New Pacer--DEFENDANTS TECHNOLOGY PROPERTIES LTD. OPPOSITION TO BARCO’S MOTION TO STRIKE PORTIONS OF TPL’S INFRINGEMENT CONTENTIONS FOR U.S. PATENT NO. 5,809,336; U.S. PATENT NO. 5,440,749; AND U.S. PATENT NO. 5,530,890

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UNITED STATES DISTRICT COUR
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
BARCO, N.V.,
Plaintiffs,
vs,
TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED,
Defendants.

DEFENDANTS TECHNOLOGY PROPERTIES LTD. OPPOSITION TO BARCO’S MOTION TO STRIKE PORTIONS OF TPL’S INFRINGEMENT CONTENTIONS FOR U.S. PATENT NO. 5,809,336; U.S. PATENT NO. 5,440,749; AND U.S. PATENT NO. 5,530,890

Date: February 27, 2012
Judge: Hon. James Ware

Table of Contents
TABLE OF CONTENTS ................................................................................................................. I
TABLE OF AUTHORITIES ......................................................................................................... II
INTRODUCTION ........................................................................................................................... 1
STATEMENT OF FACTS .............................................................................................................. 1
ARGUMENT ................................................................................................................................. 4
I. THE LEGAL STANDARD ................................................................................................ 4
A. Motions to Strike Are Requests to Compel Amended Contentions. ....................... 4
B. P.L.R. 3-1 Only Requires Notice of Theories of Infringement. .............................. 5
II. THE INFORMATION RELIED UPON BY TPL IS CLOSELY CONNECTED TO BARCO’S PRODUCTS ...................................................................................................... 6
A. All of the Publications TPL Relies Upon Have a Close Connection with the Accused Products. ................................................................................................... 6
B. Barco Mischaracterizes TPL’s Inclusion of Non-Barco Products in the Amended ICs. .......................................................................................................... 7
C. TPL Has Sufficiently Explained Why Information Regarding Chips That Have a Close Connection with the Chips in the Accused Products is Relevant. ................................................................................................................ 10
CONCLUSION ............................................................................................................................. 11
Table of Authorities
CASES
American Video Graphics, L.P. v. Electronic Arts, Inc., 359 F.Supp.2d 558, 560 (E.D. Tex. 2005) .......................................................................... 6
FusionArc, Inc. v Solidus Networks, Inc., No. C 06-06760 RMW (RS), 2007 WL 1052900, at *1 (N.D. Cal. Apr. 5, 2007) ............................................................................................................................... 4, 5
Network Caching Tech., LLC v. Novell Inc., No. C-01-2079 VRW, 2003 WL 21699799, at *4 (N.D. Cal. Mar. 21, 2003) .................... 5
Renesas Tech. Corp. v. Nanya Tech. Corp, No. C03-05709 JF (HRL), 2005 WL 2000926, at *5 (N.D. Cal Aug. 18, 2005) ................................................................................................................................... 5
Renesas Tech. Corp. v. Nanya Tech. Corp., No.03-05709 JFHRL, 2004 WL 2600466 at *1 (N.D. Cal. Nov. 10, 2004) ....................... 4
Shared Memory Graphics LLC v. Apple Inc., No. C-10-2475 VRW (EMC), 2010 WL 5477477 (N.D. Cal. Dec. 30, 2010) ............... 4, 5
U.S. v. Alexander, 106 F.3d 874, 876 (9th Cir. 1997) ....................................................................................... 4
RULES
Civil L.R. 72-2 ............................................................................................................................... 6
Patent Local Rule 3-1 ........................................................................................................ 1, 5, 7, 11

