# In the United States Court of Federal Claims

No. 11-236C

(Filed: April 18, 2016)

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Patent Infringement; Accuse d Product or Device; Summary Judgment; Motion to Amen d Infringement Contentions and Claims

Chart. * DEMODULATION, INC., *

* Plaintiff, *

*

v. *

* THE UNITED STATES, *

*

Defendant. *

*

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Keith A. McKenna , The McKenna Law Firm LLC, Mont clair, New Jersey, with whom was Ernest D. Buff, Ernest D. Buff & Associates, LLC, Bedminster, New Jersey, for Plaintiff.

Gary L. Hausken , with whom were Benjamin C. Mizer , Principal Deputy Assistant Attorney General, John Fargo , Director, and Alice Suh Jou , Of Counsel, Commercial Litigation Branch, Civil Divisi on, U.S. Department of Justice, Washington, D.C., for

Defendant.

OPINION AND ORDE R ON DEFENDANT’S

MOTION FOR SUMMARY JUDGMENT

WHEELER, Judge.

This patent infringement and trade secrets ca se has been in this Court for six years. The case has a somewhat notorious history in volving the imposition of sanctions against Plaintiff and its original counsel for prot ective order violations, mistreatment of a subpoenaed non-party, and the Plaintiff’s inability to iden tify any specific facts to support its trade secret claims. At long last, Plaintif f’s remaining patent infr ingement claims have been exposed as a further “s moke and mirrors” ruse lackin g any substance. While the record in this case consists of 219 entries, there is simply nothing there. As explained below, due to Plaintiff’s failure to identif y any specific accused product or device that infringes Plaintiff’s patents, Defendant’s motion for summary judgment is granted.2 Factual Background

On April 14, 2011, Plaintiff Demodulation, Inc. (“Demodulation”) filed a complaint in this Court against the United States seek ing approximately $50 million in damages for breach of contract, misappropria tion of trade secrets, and in fringement of thirteen U.S.
patents. 1 In its complaint, Demodulation alleged that the Department of Energy and the National Nuclear Security Administration, among other agencies, stole Demodulation’s proprietary technology, intellectual property, a nd trade secrets. Plaintiff’s third amended complaint, filed on March 28, 2014, containe d the following five co unts: (1) breach of express contract pursuant to 28 U.S.C. § 1491 ; (2) breach of implied contract pursuant to 28 U.S.C. § 1491; (3) patent in fringement pursuant to 28 U.S. C. § 1498; (4) violation of Plaintiff’s substantive and procedural du e process rights and taking without just compensation pursuant to the Fifth Amendment; and (5) misappropriation of trade secrets. 3d Am. Compl. ¶¶ 62-94. Presently, due to the Court’s prior rulings, only some of Plaintiff’s patent infringement claims in Count Three remain. See Demodulation, Inc. v. United States, 118 Fed. Cl. 69, 76 (2014) (“Dem odulation I”) (granting in part Defendant’s

motion to dismiss Count Four fo r lack of subject matter juri sdiction and motion for partial summary judgment with respect to Count Three) ; Demodulation, Inc. v. United States, 122 Fed. Cl. 652, 654-55 (2015) (“Demodulation II”) (dismissing all of Plaintiff’s trade secrets claims included in Counts One, Two, Four, and Five as a sanc tion for Plaintiff’s counsel’s

willful violations of the Court’s orders relating to th e Government’s discovery requests); Demodulation, Inc. v. United States, 123 Fe d. Cl. 98, 104-05 (2015) (“Demodulation III”) (granting Defendant’s motion for partial summa ry judgment as to Plaintiff’s breach of contract claim in Count One and finding mo ot Defendant’s motion for summary judgment

on the trade secrets claims in Count One, and all of the clai ms in Counts Two and Five).

