# In the **United States Court of Federal Claims**

NOT FOR PUBLICATION

No . 2 1

- 911C (Filed: March 24
, 202 3 ∗ )

POWER DENSITY SOLUTIONS, LLC and JAMES J. HILDEBRANDT

,
Plaintiffs

,

v.

UNITED STATES

,
Defendant

. ) ) ) ) ) ) ) ) ) ) ) Patent infringement; Standing; Assignment of Claims Act,
31 U.S.C. § 3727 ; P atent Rule 4 : Infringement c ontentions.

Trevor Q

. Coddington

, Insigne PC

, Austin

, TX

, for plaintiff s

.

Grant D. Johnson

, Trial Attorney

, Commercial Litigation Branch, Civil Division, U

. S

. Department of Justice, Washington, DC, for defendant , with whom o n the briefs were Brian M. Boynton , Principal Deputy Assistant Attorney General, and Gary L. Hausken , Director, Philip Charles Sternhell , Assistant Director, and David L. Pace , Trial Attorney, Commercial Litigation Branch, Civil Division, U.S. Department of Justice, Washington, DC

.

OPINION AND ORDER 1

BONILLA, Judge

.
Power Density Solutions, LLC (Power Density) and James J. Hildebrandt

– assignee and inventor , respectively, of two patents related to electronics cooling

∗ This Opinion and Order was originally filed under seal on March 17, 2023

, in accordance with the Protective Order entered in this case. The Court provided the parties an opportunity to review th e decision for any proprietary, confidential, or other protected information and sub mit proposed redactions. On March 23, 2023, the parties jointly proposed several limited and justified redactions

. Accordingly, th e Court accepts the proposed redactions and reissues the Opinion, with redacted language replaced with the following : “[XXXXX].”2 technologies

– filed this patent infringement action against the United States

. In their complaint, as amended, p laintiffs allege participants in a feder ally funded research and development program , including a number of research institutions and defense contractors, developed certain infringing products

.
On April 8, 2022, the Court dismissed plaintiffs ’ claims against the identified research institutions for lack of subject matter jurisdiction

. See Power Density Sols. LLC v. United States , 159 Fed. Cl. 208, 215

– 18 (2022). Pending before the Court is the government’s Motion to Strike Plaintiffs ’ Preliminary Infringement Contention s as to claims concerning the identified defense contractors (ECF 45). Through

an Order to Show Cause, the Court direct ed the parties to address, inter alia, Mr. Hildebrandt’s standing and the disputed sufficiency of plaintiffs’ infringement contentions . F or the reasons set forth below, Mr. Hildebrandt is TERMINATED for lack of standing and Defendant’s Motion to Strike is GRANTED

.

B A CKGROUND 2

I. Patents

- in

- Suit and Accused Products

Power Density claims to be the assignee of U.S. Patent No s

. 6,313,992 ( the ’992 patent) and 6,552,901 (the ’901 patent) . Both patents list Mr. Hildebrandt as the sole inventor. The patents describe systems and methods for cooling electronic components by directing a cooling fluid through a network of interior pas sageways formed within electronic components and on the ir surfaces. See ’992 patent at Abstract, col. 3:14

– 35; ’901 patent at Abstract, col. 2:61

– 3:3. Both patents expired on December 21, 2019.

According to plaintiffs, the accused infringing products were developed through the Intrachip/Interchip Enhanced Cooling (ICECool) program administer ed by the U

. S

. Defense Advanced Research Projects Agency (DARPA). The ICECool program was an initiative to explore advance d solutions to cool computer circuitry and other electronic components , particularly in military electronic systems . The
program consisted of a F u ndamentals phase

– f ocused on scientific and engineering research performed by research institutions

– and

, relevant here, an A pplication s phase

– involv ing the development of prototype systems by defense contractors

.

1 This case was transferred to the undersigned for adjudication on April 11, 2022, pursuant to Rule 40.1(b) of the Rules of the United States Cour t of Federal Claims (RCFC). See ECF 25

– 26. Briefing on the pending motions continued through February 14, 2023. See ECF 45, 49

– 50, 52

– 56, 59

– 61.

2 The Court’s April 8, 2022 decision summarized the patents and the government research and development prog ram at issue. See Power Density , 159 Fed. Cl. at 211

– 12. For clarity, the Court provides a brief recap where necessary for the analysis herein.3 In the ir a mended c omplaint, plaintiffs a llege eleven defense contractors developed infringing products “for the United States and with the authorization or consent of the United States[,]” through the ir participation in the ICECool program

, including: BAE Systems, Inc., Booz Allen Ha milton, International Business Machines Corp. (IBM) , L3 Technologies (f/k/a L

- 3 Communications Holdings), Lockheed Martin Corp., Northrop Grumman Corp., Nuvotronics LLC, Raytheon BBN, Raytheon Technologies Corp., SelectTech Services Corp., and SPC Federal, LLC. See ECF 16 at ¶ ¶ 9

– 10. In denying the government’s motion to dismiss claims directed at certain defense contractors , the Court noted the allegations lacked detail but were nevertheless sufficient to state a claim under the “notice and plausibility” standard. See Power Density , 159 Fed. Cl. at 220. On June 13, 2022,
t he Court entered a preliminary scheduling order consistent with the parties’ joint proposal

. ECF 33. T he initial deadline for plaintiffs to serve t heir preliminary infringement contentions was August 1, 2022.

