United States District Court, D. Oregon
L. Close J. Andrew Love Kathleen S. Rose Patrick B. McAndrew
Ronald L. Flack, WRIGHT CLOSE & BARGER, LLP, Jeffrey
Stewart Love James E. Geringer John D. Vandenberg KLARQUIST
SPARKMAN, LLP, Luke Motley, IV, LAW OFFICES OF LUKE MOTLEY,
IV PC, Richard N. Laminack LAMINACK, PIRTLE & MARTINES,
Attorneys for Plaintiffs
W. Coviello WILMER CUTLER PICKERING HALE AND DORR LLP, Jordan
L. Hirsch Michael J. Summersgill, Todd C. Zubler,, Anna Marie
Joyce Renee E. Rothauge MARKOWITZ HERBOLD PC, Ryan J.
McBrayer PERKINS COIE, LLP, Sarah J. Crooks, PERKINS COIE,
LLP, Attorneys for Defendant
OPINION & ORDER
HERNÁNDEZ, DISTRICT JUDGE
patent infringement case, Defendant Intel Corporation moves
to compel Plaintiffs Fereydun Tabaian and Ahmad Ashrafzadeh
to identify the infringement contentions they will pursue at
trial. Plaintiffs move to amend their infringement
contentions. The Court grants Defendant's motion and
denies Plaintiffs' motion.
bring this patent infringement action against Defendant.
Compl., ECF 1. The patent at issue, U.S. Patent No. 7, 027,
944 is for “Programmable Calibration Circuit and Power
Supply Current Sensing and Droop Loss Compensation” and
was issued on April 11, 2006. Id. at ¶ 1.
Plaintiffs own the patent which they assert discloses a
circuit for using calibration for precise voltage regulation.
Id. at ¶ 2. Plaintiffs allege that Defendant
has infringed the ‘944 Patent by using it in
Defendant's Fully Integrated Voltage Regulator
technology. Id. at ¶¶ 4, 5. Plaintiffs
contend that Defendant infringes 18 claims of the ‘944
Patent. Id. at ¶¶ 37-77. Plaintiffs bring
claims for direct infringement of the ‘944 Patent under
35 U.S.C. § 271, 281-85. Id. at ¶¶
submitted their initial infringement contentions on August
14, 2018 and revised infringement contentions on November 16,
2018. The revised contentions are at issue in this motion.
identified thirteen infringement contentions which were
presented in a Summary Infringement Chart. See
Pls.' Resp. Ex. 1 (“Summary Infringement
Chart”), ECF 103- 1. On February 6, 2019, Defendant
filed the present motion to compel Plaintiffs to limit the
infringement contentions to those they intend to pursue at
trial. Def.'s Corr. Mot. Compel, ECF 101. Defendant asked
the Court to require Plaintiffs to reduce their contentions
from thirteen to three. Id. at 23. The parties fully
briefed the motion and, on March 1, 2019, the Court scheduled
a telephone conference to resolve the issue on March 20,
end of the day on March 18, 2019, Plaintiffs filed a motion
in which they asked the Court to replace their Summary
Infringement Chart of thirteen infringement contentions with
a new chart containing three infringement contentions.
Pls.' Mot. Supplement Record, ECF 121. Plaintiffs
represented to the Court that the amended contentions were
substantially narrower than their November 2018 contentions.
However, the day of the telephone conference, Defendant
submitted a response to Plaintiffs' motion in which it
argued that Plaintiffs' repackaged contentions actually
consist of eleven contentions, all of which are different
than the thirteen Plaintiffs presented in November of 2018.
On March 20, 2019, the Court heard argument from the parties
and took this matter under advisement. On March 22, 2019,
Plaintiffs filed a Reply to its Motion to Supplement the
Record, which it suggested the Court could construe as a
Motion for Leave to Amend Plaintiffs' Infringement
Court may take appropriate action to facilitate the
“just, speedy, and inexpensive disposition” of a
case. See Fed. R. Civ. P. 16(c)(2)(P). This
authority allows a Court to limit the number of asserted
claims or contentions in a patent case for the sake of
judicial economy and management of a court's docket,
Stamps.com Inc. v. Endicia, Inc., 437 Fed.
App'x. 897, 902 (Fed. Cir. 2011), and to enforce
procedures 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, ” Silicon Laboratories Inc. v.
Cresta Technology Corp., No. 5:14-CV-03227-PSG, 2015 WL
846679, at *1 (N.D. Cal. 2015). There is no precise number or
type of infringement contentions or claims that a party is
allowed to set forth; therefore, in determining the most
appropriate limit, courts are primarily guided by the goal of
“secur[ing] the just, speedy, and inexpensive
determination of every action and proceeding.”
Fed.R.Civ.P. 1; see also Memory Integrity, LLC v. Intel
Corp., No. 3:15-CV-00262-SI, 2015 WL 6659674, at *1 (D.
Or. Oct. 30, 2015); Medtronic Minimed Inc. v. Animas
Corp., 2013 WL 3322248, at *1 (C.D. Cal. Apr. 5, 2013).
“[T]he default presumption is that a party's
[preliminary infringement contentions] shall be deemed to be
that party's final contentions.” Townshend
Intellectual Prop., L.L.C. v. Broadcom Corp., No.
C06-05118 JFRS, 2007 WL 1994158, at *3 (N.D. Cal. July 5,
2007) (internal quotation marks and citation omitted). The
Northern District of California's Patent Local Rules
(“PLR”), which the Court has adopted, provide for
amendments to infringement contentions. PLR 3-6. Amendments
require “an order of the Court upon timely showing of
good cause.” Id. The Rule provides a
non-exhaustive list of “examples of circumstances that
may, absent undue prejudice to the non-moving party,
supporting a finding of good cause[.]” Id. In
contrast to the more liberal policy for amending pleadings,
“the philosophy behind amending claim charts is
decidedly conservative, and designed to prevent the
‘shifting sands' approach to claim
construction.” LG Elecs. Inc. v. Q-Lity Computer
Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002); see also
Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 236
F.Supp.3d 1110, 1112-13 (N.D. Cal. 2017).
parties and the Court appear to agree that it is unrealistic
for Plaintiffs to proceed to trial with thirteen infringement
contentions at the level of detail and complexity set forth
in Plaintiffs' November 2018 Summary Infringement Chart.
Doing so would put an undue burden on Defendants and the
Court during pretrial proceedings and would be unmanageable
at trial. The issue is whether ...