Huang v. Nephos Inc.

• Court: District Court, N.D. California
• Decided: November 12, 2019
• Docket: 3:18-cv-06654
• Status: Unknown

Opinion

1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 10 XIAOHUA HUANG, No. C 18-06654 WHA 11 Plaintiff, 12 v. ORDER ON MOTION TO STRIKE 13 NEPHOS INC., 14 Defendant. / 15 16 INTRODUCTION 17 In this patent infringement action, accused infringer moves to strike pro se patent 18 owner’s infringement contentions, to dismiss the instant action with prejudice, and for 19 attorney’s fees. To the extent stated below, accused infringer’s motion is GRANTED. 20 STATEMENT 21 A prior order has set forth the background of this case (Dkt. No. 55). In brief, pro se 22 plaintiff Xiaohua Huang owns United States Patent Nos. 6,744,653 (“the ’653 patent”) and 23 6,999,331 (“the ’331 patent”), which patents generally involve ternary content addressable 24 memory (“TCAM”) technology used in the semiconductor chip industry. According to 25 plaintiff, the patents employ a TCAM design “using differential match line to achieve high 26 speed and lower power consumption” (Dkt. No. 65-9 at 11). Plaintiff accuses defendant’s chips 27 of infringing those patents (Compl. ¶¶ 1, 8, 11). 28 1 Since December 2018, plaintiff has been advised by defendant’s counsel multiple times 2 that his infringement contentions were non-compliant with the patent local rules. The Court has 3 twice warned plaintiff — including a prior order dated July 9 that struck his third set of 4 contentions for various deficiencies and offered him one more chance to amend — that failure 5 to serve proper contentions would likely result in dismissal of his action (Dkt. No. 55 at 9). 6 Plaintiff timely served his fourth set of infringement contentions (Dkt. No. 59). According to 7 this new set of contentions, plaintiff accuses defendant’s “Aries MT3250 Family, Aries Hybrid 8 ToR Switch, Taurus Family NP8360 Series, Taurus ToR and Fabrics Switch” products of 9 infringing Claims 1, 5, 8, 12, 15, and 17 of the ’653 patent and Claims 1 and 9 of the ’331 10 patent (Dkt. No. 59-1 at 1, 7). 11 Defendant now moves to strike (for a second time) plaintiff’s latest amended 12 infringement contentions for failure to comply with Patent Local Rules 3-1(c)–(e), for dismissal 13 with prejudice, and for an award of attorney’s fees (Dkt. No. 65). This order follows full 14 briefing and oral argument. 15 ANALYSIS 16 1. PATENT LOCAL RULE 3-1 NONCOMPLIANCE. 17 Defendant contends that plaintiff’s fourth set of infringement contentions are still 18 deficient under (1) Patent Local Rule 3-1(c) for failure to provide “chart[s] identifying 19 specifically where and how each limitation of each asserted claim is found within each Accused 20 Instrumentality”; (2) Patent Local Rule 3-1(d) for failure to identify “any direct infringement 21 and a description of the acts of the alleged indirect infringer that contribute to or are inducing 22 that direct infringement” for each asserted claim alleged to be indirectly infringed; and (3) 23 Patent Local Rule 3-1(e) for failure to demonstrate “[w]hether each limitation of each asserted 24 claim is alleged to be literally present or present under the doctrine of equivalents in the 25 Accused Instrumentality” (Dkt. No. 65 at 1–2). See Patent L.R. 3-1(c)–(e). This order agrees. 