Akin Gump Strauss Hauer & Feld LLP

On June 19, 2017, Northern District of California Judge William Alsup granted-in-part and denied-in-part plaintiff Comcast Cable Communications, LLC’s (“Comcast”) motion to strike defendants OpenTV, Inc. and Nagravision SA’s (collectively “OpenTV”) infringement contentions. The court, however, did not strike with prejudice but instead treated Comcast’s motion as a motion to compel amendment of OpenTV’s infringement contentions so that OpenTV could cure deficiencies.

This dispute began in October 2015 when OpenTV approached Comcast about licensing its patent portfolio because it believed certain Comcast products infringed its patents. In October 2016, Comcast filed a declaratory judgment action of non-infringement of ten patents in OpenTV’s portfolio. On March 27, 2017 OpenTV submitted its infringement contentions, which Comcast moved to strike on April 20. In its motion to strike, Comcast contends that OpenTV’s infringement contentions violate Rule 3-1 by: “(1) relying too much on ‘information and belief,’ (2) charting asserted claims for only one or two accused products despite purporting to accuse more products of infringement, (3) asserting indirect infringement theories in generic terms by merely tracking the pertinent statutory language, (4) using only boilerplate language to assert infringement under the doctrine of equivalents, and (5) failing to identify specifically the patent owners’ own ‘instrumentalities and products purportedly embodying [one of the asserted patents].’”

Comcast’s first argument relied on the language of Rule 3-1, which requires an infringement chart to specify where and how each limitation is found in the accused products. The court noted, however, that Rule 3-1 does not prohibit allegations made upon “information and belief.” The Rule distinguishes between identifying elements of the accused product alleged to practice a claim limitation and items of proof showing that the accused elements in fact practice the limitation. The court found that this distinction was appropriate given Comcast’s restriction of its source code and set-top boxes. The court ultimately rejected Comcast’s arguments that OpenTV’s contentions were vague and/or conclusory.

Comcast next argued that OpenTV failed to show that the claims and products charted in its contentions were appropriately representative of all accused products. The court agreed that OpenTV had not shown that all accused products shared the same characteristics as the allegedly representative ones. In fact, OpenTV’s proposed amended contentions called into question whether the originally-charted products were representative because OpenTV refused to limit the universe of accused products based on the characteristics that OpenTV previously alleged were common to all accused products. The court, therefore, did not grant OpenTV leave to amend its contentions to address whether the originally-charted products were representative.

Comcast also argued that OpenTV’s contentions concerning indirect infringement were conclusory and insufficient. OpenTV argued that it incorporated Comcast’s user manuals and screenshots of Comcast’s website to show how Comcast instructed its customers. OpenTV did not, however, expressly tie Comcast’s marketing materials to its allegations of direct infringement. The court found that including boilerplate language without describing what instructions led to what infringing behavior was not enough to disclose indirect infringement under Rule 3-1.

Finally1, Comcast argued OpenTV failed to disclose adequately its theory of infringement under the doctrine of equivalents. The court agreed.

The court granted Comcast’s motion, but did not do so with prejudice. Instead, the court permitted OpenTV to amend its infringement contentions to cure the deficiencies, consistent with the court’s opinion.

Comcast Cable Commc’ns, LLC v. OpenTV, Inc., No. C 16-06180 WHA (N.D. Cal. June 19, 2017).

1 Comcast also argued that OpenTV did not demonstrate that the patent owners’ own ‘instrumentalities and products purportedly embodying [one of the asserted patents].  But OpenTV withdrew this assertion, mooting this point.