Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 1 of 17 PageID 489
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`
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 12-cv-02824-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC,
`
`
`
`Defendant.
`
`
`
`B.E. TECHNOLOGY, L.L.C.,
`
`
`
`
`
`
`
`
`
`v.
`
`Plaintiff,
`
`Civil Action No. 12-cv-02825-JPM-tmp
`
`JURY TRIAL DEMANDED
`
`SAMSUNG ELECTRONICS AMERICA
`INC.,
`
`
`
`
`
`Defendant.
`
`
`MOTION OF DEFENDANTS SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
`AND SAMSUNG ELECTRONICS AMERICA INC. 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, AND
`MEMORANDUM OF LAW IN SUPPORT THEREOF
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`
`
`
`
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`
`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 2 of 17 PageID 490
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................ 2
`A.
`B.E. Tech.’s Deficient Infringement Contentions And Refusal To
`Supplement ............................................................................................................ 2
`The Asserted Patent Claim..................................................................................... 3
`B.
`ARGUMENT ..................................................................................................................... 4
`A.
`Statement of the Law ............................................................................................. 4
`B.
`B.E. Tech.’s Infringement Contentions Violate L.P.R. 3.1 ................................... 6
`1.
`B.E. Tech.’s ICs Fail to Identify Multiple Claim Limitations ................... 6
`2.
`B.E. Tech.’s ICs Fail To Properly Address The Doctrine Of
`Equivalents ............................................................................................... 10
`B.E. Should Be Compelled to Comply with L.P.R. 3.1 ....................................... 11
`The Court Should Relieve Samsung of its Discovery Obligations Until
`After B.E. Tech. Supplies Its Amended ICs ........................................................ 11
`CONCLUSION ................................................................................................................ 13
`
`C.
`D.
`
`
`
`
`
`I.
`II.
`
`III.
`
`IV.
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`
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`
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`-ii-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 3 of 17 PageID 491
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`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Big Baboon Corp. v. Dell, Inc.,
`723 F. Supp. 2d 1224 (C.D. Cal. 2010) .................................................................................... 5
`
`Digital Reg of Texas, LLC v. Adobe Sys. Inc.,
`12-01971, 2013 WL 633406 (N.D. Cal. Feb. 20, 2013) ..................................................... 5, 12
`
`Droplets, Inc. v. Amazon.com, Inc.,
`C12-03733, 2013 WL 1563256 (N.D. Cal. Apr. 12, 2013) ................................................ 9, 10
`
`GN Resound A/S v. Callpod, Inc.,
`11-04673, 2013 WL 1190651 (N.D. Cal. Mar. 21, 2013) ........................................................ 5
`
`Intertrust Techs. Corp. v. Microsoft Corp.,
`No. C 01-1640, 2003 WL 23120174 (N.D. Cal. Dec. 1, 2003) ...................................... 4, 5, 12
`
`Nazomi Comms, Inc. v. Nokia Corp.,
`10-04686, 2013 WL 3146796 (N.D. Cal. June 18, 2013) ....................................................... 11
`
`Network Caching Tech., LLC v. Novell, Inc.,
`01-2079, 2002 WL 32126128 (N.D. Cal. Aug. 13, 2002) .................................................. 5, 12
`
`Rambus Inc. v. Hynix Semiconductor Inc.,
`05-00334, 2008 WL 5411564 (N.D. Cal. Dec. 29, 2008)....................................................... 11
`
`Shared Memory Graphics LLC v. Apple Inc.,
`10-02475, 2011 WL 3878388 (N.D. Cal. Sept. 2, 2011) ........................................................ 12
`
`Voxpath RS, LLC v. LG Elec. U.S.A., Inc.,
`Civ. No. 2:12-cv-952, 2012 WL 5818143 (D.N.J. Nov. 14, 2012) .......................................... 5
`
`RULES
`
`Local Patent Rule 3.1 ............................................................................................................. passim
`
`Local Patent Rule 3.3 ................................................................................................................ 3, 13
`
`Local Patent Rule 3.4 ................................................................................................................ 3, 13
`
`N.D. Cal. Patent Local Rule 3-1 ..................................................................................................... 5
`
`
`
`-iii-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 4 of 17 PageID 492
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`
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`Defendants Samsung Electronics America, Inc. and Samsung Telecommunications
`
`America, LLC (collectively, “Samsung”) respectfully move this Court to (a) compel Plaintiff
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`B.E. Technology, Inc. (“B.E. Tech.” or “Plaintiff”) to serve supplemental infringement
`
`contentions that comply with Local Patent Rule (“L.P.R.”) 3.1, and (b) relieve Samsung of
`
`certain responsive discovery obligations pending service of compliant contentions.