In Count Three of its third amended complaint, Plaintiff alleges that the Government infringed on thirteen of Plaintiff’s patents in violation of 28 U.S.C. § 1498. 3d Am. Compl. ¶¶ 79-86. In Demodulati on I, the Court held that twelve of the thirteen asserted patents had expired and granted the Government’s motion for su mmary judgment as to any allegations of post-expiration us e. Demodulation I, 118 Fed. Cl . at 74-75. In that opinion, the Court dismissed the thirteenth patent, U. S. Patent No. 6,270,591 (“the ‘591 Patent”) 2

, from the case after finding that Demodulation lack ed ownership rights. Id. at 76. Thus, all

that remains before the Court are Demodula tion’s claims for pre-expiration infringement on U.S. Patent Nos. 5,557,085 (“the ‘085 Patent”); 5,576,693 (“the ‘693 Patent”); 6,018,297 (“the ‘297 Patent”); 6,137,411 (“ the ‘411 Patent”); 6,225,905 (“the ‘905 Patent”); 6,232,879 (“the ‘879 Patent”); 6,417, 771 (“the 771 Patent”); 7,071,417 (“the ‘417 Patent”); 7,075,439 (“the ‘439 Patent”); 7, 233,249 (“the ‘249 Patent”); 7,354,645 (“the ‘645 Patent”); and 7,368,166 (“the ‘166 Patent”).

1 The Clerk’s Office of the Court transferred the case to Judge Wheeler on August 26, 2013.

2 For purposes of convenience, it is common practice to “u se the last three digits of the patent number to refer to a specific patent.” Federal Judicial Center, Anatomy of a Patent Case 3 (2d ed. 2012).3 The asserted patents involve a highly special ized material consisting of glass-coated amorphous metal filament or wire, which Demodulation calls “microwire.” 3d Am. Compl. ¶80. Specifically, the patents re late to the manufacture, detection, and manipulation of microwire. 3 Id. Microwire, which is pur portedly thinner than a human hair, is particularly useful in electronic surv eillance systems because it broadcasts a distinct signal when struck by radio frequency waves and thus, the signal may be detected from several kilometers away without the need for a physical connection. Demodulation III,

123 Fed. Cl. at 99. Demo dulation seeks reasonable and entire compensation for the Government’s alleged use or manufacture of inventions using mi crowire and covered by the twelve asserted patents. 3d Am. Compl. at ¶¶ 79-86; 28 U.S.C. § 1498(a).

Following the close of fact discovery on June 30, 2015, and after the Court

dismissed all of Plaintiff’s trad e secret and breach of contra ct claims, the Court entered a scheduling order adopting the parties’ Joint Proposed Schedule for Claim Construction (“Schedule”). 4 Dkt. No. 171. Pursuant to th e Schedule, Demodulation served the

Government with its Disclosure of Assert ed Claims and Infringement Contentions on November 19, 2015. Demodulatio n filed a similar, albeit much abbreviated disclosure with the Court on the same day. Dkt. No. 181. According to the terms of the Schedule,

Demodulation’s disclosure was to include, “[s]eparately fo r each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of the United States of which Plaintiff is aware. This identification shall be as specific as possible. Each product, device, and apparatus shall be identified by name or model number, if known.” Schedule at 3.

On November 25, 2015, counsel for th e Government informed counsel for

Demodulation that the Government consid ered all of Demodu lation’s infringement contentions deficient. Shortly thereafter, th e parties met and conferred telephonically. Gov’t. Mot. at 5. During that conference, counsel for the United States outlined what the Government considered “key deficiencies” in Demodulation’s infringement contentions. Id. Based on those deficiencies, the Govern ment concluded that summary judgment was appropriate for all remaining patent claims. Id. at 5-6. On January 12, 2016, after

Demodulation declined to w ithdraw its infringement claims, the Government filed a motion for summary judgment of noninfringe ment for all patents remaining in this litigation. Demodulation responde d to the Government’s moti on on February 12, 2016. Along with its response, Demo dulation filed a Motion for Leav e to Amend its Disclosure

of Asserted Claims and Conten tions and/or Infringement Claim Charts. Dkt. Nos. 201-03.

Included with Plaintif f’s motion were no fewer than 1,00 0 pages of exhibits. Id. On

3 Although the ‘085, ‘693, ‘297, ‘879, ‘771, and ‘166 Patents re fer to both methods and devices, the inventions covered by these patents are actua lly either products or products by processes.

4 The Schedule is based on the Local Rules of Practice for Patent Cases before the United States District Court for the Northern District of California (“N.D. Ca l. Patent Local Rules”). As the Schedule is based on the N.D. Cal. Patent Local Rules, the Court cons iders those rules, as well as the cases interpreting those rules, to be particularly relevant.4 February 18, 2016, the Court issued an orde r staying all briefing a nd proceedings relating

to claim construction until after resolution of the Government’s motion for summary judgment. The parties have now fully briefed the Government’s motion for summary judgment of noninfringement, and the Cour t heard oral argument on March 16, 2016.

Analysis

A. Standard of Review

1. Jurisdiction

The Court of Federal Claims possesses ex clusive jurisdiction to entertain suits against the United States brough t by an owner of a U.S. patent to recover reasonable and entire compensation for the use or manufacture “by or for the United States without license of the [patent] owner” of the “invention descri bed in and covered” by the patent. 28 U.S.C. § 1498(a). Under section 1498, the patent holder may recover “his reasonable and entire compensation for such use and manufacture.” Id.

2. Summary Judgment of Noninfringement

Summary judgment is appropriate wher e “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no ge nuine issue as to any

material fact and that the movant is entitled to judgment as a matter of law.” RCFC 56(c).

A fact is “material” if it mi ght significantly alter the outcome of the case under the governing law. Anderson v. Li berty Lobby, Inc., 477 U.S. 242, 248 (1986). The moving party bears the initial burden of showing that there exists no genuine dispute as to any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Even when the movant does not bear the burden of proof on the issue that is the subject of the movant’s motion for summary judgment, the movi ng party nevertheless must meet “ the initial burden of coming forward with sufficient ev idence to demonstrate that th ere is no material issue of fact that would preclude summary judgment, a nd that it is entitled to judgment as a matter of law.” Vivid Techs., Inc. v. Am. Sci. & E ng’g, Inc., 200 F.3d 795 , 806 (Fed. Cir. 1999). The moving party may meet its initial burden by showing an absence of proof as to an essential element of the nonmoving party’s ca se because failure to prove “an essential element of the nonmoving party’s case necessari ly renders all other facts immaterial.” Celotex, 477 U.S. at 323. Once the moving party meets its initial burden, the burden shifts to the nonmoving party who must then come forward w ith sufficient eviden ce to show that a genuine issue of material fact exists for tria l. Crown Operations In t’l, Ltd. v. Solutia, Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002 ) (citing Celotex, 477 U.S. at 322-23).

A central purpose “of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses . . . .” Celotex, 477 U. S. at 323-24. While dismissal of factually unsupported claims is pr oper pursuant to Rule 56, “the purpose of summary judgment is not to de prive a litigant of a trial, but to avoid an unnecessary trial5 when only one outcome can ensue.” Vivid Techs., 200 F.3d at 806. To that end, “the plain language of Rule 56(c) manda tes the entry of su mmary judgment, after adequate time for discovery and upon motion, against a party wh o fails to make a showing sufficient to

establish the existence of an el ement essential to that party’ s case, and on which that party will bear the burden of proof at tr ial.” Celotex, 477 U.S. at 322.

Patent infringement claims involve mixed qu estions of fact and law, Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 8 31, 837-42 (2015), but summary judgment of noninfringement nonetheless is proper when th e moving party shows that “on the correct claim construction, no reasonable jury coul d have found infringeme nt on the undisputed

facts or when all reasonable factual inferen ces are drawn in favor of the patentee.” TechSearch, LLC v. Intel Corp., 286 F.3d 1 360, 1371 (Fed. Cir. 200 2); see also, Bus. Objects, S.A. v. Microstrategy, Inc., 393 F.3d 1366, 1371-72 (Fed. Cir. 2005). Determining a claim of patent infringement involve s a two-step inquiry. Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 261 F.3d 1329, 1336 (Fed. Cir. 2001). First, the Court must construe the patent clai ms to define “the scope of the patentee’s rights.” Teva Pharm. USA, 135 S.Ct. 831, 835 (2015) ( quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996)). “Second, the claims, as construed, are compared to the accused device.” Advanc ed Cardiovascular Sys., 261 F.3d at 1336 (citations omitted).

