A patent plaintiff's infringement contentions were inadequate in multiple respects in Pagemelding, Inc. v. Espn, Inc., No. C 11-06263 WHA (N.D. Cal. Jan. 4, 2013). Although the court denied the defendant's motion for the sanction of dismissal, the court did order the plaintiff to supplement its infringement contentions in certain respects, and further held that in other respects the plaintiffs would be limited to arguing for infringement of specific items identified in their infringement contentions. (This case was the subject of earlier posts on this blog when the court first granted, and then, upon reconsideration in light of the Federal Circuit's In re Bill of Lading decision, denied, the defendant's Rule 12(b)(6) motion to dismiss for failure to state a claim on which relief could be granted.)
Like many jurisdictions, the Northern District of California, in its Local Patent Rule 3-1(c), requires a patent plaintiff to provide an infringement claim chart mapping asserted claim elements to structures or acts in an accused instrumentality. Here, after the plaintiff had served and then amended infringement contentions under Local Rule 3-1(c), the plaintiff contended that the defendant's "amended infringement contentions: (i) fail to identify the specific web pages it accuses of infringement; (ii) improperly rely on activity by one product to allege infringement against both products; and (iii) fail to identify the software and hardware associated with the alleged infringement."
The court began its analysis by noting that the plaintiff had previously been warned that it would not be allowed to amend its infringement contentions a second time. However, it was unclear to what extent deficiencies in the plaintiff's infringement contentions could be cured with publicly available information. Further, "the adequacy of certain disclosures may hinge on claim construction." The court also noted "that less drastic sanctions than dismissal remain practicable." Therefore, the court ordered in some instances that the plaintiff "shall be strictly limited to the specific disclosures contained in its amended infringement contentions," and "[i]n other instances. . . construe[d] ESPN’s request as a motion to compel specific disclosures." Thus, despite its earlier admonition to the plaintiff, the court did allow the plaintiff to supplement its infringement contentions in a few cases.
The plaintiff's infringement contentions stated that "[a]ll known instances of infringement via the WatchESPN webpages . . . are pages within the domain http://espn.go.com/watchespn," but left open the possibility of other infringing web pages. The court found the plaintiff's "use of example web pages and ambiguous wording in its infringement contentions" to be "problematic," even if not warranting dismissal. However, the court agreed that the plaintiff could not exhaustively identify infringing web pages because of the dynamic nature of the defendant's web site. Therefore, the court held that the plaintiff's "infringement contentions shall be limited to pages within the domain "espn.go.com/watchespn.'"
The court also held that the plaintiff must identify specific accused hardware to the extent such information was publicly available. Therefore, the court ordered that the plaintiff supplement its infringement contentions to identify "[f]or any [accused] servers or groups of servers . . . (i) at least one associated IP address; (ii) the function that the server performs; (iii) the owner of the domains associated with the server; and, (iv) what PageMelding contends is the role of that server — if any — in the allegedly infringing activity."
Furthermore, the court addressed the defendant's complaint that the plaintiff had relied on "generated code" rather than actual code transmitted by the defendant's web site. The court ordered that the plaintiff would be limited to relying on that "generated" code and would be "Precluded from relying on other publicly-available code to prove infringement." (Emphasis in original.) The court also ordered that, in one case where the plaintiff had failed to identify any accused software, it supplement its infringement contentions.