II. Infringement Contentions

After a one

- week extension, on August 8, 2022, plaintiffs served their initial infringement contentions

. See ECF 45

- 5. Under “Asserted Claims,” plaintiffs listed claims 1, 2, 21, and 22 of the ’992 patent, and claims 16, 17, 20, and 2 2 of the ’901 patent. 3 Id. at 3. For the “Accused Products,” p laintiffs state d :

The Accused Products include electronic components and heat sinks developed in response to the [ICECool] program . . . and derivatives thereof

. . . . For example, the Accused Products include but are not limited to an unnamed IBM device, a Northrup [sic] Grumman device referred to as ICED 3D Integrated Fluid Manifold, a n unnamed Raytheon device, and an unnamed Lockheed Martin device.

Id. The initial contentions include a claim chart for each of the four defense contractors, citing disclosure s in patent s and other literature in the column identifying accused products . For the asserted claims of the ’901 patent, plaintiffs cite :

Defense Contractor U.S. Patent 4 Lockheed Martin No. 10,306,802 (the ’802 patent) Northrop Grumman No. 9,484,284 (the ’284 patent) Raytheon No. 9,502,330 (the ’330 patent)

3 Although listed in the cover pleadings under Asserted Claims, plaintiffs did not provide claim charts directed to claims 21 and 22 of the ’992 patent. Compare ECF 45

- 5 at 3 with id. at 7

– 23.

4 On the face of the patents, the ’802, ’330, and ’284 patents were applied for by and assigned to Lockheed Martin, Raytheon, and Northrop Grumman, respectively.4 Plaintiffs also include a quote from an unspecified “ Exhibit A” in each of the three claim chart s

. See ECF 45

- 5 at 8

– 9 17, 20

– 21

. For the asserted claims of the ’992 patent
, plaintiffs cite a confidential IBM report designated as “AFRL

- RY

- WP

TR

- 2017

- 0064

. ” 5 See id. at 12.

In a letter dated A ugust 23, 2022 , the government challenged plaintiffs’ reliance on t heoretical products rather than existing, real

- world ICECool prototypes or devices , and further requested plaintiffs address various other deficiencies
to comply with the requirements of Patent Rule 4

. See Patent Rules of the Court of Federal Claims (PR

- CFC) Rule 4; ECF 45

- 7. After several follow

- up requests from the govern ment, the p arties met and conferred on September 16, 2022, wherein plaintiff s agreed to serve supplemental contentions to correct the deficiencies. At the parties’ joint request, the Court modified the preliminary scheduling order to allow plaintiffs additional time to serve supplemental contentions by September 30, 2022. See ECF 42 at 2

– 3

. Plaintiffs did not serve supplement contentions by th e

ex tended deadline

.
Instead, on October 12, 2022, plaintiffs filed an untimely motion to further extend the September 30, 2022 deadline until October 14, 2022

. See ECF 43

. The motion was granted, and p laintiffs served their supplemental infringement contentions on October 14, 2022. In the supplemental contentions, p laintiffs continue to assert claims 1, 2, 21, and 22 of the ’992 patent, and claims 16, 17, and 20 of the ’901 patent. 6 For the “Accused Products,” p laintiffs similarly state :

The Accused Products include but are not limited to electronic components and heat sinks developed in response to the [ICECool] program . . . and derivatives thereof

. . . . For example, the Accused Products include but are not limited to devices implementing microvalves and integrated microchannels as taught in DARPA’s conceptual ICECool device, an IBM device referred to as an embedded
two

- phase liquid

- cooled microprocessor (ECM)

, a Northrop Grumman device referred to as ICE D 3D Integrated Fluid Manifold, an unnamed Raytheon device, and an unnamed Lockheed Martin device.

5 According to the government, the cited report is a confidential/ restricted document produced under

a protective order i n a prior patent infringement suit litigated in the United States District Court for the Northern District of California, Power Density Sols LLC v. IBM Corp. , No. 19

- 3710 (N.D. Cal.)

. P laintiffs retained the report after the case concluded in violation of the protective o rder

. After dismissing Power Density’s complaint in part and then granting summary judgment in IBM’s favor

on the remaining claims

, the district court entered judgment on August 14, 2020.

