A Defendant's Understanding Of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted: "Any fool can know. The point is to understand." That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung. GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly "demonstrated an understanding" of the plaintiff's theories.

The litigation involves alleged direct and indirect infringement of patents related to augmented reality technology, and potentially implicates a massive cache of Samsung smart products. Early in the case, Samsung sought to strike GeoVector's Patent Local Rule infringement contentions describing direct infringement for two primary reasons: (1) the contentions did not specifically identify all of the accused products, and instead used representative examples; and (2) the contentions mixed and matched different products to various claims and limitations. GeoVector responded by arguing that Samsung already understood its infringement contentions based on informal correspondence and discussions amongst counsel, thus obviating the need to fully comply with Patent Local Rule 3-1(c). This argument failed.

Instead, Judge Orrick explained that the local rules require specific infringement contentions so that defendants can properly respond to the claims, but also so the Court can make a principled decision on whether discovery will proceed. Thus, even if Samsung truly did understand the plaintiff's direct infringement contentions, GeoVector still was required to articulate its contentions in the proper format contemplated by the rules. Yet, GeoVector failed to compare even a single accused product to its patents on a "claim by claim, element by element basis" - as required by Patent Local Rule 3-1(c) - instead mixing and matching elements of various Samsung products and third-party applications, and sometimes failing to identify any particular product at all. Judge Orrick noted that infringement cannot be shown by a "muddled hash of elements from different products."

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