. Ahderom et al., 446 DENIED “Applications of Liquid 515, 532, 538 GRANTED Crystal Spatial Light Modulators in Optical Communications,” IEEE (2002) 2. Ahderom et al., 446 DENIED “Reconfigurable 515, 532, 538 GRANTED MicroPhotonic Add/Drop Multiplexer Architecture,” DELTA (2004) 3. Huang et al., “Performance 243, 244 DENIED of a Liquid-Crystal Optical 297, 300, 303, 306 GRANTED Harmonic Equalizer”, OFC Vol. 4 (2001) 4. Ichikawa et al., “Dynamic 34, 38, 446 DENIED Space-Variant Optical 64, 515, 532, 538 GRANTED Interconnections Using Liquid Crystal Spatial Light Modulators”, Optics Comm. (1992) 5. Lelic et al., “Smart EDFA 243, 244 DENIED with Embedded Control,” 297, 300, 303, 306 GRANTED LEOS (2001) 6. NIST00804525-804537 and 70, 150 DENIED NIST804538- 804545 (Yoder 215, 221, 232, 233 GRANTED et. al., “DLP Technology: Applications in Optical Networking”) 7. Patel et al., “Liquid Crystal 38, 446 DENIED and Grating-Based Multiple515, 532, 538 GRANTED Wavelength Cross-Connect Switch”, IEEE Photonics Tech. Letters (1995) 8. U.S. Patent No. 3,216,313 333 DENIED 391, 392, 399, 400, 405, 406, GRANTED 414, 415, 420, 421, 428, 584, 601, 607, 610, 613 4
1
9. U.S. Patent No. 5,170,269
2
10. U.S. Patent No. 6,025,951
3
11. U.S. Patent No. 6,097,859
4
12. U.S. Patent No. 6,204,946
5
13. U.S. Patent No. 6,222,954
6 7 8
14. U.S. Patent No. 6,268,952 15. U.S. Patent No. 6,275,623
9 10
United States District Court Northern District of California
11
16. U.S. Patent No. 6,501,877
12 13 14
17. U.S. Patent No. 6,529,307
15
18. U.S. Patent No. 6,694,073
16
19. U.S. Patent No. 7,006,279
17
20. U.S. Patent No. 7,058,251
18 19 20 21 22 23 24 25 26 27 28
21. U.S. Patent Publication No. 2002/0171917 22. WO 03/032071 23. Wolffer et al., “Holographic Switching Between Single Mode Fibres Based on Electrically Addressed Nematic Liquid Crystal Gratings with High Deflection Accuracy”, Optics Comm. (1999) 24. Yun et al., Dynamic Erbium-Doped Fiber Amplifier Based on Active
35 64 35 64 38, 70, 150, 331, 446 392, 400, 406, 415, 421, 428 70, 150,151, 331, 446 514, 531, 537 38, 70, 150 64, 66 34, 35, 38 64 34, 70, 150, 151, 244, 331, 446, 447 297, 300, 303, 306, 392, 400, 406, 415, 421, 428, 514, 515, 531, 532, 537, 538 70, 150, 331, 332, 333, 446 391, 392, 395, 399, 400, 405, 406, 410, 414, 415, 420, 421, 425, 428, 518, 584, 601, 607, 610, 613
DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED
70, 150, 331, 446
DENIED GRANTED DENIED GRANTED DENIED GRANTED DENIED GRANTED
392, 400, 406, 415, 421, 428 38 64 151, 446 515, 532, 538 332, 333 391, 392, 399, 400, 405, 406, 414, 415, 420, 421, 428, 518, 584, 601, 607, 610, 613 244 297, 300, 303, 306 446 515, 532, 538 34, 38 64
243, 244 297, 300, 303, 306
5
GRANTED
DENIED GRANTED
DENIED GRANTED DENIED GRANTED DENIED GRANTED
DENIED GRANTED
1 2
Gain Flattening with Fiber Acoustoptic Tunable Filters”, IEEE Photonics Tech. Letters (1999)
3 4 5 6
Table 3: References Asserted Against New Patents Reference Cited in Paragraphs 1. U.S. Patent 6,263,123 244 297, 300, 303, 306 2. U.S. Patent 6,760,511 514, 518, 531, 537
Ruling DENIED GRANTED GRANTED
3. U.S. Patent 6,798,941
GRANTED
7 8
514, 531, 537
9 10
United States District Court Northern District of California
11
Table 4: U.S. Patent No. 6,795,182 Reference Cited in Paragraphs 1. U.S. Patent No. 6,795,182 392, 400, 406, 415, 421, 428
12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
ii.