26 “Patent Local Rule 3 requires patent disclosures early in a case and streamlines 27 discovery by replacing the series of interrogatories that parties would likely have propounded 28 without it.” Huawei Techs., Co, Ltd v. Samsung Elecs. Co, Ltd., 340 F. Supp. 3d 934, 945–46 1 (N.D. Cal. 2018) (quoting ASUS Comput. Int’l v. Round Rock Research, LLC, No. C 12-02099 2 JST (NC), 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11, 2014) (Magistrate Judge Nathanael 3 Cousins)). Patent Local Rule 3-1, which sets forth the requirements for disclosing asserted 4 claims and preliminary infringement contentions, “require[s] the party claiming infringement to 5 crystallize its theories of the case early in the litigation and to adhere to those theories once 6 disclosed.” Shared Memory Graphics LLC v. Apple, Inc., 812 F. Supp. 2d 1022, 1024 (N.D. 7 Cal. 2010) (quoting Bender v. Advanced Micro Devices, Inc., No. C 09-1149 MMC (EMC), 8 2010 WL 363341, at *1 (N.D. Cal. Feb. 1, 2010) (Judge Edward Chen)). Though a plaintiff 9 need not supply evidence of infringement, “the degree of specificity under Local Rule 3-1 must 10 be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a 11 reasonable chance of proving infringement.” Id. at 1025; Creagri, Inc. v. Pinnaclife Inc., LLC, 12 No. C 11-06635 LHK (PSG), 2012 WL 5389775, at *3 (N.D. Cal. Nov. 2, 2012) (Magistrate 13 Judge Paul Grewal). 14 A. Claim Chart Deficiencies. 15 Patent Local Rule 3-1(c) requires plaintiff to provide “[a] chart identifying specifically 16 where and how each limitation of each asserted claim is found within each Accused 17 Instrumentality.” 18 This order finds that plaintiff’s fourth set of infringement contentions under Patent Local 19 Rule 3-1(c) are deficient for failure to provide the required limitation-by-limitation analysis. As 20 before, the claim charts here for both patents-in-suit are still mainly self-referential. That is, 21 they primarily consist of plaintiff’s opinion about how a claim limitation relates to a figure in 22 the specification. The chart for the first two limitations in Claim 1 of the ’331 patent illustrates 23 the problem as follows (Dkt. No. 65-9 at 16): 24 25 26 27 28 1 (1) an array of TCAM| 2 cells arranged in a plurality of tw 180 rows and a plurality of| = went mw S| 3 columns; Pes a at Fe | □ Le Te Tie ald 4 + Pacino (oa [ia Zoe | Saat ou2 “a □□□ □ Sense ! Circus. 5 iar t 1a fab 1 6 124m 1200 122m cht □ ‘PBS ees} □□□ se mile mbit mbl2 mbl2 mbiN) □□□ 8 FIG, 18 This claim section (1) read on the “CAM cell” symbol in 9 FIG 1Bofthe 14.8 Mbit TCAM design used in Aries 10 MT3250 Family of Nephos Inc. 11 http://www.nephosinc.com/nps/products/

12 TCAM used in “Aries MT3250 Family of Nephos (2) a plurality of match [ye” use “differential match line sensing design” as 13 lines, one match line for each row of TCAM cells. and shown in FIG. B of US patent 6,999,331. 14 operatively coupled to a 15 plurality of output transistors 1 5 for the TCAM cells in each eee eee nee □□□□□□□□□□□□□□□□□□□□□ ee . : 1 □□ (2Baa ttt am at 16 Tow; a plurality of dummy ! rear rea canta ant lines, one dummy line for 1 Loel 17 each row of TCAM cells and [I Tl» [Tn wt operatively coupled to a [ee at Fa a | St □ 18 - plurality of dummy ~ on on 19 transistors for the TCAM ; cells in each row; a am Bo atch Mon ti reurnyy CAM 20 eheeeey □□ 21 mBle Bl’ = mbi 2 mBl2 mbiN FIG. 1B 22 23 This claim section (2) read on the “match” and “dummy” line in FIG IBof the 14.8 Mbit TCAM design used in 9A Aries MT3250 Family of Nephos Inc. http://www.nephosinc.com/nps/products/ 25 26 Construing the contentions liberally, plaintiff merely opines for the first claim limitation that 27 it generally “read[s] on the “CAM cell’ symbol” in Figure 1B, which corresponding feature 28 exists somewhere in “the 14.8 Mbit TCAM design used in” the accused product. Plaintiff