In patent cases, it can be “appropriate to co nstrue the claims at issue with knowledge of the accused device as opposed to considering claim constructi on issues in the abstract.” Iris Corp. Berhad v. United States , 84 Fed. Cl. 12, 16 (2008); see Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006) (“[I]t is appropriate for

a court to consider the accused device when de termining what aspect of the claim should be construed.”). Nevertheless, although “it is convenient for the court to concentrate on those aspects of the claim[s] whose relation to the accused device [are] in dispute,” the claim construction process “is independent of the device char ged with infringement.” Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed . Cir. 1999). However, even though the claim construction process is independent of the accused de vice, the ultimate purpose of construing the claims in a patent infringement action is to be able to compare them against

the accused device to determine whether the accu sed device infringes on the asserted patent claims. In the end, in order fo r the plaintiff in a patent infri ngement action to prevail, “the plaintiff must establish by a preponderance of the evidence that the accused device infringes one or more claims of the patent . . . .” Advanced Cardi ovascular Sys., 261 F.3d

at 1336.

B. The Asserted Patents

1. U.S. Patent No. ‘591

As indicated above, this Court has alread y dismissed the ‘591 Patent from this litigation. In Demodulation I, this Court held that Demodulation lacked ownership rights6 to the ‘591 Patent and therefore, as a mere licensee, it did not have the right to sue for infringement. Demodulation I, 118 Fed. Cl. at 75-76. Why Plaintiff continues to assert

this claim after the Court di smissed the ‘591 Patent with prejudice from this case is

unknown.

2. U.S. Patents Nos. ‘085, ‘693, ‘297, ‘411, ‘905, ‘879, 771, ‘417, ‘439, ‘249, ‘649, and ‘166

The Court finds that no genuine issue of ma terial fact exists and therefore summary judgment for Defendant may be granted. Specifically, su mmary judgment of noninfringement is appropriate for each of the asserted patents because Demodulation has failed to identify any accused infringing pr oducts. Section 1498(a) contemplates reasonable and entire compensation for the Go vernment’s “use or manufacture” of the patented invention. Accordin gly, in order for Demodulation to prove infringement, it must identify a specific infringing product being used or manufactured by the Government.

Plaintiff has not met this burden. Demodulati on filed its first complaint in this case over six years ago. To date, and after more than tw o years in which fact discovery was available, Demodulation has failed to identify a single accus ed device that the Government has either used or manufactured to compar e to the claims under any cons truction by this Court.

As shown below, Demodulation has provide d the Court with expansive amounts of text, but when analyzed, the words simply are generic area s of technology lacking any detailed product information. The following table includes the terms Plaintiff lists as accused “devices” or “products” in its infringement forms and claims chart:

U.S. Patent No. Accused “Products” The ‘085 Patent “Remote sensing devices”; “t ransponder units . . . ; e.g., passive radio frequency identification (RFID) tag” ; “surface acoustic wave (SAW) devices”; “Magnetometers, Delay Li ne, Pulse Generators, Magnetic Torque/Tension Sensor, Magnetic Fiel d, Current, Torque and Stress Sensors”; “field sensors . . . (e .g. U.S. Navy NUWC-Newport & Y12 patents)”; “munitions guided sy stems”; “SPAWAR used in space applications”; “magnetic drive in ga tes or portals”; “drones”; “remote sensing devices that use an electroni c identification device capable of using/generating a magnetic field fo r an interrogation zone; a radio frequency field to remotely in terrogate the sensor (both electromagnetic fields) to transmit and receive the RF signal via the

encoded identification data and tr ansponder units (including all amorphous metal structures).” Pl.’s Disclosure at 2-7. “Patents generated by BWXT.” Pl.’s Disclosure, Ex. 2 at 1.