Ruling MOOT as Nistica agrees to withdraw reference to the ’182 patent in these paragraphs. Pl.’s Opp. 1-2, ECF 288.
Inherent Anticipation Theories
Finisar argues that Nistica’s use of boilerplate language in reference to inherent anticipation in its Final Contentions did not provide fair notice to Finisar. Pl.’s Mot. 8-9, ECF 276. Finisar also claims that Nistica abandoned its inherent anticipation theories. Id. Nistica argues that it complied with the patent local rules by disclosing all of its inherent anticipation theories in its Invalidity Contentions and that it did not abandon any of its inherent anticipation theories. Def.’s Opp. 9-10, ECF 288. The Court agrees with Nistica and finds that it sufficiently disclosed its inherent anticipation theories. While Finisar cites caselaw requiring more specific disclosures for parties asserting doctrine of equivalents, see Pl.’s Mot. 8, ECF 276, unlike inherent anticipation, the patent local rules require doctrine of equivalents to be separately disclosed. See Patent L.R. 31(e). It was also unreasonable for Finisar to conclude that Nistica abandoned its inherent anticipation theories as Nistica disclosed its inherent anticipation theories in every claim chart attached to Nistica’s Amended Invalidity Contentions. Ex. 2 to Decl of Tonkovich, ECF 288-4. To the extent, Finisar thought Nistica’s disclosures were lacking, Finisar could have brought a 6
1
motion to compel to clarify Nistica’s disclosures. Finisar chose not to and the Court DENIES
2
Finisar’s motion to strike the inherent anticipation theories in the Goossen Report.
3
Anticipation Theory Based on Two Prior Art References
4
Finally, Finisar argues that Nistica cannot use U.S. Patent No. 6,795,182 (“the ’182
5
patent”) in connection with U.S. Pub. No. 2003/0011,769 (“the ’769 publication”) to show
6
anticipation. Pl.’s Mot. 9-10, ECF 276. Nistica argues that the ’182 patent issued from the ’769
7
publication and it is only using the ’182 patent to clarify a typographical error in the ’769
8
publication. Def.’s Opp. 1-2, ECF 288.
9
United States District Court Northern District of California
iii.
Ordinarily, “in order to demonstrate anticipation, the proponent must show ‘that the four
10
corners of a single, prior art document describe every element of the claimed invention.’” See Net
11
MoneyIN, Inc. v VeriSign, Inc., 545 F3d 1359, 1369 (Fed. Cir. 2008). However, “extrinsic
12
evidence may be considered when it is used to explain, but not expand, the meaning of a
13
reference.” See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). “Thus, although
14
references cannot be combined for purposes of anticipation, additional references may be used to
15
interpret the allegedly anticipating reference and shed light on what it would have meant.” Ciba-
16
Geigy Corp. v. Alza Corp., 68 F.3d 487, at *2 (Fed. Cir. 1995). Nistica is using the ’182 patent to
17
explain the meaning of the ’769 publication and not in combination with the ’769 publication for
18
purposes of anticipation. Accordingly, the Court DENIES Finisar’s motion to strike the use of the
19
’182 patent in the anticipation section of the Goossen Report. NISTICA’S MOTION TO STRIKE
20
B.
21
Nistica seeks to strike the following from Finisar’s expert reports of Dr. Katherine Hall and
22
Dr. Benjamin Goldberg on infringement: (1) new infringement theories for U.S. Patent No.
