United States District Court

For the Northern District of California

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United States District Court

For the Northern District of California

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

GREGORY BENDER,

Plaintiff,

 v.

MICREL INCORPORATED,

Defendant. /

No. C 09-01144 SI

ORDER GRANTING DEFENDANT’S

MOTION TO COMPEL

INFRINGEMENT CONTENTIONS THAT

COMPLY WITH PATENT LOCAL RULE

3-1 AND DENYING DEFENDANT’S

MOTION TO STRIKE

Defendant has filed a motion to strike or compel infringement contentions that comply with

Patent Local Rule 3-1. The motion is scheduled for hearing on February 12, 2010. Pursuant to Civil

Local Rule 7-1(b), the Court finds this matter appropriate for resolution without oral argument, and

hereby VACATES the hearing. Having considered the papers submitted, and for good cause shown,

the Court hereby GRANTS defendant’s motion to compel infringement contentions that comply with

Patent Local Rule 3-1, and DENIES the motion to strike.

 

BACKGROUND

Plaintiff Bender alleges that defendant Micrel, Inc. infringes U.S. Patent Number 5,103,188

(‘188 Patent). FAC ¶ 6. The ’188 Patent is entitled “Buffered Transconductance Amplifier,” and covers

a subset of electrical circuits that amplify complex or high speed signals. Id. Plaintiff believes that “the

analog amplifier architectures embodied in the subject claims of the ‘188 Patent have become text book

examples of analog amplifiers and are an enabling technology, used ubiquitously in the analog

electronics industry.” Plaintiff’s Opposition, Docket No. 40 at 8. In 2008, plaintiff reviewed data sheets

and other public information from multiple semiconductor manufacturers, and decided to commence

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 “IC” stands for “integrated circuit.”

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this lawsuit against Micrel. Id.

At issue is defendant’s Motion to Strike or Compel Infringement Contentions that Comply with

Patent Local Rule 3-1. Defendant contends that plaintiff has failed to follow Patent Local Rule 3-1

because the infringement contentions do not contain specific information as to the exact location of the

infringing components of defendant’s products, or representative claim charts for every product accused

of infringement. Defendant asks that the Court either strike the infringement contentions or compel

plaintiff to provide infringement contentions that comply with Patent Local Rule 3-1.

LEGAL STANDARD

The Patent Local Rules for the United States District Court for the Northern District of

California require that the “Disclosure of Asserted Claims and Infringement Contentions” contain

“[s]eparately for each asserted claim, each accused . . . instrumentality (‘Accused Instrumentality’) . .

. of which the party is aware . . . . [t]his identification shall be as specific as possible . . . . [e]ach product,

device, and apparatus shall be identified by name or model number, if known.” Patent L.R. 3-1(b). The

infringement contentions also must contain “a chart identifying specifically where each limitation of

each asserted claim is found within each Accused Instrumentality.” Patent L.R. 3-1©.

DISCUSSION

Plaintiff’s infringement contentions consist of two documents. The first is a list of every product

(205 total) made by defendant that allegedly infringes plaintiff’s patent, divided into broad groups

entitled “Linear ICs,”1 “Fiber Optic ICs,” “High-Speed Comms ICs,” “Precision Edge ICs High Speed

Logic Functions,” and “RF Wireless ICs.” Huffsmith Declaration in Support of Defendant’s Motion,

Docket No. 34, Exhibit C. Each large group is then partitioned further into smaller groups containing

somewhere between two and forty-four of defendant’s products. Id. The second document in plaintiff’s

infringement contentions is the claim charts, which are required under Patent L.R. 3-1©. Id. at Exhibit

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D. Five claim charts are included, one for each of the broad groups of allegedly infringing products

mentioned above. Id. Each chart identifies components of the patent, and gives some very limited

information about the location of that component within defendant’s products. Id.

Defendant notes that “[t]he overriding principle of the Patent Local Rules is that they are

designed [to] make the parties more efficient, to streamline the litigation process, and to articulate with

specificity the claims and theory of a plaintiff’s infringement claims.” Intertrust Techs. Corp. v.

Microsoft Corp., No. 01-1640, 2003 U.S. Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003).

Defendant argues that plaintiff’s infringement contentions do not comply with Patent L.R. 3-1 for at

least the following reasons: (1) the “representative” claim charts do not actually represent all of the

products named, and (2) the “locations [of the infringing components specified in the claim charts] are

too vague.” Defendant’s Motion, Docket No. 30.

