Huang v. Mediatek USA, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: June 3, 2020
• Docket: 20-1251
• Status: Unpublished

Opinion

Case: 20-1251 Document: 32 Page: 1 Filed: 06/03/2020

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

XIAOHUA HUANG, Plaintiff-Appellant

v.

MEDIATEK USA, INC., FKA NEPHOS INC., Defendant-Appellee ______________________

2020-1251 ______________________

Appeal from the United States District Court for the Northern District of California in No. 3:18-cv-06654-WHA, Judge William H. Alsup. ______________________

Decided: June 3, 2020 ______________________

XIAOHUA HUANG, Los Gatos, CA, pro se.

JOHN HINTZ, Maynard, Cooper & Gale, PC, New York, NY, for defendant-appellee. Also represented by BRANDON H. STROY, San Francisco, CA. ______________________

Before PROST, Chief Judge, REYNA and STOLL, Circuit Judges. Case: 20-1251 Document: 32 Page: 2 Filed: 06/03/2020

STOLL, Circuit Judge. This appeal arises from an action for patent infringe- ment. Xiaohua Huang accused MediaTek USA Inc., for- merly known as Nephos Inc., of infringing certain claims of U.S. Patent Nos. 6,744,653 and 6,999,331, directed to ter- nary content addressable memory technology used in sem- iconductor chips. Mr. Huang challenges the district court’s decision striking his infringement contentions and dismiss- ing the action with prejudice based on Mr. Huang’s re- peated failures to comply with the Patent Local Rules of the U.S. District Court for the Northern District of Califor- nia. Mr. Huang also challenges the district court’s denial of his motion for sanctions, as well as his motion for a tem- porary restraining order and a preliminary injunction. Be- cause the district court did not abuse its discretion in striking the contentions, dismissing the action, or denying Mr. Huang’s motions, we affirm. BACKGROUND In his complaint, Mr. Huang alleged that MediaTek USA 1 directly and indirectly infringed the asserted ’653 and ’331 patent claims by making and selling chips that purportedly practice the claimed technology. Pursu- ant to Federal Rule of Civil Procedure 7.1, MediaTek USA filed a corporate disclosure statement stating that it was “wholly-owned, indirectly, by MediaTek, Inc. (located in Hsinchu City, Taiwan) through MediaTek Investment Sin- gapore Pte. Ltd. and Gaintech Co. Limited” and was “100 percent owned by Gaintech Co. Limited.” Nephos Inc.’s Corp. Disclosure Statement at 1, Huang v. Nephos Inc., No. 18-06654 (N.D. Cal. Nov. 21, 2018), ECF No. 9.

1 The complaint named Nephos as the sole defend- ant. After the lawsuit was filed, Nephos merged into Me- diaTek USA. Unless context requires otherwise, this opinion refers to the defendant-appellee as MediaTek USA. Case: 20-1251 Document: 32 Page: 3 Filed: 06/03/2020

HUANG v. MEDIATEK USA, INC. 3

Mr. Huang filed an objection to the corporate disclosure statement, contending that MediaTek USA had misrepre- sented its corporate ownership. MediaTek USA later in- cluded the contents of its corporate disclosure statement in its case management statement, to which Mr. Huang also objected. Prior to the initial case management conference, Mr. Huang served his preliminary infringement conten- tions on MediaTek USA. MediaTek USA notified Mr. Huang that his contentions were premature and defec- tive under the Patent Local Rules. During the initial case management conference, MediaTek USA informed the dis- trict court that Mr. Huang’s contentions were inadequate. The district court warned Mr. Huang that he must provide infringement contentions that complied with the require- ments of the Patent Local Rules or risk dismissal of his lawsuit. Thereafter, according to the district court, Mr. Huang served substantially the same infringement contentions. After MediaTek USA again informed Mr. Huang that his contentions were inadequate and of- fered him an opportunity to amend, Mr. Huang again served essentially the same infringement contentions. Me- diaTek USA then moved to strike Mr. Huang’s third set of infringement contentions as noncompliant with the Patent Local Rules and dismiss the action with prejudice. Mr. Huang, for his part, moved for sanctions against Medi- aTek USA and its outside counsel under Federal Rule of Civil Procedure 11, based on their alleged misrepresenta- tions regarding the corporate ownership of MediaTek USA. The district court granted MediaTek USA’s motion to strike, finding that Mr. Huang’s third set of infringement contentions were deficient under Patent Local Rule 3-1. Huang v. Nephos Inc., No. 18-06654, 2019 WL 2996432, at *1–5 (N.D. Cal. July 9, 2019). The district court allowed Mr. Huang “one last chance” to serve proper contentions, indicating that “no more amendments will be entertained and dismissal possibly with prejudice will be likely” if Case: 20-1251 Document: 32 Page: 4 Filed: 06/03/2020