23
7,123,833 (“the ’833 patent”); (2) newly accused product
24
infringement in the Hall Report; (4) new theories of infringement under 35 U.S.C. § 271(f) in the
25
Hall Report; (5) new theories of infringement for “spatial separating means” in the Hall Report;
26
(6) new theory of infringement for claim 14 of U.S. Patent No. 7,092,599 (“the ’599 patent”) in
27
the Hall Report; (7) new theories of infringement relating to claims 30 and 32 of U.S. Patent No.
28
6,956,687 (“the ’687 patent”) in the Hall Report; (8) new theories of infringement for claim 1 of 7
; (3) new theories of indirect
1
U.S. Patent No. 7,126,740 (“the ’740 patent”) in the Hall Report; and (9) newly accused products
2
in the Hall Report. See generally Def.’s Mot., ECF 291-4.
3
United States District Court Northern District of California
4
i.
New Infringement Theories for the ’833 Patent
Nistica argues that Finisar should not be allowed include infringement theories that Judge
5
Corley ruled cannot be added into the case through an amendment to Finisar’s infringement
6
contentions. Def.’s Mot. 3, ECF 291-4. According to Nistica, Finisar previously sought to amend
7
its infringement theories by amending its theory that the “processor” limitations of the ’833 patent
8
is met in the accused products by a
9
amending the source code it relies on to prove infringement of claims 1, 2 and 18 of the ’833
10
patent. Id. Judge Corley denied these proposed amendments and found that Finisar was not
11
diligent in pursuing these amendments and that Nistica would be prejudiced. Order at 7-14, ECF
12
272. Finisar counters that Judge Corley considered diligence and prejudice but did not consider
13
whether Finisar is presenting a different theory of infringement or including additional supporting
14
evidence of theories already disclosed. Pl.’s Opp. 10-11, ECF 307-4. Finisar claims that the
15
disputed theories are not new but are additional supporting evidence of its existing theories. Id.
16
rather than a
and
In determining whether to strike an expert report, the “threshold question [is] whether the
17
expert has permissibly specified the application of a disclosed theory or impermissibly substituted
18
a new theory altogether.” Digital Reg of Texas, LLC., 2014 WL 1653131, at *2. Here, Finisar’s
19
attempt to assert theories that were previously stricken is merely a disguised argument for
20
reconsideration of Judge Corley’s order denying Finisar’s motion to amend its infringement
21
contentions. As Judge Corley noted when Finisar argued that its theories were not different or
22
new, “the Court has been down this road before with Finisar: if that were the case, there would be
23
no need to amend in the first instance.” Order at 9, ECF 272. Moreover, Judge Corley found that
24
Nistica would be prejudiced by allowing Finisar to amend its infringement contentions because
25
“[r]equiring a defendant to adjust to new theories of infringement in the face of an upcoming
26
discovery deadline tends to result in a finding of prejudice.” Id. (emphasis added). Accordingly,
27
the Court GRANTS Nistica’s motion to strike the new infringement theories for the ’833 patent.
28
ii.
Newly Accused Product 8
1
Nistica argues that Finisar has refused to drop
2
though Judge Corley denied Finisar’s motion to add the
3
Mot. 5, ECF 291-4.
4
Mot. 9 n.7, ECF 307-4. Accordingly, the Court finds Nistica’s motion to strike
5
MOOT.
6 7 8
iii.
10
as an accused product. Def.’s
In response, Finisar has clarified that this product is not in this case. Pl.’s
New Theories of Indirect Infringement in the Hall Report
Nistica argues that the Hall Report includes a new theory of indirect infringement alleging that Nistica contributes to and induces to directly infringe the asserted patents. Def.’s Mot. 5,
9
ECF 291-4. Nistica also claims that the Hall Report impermissibly alleges that Nistica . Id. According to
11 United States District Court Northern District of California
from the Hall Report even
12
Nistica, Finisar’s Infringement Contentions did not mention
13
direct infringer as required by the patent local rules. Id. Finisar argues that it was not required to
14
identify third party direct infringers in its infringement contentions and that the local patent rules
15
did not require it to identify device components with no substantial non-infringing uses shipped
16
abroad. Pl.’s Opp. 5, ECF 307-4.