6 Similar to their initial contentions served on August 8, 2022 , although claims 21 and 22 of the ’992 patent are listed in the cover pleadings, plaintiffs did not provide claim charts directed to these claims in the October 14, 2022 supplemental contentions

. Compare ECF 45

- 5 at 3, 12

– 13 with ECF 45

- 10 at 3, 27

– 28.5 ECF 45

- 10 at 3 (underlin ing denotes modifications to corresponding statements in the August 8, 2022 initial contentions found at ECF 45

- 5 at 3)

. The appended claim charts for Lockheed Martin, Northrop Grumman, and Raytheon again cite the ’802 patent
, ’ 284 patent, and ’ 330 patent , respectively. See i d. at 7

– 9, 59

– 61, 89

– 91. The claim chart for Raytheon also cites a research article authored by R aytheon personnel. Compare ECF 45

- 5 at 16

– 17 with ECF

- 10 at 59

– 60. For the asserted claims of the ’992 patent , the supplemental contentions remove references to the confidential IBM report cited in the initial contentions and

, instead

, refer to two research article s authored by IBM personnel

. 7 Compare ECF 45

- 5 at 12

– 13 with ECF 45

- 10 at 27

– 28.

III. Motion to Strike

On October 20, 2022, the government moved to strike p laintiffs’ i nfringement

c ontentions , arguing that despite multiple extensions granted for plaintiffs to address identified deficiencies

, the supplemental contentions remain noncompliant with the Court’s Patent Rules . After reviewing the parties’ filings, the Court issued

an O rder to S how C ause directing plainti ffs to, inter alia, “identif[y] with specificity” and as required under Patent Rule 4 :

a. Each and every real

- world, non

- theoretical and existing, accused product corresponding to the literature citations plaintiffs included in the four claim charts (ECF No. 45

- 10), including specifying the name, model number, or an otherwise uniquely assigned product identifier; and

b. For each accused product sufficiently identified under the preceding paragraph, the basis supporting that such product was “developed and sup plied [to] the United States” through the ICECool program.

ECF 52 at 3

– 4 (quoting Power Density , 159 Fed. Cl. at 220). Additionally, because plaintiffs’ infringement contentions

– initial and supplemental

– are devoid of any mention of seven ( of the eleven) defense contractors identified in the amended complaint , the Court “directe[d] plaintiffs to show cause why their claims against the initially

- named seven (7) defense contractors not included in plaintiffs’ infringement contentions, as supplemente d, should not be deemed waived or

7 According to plaintiffs, the cited articles “publicly disclose most, if not all, of the information Plaintiffs previously relied on from the Final Report in ICECool Applications Program under the award number FA8650

- 14

- C

- 7466.” ECF 45

- 10 at 27 ; see id. at 29

– 58.6 otherwise abandoned.” 8 See id. at 2; accord id. at 3. Both parties timely responded to the show cause order. ECF 5 3

– 54
, 60.

DISCUSSION

I. Standing

P ursuant to a March 20, 2018 assignment, Mr. Hildebrandt assign ed to Power Density “ the entire right, title and interest ” to the ’ 901 and ’ 9 92 patent s

. See ECF 53

- 2 at 2 ; ECF 16 at ¶ 6

. The assignment specifically included: “the right to sue for and recover damages for any infringement prior to this Assignment.” See ECF 53

- 2 at 2. Consequently, when this case was filed nearly three years later

on February 10, 2021, Mr. Hildebrandt did not own any interest in either patent. As such, Mr. Hildebrandt lack s standing t o pursue any infringement action under these patents. See, e.g. , Abraxis Bioscience, Inc. v. Navinta LLC , 625 F.3d 1359, 1364 (Fed. Cir. 2010) (to establish standing “plaintiff must demonstrate that it held enforceable title to the patent at the inception of the lawsu it”); Lans v. Digital Equip. Corp. , 252 F.3d 1320, 1328 (Fed. Cir. 2001) (affirming dismissal whe re plaintiff

- inventor assigned patent prior to filing action)

.

In the ir response to the Court’s O rder to S how C ause, plaintiffs contend Mr. Hildebrandt’s additi on was intended to circumvent the restrictions of the Assignment of Claims Act (ACA) , 31 U.S.C. § 3727

. Under the A CA , Power Density

may only pursue patent infringement claims against the government arising after the patents were duly assigned and is thus barred from recovering pre

- assignment damages (i.e., prior to March 20, 2018)

. See, e.g.

, 3rd Eye Surveillance, LLC v. United States , 133 Fed. Cl. 273, 2 77

– 78 (2017) ( discussing ACA purpose and application in the patent infringement context )

. A s th is Court has explained: “Assignments of patent rights are subject to the [ACA]

, and voluntary assignments of patent claims are ineffective against the government unless they qualify for [a] judicially

- recognized exception [] or otherwise do not run afoul of the purposes of the Act.” Id. at 277. Plaintiffs do not dispute the constrai nt imposed by the ACA

or seek to qualify under a judicially

- recognized exception

. 9 See ECF 53 at 2 ( recognizing “[ P ower Density ] is barred from receiving pre

- Assignment infringement damages”).