The ‘693 Patent “Microwire Detection-Tr acking-Sensor System”; “Electronic Label (Tag)”; “Label/Marker/Tag/Sensor”; “sensor/tracking components”; “sensor platforms including pl urality of wires in various7 configurations”; “Systems of detec tion . . . that utilize the electronic components defined in this patent ”; “RFID Tag”; “a Magnetic sensor . . . (see NUWC Patents 7,405, 559 and 8,686,715)”; “DOE Y-12 Patents 8,871,523 and 9,146,168.” Pl.’s Disclosure at 7-10. “Microwire Detection-Tracking-Sen sing System.” Pl.’s Disclosure,

Ex. 2 at 2. The ‘297 Patent “a multi-bit tag that provide s the ability to track specific items for human or other asset tracking (ce ll phone, munitions, etc.)” Pl.’s

Disclosure at 10-11. The ‘411 Patent “a remote sensing device s use an electronic identification device capable of creating a magnetic field for an interrogation zone”; “transponder units (such as gla ss-coated amorphous microwire or other device[)]”; “e.g. radio frequenc y identification (RFID) tag that is encoded with unique digital information (bits) representing a unique alpha-numeric sequence of information or item-specific information”; “controllers that are arranged to use information on the phase between demodulation to dete rmine the position [of] a sensor in space”; “controllers operatively connected to devices for acoustic

indication for sensor informati on data including position and displacement”; “detection systems using magnetic drive that are arranged parallel to the ground plan e”; “amorphous metal wires tapes tags sensors markers . . . in the us e of low observable technologies”; “coil arrangement in a frame with electrical conductors wrapped one or more turns”; “sensor deploymen t comprising an element of an amorphous magnetic material.” Pl.’s Disclosure at 11-14. The ‘905 Patent “numerous systems that apply both radio fre quency and magnetic capabilities set forth in this patent”; “[s]ensors, magnetometers, delay lines, tracking and tagging devi ces, undersea low observable technologies, apertures affixed to exterior surfaces, in situ remote sensing, condition monitoring, munitions, stealth, medical and

others.” Pl.’s Disclosure at 14-17.

The ‘879 Patent “the remote sensing device’s use [of] an electronic device capable of using/generating a magnetic fiel d for an interrogation zone”; “transponder units (including all am orphous metal structures or other device[)] affected by both radio frequency (RF) and magnetic energy; e.g. passive radio frequency identific ation (RFID) tag that is encoded with unique digital information (bits) representing a unique alphanumeric sequence of information or item-specific information”; “surface acoustic waves (SAW) devi ces”; “sensors for stress and explosive [d]etection/tracking”; “s ystems where the permeability of the metal alloy was influenced th rough a varying magnetic field”; “systems containing a wire shaped element that has an essentially circular cross section and is straight in a longitudinal direction of the8 element”; “a method of [d]etecti on of objects in an interrogation

zone.” Pl.’s Disclosure at 17-21. The ‘771 Patent “uses of [] an amorphous A method for remote detection of objects”; “systems that demodulate electro magnetic reply signals and detect frequency shift in the demodulated re ply signal.” Pl.’s Disclosure at

21-22. The ‘417 Patent “tracking, anti-counterfe iting and sensor devices”; “repeatable and stable sensor tags and devices for magnetic switching and domain excitation”; “optical emission scanners . . . for anti-counterfeiting application.” Pl.’s Disclosure at 22-25. The ‘439 Patent “sensor platforms”; “mat erial on the surface of amorphous metal sensor elements that expansion c ontraction properties acted like as a heat shrinkable material, to alter the state of a sensor element.” Pl.’s

Disclosure at 25-26. The ‘249 Patent “sensors, tracking devices and anti-coun terfeiting devices deploying at minimum one bit of encoding information”; “sensor elements”; “computer interface systems w ith labview signal processing capability”; “amorphous metal wires, nanocrystalline and amorphous, wires having the gla ss coatings removed”; “condition monitoring devices”; “strain, torque, tension sensors”; “energy harvesting devices”; “optical fiber applications; such as security, condition monitoring and the monitori ng of data flows and speed”; “information data emitting from encoded amorphous metal elements”; “amorphous metal wire”; “sensor systems at BWTX.”

