Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 1 of 28 PageID 820
`
` UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`
`
`
`
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`Plaintiff,
`
` No. 12-cv-02824-JPM-tmp
`
`v.
`
` JURY TRIAL DEMANDED
`
`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
`
`Defendant.
`
`
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
` No. 12-cv-02825-JPM-tmp
`
`Plaintiff,
`
` JURY TRIAL DEMANDED
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendant.
`
`
` ORDER GRANTING DEFENDANTS’ MOTIONS TO COMPEL
`
`
`
`Before the Court is Defendants Samsung Telecommunications
`
`America, LLC, and Samsung Electronics America, Inc.’s
`
`(collectively, “Samsung”) Motion to (a) Compel Supplemental
`
`Infringement Contentions that Comply with Local Patent Rule 3.1,
`
`and (b) Relieve Defendants of Certain Responsive Discovery
`
`Obligations Pending Service of Compliant Contentions, filed on
`
`
`
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 2 of 28 PageID 821
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`July 23, 2013. (B.E. Tech., L.L.C. v. Samsung Telecomms. Am.,
`
`LLC, No. 12-cv-02824-JPM-tmp, ECF No. 46; B.E. Tech., L.L.C. v.
`
`Samsung Elecs. Am., Inc., No. 12-cv-02825-JPM-tmp, ECF No. 50.)1
`
`Samsung requests that the Court order Plaintiff B.E. Technology,
`
`LLC (“Plaintiff” or “B.E.”), “to supplement its infringement
`
`contentions to add the requisite specificity,” and to “toll[]
`
`Samsung’s obligation to serve non-infringement contentions and
`
`produce technical documents until 28 days after B.E.[’s] service
`
`of compliant infringement contentions.” (ECF No. 46 at 1.) As
`
`the Court decided the timing of Samsung serving its non-
`
`infringement contentions in its August 19, 2013, Order (see ECF
`
`No. 57), the only issue before the Court is whether B.E.’s
`
`initial infringement contentions comply with this Court’s Local
`
`Patent Rules.
`
`Plaintiff responded in opposition on August 9, 2013. (ECF
`
`No. 53.)
`
`With leave of Court, Samsung filed its Reply in support on
`
`August 19, 2013. (ECF No. 58.)
`
`For the following reasons, Samsung’s Motions are GRANTED.
`
`
`
`
`
`1 All documents relating to the instant Motions were filed in both the
`No. 12-cv-02824 docket and the No. 12-cv-02825 docket. The Court will cite
`the documents filed in the No. 12-cv-02824 docket for ease of reference.
`
`2
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 3 of 28 PageID 822
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`I. BACKGROUND
`
`
`
`A. Procedural Background
`
`This case concerns Samsung’s alleged infringement of United
`
`States Patent No. 6,771,290 (the “’290 patent”). (ECF No. 1.)
`
`B.E. is the assignee of the ’290 patent (Hoyle Decl. ¶ 7, ECF
`
`No. 34-1), currently owning “all right, title, and interest in
`
`the ’290 patent, and has owned all right, title, and interest
`
`throughout the period” of the alleged infringement (ECF No. 1
`
`¶ 10).
`
`
`
`Pursuant to the Local Patent Rules, B.E. served its initial
`
`infringement contentions on January 7, 2013. (ECF No. 46 at 2.)
`
`According to Samsung,
`
`B.E. Tech. served more than 10,000 pages of
`Infringement Contentions (“ICs”) which ballooned the
`number of accused products from the 23 identified in
`the Complaints against the Samsung defendants to 177
`products in at least 8 distinct product categories,
`including televisions, cameras, Blu-Ray Players, home
`theater systems, media players, personal computers,
`phones and tablets, along with “all reasonably similar
`products and/or services.”