17
or identify
as a
Under Patent L.R. 3-1(d), any claim of indirect infringement must identify any direct
18
infringement and “description of the acts of the alleged indirect infringer that contribute to or are
19
inducing that direct infringement.” See also Fujitsu Ltd. v. Belkin Int’l, Inc., No. 10-CV-03972-
20
LHK, 2012 WL 4497966, at *8 (N.D. Cal. Sept. 28, 2012) (“Under the Patent Local Rules of this
21
District, a patentee’s Infringement Contentions must identify the alleged third-party direct
22
infringers in order to allege indirect infringement.”); Avago Techs., Inc. v. IPtronics Inc., 10-CV-
23
02863-EJD, 2015 WL 4647923, at *7-*8 (N.D. Cal. Aug. 5, 2015); Bender v. Maxim Integrated
24
Prods., Inc., No. 09-01152-SI, 2010 WL 1135762, at *3 (N.D. Cal. Mar. 22, 2010); but see
25
Largan Precision Co., Ltd. v. Genius Elec. Optical Co., No. 13-cv-02502-JD, 2014 WL 6882275,
26
at *8 (N.D. Cal. Dec. 5, 2014).
27 28
The Court agrees with Nistica and finds that Patent L.R. 3-1(d) requires an identification of any direct infringement including the identity of the alleged third-party direct infringers. Without 9
1
identifying the third-party direct infringers, Nistica is deprived of having fair notice as to Finisar’s
2
indirect infringement claims. Since Finisar did not identify
3
infringers, the Court GRANTS Nistica’s motion to strike theories of indirect infringement
4
involving
5
in the Hall Report. iv.
New Theories of Infringement Under 35 U.S.C. § 271(f) in the Hall Report
6
Nistica argues that the Hall Report includes new theories of infringement under 35 U.S.C.
7
§ 271(f) that were not previously disclosed in Finisar’s Infringement Contentions. Def.’s Mot. 6,
8
ECF 291-4. Finisar counters that it provided disclosure of its infringement theory under 35 U.S.C.
9
§ 271(f) in its Patent L.R. 3-1(d) contentions. Pl.’s Opp. 6, ECF 307-4.
10
United States District Court Northern District of California
as a third-party direct
Under 35 U.S.C. § 271(f)(1), a party is liable for infringement if it supplies “all or a
11
substantial portion” of the components of a patented invention in such a manner that “actively
12
induces the combination of such components.” Under 35 U.S.C. § 271(f)(2), a party is also liable
13
for infringement if the supplied components are “especially made or especially adapted for use in
14
the invention” and not a “staple article of commerce.”
15
The Court finds that Finisar did not sufficiently disclose its infringement theories under 35
16
U.S.C. § 271(f). While Finisar argues it made sufficient disclosures in its Patent L.R. 3-1(d)
17
contentions, liability under 35 U.S.C. § 271(f) is not a form of indirect infringement that would
18
fall under Patent L.R. 3-1(d). Unlike indirect infringement, section 271(f) does not require proof
19
of a separate act of direct infringement. Thus, Finisar cannot rely on its disclosures in its Patent
20
L.R. 3-1(d) contentions to support its 35 U.S.C. § 271(f) claim. However, even if Finisar could
21
rely on its disclosures in its Patent L.R. 3-1(d) contentions, the disclosures are still insufficient.
22
Patent L.R. 3-1(d) requires the identification of “any direct infringement” and a “description of the
23
acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.”
24
Finisar did not comply with the requirements under Patent L.R. 3-1(d). Accordingly, the Court
25
GRANTS Nistica’s motion to strike Finisar’s theories of infringement under 35 U.S.C. § 271(f).
26 27
v.
New Theories of Infringement for “Spatial Separating Means” in the Hall Report
Nistica argues that the Hall Report discloses a new theory of infringement for the 28 10
1
limitation “spatial separating means for simultaneously separating at least a first and second group
2
of light from said series of optical signals” of claim 1 of the ’980 patent. Def.’s Mot. 6, ECF 291-
3
4. According to Nistica, based on Finisar’s Infringement Contentions and subsequent
4
correspondence, Nistica understood Finisar to be relying on the
5
components as the “first and second group of light.” Id. at 6-7. Nistica argues that Finisar
6
changed its infringement theory in the Hall Report, which alleges the are the “first and second group of light.” Id. 7-8. In response, Finisar argues
7 8
that its infringement contentions and subsequent communications clearly and consistently
9
disclosed that the
10
4-5, ECF 307-4.