Pl.’s Disclosure at 26-29. “sensor systems at DOE’s Y-12 Plant.” Pl.’s Disclosure, Ex. 2 at 9. The ‘645 Patent “microwires”; “sensor syst ems”; “[p]roducts [] described in BWTX patents and publications”; “micro wire products including different metal compositions”; “new and speci alized composite wires”; “the elastic modulus for [g]lass coated amorphous metal”; “microwire in structural, electronic, reflection and absorption of EM energy for aerospace applications by the US Government”; “[a]morphous metals . . . used as radar absorption mate rial such as chaff and ‘Foo Foo dust’”; “glass coated microwire with glass composed of glass is a soda-lime silicate container glass. ” Pl.’s Disclosure at 29-31. The ‘166 Patent “development use and licensing of [U.S.] patent for chemical/biological species for the detection of expl osives detection devices (US 8871523)”; “application of polymers, reagents or other

material on surfaces of microwires and/or the use of microwire properties are influenced by either thermal expansion, chemical reaction or applied stress/deflectio n.” Pl.’s Disclosure at 31-33.9 As the preceding chart illustrates, even the most specific accused “devices” Demodulation identifies are merely broad t echnology categories such as “sensors,” “magnetometers,” “tracking a nd tagging devices,” and “apert ures affixed to exterior

surfaces.” Pl.’s Disclosure at 15 (regarding infringement contentions for Claim One of the ‘905 Patent). These broad categories potentia lly include thousands of devices and offer

little or no notice to the Government as to what actual device Demodulation contends infringes any of its patent claims. Demodulati on also lists various U.S. patents, including patents held by the Naval Undersea Warfare Center (“NUWC”) and the Department of Energy (“DOE”), as accused infri nging products. Pl.’s Disclosures at 10 (regarding infringement contentions for Cl aims Four and Five of the ‘693 Patent, respectively). However, Plaintiff has not come forward with a device that it claims embodies any of these patents, nor has it argued that a ny of these patents are invalid in view of its asserted claims. Indeed the existence of a pate nt is no guarantee of the exis tence of a corresponding product, let alone one made or used by the United States . As “[a] patent shall be presumed valid,” 35 U.S.C. § 282, and in the absence of any identification of an actual accused device, Plaintiff’s mere references to patents held by the Governme nt do not amount to

identification of an accused device.

Although courts generally construe the cl aims of an asserted patent prior to considering the ultimate issue of whether the accused device in fringes the asserted patent claims, there is no requirement for this Cour t to conduct a Markman hearing to construe claims prior to considering the Government ’s motion for summary judgment. This is particularly true where, as here, Demodu lation has no intelligible infringement position under any construction of any of its asserted pate nts’ claims. In fact , this Court need only construe the claims “to the extent necessary to resolve the controversy.” Vivid Techs., 200 F.3d at 803; see also Biovail Corp. Int’l v. Andrx Pharms., Inc., 239 F.3d 1297, 1301 (Fed. Cir. 2001) (finding it unnecessary to construe a claim term wh ere it was not relevant to the case’s outcome); Ballard Med. Prods. v. Allegi ance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) (“If the district court considers one issue to be dispositive, the court may

cut to the heart of the matter and need not exhaustively discu ss all other issues presented by the parties.”). Here, the Court need not constr ue any of the claims in Plaintiff’s asserted patents because without an accused product, Pl aintiff cannot prove infri ngement as a matter of fact under any claim construction. Accord ingly, to proceed with a Markman hearing in the absence of a single, identifiable accused product—after Plaintiff has been afforded years of discovery—would be a wast e of judicial resources.