`
`
`(Id.)2
`
`
`
`On January 18, 2013, Samsung sent a letter to B.E. stating
`
`its belief that B.E.’s initial infringement contentions lacked
`
`specificity and necessary information such that it was
`
`“difficult to impossible for Samsung to prepare its Initial Non-
`
`
`
`2 In its Response, B.E. states that it accused 178 Samsung products in
`its initial infringement contentions. (ECF No. 53 at 1-2.)
`
`3
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 4 of 28 PageID 823
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`infringement Contentions and produce the accompanying documents
`
`required by [the Local Patent Rules.]” (ECF No. 53 at 2
`
`(quoting ECF No. 53-2 at PageID 625).) Samsung requested B.E.
`
`“supplement[] its contentions to address the issues” raised “and
`
`otherwise comply with Rule 3.1.” (ECF No. 53-2 at PageID 625.)
`
`
`
`On January 30, 2013, B.E. responded explaining that it
`
`believed that it had complied with the Local Patent Rules and
`
`had provided compliant initial infringement contentions in the
`
`first instance. (See ECF No. 53-3.) In the letter, B.E. also
`
`explained how it believed its contentions were sufficiently
`
`specific to each claim element alleged to infringe and how the
`
`included images of Samsung products complied with the Local
`
`Patent Rules. (See id. at PageID 628-29.)
`
`
`
`After the Court lifted the stays in the Samsung cases on
`
`July 12, 2013 (see Samsung Telecomms. Am., LLC, No. 12-cv-2824-
`
`JPM-tmp, ECF No. 43; Samsung Elecs. Am., Inc., No. 12-cv-2825-
`
`JPM-tmp, ECF No. 47), the parties resumed discussion of the
`
`initial infringement contentions. On July 17, 2013, B.E.
`
`proposed a division of products “to facilitate a
`
`representative[-]products stipulation narrowing the number of
`
`charts required for infringement and non-infringement
`
`contentions.” (Email from Dan Weinberg to Richard Pettus, ECF
`
`No. 53-5 at PageID 636.) The proposal divided the accused
`
`products into six categories: tablets, smart televisions, smart
`
`4
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`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 5 of 28 PageID 824
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`Blu-Ray players, smart home theater systems, smart phones/media
`
`players, and “PC[s]/Notebook[s]/Ultrabook[s].” (Id. at PageID
`
`637-40.) On July 18, 2013, Samsung responded that B.E. did not
`
`identify the specific representative product for each category
`
`of accused products, and that Samsung could not stipulate to any
`
`product representing a category without supplemented
`
`infringement contentions because “it [was] simply not possible
`
`to determine whether any products [were] actually representative
`
`of a category.” (Email from Joshua Raskin to Dan Weinberg, ECF
`
`No. 53-8 at PageID 695-96.) Samsung requested B.E. supplement
`
`its contentions “as to the products . . . believe[d to be]
`
`representative of a given category,” and stated that after
`
`receiving the supplemented contentions and serving its own non-
`
`infringement contentions, it would “re-evaluate [B.E.’s]
`
`representative product list.” (Id. at PageID 696.)
`
`
`
`On July 23, 2013, B.E. responded naming the following
`
`products as representative products in each of the categories of
`
`accused products:
`
`Samsung Galaxy Note 10.1, Wi-Fi (Tablets)[;]
`Samsung LED 5300 Series Smart TV 32[”] (Smart TVs)[;]
`Samsung Smart Blu-ray Player BD-E5700 (Smart Blu-
`Rays)[;]
`Samsung Smart Home Theater HT-E3500 (Smart Home
`Theater Systems)[;]
`Samsung Acclaim (Smart Phones/Media Players/Cameras)[;
`and]
`Samsung ATIV Smart PC, XE500T1C(PC/Notebook/Ultrabook)
`
`
`
`5
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 6 of 28 PageID 825
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`(Email from Dan Weinberg to Joshua Raskin, ECF No. 53-8 at
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`PageID 694.) B.E. did not, however, supplement its initial
`
`infringement contentions. B.E. stated it “believe[d] that its
`
`initial infringement contentions me[t] the requirements of the
`
`Local Patent Rules and supplementation [was] not required.”
