As the Senate continues to weigh patent reform measures focused on improving preliminary disclosures in patent litigation, courts continue to distinguish between sufficient and insufficient disclosures under their own patent local rules. According to a recent ruling from the Northern District of California, a generalized claim that any products practicing a technical standard infringe an asserted patent does not adequately identify the specific products accused of infringement under the court’s Patent Local Rules. Asus Computer Int’l v. Round Rock Research, LLC, Case No. 12-cv-02099 JST (NC) (N.D. Cal.).
On April 26, 2012, ASUS filed for Declaratory Judgment of Patent Non-Infringement, Invalidity, and Unenforceability against Round Rock. According to the schedule set forth under the Northern District’s Patent Local Rules, Round Rock served its original infringement contentions in September 2012, accusing over 300 ASUS products of infringing six Round Rock patents and providing claim charts for three products, stating that those three products were representative of hundreds of other accused products that infringe in the same manner without specifically identifying those products by name or model number.
Fact discovery closed December 20, 2013. Round Rock moved to amend its infringement contentions on December 23, 2013, but the Court denied Round Rock’s request on the basis that the proposed amendments relied upon “documents that have been in Round Rock’s possession for many months or even a year” and Round Rock had not met its burden to establish that the amendments had been diligently sought.
Sufficiency of Round Rock’s Disclosures
The parties submitted opening expert reports on January 8, 2014. Three weeks later, ASUS moved to strike portions of Round Rock’s expert reports on infringement, arguing that the portions at issue were directed to allegedly infringing products that were not specifically identified in Round Rock’s original infringement contentions. In response, Round Rock argued that the infringement contentions sufficiently identified: (i) products that include DDR3 SDRAM memory or otherwise practice the JEDEC standard, (ii) products that have different names but are substantially similar to other identified products, and (iii) devices falling within a specific series of ASUS products.
Citing a 2011 decision in which the court ruled that accusing all products running Android did not specifically identify the accused products (See Oracle Am., Inc. v. Google Inc., No. 10-cv-03561 WHA, 2011 WL 4479305, at *2 (N.D. Cal. Sept. 26, 2011)), Magistrate Judge Cousins granted ASUS’s motion to strike
all references to newly accused products that Round Rock alleged were identified as practicing the JEDEC standard:
The Court finds that identifying products “that include DDR3 SDRAM memory” or otherwise practice the JEDEC standard is not sufficient to specifically identify products that may fall into those categories. Although identifying that a component practices a standard may be useful for proving an infringement theory across several products that contain that component, identifying a standard is not sufficient to specifically name an accused product.
The court reasoned that the Northern District’s Patent Local Rule 3-1(b) requires a patentee to identify products accused of infringing each claim as specifically as possible, identifying each accused product, device, and apparatus by name or model number, to the extent known, and that such disclosures were never made to ASUS.
Round Rock also argued that identifying the standard was sufficient to put ASUS on notice of the accused products practicing the standard. However, the court declined to rule on the sufficiency of the notice, instead finding the Local Rules require a patentee “to do the work of identifying those products.”
Comparison with Previous Rulings
The ASUS v. Round Rock decision provides an interesting contrast from Magistrate Judge Cousins’ May 2013 ruling in France Telecom v. Marvell, where he found that infringement contentions based on ETSI 3GPP industry standards were sufficient to comply with N.D. Cal. Patent Local Rule 3-1(c), which requires a patentee to disclose its theory of infringement. (See our May 7, 2013 post for more information). Although a cursory look at the two decisions might lead one to conclude Magistrate Judge Cousins has come down on both sides of the issue, a closer comparison distinguishes the cases: a standard may not be used to identify specific accused products, as the Court held in ASUS, though a patentee is not prohibited from relying on a standard to disclose its infringement theory.