8 The seven defense contractors identified in the amended complaint but not included in plaintiffs’ infringement contentions, as supplemented, include: BAE Systems, Inc. (BAE) , Booz Allen Hamilton, L3 Technologies (f/k/a L

- 3 Communications Holdings), Nuvotro nics LLC, Raytheon BBN, SelectTech Services Corp., and SPC Federal, LLC.

9 Judicially

- recognized exceptions neither claimed nor applicable here include “transfers by will

or ‘general assignments for the benefit of creditors.’” See 3 rd Eye Surveillance , 133 Fed. Cl. at 277 (quoting United States v. Shannon , 342 U.S. 288, 292 (1952) (citing cases)).7 P laintiffs’ position improperly conflates the requirements of constitutional standing and the ACA restrictions involving patent infringement claims against the United States

. At bottom, a s the sole owner of the asserted patents at the time this suit was filed, Power Density stands as the only plaintiff satisfying the constitutional standing requirements

. According ly

, the Court must terminate Mr. Hildebrandt as an improper plaintiff for lack of standing

.

II. Infringement Contentions

A. Legal Standard

A plaintiff asserting patent infringement is required to serve its preliminary infringement contentions early in the litigation, generally within two months after the defendant files an answer to the complaint. See PR

- CFC 4. Under Patent Rule 4
, prelimin ary infringement contentions must identify each asserted claim and for each asserted claim, each accused infringing product ; t he contentions must also include a claim chart explaining where each element of each asserted claim is present in the accused product. Id. ; see , e.g. , Golden v. United States (Golden I)

, No. 13

- 307, 2021 WL 3238860, at *3

– 4 (Fed. Cl. July 29, 2021) (discussing patent rule requirements for infringement contentions).

The p urpose of the required detail and specificity “is to put a defendant on notice of all contentions regarding how each claim limitation is allegedly met by the accused device.” Iris Corp. Berhad v. United States , 84 Fed. Cl. 12, 16 (2008) (citing O2 Micro I nt’l Ltd. v. Monolithic Power Sys., Inc. , 467 F.3d 1355, 1362

– 63 (Fed. Cir. 2006); Refac Int’l, Ltd. v. Hitachi Ltd. , 921 F.2d 1247, 1255 (Fed. Cir. 1 990)), quoted in Golden , 2021 WL 3238860, at *3. As the Court recently observed, such requirements “serve an important function

– to narrow and focus the issues and theories that must be pursued during the litigation.” Golden v. United States (Golden II) , 156 Fed. Cl. 623, 632 (2021), aff’d , No. 2022

- 1196, 2022 WL 4103287 (Fed. Cir. Sept. 8, 2022). P laintiffs ’ lack of specificity in their infringement contentions fail s to focus the issues for discovery and claim construction and

, concomitantly, frustrates defendant’s ability to formulate its defense

.

B. A ccused D evices

Proper infringement contentions must identif y “each product, process,

or method that allegedly infringes.” PR

- CFC 4(b). D espite a series of extension s , plaintiffs’ assurances to correct identified deficiencies, and the Court’s show cause order

, plaintiffs’ infringement contentions , as supplemented, fail to identify a single real

- world device that allegedly infringe s the asserted patents

. Plaintiffs ’ continued invocation of generic “ICECool Products” and references to solutions

or instrumentaliti es described in patent s and research literature

, see generally ECF 45

- 10, deprive defendant of reasonable and fair notice of plaintiffs’8 infringement theor ies

. Likewise, t he Court is left to speculate what issues and theories plaintiffs intend to pursue. More than a perfunctory submission, the required early exchange of contentions is designed t o prevent the exact situation presented here. See, e.g.

, Golden II , 156 Fed. Cl. at 627 (infringement contentions must be specific enough to put opposing party and the court on notice of plaintiff’s position to focus issues for discovery and trial ).

1. The ’901 P atent

In the cover pleading of their infringement contentions, plaintiffs describe the accused devices as “Government devices or systems that incorporate one or more electronic components or heat sinks utilizing evaporative cooling.” ECF 45

- 10 at 3. 10 In the claim charts directed at Lockheed Martin, Raytheon, and Northrop Grumman , plaintif fs cite disclosures in three patents ( i.e., the ’802 patent
, the

’ 330 patent, and the ’284 patent , respectively ) as infringing claims 16, 17, 20, and 22 of the ’901 patent. See ECF 45

- 10 at 7, 59, 89. F or the claim limitation of “means for adjusting the rate at which said co o ling fluid passes through said interior passageway so that substantially no cooling liquid is vaporized within said interior passageway

, ” plaintiffs further cite “page 174 of Exhibit A” for Lockheed Martin and Northrop Grumman