`
`(Id.) B.E. continued, “As we understand it, Samsung contends
`
`additional information in the form of annotations to the claim
`
`charts is necessary to understand the allegations of
`
`infringement. [B.E.] explained that [it] would be willing to
`
`provide such amendments provided that parties make a stipulation
`
`regarding representative products.” (Id.)
`
`
`
`On July 23, 2013, Samsung responded to B.E.’s proposal,
`
`stating “it is not possible for us to determine whether any
`
`products are representative of a category without first
`
`receiving supplemental infringement contentions that satisfy the
`
`local rules.” (Email from Joshua Raskin to Dan Weinberg, ECF
`
`No. 53-9 at PageID 703.) As a result, Samsung filed the instant
`
`Motions.
`
`
`
`
`
`B. The Asserted Patent Claims
`
`B.E. asserts independent claim 2 and dependent claim 3 of
`
`the ’290 patent against Samsung in its initial infringement
`
`contentions. (ECF No. 53-7 at PageID 646; see also ECF No. 1
`
`¶ 11; ECF No. 46-2; ECF No. 58-4.)
`
`6
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 7 of 28 PageID 826
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`
`
`The pertinent claim language is reproduced below. The
`
`underlined language is the language B.E. asserts in its
`
`infringement contentions to be limitations to claim 2; Samsung
`
`contends this same language is deficient within those initial
`
`infringement contentions.
`
`2. A computer-readable memory for use by a
`client computer in conjunction with a server that is
`accessible by the client computer via a network, the
`server storing a user profile and user library for
`each of a number of different users, with the user
`library containing one or more files and the user
`profile containing at least one user link that
`provides a, [sic] link to one of the files in the user
`library, the computer-readable memory comprising:
`
`(a) a non-volatile data storage device;
`
`(b) a program stored on said non-volatile data
`storage device in a computer-readable format;
`
`(c) said program being operable upon execution to
`display a graphical user interface comprising an
`application window having a number of user-selectable
`items displayed therein, wherein each of said items
`has associated with it a link to an information
`resource accessible via the network and wherein said
`program is operable upon execution and in response to
`selection by a user of one of said items to access the
`associated information resource over the network;
`
`(d) said program being operable upon execution to
`receive from server one of the user profiles and to
`display a user-selectable item for user links
`contained within the user profile, said program
`further being operable in response to selection by a
`user of one of the user links to access the file
`associated with the selected user link from the user
`library associated with the received user profile.
`
`
`(ECF No. 46 at 3-4 (quoting ’290 patent, Claim 2, ECF No. 1 at
`
`PageID 43).)
`
`7
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 8 of 28 PageID 827
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`Claim 3 of the ’290 patent states,
`
`
`
`A computer-readable memory as defined in
`3.
`
`claim 2, wherein said program is operable upon
`execution and in response to selection by a user of
`one of said items to access the associated information
`resource over the network using a browser.
`
`(’290 patent, Claim 3, ECF No. 1 at PageID 43; see also ECF
`No. 46 at 7 n.5.)
`
`II. STANDARD OF REVIEW
`
`
`
`Pursuant to Local Patent Rule (“Rule”) 3.1, “a party
`
`claiming patent infringement shall serve on all parties Initial
`
`Infringement Contentions.”3 Local Patent Rule 3.1 enumerates the
`
`information the initial infringement contentions must, at a
`
`minimum, contain. L.P.R. 3.1(a)-(g). The instant Motions claim
`
`B.E. has failed to comply with subsection (c), which provides
`
`that the party alleging infringement must supply
`
`chart identifying specifically where each
`[a]
`limitation of each asserted claim is found within each
`Accused Instrumentality, including for each limitation
`that such party contends is governed by 35 U.S.C.