United States District Court Northern District of California
11 12 13
constituted the “first and second group of light.” Pl.’s Opp.
The Court agrees with Finisar and finds that it did not change its infringement theory in the Hall Report. In Finisar’s Infringement Contentions, Finisar disclosed figures showing the . Ex. 2, Finisar Infringement Contentions Exhibit F at 30-31, ECF 307-14. In
14
subsequent correspondence, Nistica sought clarification as to what constituted the “first and
15
second group of light.” Ex. 7 at 2, ECF 291-14. Finisar responded that the Infringement
16
Contentions include
17
291-15. From this communication, Nistica unreasonably assumed that Finisar was relying on the
18
Ex. 8, ECF
as the “first and second group of light” because Finisar’s the “first
19
response could reasonably have been understood to refer to the
20
and second group of light.” Nistica also claims that it expressed its understanding of Finisar’s
21
position in its non-infringement interrogatory responses, Ex. 9 at 112, 115, ECF 291-16, and that
22
Finisar never stated Nistica’s understanding was incorrect. However, Nistica’s interrogatory
23
response indicted that it was aware of other interpretations and that the accused devices were
24
similarly non-infringing under other interpretations. Ex. 9 at 112-113 n. 16, ECF 292-16. Rather
25
than unreasonably assuming Finisar intended one meaning from the Infringement Contentions,
26
Nistica should have sought further clarification as to what constituted the “first and second group
27
of light.” Accordingly, the Court DENIES Nistica’s motion to strike the Hall Report’s
28
infringement theories for “spatial separating means.” 11
vi.
1
New Theory of Infringement for Claim 14 of the ’599 Patent in the Hall Report
Nistica argues that the Hall Report impermissibly includes a new theory of infringement
2 3
for claim 14 of the ’599 patent. Def.’s Mot. 8, ECF 291-4. According to Nistica, Finisar’s
4
Infringement Contentions only disclosed a
5
the Hall Report discloses a new theory based on a modulated beam. Id. Nistica also argues that
6
the Hall Report abandoned the use of the
7
based on a modulated 25 Ghz channel, and uses a new methodology of calculating an aspect ratio.
8
Finisar argues that that Nistica’s arguments are implausible because all the ’599 accused devices
, presents a previously undisclosed theory
and that it did disclose the use of modulated beams in its
9
United States District Court Northern District of California
, while
10
Infringement Contentions. Pl.’s Opp. 1, ECF 307-4. Finisar also claims that the Hall Report relies
11
on the
12
in its Infringement Contentions. Id. at 2.
and that it was not obligated to provide its expert’s full and complete analysis
13
“Infringement contentions need not disclose specific evidence, whereas expert reports must
14
include a complete statement of the expert's opinions, the basis and reasons for them, and any data
15
or other information considered when forming them.” Digital Reg. of Texas, LLC, 2014 WL
16
1653131, at *2 (citing Apple Inc. v. Samsung Electronics Co., Ltd., 12–CV–0630–LHK–PSG,
17
2014 WL 173409, at *1 (N.D. Cal. Jan. 9, 2014).
18 19 20 21
The Court agrees with Finisar and finds that the Hall Report is not presenting a new theory of infringement for claim 14 of the ’599 patent. Despite Nistica’s reliance on the Finisar’s Infringement Contentions disclosed the use of
in the
accused device. Ex 13 at 12, ECF 307-35; Hall Decl. ¶ 10, ECF 307-35. Dr. Hall also used the Hall Decl. ¶ 11, ECF 307-6.
22 23
Finally, Finisar’s Infringement Contentions disclosed a 25 Ghz channel. Ex 13 at 12, ECF 307-35.
24
Although Dr. Hall’s full analysis is not present in Finisar’s Infringement Contentions, Finisar was
25
not required to include Dr. Hall’s complete expert report as part of its Infringement Contentions.