, and a research article authored by Raytheon personnel. See ECF 45

- 10 at 9 , 91 (chart for claim 20) ; id. at 60 (chart for claim 16)

. Plaintiff s did not produce “Exhibit A” with their August 8, 2022 preliminary infringement contentions or their October 14, 2022 supplemental contentions;

nor is the referenced document in the record before the Court

. 11

Pl aintiffs fail to identify any specific real

- world product s or instrument s by name, model number

, or other unique identifying characteristic

. V ague and
g eneric product description s and references to patent literature do not satisfy Patent Rule 4’ s required identification of a “product . . . that allegedly infringes the identified claim

. ” See PR

- CFC 4(b) ; s e e , e.g. , Demodulation, Inc. v. United States , 126 Fed. Cl. 499, 510 (2016) (finding insufficient “vague and overly broad device descriptions” and “conjectural and hypothetical” products described in

10 Plaintiffs’ cover pleading lists “a Northrop Grumman device referred to as IC ED 3D Integrated Fluid Manifold.” ECF 45

- 10 at 3

. Plaintiffs ’ infringement contentions do not include any additional identifying information for the referenced device or explain how it allegedly infringes the asserted patents

. As to Lockheed Martin and Raytheon, plaintiffs’ cover pleading refers to “unnamed device(s)

. ” See id.

11 The “Exhibit A” quote describes certain intended or desired performance, as may appear in documentation relating to the underlying procurement or resea rch initiative. To the extent plaintiffs attempt to rely on the procurement initiative as allegedly infringing products, such citation does not suffice for the required product identification under the Patent Rules. As this Court has observed:

“ A procure ment initiative is a not a product or a method. At most, it is an ambition.” Golden I

, 2021 WL 3238860, at *5 (finding infringement contentions insufficient where plaintiff cited government procurement initiative as meeting claim limitations).9 literature ) ; id. at 507 (“In the absence of any identification of an actual accused device, Pla intiff’s mere references to patents held by the Government do not amount to identification of an accused device.”)

. Plaintiffs’ contentions for claim 20 (and its dependent claim 22) directed at Lockheed Martin and Northrop Grumman also fail
to establish h ow the instrument alities implicated in “Exhibit A” relate to the cited patent literature , or how the exhibit relates to actual products developed and supplied to the government through the ICECool program. P laintiffs’ contentions regarding asserted claims 16 and 17 directed at Raytheon with respect to the cited research article are similarly deficient.

2. T he ’9 92 P atent

For the ’992 patent , plaintiffs assert the accused product s include “ an IBM device referred to as an embedded two

- phase liquid

- cooled microprocessor (ECM),” citing the description of a proposed cooling solution in two articles published by IBM research personnel

. 12 ECF 45

- 10 at 3 , 27

– 57

. The infringement contentions do not include additional identifying information indicating whether the literature description relates to a real

- world product or how t hat product is physically configured. Additionally, e ven if the referenced device exist s, it remains unclea r whether it was designed for and delivered to the United States under the ICECool
program. 13

C. C laim L imitation s

The government contends plaintiffs also fail to identify how each claim limitation is found in the accused devices as required under P R

- CFC 4(c). The Court agrees. S etting aside plaintiffs’ deficient identification of accused devices

, and assuming arguendo that plaintiffs’ claim chart citations relate to actual products, plaintiffs’ cited description s nonetheless fail to state where and how

any accused device incorporates each claim limitation.

12 As noted supra , the cover pleading of plaintiffs’ infringement contentions list s four asserted claims of the ’992 patent (i.e., claims 1, 2, 21 and 22 ) , but the claim charts only include claims 1 and 2.

13 To be clear, b oth articles reference the ICECool program in the ir respective acknowledgement s

. See ECF 45

- 10 at 40 (authors extend ing thanks to IBM personnel “involved in the ICECool programs”); id. at 50 (noting research “was supported in part” by the ICECool program and disclaim ing that the article represent s IBM authors’ opinions only). While such mention may aid in satisfying the “plausibility” pleading standard, it does not s atisfy the specificity required under PR

- CFC 4. See, e.g.

, Iris Corp. Berhad v. United States , No. 15

- 175C, 2019 WL 2317143, at *3 (Fed. Cl. May 8, 2019) (“When arguing that the court should deny the government ’ s motion to dismiss, plaintiff was correct that it could plead infringement broadly and nail down its theories in its disclosures. Now is the ti me to be specific so that the parties and the court can focus their attention on the pertinent accusations during claim construction.”)

.10 For example , e ach of the four asserted claim s of the ’901 patent requires, inter alia, a “means for adjusting the rate at which said cooling fluid passes th rough said interior passageway so that substantially no cooling fluid is vaporized within said interior passageway .” See ’901 patent, col. 14: 17

– 20, 48

– 51. For this limitation, plaintiffs’ claim charts state:

Lockheed Martin : “ Because the ’802 patent discusses varying the pressure of fluid, it inherently includes a means for adjusting the desired flow rate. See, e.g., Col. 4: 53

- 55 (“Depending on the desired flow rate, fluid supplied to the jets 40 may be pressurized to approximately 30 to 100 pounds per square inch (PSI).”). ” 

### See ECF 45

- 10 at 8.