`§ 112(6), the identity of the corresponding structure
`and function and where such structure and function is
`found in the Accused Instrumentality;
`
`
`L.P.R. 3.1(c).
`
`
`Initial infringement contentions must provide “reasonable
`
`notice to the defendant why the plaintiff believes it has a
`
`reasonable chance of proving infringement and raise a reasonable
`
`
`
`3 A copy of this Court’s Local Patent Rules is available at
`http://www.tnwd.uscourts.gov/pdf/content/LocalPatentRules.pdf.
`
`8
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 9 of 28 PageID 828
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`inference that all accused products infringe.” Order Den.
`
`Def.’s Mot. to Compel at 1-2, Multilayer Stretch Cling Film
`
`Holdings, Inc. v. MSC Mktg. & Tech., Inc., No. 2:12-cv-02112-
`
`JPM-tmp (W.D. Tenn. July 23, 2013), ECF No. 90 (McCalla, C.J.)
`
`(quoting Digital Reg of Tex., LLC v. Adobe Sys., Inc., No. CV
`
`12-01971-CW(KAW), 2013 WL 633406, at *3 (N.D. Cal. Feb. 20,
`
`2013)) (internal quotation marks omitted). “Infringement
`
`contentions are not intended to require a party to set forth a
`
`prima facie case of infringement and evidence in support
`
`thereof,” id. (quoting Realtime Data, LLC v. Packeteer, Inc.,
`
`No: 6:08CV144, 2009 WL 2590101, at *5 (E.D. Tex. Aug. 18, 2009))
`
`(internal quotation marks omitted), however “a patentee must
`
`nevertheless disclose what in each accused instrumentality it
`
`contends practices each and every limitation of each asserted
`
`claim to the extent appropriate information is reasonably
`
`available to it.” DCG Sys. v. Checkpoint Techs., LLC, No. C 11-
`
`03792 PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012).
`
`“[V]ague and conclusory contentions are inadequate.” Theranos,
`
`Inc. v. Fuisz Pharma LLC, No. 11-cv-05236-YGR, 2012 WL 6000798,
`
`at *4 (N.D. Cal. Nov. 30, 2012).
`
`III. ANALYSIS
`
`
`
`
`
`A. Initial Infringement Contentions Asserting Claim 2
`
`Samsung argues that B.E.’s initial infringement contentions
`
`are insufficient under Local Patent Rule 3.1(c) because they
`
`9
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`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 10 of 28 PageID 829
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`“contain no information whatsoever as to where and why many of
`
`the critical claim limitations are allegedly present in the
`
`accused products.” (ECF No. 46 at 6.) Within B.E.’s claim
`
`charts setting forth its initial infringement contentions, B.E.
`
`includes images of the accused products. (See ECF No. 46-2; ECF
`
`No. 53-7; ECF No. 58-4.) Samsung asserts that these “bare
`
`advertisements and unlabeled screen shots” are deficient because
`
`B.E. is “leaving it up to Samsung to speculate what it is about
`
`the products that allegedly satisfies each claim limitation.”
`
`(ECF No. 46 at 6.)
`
`In the instant Motions, Samsung sets forth its argument
`
`with reference to only one product among the 178 accused
`
`products, the Samsung Acclaim smartphone, which it argues “is
`
`representative of other problematic B.E. [] claim charts.” (Id.
`
`(citing Pettus Decl., ECF No. 46-2).)
`
`
`
`Specifically, Samsung argues that B.E.’s initial
`
`infringement contentions “fail to specifically identify where in
`
`any of the accused Samsung products most of the limitations of
`
`claim 2 of the ’290 patent exist, instead repeating verbatim the
`
`language of the claim, then stating in conclusory fashion
`
`that . . . the accused products satisfy these limitations.”
`
`(ECF No. 46 at 6-7.)
`
`10
`
`
`

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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 11 of 28 PageID 830
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`B.E.’s initial infringement contentions related to claim 2
`
`as asserted against the Samsung Acclaim smartphone are
`
`reproduced below. (See also ECF No. 46-2.)