Mr. Huang were to serve another set of defective conten- tions. Id. at *5. The district court also denied Mr. Huang’s motion for sanctions. Id. at *6–8. Following the district court’s order, Mr. Huang served his fourth set of infringement contentions. MediaTek USA moved to strike the contentions as noncompliant with Pa- tent Local Rule 3-1 and dismiss the action with prejudice. Shortly thereafter, Mr. Huang moved for a TRO and a pre- liminary injunction to block MediaTek USA from selling the accused products. The district court denied Mr. Huang’s motion, finding that he “failed to establish, at the very least, a likelihood of irreparable harm.” Order Denying Mot. for TRO and Prelim. Inj. at 1, Huang v. Nephos Inc., No. 18-06654 (N.D. Cal. Aug. 30, 2019), ECF No. 68. The district court subsequently struck Mr. Huang’s fourth set of infringement contentions and dismissed the action with prejudice. Huang v. Nephos Inc., No. 18-06654, 2019 WL 5892988, at *5 (N.D. Cal. Nov. 12, 2019). Mr. Huang appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). DISCUSSION Mr. Huang contends that the district court erred in striking his fourth set of infringement contentions as non- compliant with the Patent Local Rules. He also argues that the district court should have granted his motions for sanc- tions and injunctive relief. We discern no abuse of discre- tion in the district court’s rulings. I We first consider Mr. Huang’s challenge to the district court’s decision to strike Mr. Huang’s contentions and dis- miss the action based on his violations of Patent Local Rule 3-1. We review a district court’s application of its lo- cal rules for an abuse of discretion. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1321 Case: 20-1251 Document: 32 Page: 5 Filed: 06/03/2020

HUANG v. MEDIATEK USA, INC. 5

(Fed. Cir. 2016) (citing Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015)). “[T]his court gives broad deference to the trial court’s application of local procedural rules in view of the trial court’s need to control the parties and flow of litigation before it” and “so as not to frustrate local attempts to manage patent cases according to prescribed guidelines.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005) (quoting Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed. Cir. 2002)). The district court properly exercised its discretion in striking Mr. Huang’s contentions and dismissing the ac- tion with prejudice based on its finding that Mr. Huang re- peatedly failed to serve contentions that complied with the Patent Local Rules. These local procedural rules of the U.S. District Court for the Northern District of California “require parties to state early in the litigation and with specificity their contentions with respect to infringement and invalidity.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006). The district court found that Mr. Huang’s fourth set of infringement contentions were deficient under Patent Lo- cal Rule 3-1. In particular, the district court found that the claim chart set forth in Mr. Huang’s contentions did not “identify[] specifically where and how each limitation of each asserted claim is found within each Accused Instru- mentality,” as required by Patent Local Rule 3-1(c). Huang, 2019 WL 5892988, at *2–3 (alteration in original) (quoting N.D. Cal. Patent L.R. 3-1(c)). Specifically, Mr. Huang’s chart did not provide the requisite “limitation- by-limitation analysis” tying the “specific feature[s] of an accused product to the claim language.” Id. at *2. Instead, the contentions largely tied the claim limitations to his own figures in his patent specifications. The district court also found that the contentions provided only a general asser- tion of indirect infringement and thus lacked the specificity required by Patent Local Rule 3-1(d). See N.D. Cal. Patent Case: 20-1251 Document: 32 Page: 6 Filed: 06/03/2020

L.R. 3-1(d) (a party alleging indirect infringement must identify for each claim “any direct infringement” and de- scribe “the acts of the alleged indirect infringer that con- tribute to or are inducing that direct infringement”). The district court further found that the contentions did not comply with Patent Local Rule 3-1(e), which requires a party to identify “[w]hether each limitation of each as- serted claim is alleged to be literally present or present un- der the doctrine of equivalents in the Accused Instrumentality.” N.D. Cal. Patent L.R. 3-1(e). Finally, the district court noted that Mr. Huang had been permitted to amend his contentions for a third time and had been warned on more than one occasion that deficient conten- tions could result in dismissal of the action. On appeal, Mr. Huang contends that his contentions complied with Patent Local Rule 3-1 and should not have been stricken. For instance, he argues that because Medi- aTek USA engineers allegedly told him that the accused products were based on figures in the ’653 and ’331 pa- tents, his claim chart only needed to show that the figures embody the claims to satisfy Patent Local Rule 3-1(c). But as the district court correctly observed, Patent Local Rule 3-1(c) expressly requires an identification of where and how each claim limitation is found in each “accused instrumentality,” not in the patents’ figures. We have con- sidered Mr. Huang’s other arguments, but we do not find them persuasive. Given that Mr. Huang had four opportunities to serve proper contentions and yet failed to do so despite receiving multiple warnings and ample guidance from the district court, we conclude that the district court was well within its discretion to strike Mr. Huang’s contentions and dis- miss the action with prejudice. II We next consider Mr. Huang’s challenge to the district court’s denial of his motion for sanctions against MediaTek Case: 20-1251 Document: 32 Page: 7 Filed: 06/03/2020