Introduction

Defendants Technology Properties Limited, Patriot Scientific Corporation, and Alliacense Limited (collectively “TPL”) respectfully submit this Opposition to Plaintiff Barco N.V.’s (“Barco”) Motion to Strike Portions of TPL’s Infringement Contentions (“Motion”).Barco’s motion should be denied because motions to strike infringement contentions (“ICs”) are seen as requests for amended contentions in this district. Moreover, TPL’s amended ICs are already sufficient to give Barco notice of TPL’s theories of infringement. All of the publications, non-Barco products, and chips relied upon by TPL are closely connected with Barco’s products and TPL has explained why such information was relied upon. As Judge Lloyd has already ruled in this case, that is all that Patent L.R. 3-1(c) requires.Statement of Facts Barco seeks to strike portions of TPL’s amended ICs based on Patent L.R. 3-1(c). As Barco notes, TPL’s original ICs were previously the subject of a motion to strike. In his September 20, 2011 Order (Dkt. 223) (“Order”), Magistrate Judge Lloyd largely rejected Barco’s complaints, finding they were being used as a means to litigate substantive issues1:
It makes sense, then, that ICs ‘are not meant to provide a forum for litigation of the substantive issues.’ [Citation.] But that is exactly what Barco appears to be doing.Judge Lloyd also disagreed with Barco’s assertion that TPL’s ICs were too vague2: Here, TPL’s ICs are not so bare. Indeed, it appears that TPL has provided in its ICs all of the information to which it currently has access. [Citation.] As such, the Court disagrees with Barco’s statement that TPL’s ICs are “simply too vague.” 1 Order at 5 (emphasis added), attached as Exhibit A. A copy of all exhibits referenced herein will be forwarded to the Special Master and all attorneys. However, the exhibits will not themselves be filed with the Court as they are voluminous and contain Highly Confidential Information. 2 Order at 6 (emphasis added). The only area where Judge Lloyd expressed any concern was as follows3: Thus, to the extent that TPL's ICs rely upon information concerning products not at issue in this litigation, TPL must amend its ICs to either provide information concerning the products at issue or explain how and/or why information concerning any products not at issue is relevant to its ICs. What TPL understood Judge Lloyd to be saying was that, to the extent TPL’s ICs relied on specifications, layouts or information concerning non-Barco products, it should make clear why the information was relevant to Barco products. In response to Judge Lloyd’s order, TPL served amended ICs on October 11, 2011 for seven of the eleven Barco products accused of infringing the ’336 patent, all five products accused of infringing the ’749 patent, and all five products accused of infringing the ’890 patent. These amended ICs provided significantly more information than the original ICs, and TPL believes they more than meet Judge Lloyd’s concern – indeed, they are as detailed as any ICs this Court is likely to encounter. Barco’s complaint appears not to be that the amended ICs are inadequate. Rather, Barco is again attempting to litigate the substantive issues of infringement. For instance, Barco disagrees that TPL can prove that the on-chip clock varies together with the CPU by using scientific literature (along with expert testimony) that explains how the physical properties of the chip are affected by process, voltage and temperature. Motion at 4. Barco is free to dispute TPL’s reliance on evidence at trial, but the fact that Barco disagrees with TPL’s infringement position does not make the ICs “insufficient” under the Patent L.R. 3-1(c). Order at 5 (ICs “are not meant to be a forum for litigation of the substantive issues.”). Similarly, Barco complains that the amended ICs include too much information, including information from other products not offered by Barco. However, as TPL has explained, these non-Barco products use the same Texas Instruments’ DLP technology that is 3 Order at 7.found in the Barco products. That is relevant – at least at the contention stage – to establishing infringement.For example, TPL accuses the Barco iCon H400 Projector of infringement. The iCon H400 uses DLP technology from Texas Instruments, and for which Texas Instruments supplies the chips. PIC12505. The original ICs for this single product spanned 40 pages. Exhibit B. The amended ICs for the iCon H400 are now 66 pages. Exhibit C. The amended ICs also incorporate a significant amount of new information through an additional 34-page compendium of information that was obtained directly from Texas Instruments, and which applies across products (“Compendium”). The amended ICs include pin-cites to the relevant portions of the Compendium. Barco claims it cannot understand why information regarding the presence of PLLs in a ViewSonic projector is included in the amended IC for the iCon H400. Motion at 8. As explained in the amended IC, the ViewSonic projector contains a DDP2230 chip, which is part of the same family of chips as is used in the iCon H400. Ex. C at PIC12516. As TPL’s expert, Dr. Oklobdzija, has already explained to Barco:4 Products within the same family generally have the same structure except for possibly some minor functional enhancements unrelated to clock generation, which is one of the basic implementational features that usually stay unchanged. In this case, all of Texas Instruments’ DLP line of processors come from the same product family, and I have strong reason to believe that all DLP processors have the same structure. Thus, TPL’s amended IC gives notice to Barco that the basis for TPL’s contention that the iCon H400 includes on-chip oscillator is, in part, the fact that contains a chip from the same family as the ViewSonic projector. TPL’s amended IC provides proof that the ViewSonic chip includes a PLL, which indicates the presence of on-chip oscillator.5 This is “strong reason to believe” that 4 Oklobdzija Declaration (Dkt. # 137) at ¶ 27 (emphasis added) (Exhibit D). 5 Ex. D at ¶ 27 (“I believe, as a person having ordinary skill in the art, that all DLP Processor chips contain an on-chip PLL.”)
the iCon H400 also includes a PLL, also indicating the presence of an on-chip oscillator. Therefore, to the extent that TPL is obligated to provide Barco with an explanation of why it is making an inference from one product family to another, Dr. Oklobdzija has clearly done so.