Raytheon : “ Col. 6:31

- 35 ( ‘ Partitions 50 (FIG. 1A) between micro

- channels 26 are strategically located in proximity to the HEMT 20 being cooled to maximize conjugate convection/conduction) heat transfer performance. ’ ). See also Ex. 1 ( ‘ Performance is optimised [sic] by placing the channels next
to the hot spots of the GaN

- on

- diamond MMIC, and using a silicon m anifold layer to regulate the direction, flow rate, and pressure of the coolant. ’ )

. ” See id . at 60

– 61 (citing disclosure in the ’330 patent and a research publication by Raytheon personnel).

Northrop Grumman : “Pump 92 inherently includes a means for adjus ting the flow rate.” See id. at 90 (citing the ’284 patent).

Lockheed Martin & Northrop Grumman (identical entry) : “ As stated on

page 174 of Exhibit A, ‘in the interest of achieving near

- term system insertions of ICECool Apps technology, proposers will apply embedded microfluidic thermal management techniques to existing liquid

- cooled systems, in which the external thermal management har dware (pumps, valves, heat exchangers, etc.) can be harnessed in an ICECool

- driven design [.] ’” See i d. at 9 (Lockheed Martin); id. at 91 (Northrop Grumman).

None of the cited descriptions disclose the claimed means for adjusting the cooling fluid flow rate. Instead, they either fail to identify any corresponding structure

or , at most , reference a general structural component ( e.g., “[p]artitions,” “silicon manifold layer,” “[p]ump”) without addressing the specific restrictions built into the claim limitation ( i.e., “ adjusting the rate at which said cooling fluid passes through said interior passageway so that substantially no cooling fluid is vaporized within said interior p assageway .” ). R eference s to components merely “ capable of operating in a manner that infringes ” do not suffice to identify which component meets the claim limitation and functions as claimed. See Golden II , 156 Fed. Cl. at 630 ;

see also e.g. , Telemac Cellular Corp. v. Topp Telecom, Inc. , 247 F.3d 1316, 1330 (Fed. Cir. 2001) (“[T]hat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.”).11 Likewise, plaint iffs’ claim charts for asserted claim 2 of the ’992 patent suffer the same flaw. Claim 2 recites

, in part

, “means for controlling the flow rate of said cooling fluid so that at least some of the fluid flowing through said other passageways vaporizes prior to contact with the surface of said component to cool the component through both conductive and evaporative cooling.” See ’992 patent, col. 10: 32

– 37. In their claims charts, plaintiffs solely reference a “flow meter in Fig. 11

, ” which is a “ S chematic of the test system” in one of two cited article s, without addressing whether or how th is “flow meter” functions in the same manner as claimed. See ECF 45

- 10 at 28, 36.

For the foregoing reasons , p laintiffs’ supplemental infringement contentions fail to articulate a ny infringement theory with the specificity necessary to provide reasonable notice to the defendant . As such, they must be stricken

. See Golden I

, 2021 WL 3238860, at *3 (“[D]eficient infringement contentions fail to provide defendant with notice and thereby prejudice defendant’s ability to proceed with its own invalidity and claim construction disclosures.”)

.

III. Leave to Amend

Urging the Court to strike plaintiffs’ infringement contentions, as supplemented, the government a rgue s no good cause exists warranting further leave to amend. The Court agrees. Plaintiffs have had ample notice of the deficiencies

– includ ing the Court’s show cause order

– and several opportunities
to provide compliant contentions

. Plaintiffs’ lack of due diligence

, despite their repeated commitments to remedy the deficiencies

, negates a find ing of good cause and warrants dismissal under RCFC 41(b) for failure to prosecute.

To amend infringement contentions once served

, a plaintiff m ust seek leave of the Court upon a showing of good cause. See PR

- CFC 24. “Establishing good

cause requires a showing that the moving party acted with diligence and that the amendment would not prejudice the non

- moving party.” ACME Worldwide Enters

. , Inc. v. United States , No. 17

- 843, 2022 WL 6853387, at *2 (Fed. Cl. Oct. 11, 2022);

see also O2 Micro , 4 67 F.3d at 1366 (discussing local patent rule requiring good

cause for amending contentions, noting party seeking to amend must demonstrate due diligence). If the Court finds the moving party did not act diligently, the Court need not address the prejudic e factor. See, e.g., ACME , 2022 WL 6853387, at *2.