1 then punctuates the analysis with a link to defendants’ website, which link contains only high- 2 level information about the four accused products. Same goes for the second claim limitation 3 — amd . 4 Nowhere — not in the claim charts or elsewhere in the infringement contentions — 5 does plaintiff tie any specific feature of an accused product to the claim language. As 6 defendants point out, plaintiff bases his infringement contentions on the following general 7 features allegedly found within all four of defendants’ products: (1) “differential match line 8 sensing” (or “differential”); (2) “voltage swing” (or “swing”); (3) “five Megabits” (or 9 “Megabits” or “MB”); (4) “more than 1 Ghz” (or “Gigahertz” or “Ghz”); and (5) “1K x 160 10 bits” (Dkt. Nos. 65-9 at 3–4; 72 at 4). Yet the claim charts hardly mention any of those 11 features within the context of the accused products. Nor do they point to any useful website 12 or document, or give any meaningful analysis of defendant’s products as they specifically 13 relate to the claim limitations. 14 We have been down this road before. A prior order dated July 9 struck plaintiff’s third 15 set of contentions (Dkt. No. 55). As relevant here, that order specifically noted that the then- 16 claim charts were deficient because they failed to cite a “single reference to defendant’s 17 documents or website” or give a “specific analysis of the accused products tying specific 18 features to the claim language” (id. at 3). Here, as with his prior infringement contentions, 19 plaintiff’s claim charts “merely describe the claims themselves and certain general features of 20 the accused products . . . with no serious attempt to explain how they read on anything 21 specifically in the accused product” (id. at 5). 22 Plaintiff responds by again attacking defendant for allegedly bringing the instant 23 motion in bad faith in order to “delay the case and increase” his “cost to reply” and 24 defendant’s alleged concealment of its investors “to cheat [him], the Court, Amazon.com Inc. 25 and [the] US government” (Dkt. No. 70 at 1, 6–8). As to the actual merits, plaintiff argues 26 that his disclosure under Patent Local Rule 3-1(b) offers product information copied from 27 defendant’s website (id. at 8–10) and that his claim charts “summarized” how each of Figures 28 1B, 2E, 8B, 8C, 9A, and 9B found within both specifications of the patents-in-suit is “read 1 by” the asserted claims (id. at 10). He again fixates on his prior meeting and email exchange 2 with an engineer from MediaTek (defendant’s predecessor company) in which defendant 3 allegedly disclosed certain features of all four accused products (ibid.). Plaintiff then 4 generally ties certain features to certain figures within the specifications. Specifically, 5 plaintiff’s own pitch of his claim charts is as follows (id. at 11): 6 The main idea is that: the ACL function of Aries MT3250 Family of Nephos Inc. uses TCAM designed by MediaTek, the TCAM designed by 7 MediaTek uses and contains the content of FIG.1B, FIG.2E ,FIG.7, 8B,FIG.8C, FIG.9A and FIG.9B. of US patent 6744654 and 6999331 as 8 stated in 3-1(b) and 3-1(c), if claim 1 read any of FIG.1B, FIG.2E ,FIG.7, 8B,FIG.8C, FIG.9A and FIG.9B. of US patent 6744654 and 6999331, then 9 claim1 read the TCAM used in Aries MT3250 Family of Nephos Inc. So the claim chart focus on explaining HOW the claim 1 of US patent 6999331 10 read FIG.1B, FIG.2E ,FIG.7, 8B,FIG.8C, FIG.9A and FIG.9B. of US patent 6999331 since the TCAM used in Aries MT3250 Family of Nephos Inc. 11 contains the content of FIG.2E ,FIG.7, 8B,FIG.8C, FIG.9A and FIG.9B. of US patent 6999331, so claim1 read FIG.2E ,FIG.7, 8B,FIG.8C, FIG.9A and 12 FIG.9B. of US patent 6999331,then claim 1 read the TCAM used in the Aries MT3250 Family of Nephos Inc, then the claim 1 read the Aries 13 MT3250 Family of Nephos Inc. The TCAM used in the Aries MT3250 Family of Nephos Inc. is WHERE. 14 But Patent Local Rule 3-1(c) requires him to “identify[] specifically where and how 15 each limitation of each asserted claim is found within each Accused Instrumentality.” Patent 16 L.R. 3-1(c) (emphasis added). To repeat, that means that plaintiff must specifically tie the 17 asserted claim language to some feature within the accused product. Plaintiff’s general 18 assertion that the claims (and the alleged corresponding figures in the specifications) again 19 fails to satisfy his “obligation to identify the particular claim components in each claim [and] 20 map those components onto the features of the allegedly infringing products.” Finjan, Inc. v. 21 Check Point Software Techs., Inc., No. C 18-02621 WHO, 2019 WL 955000, at *6 (N.D. Cal. 22 Feb. 27, 2019) (citing Shared Memory Graphics, 821 F. Supp. 2d at 1025). 