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Blue Spike v. Adobe: Court Grants Motion to Strike Infringement Contentions Where Contentions Failed to Crystalize Theory of the Case and Used an Open-Ended Priority Date

In this patent infringement action between defendant Adobe Systems, Inc. (“Adobe”) and plaintiff Blue Spike, LLC (“Blue Spike”), Adobe filed a motion to strike the infringement contentions (“ICs”) filed by Blue Spike. In the motion, Adobe contended that Blue Spike’s ICs fail to comply with the Patent Local Rules for the following reasons: (1) the ICs fail to provide a claim chart for each of the accused instrumentalities and instead group together all four products in violation of Patent Local Rule 3-1(c); (2) the claim chart cites to exhibits that discuss Auditude’s (a company acquired by Adobe) products generally–both fingerprinting and ad insertion products–without identifying the particular product to which each exhibit refers, rendering the documentary support insufficient under Patent Local Rule 3-2; (3) the ICs chiefly rely on online articles published by third parties that do not specifically identify the accused products and are therefore insufficient under Patent Local Rule 3-2; and (4) the ICs do not properly set forth allegations of infringement under the doctrine of equivalents in violation of Patent Local Rule 3-1(e); and (5) fail to allege indirect infringement, willful infringement, or assert a priority date in accordance with the Patent Local Rules.

By way of background, as explained by the district court, Blue Spike claimed infringement of five of its U.S. patents: Nos. 7,346,472 (the “‘472 patent”); 7,660,700 (the “‘700 patent”); 7,949,494 (the “‘494 patent”); 8,214,175 (the “‘175 patent”); and 8,712,728 (the “‘728 patent,” and together, the “Patents-in-Suit”). The Patents-in-Suit are all titled “Method and Device for Monitoring and Analyzing Signals”; they share a common specification, though the claims differ. The products at issue in this case involve ad insertion software technology–i.e., a “video advertising platform” or “ad insertion technology”–for streamed online video content that allows the owner of the content to insert advertisements about the original source of the content, where to buy it legally, and other related information whenever and wherever the content is streamed on the internet in order to monetize the streaming.

After reviewing the Patent Local Rules and case law interpreting the Rules, the court then found that Blue Spike’s ICs, even as amended, did not comply. “Here, as written, the claim chart in the AICs does not sufficiently “‘crystallize[s] [Plaintiff’s] theories of the case'” as the Patent Local Rules require. LG Elecs., Inc. v. Q-Lity Comp., Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002). Although Blue Spike has superficially addressed Adobe’s primary challenge to the initial claim chart by naming only one accused instrumentality, “Adobe’s Auditude Video Advertising Platform,” and eliminating the others (see, e.g., Dkt. No. 53-2 at 2-3), this amendment does little else to clarify the contentions.”

The court also found that the doctrine of equivalents was not sufficiently specified. “Here, Blue Spike’s AICs repeat the same boilerplate language for each of its contentions, noting in the alternative that “this element infringes directly or under the doctrine of equivalents.” (See, e.g., Dkt. No. 53-2 at 1-4.) Although, to be sure, Blue Spike has asserted separately that the doctrine applies to every single limitation, it provides no further description or explanation as to why it applies. Absent an explanation, such boilerplate language is not enough. See Creagri, 2012 WL 5389775, at *6.”

The court also rejected Blue Spike’s attempt to claim an open-ended priority date by using “not later than” language. “The same result follows with respect to Blue Spike’s assertion of an open-ended priority date in the AICs. The Local Rules of the Court require a patentee to provide “[f]or any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled.” Patent L.R. 3-1(f). For any earlier priority date identified pursuant to that rule, the patentee must produce documents “evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the . . . priority date identified[.]” Patent L.R. 3-2(b). This rule requires a patentee to assert a par asserts that “each asserted claim of the patents-in-suit [is] entitled to a priority date no later than September 7, 2000.” (Dkt. No. 49-1 at 4 (emphasis added).) Adobe’s concern is that Blue Spike may use the “no later than” language to assert a much earlier priority date further down the line in this litigation–as it appears Blue Spike has done in the related Texas cases. (See Dkt. No. 51 at 20-21 & n.5.) Blue Spike does not address this argument in its opposition, nor did it meaningfully respond to it during oral argument. Accordingly, the language “no later than” shall be stricken from the AICs without leave to amend. See O2 Micro Int’l, 467 F.3d at 1365-66; see also Ardente, 2010 WL 546485, at *6. The asserted priority date is September 7, 2000.”

Accordingly, the court struck the ICs but allowed a narrow amendment solely to further specify and sufficiently support its claims of direct infringement by Adobe Auditude.

Blue Spike, LLC v. Adobe Systems, Inc., Case No. 14-cv-01647-YGR (JSC) (N.D. Cal. Jan. 23, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP.