United States District Court

For the Northern District of California

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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

GREGORY BENDER,

Plaintiff,

v.

ADVANCED MICRO DEVICES, INC.,

Defendant.

___________________________________/

No. C-09-1149 MMC (EMC)

ORDER DENYING DEFENDANT’S

MOTION TO STRIKE; AND

GRANTING DEFENDANT’S MOTION

TO COMPEL

(Docket No. 26)

Plaintiff Gregory Bender has filed suit against Defendant Advanced Micro Devices, Inc.

(“AMD”) for patent infringement. AMD has moved the Court to strike the infringement contentions

served by Mr. Bender. In the alternative, AMD asks that Mr. Bender be compelled to amend his

infringement contentions so that they comply with Patent Local Rule 3-1. Having considered the

parties’ briefs and accompanying submissions, as well as the oral argument of counsel and all

evidence of record, the Court hereby DENIES the motion to strike but GRANTS the motion to

compel.

I. DISCUSSION

The Patent Local Rules are applicable to the instant case because it involves a claim for

patent infringement. See Pat. L.R. 1-2. Patent Local Rule 3 governs patent disclosures. Under Rule

3-1, a party asserting infringement must provide a disclosure of asserted claims and infringement

contentions. See Pat. L.R. 3-1. The purpose underlying Rule 3-1 is to require the party claiming

infringement to crystallize its theories of the case early in the litigation and to adhere to those

theories once disclosed. See Alberta Telecomms. Research Ctr. v. Rambus, Inc., No. C 06-02595

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 Mr. Bender provided three representative claim charts for over 100 AMD products.

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RMW (RS), 2007 WL 4170564, at *1 (N.D. Cal. Nov. 19, 2007). In effect, Rule 3-1 “takes the

place of a series of interrogatories that defendants would likely have propounded had the patent local

rules not provided for streamlined discovery.” Network Caching Tech., LLC v. Novell, Inc., No. C01-2079 VRW, 2002 U.S. Dist. LEXIS 26098, at *12 (N.D. Cal. Aug. 13, 2002).

In the instant case, the Court agrees with AMD’s contention that the infringement

contentions served by Mr. Bender fail to comply with Rule 3-1. First, Mr. Bender’s use of

representative claim charts is improper because he has not shown that any of the accused products

for which he has provided claim charts are in fact representative of any other product.1

 Mr. Bender

has not shown, for example, that the accused products share the same or substantially the same

infringing circuitry as any other product. Cf. Renesas Tech. Corp. v. Nanya Tech. Corp., No. C03-

05790 JF (HRL), 2004 U.S. Dist. LEXIS 23601, at *3-4, 6-7 (N.D. Cal. Nov. 10, 2004) (rejecting

defendant’s reading of Rule 3-1(c), which would have required production of claim charts for each

and every accused product, in large part due to the fact that plaintiff’s investigation revealed that the

accused products shared the same or substantially similar circuitry).

Second, even if Mr. Bender can establish that it is appropriate to use representative claim

charts, he has not in all instances adequately identified the accused products at issue. Pursuant to

Rule 3-1(b), the patentee’s identification of which accused products allegedly infringe cannot be so

amorphous or imprecise so as to force the opposing party to essentially “guess which versions of its

products” are allegedly infringing. InterTrust Techs. Corp. v. Microsoft Corp., No. C 01-1640 SBA,

2003 U.S. Dist. LEXIS 22736, at *6 (N.D. Cal. Nov. 26, 2003). In the instant case, Mr. Bender has

inappropriately described some of the accused products in overly broad terms -- e.g., using the broad

labels “Networking Products” and “Older Products.”

Finally, Mr. Bender’s infringement contentions are not in compliance with Rule 3-1(c),

which requires a patentee to “identify[] specifically where each limitation of each asserted claim is

found within each Accused Instrumentality.” Pat. L.R. 3-1(c) (emphasis added). Although Mr.

Bender’s infringement contentions do more than simply mimic the claim language, the infringement

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contentions are generally defective because the given locations are impermissibly broad and vague

in description. The descriptions are so broad that they fail to give fair notice to AMD as to where

the offending circuits are to be found. In addition, Mr. Bender fails to properly map and link the

claim language to each accused product; instead, the locations are repeated for each element of

every claim, even where inappropriate.

The only question remaining is what relief AMD should be accorded for the inadequate

infringement contentions. At this early stage of the proceedings, the Court will not impose the

draconian sanction of striking the infringement contentions. Rather, it shall give Mr. Bender an

opportunity to amend the contentions. Mr. Bender is forewarned, however, that he may not be given

further opportunities to amend -- i.e., at a certain point, if the contentions continue to be insufficient,

they may be stricken. 

II. CONCLUSION

For the foregoing reasons, AMD’s motion to strike is denied but its motion to compel is

granted. Mr. Bender has until February 26, 2010, to serve amended infringement contentions. 

Because the infringement contentions are still outstanding, AMD’s obligation to serve invalidity

contentions is temporarily stayed. The parties shall meet and confer to determine a mutually

agreeable schedule for the serving of the invalidity contentions.

This order disposes of Docket No. 26.

IT IS SO ORDERED.

Dated: February 1, 2010 _________________________ EDWARD M. CHEN

United States Magistrate Judge

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