23 B. Generic Indirect Infringement Theory. 24 The fourth set of infringement contentions also fail as to plaintiff’s allegation of 25 indirect infringement. Under Patent Local Rule 3-1(d), plaintiff must disclose for each claim 26 “any direct infringement and a description of the acts of the alleged indirect infringer that 27 contribute to or are inducing that direct infringement.” Plaintiff’s contentions, however, 28 merely states as follows (Dkt. No. 65-9 at 105): 1 The claim 1, 5, 8,12,15 and 17 of US Patent No.6744653 and Claim 1 and 9 of US Patent No.6999331 are directly infringed by the Chips of Nephos Inc. 2 including Aries MT3250 Family, Aries Hybrid ToR Switch, Taurus Family NP8360 Series, Taurus ToR and Fabrics Switch. Since the claims are 3 infringed by TCAM used in the chips, and the TCAM function are [sic] always used by the Switches which using the chips ,so [sic] the chips of 4 Nephos Inc. induced the parties, such as Amazon, which using the Chips of Nephos Inc. to infringe the US patent No. 6744653 and 6999331, which 5 contribute to or are inducing that indirect infringement. 6 A “general assertion of the elements of indirect infringement is plainly insufficient.” 7 Blue Spike, LLC v. Adobe Sys., Inc., No. C 14-01647 YGR (JSC), 2015 WL 335842, at *7 8 (N.D. Cal. Jan. 26, 2015) (Magistrate Judge Jacqueline Corley) (citing France Telecom, S.A. 9 v. Marvell Semiconductor, Inc., No. C 12-04967 WHA (NC), 2013 WL 1878912, at *5 (N.D. 10 Cal. May 3, 2013) (Magistrate Judge Nathanael Cousins)). “[B]oilerplate language that 11 simply claims an accused infringer provided instructions on, advertised, or promoted the use 12 of an accused product, without describing which instructions, advertisements, or promotions 13 led to what infringing behavior, does not suffice under PLR 3-1(d).” Comcast Cable 14 Commc’ns, LLC v. OpenTV, Inc., No. C 16-06180 WHA, 2017 WL 2630088, at *5 (N.D. Cal. 15 June 19, 2017) (citing France Telecom, 2013 WL 1878912, at *5). 16 Here, plaintiff includes Amazon as an example of an “induced party.” Otherwise, his 17 current disclosure under Patent Local Rule 3-1(d) remains the same as the disclosure 18 previously stricken in the order dated July 9 (see Dkt. No. 55 at 7). As before, this disclosure 19 offers only boilerplate language and fails to specify any act committed by defendant and thus 20 again fails to comply with Patent Local Rule 3-1(d). 21 C. Placeholder Assertions re Doctrine of Equivalents. 22 Plaintiff’s disclosures of infringement under the doctrine of equivalents also fail to 23 comply with Patent Local Rule 3-1(e), which requires plaintiff to disclose “[w]hether each 24 limitation of each asserted claim is alleged to be literally present or present under the doctrine 25 of equivalents.” He first discloses that “[e]ach limitation of the asserted claim[s] . . . are 26 literally infringed by the” accused products (Dkt. No. 65-9 at 105). He next provides that (id. 27 at 106 (emphasis added)): 28 Even the TCAM designed and used in Nephos Inc. in the future are [sic] changed to some extension, it has to use the differential match line sensing 1 because the chips now designed in Nephos are below 7nm process, the voltage supply is less than 0.6voltage, without using the differential match 2 line sensing, the noise is comparable to the signal, which is completely not working. To achieve high speed and low power, differential match line small 3 voltage swing sensing is the only choice. Use [of] the differential match line small voltage swing sensing to achieve high speed and low power TCAM 4 result is using the same way (method )to achieve the same result with the US patent 6744653 and 6999331. For the senior TCAM designer any variation 5 of differential match line sensing with small voltage swing to achieve low power is obvious to what US patent 6744653 and 6999331 taught, so any 6 change on the design taught in US patent 6744653 and 6999331 fall[s] into the infringement of Doctrine of equivalence [sic]. 