Argument

I. THE LEGAL STANDARD

A. Motions to Strike Are Requests to Compel Amended Contentions
Motions to strike are essentially requests to compel amended contentions. This District “recognizes such ‘motions to strike’ as requests that plaintiffs be compelled to amend their preliminary contentions to provide additional information.” FusionArc, Inc. v Solidus Networks, Inc., No. C 06-06760 RMW (RS), 2007 WL 1052900, at *1 (N.D. Cal. Apr. 5, 2007) (denying motion to strike) (emphasis in original); see Renesas Tech. Corp. v. Nanya Tech. Corp., No.03-05709 JF, 2004 WL 2600466 at *1 (N.D. Cal. Nov. 10, 2004) (referring motion to strike contentions to magistrate judge because “the primary relief Defendants seek is an order compelling Plaintiffs to provide adequate disclosures.”). Barco relies on Shared Memory Graphics LLC v. Apple Inc., No. C-10-2475 VRW (EMC), 2010 WL 5477477 (N.D. Cal. Dec. 30, 2010) as authority, because it is one of the rare instances this District “refused a party [an opportunity] to amend its Infringement Contentions.” Motion at 3. Barco’s reliance is misplaced. In Shared Memory, the Magistrate Judge specifically held that “several of plaintiff’s ICs are too vague,” plaintiff had already amended its contentions twice before and didn’t ask for further leave to amend. In the present case, Judge Lloyd expressly determined that TPL’s original ICs were not too vague. Order at 6 (“the court disagrees with Barco’s statement that TPL’s ICs are ‘simply too vague.’”). That determination is law of the case and should not be relitigated here. U.S. v. Alexander, 106 F.3d 874, 876 (9th Cir. 1997) (“Under the ‘law of the case,’ doctrine, ‘a court is generally precluded from reconsidering an issue that has already been decided by the same court…’”). Nevertheless, in the unlikely event that this Court finds that additional clarification is required, TPL respectfully seeks leave to amend its ICs, thereby avoiding the circumstance in Shared Memory entirely. B. Patent L.R. 3-1 Only Requires Notice of Theories of Infringement Patent L.R. 3-1(c) states that a party claiming infringement shall provide a “chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality.” Rule 3-1(c) “‘does not require [plaintiff] to provide evidence of infringement or to set forth ironclad and irrefutable claim constructions,’ nor does it require a plaintiff to provide support for its contentions.” Renesas Tech. Corp. v. Nanya Tech. Corp, No. C03-05709 JF (HRL), 2005 WL 2000926, at *5 (N.D. Cal Aug. 18, 2005) (citing Network Caching Tech., LLC v. Novell Inc., No. C-01-2079 VRW, 2003 WL 21699799, at *4 (N.D. Cal. Mar. 21, 2003). At this stage, “a party may comply with Patent L.R. 3-1 by setting forth particular theories of infringement with sufficient specificity to provide defendants’ with notice of infringement beyond that which is provided by the mere language of the patents themselves.” Network Caching Tech., LLC v. Novell, supra, 2003 WL 21699799, at *4 (emphasis added). Rule 3-1(c) does not require reverse engineering. FusionArc, 2007 WL 1052900, at *1. Most relevant here, infringement contentions “are not meant to provide a forum for litigation of the substantive issues.” However, as Judge Lloyd pointed out, “this is exactly what Barco appears to be doing.” Order at 5. Judge Lloyd’s observation applies in abundance here.