26
Accordingly, the Court DENIES Nistica’s motion to strike the alleged new theory of infringement
27
for claim 14 of the ’599 patent.
28
vii.
New Theories of Infringement Relating to Claims 30 and 32 of the ’687 12
Patent in the Hall Report
1
Nistica argues that the Hall Report asserts several new theories of infringement by relying 2 3
upon new source code to identify the “switching algorithm” in claims 30 and 32 of the ’687 patent. Def.’s Mot. 9, ECF 291-4. Second, Nistica claims that the Hall Report relies on an
4 infringement theory based on 5
which were not
disclosed in Finisar’s Infringement Contentions. Id. 10. Finally, Nistica argues that the Hall
6 Report discloses a new theory of infringement involving sending commands over the 7
which also was not disclosed in Finisar’s Infringement Contentions. Id. In
8 response to all three arguments, Finisar claims that it did not change its infringement theories but 9
rather added supplemental evidence to support its existing infringement theories. Pl.’s Opp. 6-7,
10 ECF 307-4. 11 United States District Court Northern District of California
The Court agrees with Nistica and finds that Finisar is asserting new theories of 12 infringement. Although Finisar claims that the new citations are not new theories but rather 13 14 15 16
additional evidence for existing theories of infringement, “the Court has been down this road before with Finisar: if that were the case, there would be no need to amend in the first instance.” Order at 9, ECF 272. Accordingly, the Court GRANTS Nistica’s motion to strike the new theories of infringement relating to claims 30 and 32 of the ’687 patent.
17 18 19 20 21
viii.
New Theories of Infringement for Claim 1 of the ’740 Patent in the Hall Report
Nistica argues that the Hall Report asserts new theories of infringement as to how the “spatial light modulator” is “programmable” and how the Def.’s Mot. 10-11, ECF 291-4. According to Nistica, these theories
22
of infringement were not contained in Finisar’s Infringement Contentions. Id. Finisar responds
23
that it is not changing its infringement theories but rather citing additional evidence in support of
24
its existing infringement theories. Pl.’s Opp. 7, ECF 307-4.
25
At oral argument, Nistica agreed that Finisar’s different evidence could be construed as
26
including additional evidence in support of its existing infringement theories rather than changing
27
theories of infringement. Transcript at 67-68. Nistica also agreed that given the “close call,”
28
Finisar should be given the benefit of the doubt. Id. Accordingly, the Court DENIES Nistica’s 13
1
motion to strike the new theories of infringement relating to claim 1 of the ’740 patent.
2
ix.
Nistica argues that the Hall Report accuses new products of infringement. Def.’s Mot. 11,
3 4
ECF 291-4. Finisar claims that it did not add any new products. Pl.’s Opp. 9, ECF 307-4.
5
According to Finisar, it accused all of Nistica’s line cards containing an infringing WSS module of
6
infringing the WSS patents. Id. Finisar claims that each and that each module is incorporated into line cards
7
Id.
8
Thus, Finisar argues that by accusing each WSS module, it was also accusing each line card that
9
incorporates the WSS modules. Id. Patent L.R. 3-1(b) requires each accused product to be “identified by name and model
10
United States District Court Northern District of California
Newly Accused Products in the Hall Report
11
number” for each asserted claim. The patent local rules “require[] specific identification of
12
particular accused products [and do] not tolerate broad categorical definitions.” Oracle Am. v.
13
Google Inc., No. C-10-03561-WHA, 2011 WL 4479305, *2 (N.D. Cal. Sept. 26, 2011). Finisar does not dispute that it did not specifically identify the newly accused products of
14 15
infringement. Contrary to Finisar’s arguments, the patent local rules require specific identification
16
of products and do not allow for accusations by implication. Accordingly, the Court GRANTS
17
Nistica’s motion to strike the newly accused products.
18
III.
ORDER For the foregoing reasons, Finisar’s motion to strike is GRANTED IN PART AND
19 20
DENIED IN PART and Nistica’s motion to strike is GRANTED IN PART AND DENIED IN
21
PART.
22
Dated: December 1, 2015
23
______________________________________ BETH LABSON FREEMAN United States District Judge
24 25 26 27 28 14
