United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE.
patent case, the Court will now consider Intel's Motion
to Strike a Portion of Alacritech's Patent Rule 3-1
Infringement Contentions [Dkt. # 259]. After considering the
parties' briefing and arguments of counsel, the Court
will GRANT the motion IN PART.
technology at issue concerns transferring and storing data
within a network. Compl. ¶ 16. According to Alacritech,
traditional methodologies wasted too much processing power
performing brute-force processes for transfer and storage.
Id. To address that waste, Alacritech developed the
use of dedicated network interface controllers (NICs) to more
efficiently handle the processing. Id. By offloading
processing tasks to a dedicated NIC implementing the
methodologies taught by the asserted patents, data transfer
between devices is accelerated and the host CPUs retain more
processing power to perform other more substantive tasks.
2016, Alacritech sued Dell in Case No. 2:16-CV-00695, which
was later consolidated with this action. Intel moved to
intervene because many of Alacritech's infringement
claims against Dell targeted networking technology supplied
by Intel. Intel's Mot. to Intervene [Dkt. # 71] at 4. In
fact, Alacritech specifically accuses certain Dell products
of infringement based on their use of Intel NICs.
December 2016, Alacritech served Intel with its original P.R.
3-1 Infringement Contentions. Intel's Motion [Dkt. # 259]
at 1. Those contentions identified at least 90 products
purporting to infringe 117 claims across 7 patents.
Id. Alacritech, however, only charted a single Intel
product for each patent-the 82599 controller. Id.
the other 89 products, Alacritech alleged in footnotes they
meet the same limitations. Id. At the time, Intel
notified Alacritech this was not sufficient disclosure under
the local patent rules, but Alacritech responded that
charting a single product was enough. Id. (citing
Letter from Counsel for Alacritech to Counsel for Intel (Feb.
28, 2017) [Dkt. # 259-2] at 7).
later provided Alacritech with interrogatory responses that
detailed a number of differences between the 82599 controller
and the uncharted products. Id. (citing Intel's
Supp. Interrog. Resps. [Dkt. # 259-3]). Based on those
responses, Alacritech removed some instrumentalities from the
contentions and served amended contentions. Id. at
2. But according to Intel, the amended contentions are also
insufficient. Id. at 1.
address those insufficiencies, Intel asks the Court to (1)
strike the portions of Alacritech's amended contentions
that refer to any products other than the products for which
Alacritech has provided a claim chart; and (2) limit
Alacritech's contentions to the only operating system
Alacritech identified in its charts. Id. at 2-3.
Patent Rules demonstrate high expectations as to
plaintiffs' preparedness before bringing suit, requiring
plaintiffs to disclose their preliminary infringement
contentions before discovery has even begun.” Am.
Video Graphics, L.P. v. Elec. Arts, Inc., 359 F.Supp.2d
558, 560 (E.D. Tex. 2005). “Plaintiffs are expected to
rigorously analyze all publicly available information before
bringing suit and must explain with great detail their
theories of infringement.” Connectel, LLC v. Cisco
Sys., Inc., 391 F.Supp.2d 526, 528 (E.D. Tex. 2005).
Rule 3-1 governs the initial explanation of a plaintiff's
infringement theories. Under that rule, the plaintiff must
specifically identify each accused product, process, or other
instrumentality by name or model number. P.R. 3-1(b). The
plaintiff must also provide a chart showing specifically
where each element of each asserted claim is found within
each accused instrumentality. P.R. 3-1(c). But
“[i]nfringement contentions need not disclose
‘specific evidence nor do they require a plaintiff to
prove its infringement case.'” Roy-G-BIV Corp.
v. ABB Ltd., 63 F.Supp.3d 690, 698 (E.D. Tex. 2014)
(quoting EON Corp. IP Holdings, LLC v. Sensus USA,
Inc., No. 6:09-cv-116, 2010 WL 346218, at *2 (E.D. Tex.
Jan. 21, 2010)).
courts have excused plaintiffs from charting each
instrumentality if the charts would be identical or if one
instrumentality is sufficiently representative of others.
See, e.g., UltimatePointer, LLC v.
Nintendo Co., Ltd., , No. 6:11-CV-496, [Dkt. # 269] at 5
(E.D. Tex. May 28, 2013) (contemplating a plaintiff could
designate and chart only an exemplar accused product if the
plaintiff also provided an explanation of the technical and
functional identity of the products represented); see
also, e.g., Infineon Tech AG v. Volterra Semiconductor,
No. C-11-6239, 2013 WL 5366131, at *4 (N.D. Cal. July 31,
2013) (holding a claim chart for a single product was
adequately representative of all accused products when the
plaintiff provided nearly 50 pages of analysis supporting its
position); Implicit Networks Inc. v. Hewlett-Packard
Co., No. 10-CV-3746 SI, 2011 WL 3954809 (N.D. Cal. Sept.
7, 2011) (approving use of a single claim chart to represent
120 products where patentee did not reverse engineer any
products and instead relied primarily on citations to manuals
and other documentation to explain characteristics of other
accused products); Renesas Tech. Corp. v. Nanya Tech.
Corp., No. C03-05709JFHRL, 2004 WL 2600466, at *4 (N.D.
Cal. Nov. 10, 2004) (finding a patentee presented sufficient
evidence to accuse 160 products in a single claim chart where
patentee reverse engineered only 3 products and provided
declarations in support of contentions that all products
infringe). But even then, the contentions must be
“reasonably precise and detailed to provide a defendant
with adequate notice of the plaintiff's theories of
infringement.” Roy-G-BIV Corp., 63 F.Supp.3d
at 698 (internal citations omitted).
infringement contentions is an extreme decision comparable to
determining ‘whether evidence should be excluded for
discovery violations.'” Eolas Tech. Inc. v.
Amazon.com, Inc., 6:15-cv-1038, 2016 WL 7666160, at *1
(E.D. Tex. Dec. 5, 2016) (quoting Computer Acceleration
Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 822 (E.D.
Tex. 2007)). ...