`
`CLAIM
`
`SAMSUNG ACCLAIM SMARTPHONE
`
`2. A computer-readable memory for
`use by a client computer in
`conjunction with a server that is
`accessible by the client computer
`via a network, the server storing
`a user profile and user library
`for each of a number of different
`users, with the user library
`containing one or more files and
`the user profile containing at
`least one user link that provides
`a link to one of the files in the
`user library, the computer
`readable memory comprising:
`
`a) a non-volatile data storage
`device;
`
`b) a program stored on said non-
`volatile data storage device in a
`computer readable format;
`
`c) said program being operable
`
`The accused device is a client
`computer. The accused device
`includes a computer readable memory
`for use by the accused device in
`conjunction with a server that is
`accessible by the accused device via
`a network, the server storing a user
`profile and user library for each of
`a number of different users, with
`the user library containing one or
`more files and the user profile
`containing at least one user link
`that provides a link to one of the
`files in the user library.
`
`For example, a user of a Samsung
`Acclaim Android-based smartphone is
`provided with a Google Account
`and/or Samsung Account. The user
`may use his or her Google Account
`and/or Samsung Account to access his
`or her user profile stored in a
`server accessible via a network
`using, for example, WiFi, CDMA, GSM,
`HSPA, or LTE. The user’s user
`profile in the server contains one
`or more user links that provide
`links to one or more files (e.g.,
`music files, books, magazines, TV
`shows, movies, apps, games) in the
`user’s library in the server.
`
`The Samsung Acclaim smartphone
`includes a non-volatile data storage
`device.
`
`The Samsung Acclaim smartphone
`includes a program, Google Play,
`YouTube, Android Market, Samsung
`Apps, Media Hub or Music Hub, stored
`on said non-volatile data storage
`device in a computer-readable
`format.
`
`The Google Play, YouTube, Android
`
`11
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 12 of 28 PageID 831
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`Market, Samsung Apps, Media Hub or
`Music Hub is operable upon execution
`to display a graphical user
`interface comprising an application
`window having a number of user-
`selectable items displayed therein,
`wherein each of said items has
`associated with it a link to an
`information resource accessible via
`the network and wherein the Google
`Play, YouTube, Android Market,
`Samsung Apps, Media Hub or Music Hub
`is operable upon execution and in
`response to selection by a user of
`one of said items to access the
`associated information resource over
`the network.
`
`The Google Play, YouTube, Android
`Market, Samsung Apps, Media Hub or
`Music Hub is operable upon execution
`to receive from server one of the
`user profiles (e.g., Google
`Account or Samsung Account user
`profile) and to display a user-
`selectable item for user links
`contained within the user profile.
`
`upon execution to display a
`graphical user interface
`comprising an application window
`having a number of user selectable
`items displayed therein, wherein
`each of said items has associated
`with it a link to an information
`resource accessible via the
`network and wherein said program
`is operable upon execution and in
`response to selection by a user of
`one of said items to access the
`associated information resource
`over the network;
`
`
`d) said program being operable
`upon execution to receive from
`server one of the user profiles
`and to display a user-selectable
`item for user links contained
`within the user profile, said
`program further being operable in
`response to selection by a user of
`one of the user links to access
`the file associated with the
`selected user link from the user
`library associated with the
`received user profile.
`
`
`(ECF No. 46-2 at PageID 504-40.)
`
`
`
`
`
`1.
`
`Parties’ Arguments
`
`Regarding “user profile,” found in the preamble of claim 2
`
`and element (d) of claim 2, Samsung contends that B.E.’s initial
`
`infringement contentions “merely use[] the phrases ‘Google
`
`Account’ and ‘Samsung Account’ to modify the words ‘user
`
`profile,’ but do[] not tell Samsung what the ‘user profile’ and
`
`‘user-selectable items for user links’ contained within the user
`
`profile are, or where they may be found in the accused
`
`12
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 13 of 28 PageID 832
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`products.” (ECF No. 46 at 7 (quoting ECF No. 46-2 at PageID
`
`540).)