P laintiffs assert their “infringement contentions in their initial or current form are sufficient

, ” and , in one sentence
, generally request an additional opportunity to supplement if the Court finds otherwise

. See ECF 49 at 3 , 6

. P laintiffs fault the government for “incorrect[ly]

. . . portray [ ing them ] as having conceded that their initial infringement contentions were deficient [

. ] ” Id. at 2. Plaintiffs’ representation s to defendant and the Court belies this assertion

.12 I n requesting additional time to supplement their initial contentions, plaintiffs agreed “ to address the issues raised in the Government’s [August 23, 2022] correspondence.” ECF 4 1 at 3; see also ECF 45

- 8 (parties’ exchange regarding government

- raised deficiencies and joint motion to modify case schedule). In subsequently seeking additional time

– in a n untimely motion filed 1 2 days after the already

- extended September 30, 2022 deadline

– plaintiffs represented to the Court:

Plaintiffs will fully and completely address the deficiencies in Plaintiffs’ infringing contentions that were previously raised in the Government’s August 23, 2022 correspondence including but not limited to the identification of each and every product, process, or method that allegedly infringes each asserted claim and how the accused products, processes, or methods infringe.

ECF 43 at 3 (emphasis added)

. As memorialized in plaintiff s’ motion, t he government consented to the requested extension on the condition that plaintiffs would “fully and completely” address the identified deficiencies. See i d. at 4

. Plaintiffs’ commitment did not materialize . A s discussed supra , plaintiffs’ contentions, as supplemen ted, include the same deficiencie s the government identified since at least August 23, 2022.

Moreov e r, i n the ir five

- page response to the government’s motion to strike, plaintiffs summarily assert that the government’s productions were limited or “included irrelevant information.” ECF 49 at 4

. The Court finds th is post hoc excuse unconvincing. Having had the government’s initial and follow

- up production since July and August 2022, respectively, plaintiffs had ample opportunity to request additional discovery and, if unsuccessful, seek court intervention through

a motion to compel . They did neither. Instead, plaintiffs first criticized the government’s document product ion on October 17, 2022

– over two weeks after missing the ( previously extended ) September 30 , 2022 deadline

, and three days after serving deficient supplemental contentions. See ECF 45

- 1 at 2; ECF 45

- 6 at 2; ECF 50

- 1 at 2

– 3.

Plaintiffs ’ response did not identify specific issue s with the government’s productions that purportedly hindered plaintiffs’ preparation of their infringement contentions ; n or did the y detail any effort to pursue additional discovery , the

scope of contemplated discovery, or how the discovery would yield information critical to their contentions

. See generally ECF 45

- 1; s ee also ECF 50

- 2 at 2

– 3 (government’s November 3, 2022 renewed request for identification of specific production deficiencies and to meet and confer). Plaintiffs’ general reference to “upcoming third

- party discovery” i s similarly unconvincing. ECF 49 at 6.13 Tellingly , in contrast to the government ’s itemized deficiencies for each defense contractor, plaintiffs ’ response only address ed the claim charts for Lockheed Martin. The two

- page argument section

– aside from reproducing the text of Patent Rule 4 and an unidentified and unsourced product image discussed infra

– provides little substantive response beyond a blanket asse rtion that Patent Rule 4’s requirements are satisfied. 14 With regard to IBM, Raytheon, and Northrop Grumman, plaintiffs’ combined response consists of the following statement: “The other three claim charts for IBM, Raytheon, and Northrup [sic] Grumman

are similarly sufficiently supported.” ECF 49 at 6.

Plaintiffs did not respond to or otherwise contest the government’s August 23, 2022 representation

– documented in the ICECool program final reports produced on July 22, 2022

– that [XXXXX] did n ot deliver any protypes to the government and

, therefore

, no infringing products could be identified. See, e.g.

, ECF 45

- 7 at 6; [XXXXX] (“[T]he final technical reports for both [XXXXX] make clear that no prototype or device that could plausibly be accused of infringement was

ever delivered to the Government in connection with the ICECool Applications Program.”). For IBM, plaintiffs continued to disregard, among other deficiencies the government noted, the two uncharted claims listed in the cover pleading.

On December 15, 2022, after reviewing the parties’ filings, the Court issued

an Order to Show Cause directing plaintiffs to clarify and specifically identify accused real

- world, non

- theoretical products

– granting plai ntiffs an additional 45 days to cure the deficiencies in their infringement contentions. See ECF 52 at 2

– 3. Plaintiffs responded by repackaging the deficient product identification included in their initial contentions, citing the same product images, an d again relying on research and patent literature. 15 Compare ECF 45

- 10 with ECF 54. R egarding their position that the accused devices were developed for and supplied to the United States through the ICECool program , plaintiffs cite the same article describing research initiatives (for Lockheed Martin and Raytheon), a photo of

14 A ddressing the specific product identification required under PR

- CFC 4(b), plaintiffs point to

a claimed product imag e asserting : “a picture conveys more meaning than a mere description.” ECF 49 at 5. Whatever meaning a n unidentified and unsourced picture m ight convey, it does
not translate to compliance with PR

- CFC 4(b) or provide the requisite notice of infringement

.