II. THE INFORMATION RELIED UPON BY TPL IS CLOSELY CONNECTED TO BARCO’S PRODUCTS

A. All of the Publications TPL Relies Upon Have a Close Connection with the Accused Products Barco claims that TPL’s Amended ICs improperly rely on scientific publications that explain how ring oscillators vary in response to manufacturing variation, operating voltage and/or temperature. Those same publications were included in the original ICs, and Barco made this same argument to Judge Lloyd in its prior motion. Dkt. # 208 at 2 (complaining that “TPL has relied on publications or ‘the laws of physics and the state of the art’ without showing any relationship of the publications or laws or ‘state of the art’ to any accused products.”). Judge Lloyd rejected this argument and did not require TPL to explain why the principles described in these scientific journals apply to Barco products. Barco has not followed the proper procedure to seek reconsideration of Judge Lloyd’s Order, so this portion of the motion should be rejected out of hand. Civil L.R. 72-2 (setting forth requirements for reconsideration of magistrate’s order). Moreover, as Dr. Oklobdzija previously explained, the type of circuit level detail that Barco seems to be seeking is impossible given that “[t]he minimal transistor feature size of the fabrication technology today is in the order of hundreds of angstroms, making it far below the wavelength of the visible light (even X-rays).” Ex. D at ¶ 61. Case law recognizes that in the high-tech context such detailed proof is often uniquely in the possession of accused infringers and third parties, and requires discovery. See Network Caching Tech., LLC v. Novell, Inc., supra, 2002 WL 32126128, at *7; see also American Video Graphics, L.P. v. Electronic Arts, Inc., 359 F.Supp.2d 558, 560 (E.D. Tex. 2005) (finding preliminary contentions sufficient where “defendants’ sole possession of the information plaintiffs need” precluded greater specificity). Thus, as Judge Lloyd has already determined, “it appears that TPL has provided in its ICs all of the information to which it currently has access,” and further information is not required. Order at 6. B. Barco Mischaracterizes TPL’s Inclusion of Non-Barco Products in the Amended ICs Barco also complains that TPL’s Amended ICs include non-Barco products to show where the infringement is found as required by Rule 3-1(c). See Patent L.R. 3-1(c) (“A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality.”). In doing so, Barco mischaracterizes TPL’s amended ICs by taking them out of context and not including the entire claim chart for a given claim element. For example, Barco claims “there is no relationship between the Barco and ViewSonic products.” Motion at 8-9 (emphasis original). However, the amended IC shows that a ViewSonic projector using a Texas Instruments DLP chip from the same family as the Barco projector does include a PLL, indicating the presence of an on-chip oscillator. Dr. Oklobdzija has given testimony that the reasonable inference is that the Barco product likewise es indicating the presence of an on-chip oscillator. If Barco believes that the ViewSonic schematic is not sufficient proof of an on-chip oscillator in its product, it will have the opportunity to dispute that at trial. However, for purposes of complying with Patent L.R. 3-1(c), this is more than sufficient. Barco further argues “none of these cited documents show that the 2230 Chip inside the ViewSonic Projector is configured and connected in the same manner as the 3320 [sic] Chip.”6 Motion at 8 (emphasis original). Again, Barco is improperly making “a factual assertion that 6 Barco’s motion uses the chip designations “3020” and “3320” interchangeably, making the argument confusing. Although TPL assumes Barco is referring to the DDP3020, it may in fact be referring to the DDP2230 or even some other chip.goes to the merits of TPL’s infringement claim.” Order at 6. As Judge Lloyd already ruled, that is not the purpose of infringement contentions. All that is required is that TPL gives Barco sufficient notice of its theory of infringement. TPL has done so. Another example of Barco’s apparent confusion is found at p. 10, wherein it complains that “TPL relies on a Toshiba Color Television 42HM66, which has no connection with any of the accused Barco products,” accompanied by the graphic shown below. Barco argues that “there is no showing by TPL that the DDP1011 Chip is configured in the same manner as the accused DDP3020 Chip in the accused Barco product.” Motion at 10 (citing PIC12637). However, the Barco product that is referenced by PIC12637 is the SLM R12+ Projector. See Barco Ex. D-2. According to the TPL’s amended ICs, the SLM R12+ projector does contain a DDP1011 Chip (just like the Toshiba Color Television), and not the DDP3020 Chip as Barco seems to believe. See Barco Ex. D-2 at PIC12635 (excerpted below). Barco is thus mistaken if it believes that TPL is attempting to use this amended IC to show that the “DDP1011 Chip is configured in the same manner as the DDP3020 Chip in the accused Barco products.” Motion at 10. When read in context, the relevance of the Toshiba Color Television becomes clear. The first graphic shows that the accused Barco product contains a DDP1101 Chip, a Direct Rambus Clock Generator (“DRCG”), RDRAM, and a 100 MHz crystal while the second and third graphic show that RDRAM, DRCG, and a 100 MHz crystal are part of both the TI DDP1000

