Plaintiff, Barco’s, “Motion to Strike Portions of TPL’s Third Amended Infringement
Contention” came on for hearing on July 3, 2012. Extensive briefing and exhibits having
been reviewed and oral argument heard, it is ordered as follows:
The motion is DENIED.
REASONS FOR DECISION
The present motion is based upon local Patent Rule 3-1(c) which requires parties to
“identify specifically where each limitation of each asserted claim is found within each
Accused Instrumentality.” In the present third iteration of TPL’s infringement contentions,
TPL has succeeded in doing this.
This motion follows Magistrate Judge Lloyd’s Order of September 20, 2011 (Doc.
223) and the Special Master’s Recommended Discovery Order No. 2 (Doc. 332) dated
February 24, 2012, both of which orders required TPL to “either provide information
concerning the products at issue or explain how and/or why information concerning any
products not at issue is relevant to its IC’s.” (Doc 223, Page 7, Lines 12-14).
The focus of moving party Barco’s motion is on the question of whether TPL’s
infringement contentions adequately specify where “each limitation of each asserted claim
is found within each Accused Instrumentality.” While the third amended infringement
contentions are lengthy and while they rely, to a significant degree, on what best be
described as “generic” white papers and declarations which deal more with the generalities
of the technical field involved and the underlying laws of physics and chip production, they
do, when read carefully, meet the burden of local Patent Rule 3-1(c). This is true as to all
three patents at issue, the ‘336, ‘749 and ‘890.
The greatest part of Barco’s moving papers is directed at whether or not the various
limitations involved in the three patents in suit are in fact manifested in the Barco products.
This, however, is a question for a later day, a subject for discovery and, eventually, proof.
At the present stage, the question is whether or not TPL has adequately specified where
each limitation of each asserted claim is found within each Accused Instrumentality. This
TPL has done. Local Patent Rule 3-1(c); Network Caching Tech., LLC v. Novell, Inc., 2002
WL 32126128 (N.D. Cal. August 13, 2002); Shared Memory Graphics, LLC v. Apple, Inc.
2011 U.S. Dist. LEXIS 99166 (N.D. Cal. Sept. 2nd 2011)
TPL asserts, correctly, that its infringement contention advise Barco as to where
each limitation found. By way of illustrative example, as to Claim 1 of the 336 Patent, after
citation to the book “Design of High Performance Microprocessor Circuits,” Chapter 6, by
Anatha Chandra and to a declaration by its expert, Dr. Oklobdziga, TPL goes on to state
that “This limitation is found within the Virtex-5 chip itself.” That chip is incorporated within
the accused “JPEG DCPD-2000 Encoder/Decoder.” Whether TPL can back up that
assertion as the case moves forward is a question for another day.
TPL provides similar specification of the location of where each limitation of each
asserted claim is found within the accused products.
The parties have ten days from the date of this Order to file any objection