A Defendant’s Understanding of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted:  “Any fool can know.  The point is to understand.”  That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung.  GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories.

The litigation involves alleged direct and indirect infringement of patents related to augmented reality technology, and potentially implicates a massive cache of Samsung smart products.  Early in the case, Samsung sought to strike GeoVector’s Patent Local Rule infringement contentions describing direct infringement for two primary reasons:  (1) the contentions did not specifically identify all of the accused products, and instead used representative examples; and (2) the contentions mixed and matched different products to various claims and limitations.  GeoVector responded by arguing that Samsung already understood its infringement contentions based on informal correspondence and discussions amongst counsel, thus obviating the need to fully comply with Patent Local Rule 3-1(c).  This argument failed.

Instead, Judge Orrick explained that the local rules require specific infringement contentions so that defendants can properly respond to the claims, but also so the Court can make a principled decision on whether discovery will proceed.  Thus, even if Samsung truly did understand the plaintiff’s direct infringement contentions, GeoVector still was required to articulate its contentions in the proper format contemplated by the rules.  Yet, GeoVector failed to compare even a single accused product to its patents on a “claim by claim, element by element basis” – as required by Patent Local Rule 3-1(c) – instead mixing and matching elements of various Samsung products and third-party applications, and sometimes failing to identify any particular product at all.  Judge Orrick noted that infringement cannot be shown by a “muddled hash of elements from different products.”

As to its indirect infringement contentions, GeoVector asserted that because Samsung provides an augmented reality platform for application developers, “it only stands to reason that apps on [Samsung’s] devices enable indirect infringement.”  Judge Orrick found that this speculative and conclusory infringement contention did not comply with Patent Local Rule 3-1(d) because it failed to specifically describe Samsung’s acts that contributed to or induced direct infringement.

GeoVector’s contention that each claim limitation is present literally or “alternatively” under the doctrine of equivalents also was insufficient to satisfy Patent Local Rule 3-1(e).  The Court explained that a patentee cannot merely add boilerplate language asserting the doctrine of equivalents as an alternate theory.  While GeoVector did offer to supplement its doctrine of equivalents contentions with information about each Samsung smart device (albeit only after Samsung provided such information), Judge Orrick concluded that a patentee may not base a doctrine of equivalents contention solely on information that may be produced during discovery.  Thus, the Court struck GeoVector’s doctrine of equivalents claims without leave to amend—although GeoVector was given the option to seek such leave after a showing of good cause.

Although GeoVector’s literal infringement contentions were deemed clearly deficient, the Court declined to strike them with prejudice, finding that GeoVector might be able to remedy many of the deficiencies via amendment.  However, if GeoVector later seeks to accuse products not explicitly listed in its initial infringement contentions or to reassert its doctrine of equivalents claims, it will be permitted to do so only after seeking leave to amend and showing good cause under Patent Local Rule 3-6.  Perhaps the ruling thus validates another famous aphorism:  “Obscurity is the realm of error.”