`
`I.
`
`INTRODUCTION
`
`B.E. Tech.’s infringement contentions do not comply with L.P.R. 3.1(c)’s requirement to
`
`“identify[] specifically where each limitation of each asserted claim is found within each
`
`Accused Instrumentality.” The claim charts accompanying Plaintiff’s contentions provide only a
`
`verbatim restatement of the language of the claim limitations with a product advertisement or
`
`“screen shot,” leaving Samsung to speculate as to what aspect (if any) within each of its 177
`
`accused products purportedly corresponds to a given limitation. This is plainly insufficient.
`
`The fundamental purpose of L.P.R. 3.1 is to ensure that defendants, like Samsung, are not
`
`forced to speculate what it is about their products that a plaintiff contends satisfies each claim
`
`limitation. Despite Samsung pointing out these deficiencies, B.E. Tech. has refused to
`
`supplement with the requisite specificity. As a result, Samsung has been deprived of adequate
`
`notice of the basis for B.E. Tech.’s contentions and prejudiced in its ability to prepare responsive
`
`non-infringement contentions and to otherwise defend against B.E. Tech.’s unspecified
`
`infringement theories, to properly participate in the claim construction process, and to fairly
`
`determine the scope of relevant discovery for this matter. Accordingly, Samsung respectfully
`
`requests an order: (1) compelling B.E. Tech. to supplement its infringement contentions to add
`
`the requisite specificity; and (2) tolling Samsung’s obligation to serve non-infringement
`
`contentions and produce technical documents until 28 days after B.E. Tech.’s service of
`
`compliant infringement contentions.
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`-1-
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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 5 of 17 PageID 493
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`
`
`II.
`
`FACTUAL BACKGROUND
`
`A.
`
`B.E. Tech.’s Deficient Infringement Contentions And Refusal To Supplement
`
`On January 7, 2013, 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
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`categories, including televisions, cameras, Blu-Ray Players, home theater systems, media
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`players, personal computers, phones and tablets, along with “all reasonably similar products
`
`and/or services.” The ICs also identify 19 separate accused functionalities, one or more of which
`
`is alleged to be present or used in each accused product.1 A exemplary portion of B.E. Tech.’s
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`ICs, relating to the accused Samsung Acclaim smartphone, is attached as Exhibit A to the
`
`concurrently filed Declaration of Richard C. Pettus (“Pettus Decl.”).2
`
`For virtually every claim limitation, and each of the 177 accused products, B.E. Tech.’s
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`voluminous ICs provide no more than a verbatim restatement of the language of the claims
`
`followed by a series of bare advertisements or “screen shots” of the accused products without
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`any explanation as to where each limitation is allegedly found. Likewise, for virtually every
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`claim limitation and product, B.E. Tech. includes only a boilerplate statement that the limitation
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`is alternatively met under the doctrine of equivalents, without any explanation of the basis for
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`such argument, including identification of the feature(s) alleged to be equivalent.
`
`
`1 Based on Samsung’s preliminary investigation, these accused functionalities appear to include
`both Samsung and third-party technologies: Google software/services (e.g., Android Market,
`YouTube, and Google Play), Samsung software/services (e.g., Samsung Apps, Smart Hub,
`Media Hub, Music Hub), Microsoft software/services (e.g., Windows Store, Xbox Video, Xbox
`Music, Xbox Games, Windows Phone Marketplace, Windows Phone Store), Amazon
`software/services (e.g., Amazon (Prime) Instant Video, Kindle Store), and miscellaneous other
`software/services (e.g., Netflix, Hulu Plus, Nook Store (B&N), Kno Textbooks).
`
` 2
`
` Unless otherwise noted, all Exhibits refer to exhibits to the Declaration of Richard C. Pettus,
`filed concurrently herewith.
`
`
`
`-2-
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`

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`
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`On January 18, 2013, Samsung sent a letter to B.E. Tech. (Pettus Decl., Ex. B) pointing
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`out these and other deficiencies in B.E. Tech.’s ICs and requesting that B.E. Tech. supplement
`
`them so that Samsung could meet its obligations to serve responsive non-infringement
`
`contentions under Local Patent Rules 3.3 and 3.4. On January 30, 2013, B.E. Tech. declined to
`
`supplement its ICs, maintaining that its contentions are “sufficiently detailed” (Pettus Decl., Ex.