`
`Regarding “user library” and “one or more files” contained
`
`within a “user library,” found in the preamble of claim 2 and
`
`element (d) of claim 2, Samsung contends that B.E.’s initial
`
`infringement contentions fail to identify the presence of these
`
`limitations in the accused products. (Id. at 7.) Samsung
`
`contends that B.E. has listed examples of files that may be
`
`contained within the “user library” – “e.g., music files, books,
`
`magazines, TV shows, movies, apps, games” (see ECF No. 46-2 at
`
`PageID 504) - but has not identified the library itself, or what
`
`it contains. (ECF No. 58 at 4.) Samsung asserts that B.E. has
`
`also listed examples of what could be “file[s] associated with
`
`the selected user link,” but has not explained these examples or
`
`cited any evidence supporting them. (ECF No. 46 at 9.)
`
`Regarding “server,” found in the preamble of claim 2 and
`
`element (d) of claim 2, Samsung contends that B.E.’s initial
`
`infringement contentions “do not show a server at all,” rather
`
`they state that files could be any of the listed examples, but
`
`do not indicate “where those files are actually stored on a
`
`server and how that server relates to the accused products.”
`
`(Id. at 8.)
`
`Regarding “at least one user link,” found in the preamble
`
`of claim 2, Samsung argues that B.E. has improperly repeated the
`
`13
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 14 of 28 PageID 833
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`claim language in its initial infringement contentions and does
`
`not explain “what links it is accusing, where these links exist
`
`in the accused product, or how those links link to any files in
`
`any user library.” (Id.)
`
`Regarding “user-selectable items,” found in elements (c)
`
`and (d) of claim 2, Samsung asserts that B.E. has failed to
`
`identify any of these items “displayed by any program, or any
`
`associated links, and provides no further information regarding
`
`which ‘items’ are selected by the user or how those items access
`
`any associated information (or what the associated information
`
`resource is [sic] for that matter).” (Id.)
`
`Samsung also argues that B.E. has not identified or
`
`explained “where the ‘files’ are located in the products, where
`
`a user selects any ‘user links,’ how user links ‘access[] the
`
`file associated with the selected user link,’ any file in a
`
`‘user library’ or any user library ‘associated with the received
`
`user profile.’” (Id. at 9 (alteration in original).)
`
`Samsung also argues that B.E.’s images of the accused
`
`products, which accompany all the initial infringement
`
`contentions for claim 2, are equally deficient. Samsung asserts
`
`that these images - product advertisements and screen shots –
`
`“do not call out any of these specific limitations or provide
`
`any corresponding descriptions or notations to identify or point
`
`out the . . . claim limitations, including the alleged ‘user
`
`14
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 15 of 28 PageID 834
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`profile,’ ‘links,’ ‘user library,’ ‘files’ and ‘user-selectable
`
`items.’” (Id. at 9.) For example, Samsung states the
`
`deficiency in these images is that they “do not include any
`
`commentary, notations or other descriptors that indicate what
`
`B.E. Tech. considers to be ‘user-selectable items,’ let alone
`
`links associated with user-selectable items to information
`
`resources accessible via a network.” (Id.)
`
`B.E. argues that its initial infringement contentions are
`
`sufficient as they have “identified how the defendants’ accused
`
`products infringe each asserted claim and provide[] as much
`
`specificity as possible, using publicly-available [sic]
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`information to show where each claim limitation is found in the
`
`accused products.” (ECF No. 53 at 5 (citation omitted).) B.E.
