United States District Court

For the Northern District of California

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NOT FOR CITATION

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

GREGORY BENDER,

Plaintiff,

 v.

INFINEON TECHNOLOGIES NORTH

AMERICA CORP.; NXP SEMICONDUCTORS

USA, INC.; ON SEMICONDUCTOR

CORPORATION; and SILICON

LABORATORIES, INC.,

Defendants. /

No. C09-02112 JW (HRL)

ORDER DENYING INFINEON

TECHNOLOGIES’ MOTION TO

STRIKE AND GRANTING INFINEON

TECHNOLOGIES’ MOTION TO

COMPEL

[Re: Docket No. 26]

Plaintiff Gregory Bender sues for alleged infringement of his U.S. Patent No. 5,103,188

(the “‘188 patent”), which concerns circuits for amplifying complex or high speed signals. 

Defendant Infineon Technologies North America Corp. (“Infineon”) moves to strike Bender’s

infringement contentions, or alternatively, to compel amended contentions. Upon consideration

of the moving and responding papers, as well as the arguments presented at the March 16, 2010

hearing, this court denies Infineon’s motion to strike and grants Infineon’s motion to compel.

Patent Local Rule 3-1 requires a plaintiff in a patent infringement action to serve

infringement contentions setting forth “[e]ach claim of each patent in suit that is allegedly

infringed by each opposing party” and identifying for each asserted claim “each accused

*E-FILED 03-16-2010*

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28 1 Because the instant action was filed prior the December 1, 2009 amendment

of the Patent Local Rules, the Patent Local Rules in effect on November 30, 2009 apply.

2

apparatus, product, device, process, method, act, or other instrumentality (“Accused

Instrumentality”) of each opposing party of which the party is aware.” PATENT L.R. 3-1(a),

(b).1

 A plaintiff must also provide a “chart identifying specifically where each limitation of

each asserted claim is found within each Accused Instrumentality, including for each limitation

that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s),

act(s), or material(s) in the Accused Instrumentality that performs the claimed function.” Id. at

3-1(c).

Patent L.R. 3-1 is essentially a “discovery device” intended to streamline the discovery

process by taking the place of a series of interrogatories that defendants would likely have

propounded. Network Caching Technology LLC v. Novell, Inc., No. C01-2079VRW, 2002 WL

32126128, *3-4 (N.D. Cal., Aug. 13, 2002). As such, a plaintiff is required to include its in

infringement contentions all facts known to it, including those discovered in its Fed. R. Civ. P.

11 pre-filing investigation. Id. at *4. The Rules are designed to require parties to crystallize

their theories of the case early in the litigation and to adhere to those theories once they have

been disclosed. Alberta Telecommunications Research Centre v. Rambus, Inc., No. C06-

02595RMW, 2007 WL 4170564 *1 (N.D. Cal., Nov. 19, 2007); Atmel Corp. v. Info. Storage

Devices Inc., No. C95-1987 FMS, 1998 WL 775115 *2 (N.D. Cal., Nov. 5, 1998).

In this case, plaintiff reportedly accuses some 600 Infineon products of infringement. In

his infringement contentions, he divides the accused products into several categories titled: 

“Cellular RF Transceivers,” “Mobile Phone Platforms,” “Tuner ICs and Demodulators,”

“Wireless Communication Products,” “Mobile Phone Baseband ICs,” “Integrated Power

Amplifiers,” and “Micro-Controllers with built-in ADC Channels.” (Foster Decl., Ex. M). 

Plaintiff has served claim charts only as to five products which he claims are “representative” of

the 600 or so that have been accused. The claim charts further divide those five products into

the following categories: “Transceivers,” “Tuner ICs and demodulators,” “Wireless

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3

Communication Products, RF Power Products, RF Power Amplifiers,” “USB Audio,” and

“Microcontrollers with Analog Processing Circuitry.” (Id., Ex. L).

At this juncture, this court is not prepared to strike Bender’s contentions, and

defendant’s motion to strike is denied. Nonetheless, defendant’s alternate motion to compel is

granted because this court agrees that Bender’s infringement contentions fail to comply with

Patent L.R. 3-1. To begin, Bender has made no showing that his use of “representative” claim

charts is proper. Other than plaintiff’s bare assertion, there is nothing in the record presented

indicating, for example, that the five products for which plaintiff provided claims charts share

common circuitry with the other accused products. Further muddying the waters is plaintiff’s

grouping of the accused products into rather broad and amorphous categories that, on their face,

do not appear to readily correspond to the labels used in his claims charts.

Additionally, plaintiff’s infringement contentions are impermissibly vague. Bender has

done more than merely parrot the claim language. But his claims charts provide generic

allegations that do not identify specific circuitry or components that reportedly correspond to

the claim limitations — or, at least, not in a manner that gives defendant fair notice as to where

the alleged infringing circuits are located. Instead, Bender simply repeats the same generic

descriptions and cuts-and-pastes them beside each element of every claim. Plaintiff contends

that defendant’s engineers should be able to not only understand the terms used in his

infringement contentions, but also readily locate the subject circuitry in Infineon’s accused

products. He suggests that the next step in this case should be for defendant to produce detailed

schematics, asserting that he cannot provide more detailed infringement contentions without

them. Suffice to say that Bender (not defendant) bears the burden of identifying specifically

where each and every claim element is found within the accused products. And, this court finds

that plaintiff’s infringement contentions need to be much improved before he can proceed.

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2 This ruling is based upon the court-ordered case management deadlines. 

Plaintiff states that he is willing to stipulate to an extension of those deadlines. If the

presiding judge concludes that an extension is warranted, this court finds that plaintiff should

have 30 days in which to amend his infringement contentions.

4

Accordingly, Bender will be given until March 26, 20102

 in which to amend his

contentions to (a) demonstrate that “representative” products are accurate representations of the

hundreds of other accused products and (b) provide specific locations within defendant’s

products where the alleged infringement occurs. Although the court has declined to strike

plaintiff’s contentions at this time, they may well be stricken in the future if they continue to be

insufficient.

SO ORDERED.

Dated: 

HOWARD R. LLOYD

UNITED STATES MAGISTRATE JUDGE

March 16, 2010

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5:09-cv-02112-JW Notice has been electronically mailed to:

Brian K. Erickson brian.erickson@dlapiper.com, alice.lineberry@dlapiper.com,

donna.carone@dlapiper.com

Christopher Duane Bright cbright@mwe.com

Daniel Raymond Foster , Esq dfoster@mwe.com, cbright@mwe.com, dchase@mwe.com,

tcarman@mwe.com

David Noel Kuhn dnkuhn@pacbell.net

Denise M. De Mory demoryd@howrey.com, kasenenkop@howrey.com

Marc Christopher Belloli marc.belloli@dlapiper.com, zoya.khodosh@dlapiper.com

Counsel are responsible for distributing copies of this document to co-counsel who have not

registered for e-filing under the court’s CM/ECF program.

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