`
`C).3 The cases were stayed on February 8, 2013. The parties recently met and conferred again on
`
`July 15, 2013, but despite having had several months to prepare properly supplemented ICs, B.E.
`
`Tech. has maintained its position that supplementation is not required. (Pettus Decl., Ex. D).
`
`Instead, B.E. Tech. has maintained its position that its ICs satisfy the Local Rules and proposed
`
`supplementing its ICs only for “representative products” from six product categories, and only if
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`Samsung agrees in advance that the selected products are in fact representative of the categories
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`identified by B.E. Tech. However, it is not possible for Samsung to make this determination
`
`without first receiving supplemental ICs that satisfy the local rules and place Samsung on notice
`
`as to precisely what it is about the 177 accused products that allegedly infringe the patent-in-suit.
`
`B.
`
`The Asserted Patent Claim
`
`Claim 2, the only independent claim of U.S. Patent No. 6,771,290 (“the ’290 patent”)
`
`asserted against Samsung, is reproduced below, using the labeling of claim limitations applied by
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`B.E. Tech. in its ICs and highlighting the claim language of the limitations for which those ICs
`
`are deficient:
`
`
`3 B.E. Tech.’s insufficient contentions (in terms of both detail and analysis), coupled with the
`unjustified refusal to revisit and supplement them, raise serious questions as to whether B.E.
`Tech. has ever had a good faith basis for its infringement allegations against any of Samsung’s
`products. Further demonstrating B.E. Tech.’s questionable basis for its infringement allegations,
`the ICs accuse models of Samsung phones, including Galaxy Ace, Galaxy Fit, Galaxy Gio,
`Galaxy Pocket Duos, Galaxy Pocket and Galaxy S Advance, that are not even sold in the United
`States.
`
`
`
`-3-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 7 of 17 PageID 495
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`
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`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;
`
`a program stored on said non-volatile data storage device in a computer-
`(b)
`readable format;
`
`said program being operable upon execution to display a graphical user
`(c)
`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;
`
`said program being operable upon execution to receive from server one of
`(d)
`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.
`
`III.
`
`ARGUMENT
`
`A.
`
`Statement of the Law
`
`The language of L.P.R. 3.1(c) is clear - this Court requires that ICs “identify[]
`
`specifically where each limitation of each asserted claim is found within each Accused
`
`Instrumentality.” L.P.R. 3.1(c). “The overriding principle of the Patent Local Rules is that they
`
`are designed [to] make the parties more efficient, to streamline the litigation process, and to
`
`articulate with specificity the claims and theory of a plaintiff’s infringement claims.” Intertrust
`
`Techs. Corp. v. Microsoft Corp., No. C 01-1640, 2003 WL 23120174, at *2 (N.D. Cal. Dec. 1,
`
`2003).4 The rule requiring early detailed infringement contentions “is in fact to be nit picky, to
`
`
`4 This District does not appear to have issued a published decision explaining the requirements of
`L.P.R. 3.1(c) (it appears that the first motion of this type was filed with this Court on May 31,
`2013 in the matter captioned Multilayer Stretch Cling Film Holdings, Inc. v. MSC Marketing and
`-4-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 8 of 17 PageID 496
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`
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`require a plaintiff to crystallize its theory of the case and patent claims.” Id. at *3. “In patent
`
`litigation, vague and conclusory contentions are inadequate.” Theranos, Inc. v. Fuisz Pharma
`
`LLC, 11-cv-05236, 2012 WL 6000798, at *4 (N.D. Cal. Nov. 30, 2012). Contentions of this
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`kind are improper because:
`
`[t]he degree of specificity must be sufficient to provide reasonable notice to the
`defendant why the plaintiff believes it has a reasonable chance of proving
`infringement and raise a reasonable inference that all accused products infringe.
`Contentions that fail to provide defendant with fair notice of the plaintiff’s
`infringement theories are insufficient and must be amended.
`
`
`Digital Reg of Texas, LLC v. Adobe Sys. Inc., 12-01971, 2013 WL 633406, at *3 (N.D. Cal. Feb.
`
`20, 2013).
`
`Infringement contentions are insufficient when the patentee “provides no link between
`
`the quoted passages and the infringement contentions that simply mimics the language of the
`
`claim.” Network Caching Tech., LLC v. Novell, Inc., 01-2079, 2002 WL 32126128, at *6 (N.D.