HUANG v. MEDIATEK USA, INC. 7

USA and its outside counsel. “In reviewing a district court’s decision to deny Rule 11 sanctions, we apply the law of the regional circuit.” Raylon, LLC v. Complus Data In- novations, Inc., 700 F.3d 1361, 1367 (Fed. Cir. 2012) (citing Eon–Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1328 (Fed. Cir. 2011)). The Ninth Circuit reviews a denial of sanctions for an abuse of discretion. Islamic Shura Council of S. Cal. v. FBI, 757 F.3d 870, 872 (9th Cir. 2014) (citing Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 (1990)). “A district court would necessarily abuse its discretion if it based its ruling on an erroneous view of the law or on a clearly erroneous assessment of the evidence.” Id. (quoting Cooter & Gell, 496 U.S. at 405). We conclude that the district court did not abuse its discretion in holding that sanctions against MediaTek USA and its outside counsel were not warranted. Mr. Huang contends that MediaTek USA, through its counsel, misrep- resented its corporate ownership in its court filings in vio- lation of Rule 11. According to Mr. Huang, the district court ignored evidence that MediaTek USA was “owned by several Chinese governmental fund[s].” Appellant’s Br. 22–23. He accuses MediaTek USA of “presenting false information” to “hide its ownership” and “cheat” Mr. Huang, the district court, and the public. Id. at 22. We are unpersuaded by Mr. Huang’s arguments. Based on the record before it, the district court found that MediaTek USA’s outside counsel “based his filing upon in- formation obtained from in-house counsel for MediaTek Inc., defendant’s ultimate corporate parent.” Huang, 2019 WL 2996432, at *6. The district court also found that after Mr. Huang objected to the corporate disclosure state- ment, MediaTek USA’s outside counsel “received from de- fendant and sent to [Mr. Huang] certain documents such as defendant’s ‘Certificate of Incorporation,’ ‘Investor Rep- resentation Statement,’ and ‘Stock Issue Certificate’ in or- der to verify to [Mr. Huang] his prior representations of defendant’s ownership.” Id. The district court further Case: 20-1251 Document: 32 Page: 8 Filed: 06/03/2020

found “no evidence that [MediaTek USA’s outside counsel] acted in bad faith or otherwise violated his obligations un- der Rule 11 in his representations of defendant’s owner- ship status.” Id. Although Mr. Huang contends that he presented evidence to support his motion, the district court indicated that “those documents refer to ‘Nephos (Hefei) Co. Ltd.’—a separate non-party to the instant action.” Id. at *6 n.2. Mr. Huang has pointed to no evidence in the rec- ord suggesting that MediaTek USA’s court filings were in- correct. Under these circumstances, we disagree with Mr. Huang that the district court’s decision was based on a “clearly erroneous assessment of the evidence.” Islamic Shura Council, 757 F.3d at 872 (quoting Cooter & Gell, 496 U.S. at 405). III Finally, we turn to Mr. Huang’s challenge to the dis- trict court’s decision denying his motion for a TRO and a preliminary injunction. Both this court and the Ninth Cir- cuit review the denial of a preliminary injunction for an abuse of discretion. Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1363 (Fed. Cir. 2017); Nationwide Bi- weekly Admin., Inc. v. Owen, 873 F.3d 716, 727 (9th Cir. 2017); see also Stuhlbarg Int’l Sales Co. v. John D. Brush & Co., Inc., 240 F.3d 832, 839 n.7 (9th Cir. 2001) (noting that the circuit court’s “analysis is substantially identical for the injunction and the TRO”). “To obtain a preliminary injunction, a party must establish ‘that [it] is likely to suc- ceed on the merits, that [it] is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in [its] favor, and that an injunction is in the public interest.’” Metalcraft, 848 F.3d at 1363 (altera- tions in original) (quoting Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1352 (Fed. Cir. 2016)). We conclude that the district court did not abuse its discretion in denying Mr. Huang’s motion for injunctive re- lief. Mr. Huang generally asserts that enjoining MediaTek Case: 20-1251 Document: 32 Page: 9 Filed: 06/03/2020

HUANG v. MEDIATEK USA, INC. 9

USA from selling its accused products is in the “public in- terest.” Appellant’s Br. 30–31; Reply Br. 20–21. But Mr. Huang has not asserted, let alone established, a likeli- hood of success or that he would likely suffer irreparable harm in the absence of an injunction. Indeed, beyond gen- erally asserting the need to protect the public interest, Mr. Huang does not address the remaining three factors that a movant must establish to obtain injunctive relief. Accordingly, we are not persuaded that the district court abused its discretion in denying Mr. Huang’s motion. CONCLUSION For the foregoing reasons, we affirm the district court’s decisions striking Mr. Huang’s contentions, dismissing the action with prejudice, and denying Mr. Huang’s motions for sanctions and injunctive relief. AFFIRMED COSTS No costs.