`
`argues that its initial infringement contentions “include
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`written descriptions and images that identify where each
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`limitation of the asserted claims is found in each of the
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`accused products.” (Id. at 6.) B.E. also contends that use of
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`the “accused infringer’s advertising materials is sufficient
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`evidence for initial infringement contentions because patentees
`
`are not required to prove infringement through initial
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`contentions, just raise a reasonable inference that the accused
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`products infringe.” (Id. at 4.)
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`To illustrate its compliant contentions, B.E. explains its
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`claim charts relating to one product, the Google-Samsung Galaxy
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`Nexus smartphone, and contends that the associated contentions
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`“disclose the way in which the [smartphone] . . . infringes
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`claim 2 of the ’290 patent.” (See ECF No. 53 at 6-11.) The
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`Court notes that the Google-Samsung Galaxy smartphone was
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`neither listed in B.E.’s own proposed list of representative
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`products (see ECF No. 53-8 at PageID 694), nor was it the
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`product on which Samsung based the instant Motions to Compel
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`(ECF No. 46). B.E. asserts that it has explained step-by-step
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`how its contentions identify each limitation’s presence in the
`
`accused instrumentality. (ECF No. 53 at 6-11.) B.E. also
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`attempts to explain how the images accompanying each initial
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`infringement contention illustrate the limitations of claim 2
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`asserted against the accused instrumentality. (Id.)
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`2.
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`The Court’s Findings
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`The Court will address the deficiencies within B.E.’s
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`initial infringements contentions in turn.
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`The Court agrees that B.E.’s initial infringement
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`contentions regarding the limitation “user profile” do not
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`provide Samsung with reasonable notice of infringement and are
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`insufficient. As written, the contention states that “[t]he
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`user may use his or her Google Account to access his or her
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`Google user profile.” (ECF No. 53-7 at PageID 657.)
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`Accordingly, the contention does not treat the Google Account
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`and the Google user profile as one and the same, despite B.E.’s
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 17 of 28 PageID 836
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`argument to the contrary in its Opposition Brief. (See ECF No.
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`53 at 12-13.) The contention therefore does not give Samsung
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`reasonable notice as to what B.E. contends is a “user profile”
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`within the accused products and must be supplemented.
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`The Court agrees that B.E.’s initial infringement
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`contentions regarding “user library” and “user library
`
`containing one or more files” do not provide Samsung with
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`reasonable notice of infringement and are insufficient. While
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`B.E.’s explanation that the images that accompany its initial
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`infringement contentions for the Samsung Acclaim Smartphone
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`illustrate the “user library” through a “set of links to the
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`user’s library or apps, music, books, magazines, and movies &
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`TV,” the images themselves do not provide any explanation
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`sufficient to provide reasonable notice to Samsung of how the
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`images relate to the asserted claim limitation. (See ECF No. 53
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`at 13-14 (citing ECF No. 50-2 at PageID 545-49, 551-52, 565-
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`67).) The Court finds B.E.’s explanation in its Opposition
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`Brief does provide Samsung some notice as to B.E.’s infringement
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`contentions related to the “user library” and “user library
`
`containing one or more files” limitations, but an explanation in
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`a brief does not satisfy B.E.’s burden under Rule 3.1(c). See
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`Droplets, Inc. v. Amazon.com, Inc., No. C12-03733 HRL, 2013 WL
`
`1563256, at *5 (N.D. Cal. Apr. 12, 2013) (ordering plaintiff to
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`supplement its infringement contentions after finding
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`plaintiff’s explanations of its infringement contentions in an
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`opposition brief “allows the reader to understand where each
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`limitation of each asserted claim is found within each Accused
`
`Instrumentality,” but that without the explanation, “the
`
`infringement contentions are insufficient” (internal quotation
`
`marks omitted)). The Court agrees with Samsung, however, that
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`B.E.’s explanation of “user library” in its Opposition Brief
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`only “describes what [the library] contains,” it does not
`
`sufficiently describe what the library is or where it can be
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`found in the accused product. (See ECF No. 58 at 4.) As a
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`result, the contentions do not “identify[] specifically where
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`[the] limitation of [the] asserted claim is found within [the]
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`Accused Instrumentality.” See L.P.R. 3.1(c). Accordingly,
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`B.E.’s initial infringement contentions regarding these claim
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`limitations are insufficient and must be supplemented.