`
`Cal. Aug. 13, 2002). Doing so “provide[s] no further information to defendants than the claim
`
`language itself.” Id. at *6. Rather, “reverse engineering or its equivalent is required” to provide
`
`a sufficiently detailed comparison of an accused product to the asserted patent on a claim by
`
`claim, element by element basis. Id. at *5; see also GN Resound A/S v. Callpod, Inc., 11-04673,
`
`
`Tech., Inc., 2:12-cv-02112-JPM-tmp (Dkt. No. 75)). However, Patent Local Rule 3-1 of the
`Northern District of California is identical to this Court’s L.P.R. 3.1, and also requires a patentee
`to include in its infringement contentions a chart “identifying specifically where each limitation
`of each asserted claim is found within each Accused Instrumentality.” N.D. Cal. Patent L.R. 3-1.
`Looking to the similar rules of other courts is often done in this circumstance. See, e.g., Voxpath
`RS, LLC v. LG Elec. U.S.A., Inc., Civ. No. 2:12-cv-952, 2012 WL 5818143, at *3 n.3 (D.N.J.
`Nov. 14, 2012) (“As the District of New Jersey has developed its Local Patent Rules through
`guidance from corresponding rules in the Northern District of California and the Eastern District
`of Texas and the issues raised in the instant motion are not widely analyzed in this district, this
`Court has allowed for consideration of those districts’ decisions.”); Big Baboon Corp. v. Dell,
`Inc., 723 F. Supp. 2d 1224 (C.D. Cal. 2010) (looking to the N.D.Cal.’s Local Patent Rules to
`compel more detailed infringement charts, noting that “[w]hile the Central District of California
`does not have its own [patent] rules, it has occasionally employed the rationale of rules from
`other jurisdictions during discovery disputes.”).
`-5-
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`
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`2013 WL 1190651, at *4 (N.D. Cal. Mar. 21, 2013) (ordering patentee to amend its infringement
`
`contentions that “do not provide the level of detail that the reverse engineering or its equivalent
`
`standard requires”).
`
`B.
`
`B.E. Tech.’s Infringement Contentions Violate L.P.R. 3.1
`
`Despite the specificity required of L.P.R. 3.1(c), B.E. Tech.’s ICs contain no information
`
`whatsoever as to where and why many of the critical claim limitations are allegedly present in
`
`the accused products. Rather, B.E. Tech. provides only bare advertisements and unlabeled
`
`screen shots, leaving it up to Samsung to speculate what it is about the products that allegedly
`
`satisfies each claim limitation. For at least these reasons, B.E. Tech. has failed to place Samsung
`
`on notice as to where B.E. Tech. contends the claim limitations are found within each accused
`
`product in contravention of the purpose and language of the Local Patent Rules.
`
`A non-exhaustive discussion of the deficiencies of B.E. Tech.’s ICs with respect to the
`
`specific limitations of the asserted claims is set forth below. Since B.E. Tech. has identified at
`
`least 177 allegedly infringing products, for simplicity, this motion focuses on B.E. Tech.’s claim
`
`charts for only one of those products, the Samsung Acclaim smartphone, which is representative
`
`of other problematic B.E. Tech. claim charts. (Pettus Decl., Ex. A.) As demonstrated below,
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`B.E. Tech. merely parrots the claim language in its contentions. In addition, the accompanying
`
`advertisements and screen shots contain no labels, notations, or guidance of any sort to explain
`
`where and how these claim limitations are allegedly found in the accused products. (See
`
`generally id.)
`
`1.
`
`B.E. Tech.’s ICs Fail to Identify Multiple Claim Limitations
`
`B.E. Tech.’s 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
`
`
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`-6-
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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 10 of 17 PageID 498
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`
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`repeating verbatim the language of the claim, then stating in conclusory fashion that that the
`
`accused products satisfy these limitations.5
`
`For example, and without limitation, as can be seen below with respect to “user profiles,”
`
`B.E. Tech. merely uses the phrases “Google Account” and “Samsung Account” to modify the
`
`words “user profile,” but does 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 products:
`
`B.E. Tech.’s Contentions
`
`Limitations of Claim 2
`(emphasis added)
`(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.
`
`Similarly, B.E. Tech. has failed to identify either a “user library” or “one or more files”
`
`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.