INFRINGEMENT CONTENTIONS1

reference design and a Toshiba DLP television containing a DDP1011 Chip. TPL explains that the presence of these components confirms that “the products share the same base DLP system architecture.” (PIC12637) This is part of TPL’s theory of infringement and TPL has given Barco notice of it. Nothing more is required.C. TPL Has Sufficiently Explained Why Information Regarding Chips That Have a Close Connection with the Chips in the Accused Products is Relevant Barco further argues TPL’s Amended ICs are deficient because TPL relies, in part, on computer chips that are closely connected with the chips in Barco’s products to demonstrate Barco infringement. Again, Barco presents charts from the Amended ICs taken out of context:Motion at 12. This chart can be found in TPL’s infringement contentions right after the charts shown above. Barco Ex. D-2 at PIC12635-PIC12638. As mentioned above, TPL has shown that the DDP1000 and DDP1011 chips are from the same Texas Instruments DLP family and that “the DDP1011 and DDP2000 are in the same generation of DLP DDP Controllers, which evolved from the DDP1000 controller.” Id. at PIC12636. This establishes the relevance of the DDP1000 Chip in the amended ICs for products containing the DDP1011 Chip. Again, as Dr. Oklobdzija explained to Barco previously, relying on literature for chips in the same family to explain basic implementation features is appropriate as “[p]roducts within the same family generally have the same structure except for possibly some minor functional enhancements” and “[i]t is customary that products in the same family have the same numbering designation where the newer product has a higher number.” Ex. D at ¶ 27. That explanation is all the Judge Lloyd required.

Conclusion

TPL amended seventeen out of twenty-one ICs in order in response to Judge Lloyd’s Order, including a significant amount of additional material. This additional material explains how and/or why information concerning any non-Barco products is relevant. For these reasons, Barco’s motion to strike portions of TPL’s amended infringement contentions should be denied. To the extent that the court finds TPL’s amended ICs are not compliant with Patent L.R. 3-1(c), TPL respectfully requests further leave to amend.
DATED: February 3, 2012
AGILITY IP LAW, LLP
By:
/s/ James C. Otteson
James C. Otteson
Michelle G. Breit
Attorneys for Defendants
TECHNOLOGY PROPERTIES LIMITED