The identification of an accused product is a necessary element in an action for patent infringement. For Demodulation to prev ail in this litigation, it “must establish by a preponderance of the evidence that [an] accused device infringes one or more claims of the patent . . . .” Advanced Cardiovascular Sys ., 261 F.3d at 1336. “[T] he plain language of Rule 56(c) mandates the entry of summary judgm ent, after adequate time for discovery and upon motion, against a party who fails to ma ke a showing sufficient to establish the existence of an element essential to that part y’s case, and on which that party will bear the burden of proof at trial.” Ce lotex Corp., 477 U.S. at 322. Ultimately, no matter how the10 claims might be construed, there can be no infringement as a matter of law when Plaintiff has failed to identify an accused product. See Bender v. Motorola, Inc., No. 09-1245, 2010 WL 726739, *3-*4 (N.D. Cal. Fe b. 26, 2010); Lyda v. CBS Co rp., No. 14-6572, 2-15 WL 4393120, *4 (S.D.N.Y. July 16, 2015). After six year s of litigation, Demodulation has failed to make a showing sufficien t to establish the existence of an actual accused product, an essential element to its case. Accordingly, summary judgment must be granted in favor

of the Government.

3. Demodulation’s Motion to Amend

According to the Schedule, amendments to Plaintiff’s infringement contentions “may be made only by order of the Court in acco rdance with law.” Sche dule at 8. In this case, Demodulation agrees that relevant law requires it to make a timely showing of good cause to amend its infringement contentions or claim chart. Pl.’s Mo t. at 12-13; see N.D. Cal. Local Patent Rule 3-6 (“Amendment of the Infringement Contentions or the Invalidity Contentions may be made onl y by order of the Court upon a timely showing of good cause.”). In determining whether good cause exists, a court must first consider whether the movant was diligent in movi ng to amend and if so, whet her the nonmoving party would suffer prejudice if the court were to allow amendment. See O 2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc ., 467 F.3d 1355, 1366-68 (F ed. Cir. 2006); Canvs. Corp. v. U.S., 107 Fed. Cl. 100, 103-04 (2012); Acer, Inc. v. Tech. Props. Ltd., Nos. 08-cv00882JF/HRL et al., 2010 WL 3618687, at *3 (N.D. Cal. Sept. 10, 2010) (unpublished).

Here, the Court deems it unnecessary to de cide whether Plaintiff has shown good cause in moving to amend its infringement contentions and clai m chart. Although it is not the Court’s obligation to “scour through the exhibits to the Contentions to determine whether any might be properly authenticated and create a genu ine issue of material fact,”

the Court has nevertheless done so in this ca se. Nomadix, Inc. v. Hewlett-Packard Co., 838 F. Supp. 2d 962, 966 (C.D . Cal. 2012). In the more than 1,000 pages of exhibits Plaintiff filed with its motion to amend, the Co urt found seven “Product Descriptions.” As in the product descriptions identified in Pl aintiff’s infringement contentions, the product descriptions in its motion to am end fail to identify a single accused device. Instead, as in its infringement contentions, Demodulation once again merely refers to large technology categories and patents held by the Government.

The following table includes the terms Pl aintiff lists as ac cused “devices” or “products” in its motion to amend:

Exhibit 1-1 US Army Munitions Guidance Sensor & Detonation Trigger “microwire and radio frequency methods to enhance the telemetric control of munitions including precision gui ded munitions”; “m icrowire as a track, trace and ‘switch’ mechanism to remotely detonate weapons by a11 return radio frequency signal”; “US Navy Patents 7,405,559; 8,686,715 and 8,231,161”

Exhibit 1-2 DoD – Asset (Munitions, Nuclea r Weapons, Terrorists (IFF) [“identity friend-foe”]) Track & Trace with Fixed Encryption Key “a clandestine, electronic key (e.g. magnetic transducer – microwire) for

over-the-air track and trace transm ission and device authentication”

Exhibit 1-3 US Gov – Passive RFID Asset Track & Trace “overt, electronic key, e.g. magnetic tranducer – passive – RFID (Radio Frequency Identification) tag, NF C (Near-Field Communication) Tags,

etc. for over-the-air track and trace transmission and device authentication for conventional assets”; “Passive RFID system, which already has software to identify a target[] based on the target’s specific digital signal on the RF response, with a simple included software”

Exhibit 1-4 DoD – Asset (Munitions, Nuclea r Weapons, Terrorists (IFF) [“identity friend-foe”]) Track & Trace with Fixed Encryption Key “a clandestine, electronic key (e.g. magnetic transducer – microwire) for

over-the-air track and trace transm ission and device authentication”;