`*
`*
`*
`The Google Play, YouTube, Android Market,
`Samsung Apps, Media Hub or Music Hub is
`operable in response to selection by a user of
`one of the user links to access the file (e.g.,
`apps, books, magazines, music files, TV
`shows, movies, games, etc.) associated with
`the selected user link from the user library
`associated with the received user profile.
`
`contained within a “user library.” While B.E. Tech.’s contentions include the parenthetical
`
`“(e.g., music files, books, magazines, TV shows, movies, apps, games),” B.E. Tech. does not
`
`
`5 In addition to independent claim 2, B.E. Tech. also asserts against Samsung claim 3 of the ‘290,
`which depends from claim 2. B.E. Tech.’s deficient ICs for dependent claim 3 also only repeat
`verbatim the language of the claim and state in conclusory fashion that the accused products
`satisfy the limitation. Unlike the ICs for certain limitations of claim 2, the ICs for claim 3 do not
`even include screenshots.
`
`
`
`-7-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 11 of 17 PageID 499
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`
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`explain the basis for this statement or cite to any evidence. In addition, while claim 2 requires
`
`that the “one or more files” must be stored on a server, the charts provided by B.E. Tech. do not
`
`show a server at all. Simply stating that the files can be, for example, a multitude of items, tells
`
`Samsung nothing with respect to where those files are actually stored on a server and how that
`
`server relates to the accused products. The same goes for “at least one user link” contained
`
`within the user profile, for which B.E. Tech. again essentially repeats verbatim the claim
`
`language and states in conclusory fashion that this limitation is met by the accused products
`
`without any explanation of 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.
`
`Moreover, as can be seen below B.E. Tech. has also failed to identify any “user-
`
`selectable 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 resource (or what the associated information resource is for that matter):
`
`B.E. Tech.’s Contentions
`
`The Google Play, YouTube, Android 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 Samsung Acclaim smartphone is network
`accessible.
`
`Limitations of Claim 2
`(emphasis added)
`(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;
`
`
`
`-8-
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`
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`B.E. Tech. also fails to identify or explain 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.”
`
`The photographs of product advertisements for and screen shots of the accused products
`
`that B.E. Tech. includes are similarly deficient as they do not call out any of these specific
`
`limitations or provide any corresponding descriptions or notations to identify or point out the
`
`above-mentioned claim limitations, including the alleged “user profile,” “links,” “user library,”
`
`“files” and “user-selectable items,” leaving Samsung guessing as to what B.E. Tech. is referring.
`
`For instance, for so-called “user-selectable items,” B.E. Tech. includes a series of screen shots of
`
`what appear to be various programs running on the accused products – and that is all. The screen
`
`shots 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. The screen shots include numerous
`
`items, some of which might be “user-selectable,” and some of which might not be “user-
`
`selectable” and not all of which link to an information resource.6
`
`In short, B.E. Tech’s ICs are exactly the sort of bare contentions which numerous courts
`
`have found deficient and ordered to be supplemented. In a recent decision in Droplets, Inc. v.
`
`Amazon.com, Inc., C12-03733, 2013 WL 1563256 (N.D. Cal. Apr. 12, 2013), the plaintiff had
`
`failed to specifically point out where in the accused products the claimed “interactive link” was
`
`found but instead relied on bare screen shots. As in this case, the plaintiff’s L.P.R. 3-1 chart in
`
`Droplets “more or less parrots the language of the claim limitations” and “provides screen
`
`
`6 The ‘290 patent describes an “information resource” as a “source of information stored on a
`server or other computer that is accessible to other computers over a network.” (‘290 patent at
`col. 4, ll. 33-35).
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`-9-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 13 of 17 PageID 501
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`
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`shots.” Id. at *3. The Droplets court found that the screen shots (which in fact were more
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`detailed than B.E. Tech.’s since some of them had red boxes applied), “lack meaning” unless
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`accompanied by additional guidance. Id. (“Without the aid of labels or some other indication of
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`how the screenshots connect to the limitations, the infringement contentions fail to provide the
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`factual basis of the contentions.”) Accordingly, the plaintiff was ordered to supplement its
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`infringement contentions to include more detailed explanations.
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`Here, B.E. Tech. has failed to explain how any of the claim limitations can be read onto
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`the accused products, via the screen shots or otherwise. It is simply impossible to determine
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`from B.E. Tech.’s charts the basis for its infringement claim, to the extent it has one. B.E.