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`The Court agrees that B.E.’s initial infringement
`
`contentions as they relate to “server” do not provide Samsung
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`with reasonable notice of infringement and are insufficient.
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`The images that accompany the infringement contentions related
`
`to claim 2’s limitation that the user profile is stored on a
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`“server” do not “identify[] specifically where [the] limitation
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`. . . is found within [the] Accused Instrumentality” because the
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`images show only that applications may be accessed via the
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`smartphone, they do not explain where the limitation that a user
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`Case 2:12-cv-02824-JPM-tmp Document 59 Filed 10/04/13 Page 19 of 28 PageID 838
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`profile must be stored on a server is found. As noted above,
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`B.E. provided an explanation of its initial infringement
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`contentions that may satisfy Rule 3.1(c)’s requirements (see ECF
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`No. 53 at 7-8), but doing so in an Opposition Brief is
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`impermissible. Accordingly, B.E.’s contentions must be
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`supplemented.
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`The Court agrees that B.E.’s initial infringement
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`contentions as they relate to “a number of user-selectable items
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`displayed therein, wherein each of said items has associated
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`with it a link to an information resource accessible via the
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`network,” do not provide Samsung with reasonable notice of
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`infringement and are insufficient. B.E.’s explanation in its
`
`Opposition Brief provides some notice to Samsung (see ECF No. 53
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`at 9-10), but such explanation must be included in the initial
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`infringement contention itself to satisfy the Rule 3.1(c)
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`requirements. Further, while the images may “show[] all of the
`
`elements of the claim limitation” as B.E. argues (see ECF No. 53
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`at 9), these images by themselves are insufficient to do so
`
`without explanations from B.E. Additionally, the initial
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`infringement contentions must identify where the limitations of
`
`the claim are contained within the accused product, therefore
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`the Court agrees that B.E., in supplementing its contentions,
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`must explain how the images evince the separate limitations of
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`“user-selectable items,” “links,” and “information resource[s]
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`over the network.” (See ECF No. 58 at 5.)
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`The Court agrees that B.E.’s initial infringement
`
`contentions regarding “operable upon execution to receive from
`
`server one of the user profiles” do not provide Samsung with
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`reasonable notice of infringement and are insufficient. While
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`B.E. has explained all the images it provided with the
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`contention, and has described what those images contain (see ECF
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`NO. 53 at 10-11), B.E.’s explanation is insufficient for two
`
`reasons. First, as stated, supra, an explanation in an
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`Opposition Brief is insufficient under the local rules. Second,
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`these explanations do not explain how the limitation of the
`
`claim, that the user profile is “received” from the server, is
`
`present in the accused products. As a result, B.E.’s
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`contentions do not provide reasonable notice as to “why [B.E.]
`
`believes it has a reasonable chance of proving infringement.”
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`See Order Deny. Def.’s Mot. to Compel, Multilayer, ECF No. 90 at
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`1-2.
`
`The Court also agrees that B.E.’s initial infringement
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`contentions regarding the remainder of element (d) of claim 2,
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`to display a user-selectable item for user links
`contained with the user profile, said program further
`being operable in response to selection by a user of
`one of the user links to access the file associated
`with the selected user link from the user library
`associated with the received user profile[,]
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`
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`are insufficient. (’290 patent, Claim 2, ECF No. 1 at PageID
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`43.) As stated, supra, the explanation provided by B.E. may
`
`satisfy the requirements of Rule 3.1(c), but it must be included
`
`in the initial infringement contentions. Further, the images
`
`associated with the initial infringement contentions do not
`
`indicate whether each image meets the limitation and, if so, how
`
`and where the limitation is presen