Exhibit 1-5 NSA ANT Catalog – Retro-Reflectiv e Passive Signal Acquisition

Device with Fixed Identification Key for USB and other Data Cables “a clandestine, electronic key (e.g. magnetic transducer – microwire) for

over-the-air retro-reflection of data signals on a cable plus device

authentication to tie said cable to a specific user”; “RF [radio frequency] Transmit/Receive device [t hat] is a CW [continu ous wave] Radar unit”; “[f]or Retro-Reflective ANT Pr oducts such as LOUDAUTO,

TAWDRYYWARD RANGEM ASTER & SURLYSPAWN (circa 2008 Product Names), current improved products will include an encoded transponder (e.g. microwire) impl anted into or on the data wires”

Exhibit 1-6 NSA ANT Catalog – USB/ Ethernet Connector “a clandestine, electronic key (e.g. magnetic transducer – microwire) for

over-the-air track and trace transm ission and device authentication”; “[f]or USB ANT Products such as COTTONMOUTH I, COTTONMOUTH II, COTTONMOUTH III, FIREWALK (circa 2008), current products will in clude an encoded transp onder (e.g. microwire) implanted into or on the SIM Card that is incorporated as part of the circuit

board of the connector”

Exhibit 1-7 NSA ANT Catalog – Cell Phone, Track & Trace with Fixed Encryption Key for Pers onal Wireless Device “a clandestine, electronic key (e.g. magnetic transducer – microwire) for

over-the-air track and trace transm ission and device authentication”; “[f]or Cell Phone ANT Produc ts such as DROPOUTJEEP, GOPHERSET, MONKEY CA LENDAR, TOTECHASER, TOTEGHOSTLY, & PICASSO (cir ca 2008), current products will12 include an encoded transponder (e.g. mi crowire) implanted into or on the

SIM Card”

As with the terms described in Plaintiff’s initial disclosures, none of these “device” descriptions is sufficiently sp ecific to provide the Governme nt with notice as to how a product it is using or manufacturing infringe s on Plaintiff’s patents. See K-Tech Telecommc’ns, Inc. v. TimeWarner Cable, Inc., 714 F.3d 1277, 1 284 (Fed Cir. 2013) (recognizing that “a potential infringer [must] be placed on notice of what activity or device is being accused of infringement”); Gharb v. Mitsubishi Elec. Automation, Inc., No. 10- 07204, 2012 WL 1986435 , *4 (N.D. Ill. June 4, 2012). At its most specific, Plaintiff identifies “circa 2008” product models appare ntly taken from a Nati onal Security Agency (“NSA”) catalogue as examples of products that in their “current” form would infringe on its patents by including microwire. Pl.’s Mot. to Am., Exs. 1-5 - 1-7. Like the vague and overly broad device descriptions include d in Plaintiff’s initial and amended charts, the conjectural and hypothe tical NSA products described in Plaintiff’s amended claim chart fail to provide sufficient notice to the Governme nt or to identify an actual accused product with which this Court could compare properly c onstrued patent claims. Accordingly, even

if the Court were to allow Plaintiff to amen d its claim chart, it would nevertheless fail to

meet its burden. Plaintiff has failed to id entify any accused device under any construction that provides a foundation for a patent infringement lawsuit. As “a complete failure of proof concerning an essential element of th e nonmoving party’s case necessarily renders all other facts immaterial,” further proceedings in this case are not warranted. Celotex, 477

U.S. at 323.

Conclusion

For the foregoing reasons, the Court GR ANTS Defendant’s motion for summary judgment of noninfringement as to all the asserted patents and claims remaining in this litigation. Plaintiff’s motion to amend its infringement cont entions and claim chart is

DENIED AS MOOT.

The Clerk of Court shall en ter judgment in favor of the Defendant. Reasonable costs

are awarded to Defendant.

IT IS SO ORDERED.

s/Thomas C. Wheeler

THOMAS C. WHEELER Judge