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`Tech.’s broad-based infringement contentions concerning the “user profile,” “user link,” “user
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`library” containing “one or more files” and related limitations are therefore deficient. B.E. Tech.
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`should be ordered to provide amended contentions that properly provide the factual basis for its
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`infringement claims against Samsung.
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`2.
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`B.E. Tech.’s ICs Fail To Properly Address The Doctrine Of
`Equivalents
`
`Just as B.E. Tech.’s claim charts contain no specific information identifying where the
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`claim limitations allegedly appear in the accused products, they also do not contain the detail
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`necessary to meet the portion of L.P.R. 3.1 regarding the doctrine of equivalents. For each claim
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`limitation, B.E. Tech. makes the following bald statement:
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`To the extent this element is not met literally, it is met under the doctrine of
`equivalents because they perform substantially the same function, in substantially
`the same way, to achieve substantially the same result. To the extent that any
`differences are alleged to exist between the claim element and Defendant’s
`Accused Instrumentalities, products and/or services, such differences are
`insubstantial.
`
`
`(See, e.g., Pettus Decl., Ex. A at 9.) Such “boiler-plate reservation is inadequate, and courts
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`dismiss claims under the doctrine of equivalents for relying solely on boilerplate language in
`-10-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 14 of 17 PageID 502
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`
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`their infringement contentions.” Nazomi Comms, Inc. v. Nokia Corp., 10-04686, 2013 WL
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`3146796, at *4 (N.D. Cal. June 18, 2013) (denying plaintiff’s ability to raise summary judgment
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`of infringement under the doctrine of equivalents for failure to provide an element-by-element
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`analysis in ICs). The doctrine of equivalents “is not designed to give a patentee a second shot at
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`proving infringement to the extent that any limitation is found to be not literally present.”
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`Rambus Inc. v. Hynix Semiconductor Inc., 05-00334, 2008 WL 5411564, at *3 (N.D. Cal. Dec.
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`29, 2008) (dismissing claim of infringement under doctrine of equivalents for failing to meet
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`Patent Local Rules requirements with respect to doctrine of equivalents ICs). Accordingly, B.E.
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`Tech.’s contentions supporting its claim for infringement under the doctrine of equivalents must
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`be supplemented, or its claim dismissed.
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`C.
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`B.E. Should Be Compelled to Comply with L.P.R. 3.1
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`B.E. Tech.’s failure to provide proper infringement contentions has severely prejudiced
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`Samsung’s ability to defend itself against B.E. Tech.’s accusations. Absent supplementation of
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`B.E. Tech.’s contentions, Samsung would be forced to prepare non-infringement defenses as to
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`177 products without having been provided a cogent theory of infringement on which B.E. Tech.
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`relies for many of the asserted claim limitations for each of the accused products. Accordingly,
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`it is respectfully submitted that B.E. Tech. should be compelled to supplement or amend its ICs
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`to comply with L.P.R. 3.1, so that Samsung can properly prepare its defenses, including its non-
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`infringement contentions.
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`D.
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`The Court Should Relieve Samsung of its Discovery Obligations Until After
`B.E. Tech. Supplies Its Amended ICs
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`This Court has the inherent power to stay Samsung’s discovery obligations until B.E.
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`Tech. complies with L.P.R. 3.1. Courts applying an identical local patent rule have “routinely
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`stay[ed] discovery until the plaintiff has met its Rule 3-1(c) obligations.” Shared Memory
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`-11-
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`

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`Case 2:12-cv-02825-JPM-tmp Document 50 Filed 07/23/13 Page 15 of 17 PageID 503
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`
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`Graphics LLC v. Apple Inc., 10-02475, 2011 WL 3878388, at *7 (N.D. Cal. Sept. 2, 2011)
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`(emphasis in original); see also Intertrust, 2003 WL 23120174, at *10-11 (ordering amendment
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`of deficient infringement contentions and stay of defendant’s invalidity disclosures until plaintiff
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`complied); Network, 2002 WL 32126128, at *20-21 (“The court strikes NCT’s second revised
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`preliminary contentions and require[d] NCT to provide revise[d] preliminary contentions . . . .
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`All discovery in this action is hereby STAYED until NCT serves its revised preliminary
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`contentions.”); Digital Reg of Texas, 2013 WL 633406, at *5 (“Courts in this district generally
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`do not order defendants to proceed with discovery in patent cases until the plaintiff provides
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`infringement contentions that comply with Patent