7 As defendant points out, this disclosure relates to defendants’ future products, not the 8 presently accused products (and thus implicitly concedes that the accused products only 9 literally infringe). Further, while the disclosure only makes a blanket assertion that if any 10 changes are made, the infringement must fall under the doctrine of equivalents, “[t]he Patent 11 Local Rules require a limitation-by-limitation analysis.” Rambus Inc. v. Hynix Semiconductor 12 Inc., No. C-05-00334 RMW, 2008 WL 5411564, at *3 (N.D. Cal. Dec. 29, 2008) (Judge 13 Ronald Whyte). Plaintiff’s current disclosure thus effectively amounts to improper generic 14 “placeholder” language and is thus insufficient under Patent Local Rule 3-1(e). See Finjan, 15 Inc. v. Proofpoint, Inc., No. C 13-05808 HSG, 2015 WL 1517920, at *10 (N.D. Cal. Apr. 2, 16 2015) (Judge Haywood Gilliam, Jr.). 17 2. DISMISSAL WITH PREJUDICE. 18 Defendant again seeks to strike plaintiff’s deficient revised infringement contentions, 19 to dismiss the instant action with prejudice for plaintiff’s failure to prove his case, and an 20 award of attorney’s fees in connection with bringing both motions to strike as a sanction 21 against plaintiff for his conduct. 22 “Striking a patentee’s infringement contentions is a severe sanction that should be 23 used sparingly and only for good cause.” Proofpoint, 2015 WL 1517920 at *12. The prior 24 order has already recounted the numerous chances plaintiff has been given to comply with 25 Patent Local Rule 3-1 and plaintiff’s “troubling” litigation history, both in this case and in 26 prior cases (Dkt. No. 55 at 2, 8–9, 12–13). 27 In brief, since December 2018, defendant has advised plaintiff of the deficiencies in 28 his infringement contentions. In March 2019, the Court explicitly warned plaintiff that failure 1 to comply with the patent local rules could result in the dismissal of his case (Dkt. No. 41 at 2 9:14—20). And, the prior order striking plaintiff’ third set of infringement contentions clearly 3 warned him that “the Court w[ould] likely dismiss the instant action possibly with prejudice 4 and may well consider a motion for attorney’s fees and costs by defendants” if plaintiff failed 5 to file and serve “proper infringement contentions” (Dkt. No. 55 at 13). After multiple 6 wasted chances (despite repeated guidance from the Court) and nearly a year since he filed the 7 instant action, plaintiff still has yet to “crystallize” his infringement theory. See Shared 8 Memory Graphics, 812 F. Supp. 2d at 1024. This drawn-out litigation history demonstrates 9 that plaintiff will not remedy the identified deficiencies going forward. Good cause thus 10 exists here. Accordingly, defendant’s motion to strike plaintiffs infringement contentions is 11 GRANTED and the case is DISMISSED WITH PREJUDICE. In light of plaintiff’s pro se status 12 and the unlikelihood that plaintiff currently has sufficient funds, however, defendant’s request 13 for attorney’s fees is DENIED for now without prejudice to renewal after any appeal and affirmance. 15 CONCLUSION 16 To the foregoing extent, defendant’s motion to strike is GRANTED and the instant 17 action is DISMISSED WITH PREJUDICE. Judgment will follow.

19 IT IS SO ORDERED. 20 21 Dated: November 12, 2019. f A i hme WILLIAM ALSUP 22 UNITED STATES DISTRICT JUDGE 23 24 25 26 27 28