In this patent infringement action, the plaintiff sued Sling Media over patents that relate to technology for distributed computer devices that communicate in a networked environment in a secure and efficient manner. The plaintiff served preliminary infringement contentions and Sling Media subsequently moved to strike those contentions.
Sling Media asserted that the contentions were deficient in five respects: “(1) Plaintiff has not set forth its contentions ‘separately for each opposing party’ as required by Local Rule 3-1; (2) Plaintiff has not disclosed each asserted subsection of 35 U.S.C. 271 for each claim that is allegedly infringed as required by Local Rule 3-1(a); (3) Plaintiff failed to identify accused instrumentalities ‘separately for each asserted claim’ and ‘as specifically as possible’ by ‘name or model number, if known’ as required by Local Rule 3-1(b); (4) Plaintiff failed to provide a claim chart ‘identifying specifically where each limitations of each asserted claim is found within each Accused Instrumentality’ as required by Local Rule 3-1(c); and (5) Plaintiff failed to identify and describe ‘the acts of the allegedly indirect infringer’ that allegedly render it liable for infringement of ‘each claim which is alleged to have been indirectly infringed’ as required by Local Rule 3-1(d).”
With respect to the first deficiency (separate infringement contentions for each party), the plaintiff asserted that the accused instrumentalities were the same and therefore the charts would be substantially identical. The district court disagreed: “Defendants are not similarly situated. Sling Media, Inc. makes and sells ‘Slingbox’ products. EchoStar Technologies sells Sling-Loaded set-top boxes and Sling adapters, but does not make or sell Slingbox products. DISH Network L.L.C. is a satellite television provider that purchases set-top boxes and Sling adapters from EchoStar Technologies and distributes them to DISH customers. EchoStar Corporation is a holding company that does not itself engage in any of these activities. . . . These differences matter. For example, Defendants argue that Plaintiff cannot in good faith accuse Sling Media of direct infringement with respect to set-top boxes because Sling Media does not make, use of offer for sale, sell, or import such products. . . Therefore, separate charts are required under Local Rule 3-1.”
On the second deficiency (identifying for each claim the applicable statutory subsection of section 271), the district court also found that the contentions were not sufficient because the defendants were differently situated. Accordingly, the district court found that “Plaintiff must identify as to each claim, the applicable statutory subsection of 271 that it asserts against each Defendant. In particular, Plaintiff must indicate whether the infringement is direct, and if indirect, whether the infringement was induced or was contributory.”
Turning to the third deficiency (identifying each accused instrumentality), the district court also found that these not sufficient because the plaintiff had not addressed each product separately. Plaintiff’s general list of products by category was not sufficient and the plaintiff was required to provide a list of the accused products.
With respect to the fourth deficiency (a chart identifying specifically where each limitation of each asserted claim is found), the district court found that plaintiff’s claim charts were inadequate because they did not establish that the products charted were representative of all of the accused products. Accordingly, the plaintiff was required to amend the infringement contentions on this basis as well.
Finally, on the fifth deficiency (claims of indirect infringement must identify direct infringement), Sling Media asserted that plaintiff’s blanket assertion accusing all defendants of inducing or contributing to third party infringement was inadequate because no third party was identified that directly infringes. Plaintiff asserted that it had alleged that the relevant third parties are users of defendants’ products and had explained how the activities amount to contributory and induced infringement. On this issues, the district court found that “Plaintiff has identified the accused products, and will do so with greater detail in the amended PICs, and has contended that Defendants infringe Plaintiff’s patents through inducement or contributory infringement. When Plaintiff amends its PICs to separate out each Defendant, Plaintiff shall also include additional information regarding indirect infringement as required by Local Rule 3-1(d), although Plaintiff need not identify specific third parties that directly infringed.”
Accordingly, the district court ordered the plaintiff to amend its infringement contentions to correct these deficiencies.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.