15 For example , regarding the identification of accused ICECool products purportedly developed by Lockheed Martin, plaintiffs’ response cite s : the same unidentified and unsourced product image noted above ; “[a] circuit die 31” described in t he ’80 2 patent ; and a quote from a n April 24, 2018 research article generally describing initiatives to develop electronics cooling solutions

. See ECF 54
at 1

– 2

. P laintiffs d o not elaborate on the “tested amplifiers” noted in the article

, see ECF 54

- 2 at 9,

or explain how they relate to the unsourced image or patent literature citations . N or d o plaintiffs address the article’s ambivalent forecast that integration of the technology was possible “ within a

year ” or that the technology might undergo further development “within a few years.” See id . at 10. As noted supra , the ’901 patent and ’992 patents expired 20 months after the cited article was published.14 technology showcase d at a conference (for IBM), and several newly cited research articles (for Northrop Grumman). 16 ECF 54 at 5

– 7.

Like the literature citations inclu ded in plaintiffs’ infringement contentions, nothing in the record supports finding s that the solutions referenced in the cited patents and articles correspond to real

- world devices

, represent the same instrument s depicted in the cite d images, or were developed for and supplied to the government through the ICECool program. P utting aside the lack of record evidence corroborating the quoted statements in the cited articles

, neither general descriptions of research purportedly conducted by the co ntractors or aspirational descriptions of proposed research satisf y plaintiffs ’ burden under Patent Rule 4

.
Further, a s noted supra , p laintiffs identified seven other defense contractors in the ir amended complaint but did not mention any of them in the ir infringement contentions , as supplemented

. Plaintiffs have not identified any accused devices these contract or s purportedly developed through their involvement in the ICECool
program or any claim (s) each such device allegedly infringed, let alone ch art such devices against the asserted claims. Nor did plaintiffs , in response to the show cause order

, attempt to substantiate their infringement allegations with respect to any of the seven defense contractors

. Having failed to identify any accused prod ucts and set forth a viable infringement theory despite receiv ing relevant document production in July and August 2022 , plaintiffs have abandoned these claims

. 17 See, e.g. , Finjan, Inc. v. Proofpoint, Inc. , No. 13

- 5808, 2015 WL 1517920, at *5 (N.D. Cal. Apr. 2, 2015) (infringement allegations limited to products expressly identified in infringement contentions).

At bottom, p laintiffs’ repeated failure to comply with the Patent Rules

, despite notice of specific deficiencies and multiple opportunities to remedy and adequately articulate an infringement theory

, compels the conclusion that it cannot be done. The Court finds no good cause exists warranting further leave to amend. This action must therefore be dismissed

. See Golden II , 156 Fed. Cl. at 627, 632 (discussing functions of Patent Rule 4’s specificity requirements, noting : “ I t is .

. .

16 For IBM, the cited image from a GOMACTech conferen ce

– reproduced from a restricted report subject to the P rotective O rder entered in this case

– prompted defendant’s motion to seal, which the Court addressed during oral argument on March 14, 2023 . Beyond the cited image

– and illustrative of plaintiffs’ respo nse to the show cause order in general

– plaintiffs simply assert: “GOMACTech was established primarily to review developments in microcircuit applications for government systems.” ECF 54 at 6. The response did not explain the relevance of the cited image

or how the referenced [XXXXX] connects to the unidentified image or literature citations in the infringement contentions or any allegedly infringing products.

17 T he record before the Court indicates that only 2 of the 7 identified contractors were involved in the ICECool A pplications phase and neither [XXXXX] produced a prototype or other system to the government at the conclusion of the program. See ECF 45

- 14 (DARPA Final Report) at 3, 14

– 18
, 22

– 23

.15 not a triumph of form over function to dismiss the case for plaintiff ’ s repeated failure to [serve pro per infringement contentions]

. ”); see, e.g. , Xiaohua Huang v. MediaTek USA, Inc. , 815 F. App’x 521, 525 (Fed. Cir. 2020) (affirming district court’s dismissal due to plaintiffs’ repeated failure to serve proper infringement contentions).

CONCLUSION

For the foregoing reasons ,
(1) The Clerk of Court is directed to LIFT the Stay (ECF 47) ;
(2) Plaintiff James J. Hildebrandt is TERMINATED for lack of standing;

(3) The Clerk of Court is directed to TERMINATE p laintiff James J. Hildebrandt from this matter;

(4) Defendant’s Motion to Strike Plaintiff s ’ Preliminary Infringement Contentions (ECF 45) is GRANTED ; and

(5) The Clerk of Court is directed to DISMISS this action for failure to prosecute in accordance with R CFC 41(b) and ENTER Judgment accordingly. Costs to defendant.

It is so ORDERED

.

__________ _

________ Armando O. Bonilla Judge