In Implicit Networks, Inc. v. Hewlett-Packard Company, 3-10-cv-03746 (CAND), Implicit asserted that HP infringed several of its patents. Under the Northern District of California's Patent Local Rules, Implicit was required to provide Infringement Contentions, which included:
(c) A chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality, including for each limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function. Patent L.R. 3-1(c).
HP had various complaints as to Implicit's Infringement Contentions. In one specific example:
HP also challenge[d] the sufficiency of Implicit's charts for the Application Server Patents, with respect to the Web Server Suite ("WSS") in the HP-UX server, arguing that Implicit has failed to meet the "reverse engineering or its equivalent" standard required by the Patent Local Rules to support its infringement contentions.
Implicit Networks, Inc. v. Hewlett-Packard Company, 3-10-cv-03746 (CAND September 7. 2011, Order) (Illston, J.) at 5:4-7. The Court agreed that Implicit failed to provide Infringement Contentions that met the "reverse engineering" standard and accordingly granted HP's motion to compel.
The Court appeared to rely on the fact that HP's WSS product was based on "open source software" and that the WSS is provided to customers for free, implying that anyone - including Implicit - could secure a copy. Implicit, therefore, could have and should have "reverse engineered" the WSS product and provided infringement contentions with respect to the WSS product that provided, with specificity, where the infringement occurred.
Also interesting, HP argued that Implicit's Infringement Contentions were deficient because they simply called out that HP's products infringed either literally or in the alternative under the doctrine of equivalents. To which the Court stated:
The Court agrees that Implicit cannot simply recite the doctrine of equivalents in its cover pleading to its claim charts without providing specific analysis, on an element-by-element basis, as to its theory of why there is infringement under the doctrine of equivalents. See, e.g., Optimumpath, LLC v. Belkin Int'l, Inc., 2011 U.S. Dist. LEXIS 41634, *25 (N.D. Cal. Apr. 12, 2011) (finding insufficient under Patent L.R. 3-1a blanket claim of infringement under doctrine of equivalents where plaintiff did not raise doctrine on a claim-by-claim basis as required under local rules and noting that "judges of this court have rejected plaintiffs' attempts to assert claims under the doctrine of equivalents with blanket statements."). If Implicit actually intends to assert the doctrine of equivalents for infringement, it must provide an element-by-element explanation of why and how in its claim charts.
Order at 6:2-11.