Plaintiff responds to the charge that the claim charts improperly group disparate products into

“representative” categories by stating that his patent covers a type of amplifier that is “the ‘workhorse’

of the analog electronics industry.” Id. at 15. Typically, according to plaintiff, “[a] semiconductor

manufacturer will create a ‘model amplifier’ which behaves in a certain way and will use that . . .

whenever an amplifier is needed in the design of the product.” Id. Therefore, “by identifying a single

product with an infringing amplifier, all other products which make use of the same or similar infringing

architectures must necessarily infringe as well.” Id. While the Court is not prepared at this time to ask

that plaintiff prepare a separate claim chart for every allegedly infringing product, at the very least a

better explanation of how the claim charts are “representative” is warranted. Simply asserting that a

patent is ubiquitous within an industry, or that every product defendant has created contains the patented

amplifier because one product does, is insufficient to satisfy the Patent Local Rules.

Plaintiff also argues that the claim charts specify the location of the infringing components, in

language that “is unequivocal and clear.” Plaintiff’s Opposition at 11. The Court does not agree with

this assessment. Although the claim chart for “Precision Edge ICs / High Speed Logic Functions” does

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 A “pin” is the external connection point for an integrated circuit. See, e.g., Declaration of

Steven H. Kuhn, Docket No. 41 at 1.

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at least contain references to pin2 numbers within the allegedly infringing products, most of the

locations given appear to be vague. For example, the “Linear ICs” claim chart states that the infringing

elements are “located in the amplifier on the integrated circuit contained in the product. There is no

circuitry on the integrated circuit except for the amplifier.” Huffsmith Declaration in Support of

Defendant’s Motion, Exhibit D. This phrase is copied and pasted repeatedly, without variation, for each

element of the patent. Plaintiff has made no attempt to identify the precise location within defendant’s

product where the infringing component is located. Plaintiff argues that he cannot be more specific

without obtaining defendant’s detailed schematics, but the Court will not permit plaintiff to proceed at

this point in the absence of claim charts containing more substantive infringement contentions. 

One of the purposes of Patent Local Rule 3-1 is to facilitate the exchange of information between

parties so that discovery can proceed in an orderly fashion. Plaintiff’s infringement contentions

resemble a “shotgun” approach, asking defendant to produce schematics for 205 products based on

claim charts that only identify five “representative” infringing products. The Rules are designed to

make discovery manageable, and to reduce the likelihood that defendant will need to spend time and

money defending products that were mistakenly included in plaintiff’s contentions.

Furthermore, the Court takes notice that plaintiff has filed 24 similar patent infringement claims

in the Northern District of California between March and December of 2009. The courts have decided

motions to compel infringement contentions that comply with Patent L.R. 3-1 brought by the defendants

in three of those cases, and the motions have been granted in every instance. See Bender v. Advanced

Micro Devices, Inc., No. 09-CV-1149 (N.D. Cal. February 1, 2010) ; Bender v. Intersil Corp., No.

09-CV-1155 (N.D. Cal. October 29, 2009); Bender v. Int’l Bus. Machs. Corp., No. 09-CV-1249 (N.D.

Cal. November 13, 2009). In another instance, plaintiff has responded to a motion to compel by

volunteering to amend his infringement contentions. Bender v. Maxim Integrated Products, Inc., No.

09-CV-1152. The infringement contentions provided by plaintiff in each of the above cases were

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 Defendant has also raised an objection to the Declaration of Steven H. Kuhn, arguing that Mr.

Kuhn lacks personal knowledge, is not qualified to offer testimony, and that the declaration fails to meet

the requirements for expert testimony. This declaration was not material to the Court’s decision, and

therefore no ruling on the objection is required. 

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similarly generic to those in the case at hand, often consisting solely of the phrase “[t]his element is

located on the integrated circuit contained in the product.” Huffsmith Declaration, Exhibit D.

Given these prior rulings, plaintiff has now been put on repeated notice that the initial

infringement contentions filed with defendant were deficient. Although the Court is not prepared to

grant defendant’s motion to strike at this time, plaintiff’s amended infringement contentions should be

significantly improved. Plaintiff needs to: (1) provide defendant specific locations that identify where

the alleged infringement occurs, and (2) demonstrate that the “representative” products are in fact

accurate representations of the other 205 allegedly infringing products. If the amended infringement

contentions are again insufficient, the Court will be prepared to reconsider a motion to strike.

CONCLUSION

For the foregoing reasons and for good cause shown, the Court hereby DENIES defendant’s

motion to strike plaintiff’s infringement contentions, and GRANTS defendant’s motion to compel

infringement contentions that comply with Patent L.R. 3-1.3

 (Docket No. 30).

IT IS SO ORDERED.

Dated: February 6, 2010 SUSAN ILLSTON

United States District Judge

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