A party that stayed silent when served deficient infringement contentions has its silence held against it when later accusing the opposition of not making its case.
MLC Intellectual Property, LLC (“MLC”) sued Micron Technology, Inc. (“Micron”) in August 2014 for infringement of U.S. Patent No. 5,764,571 (“’571 Patent”), which claims a non-volatile memory device. MLC is accusing Micron’s flash memory devices. The case is pending before Judge Susan Illston.
In an Order issued on April 25, 2019, Judge Illston granted in part and denied in part Micron’s motion to strike MLC’s technical expert report on infringement.
Failure to challenge adequacy of infringement contentions contributes to failed motion to strike. Micron moved to strike portions of the report that identified structures corresponding to the means-plus-function claims because MLC failed to disclose those structures in its infringement contentions. As a result, Micron argued, MLC’s infringement contentions violated Patent Local Rule 3-1(c), which requires identification of structures, acts, or materials in the accused instrumentality that performs the claimed function. MLC argued that it could not identify specific Micron circuits as structures in the infringement contentions because it did not have the necessary technical discovery from Micron until after the deadline for infringement contentions. While Judge Illston found that Micron presented “some persuasive arguments,” she also noted that “Micron never challenged those contentions as inadequate for failure to identify structures for the means-plus-function claims.” Combining that with the fact that MLC had identified structures in claim construction briefing, Judge Illston denied Micron’s request to strike these portions of the expert report.
Patentee’s incorrect mapping of claim element proves costly. Micron also moved to strike portions of the report that discussed MLC’s infringement theory for claim element 45(d). MLC failed to properly chart claim element 45(d) in its infringement contentions, instead charting claim element 42(d) in its place. Despite notice from Micron, MLC repeated the error in subsequent versions of its infringement contentions. MLC attempted to pass off the error as “trivial,” a “typo”, and a “scrivener’s error” and argued that “any reasonable patent attorney would grasp the scope of the allegations, realize it was a typographical error, and have prepared its defense.” Although MLC had included disclosure for the components of claim element 45(d) in other portions of the infringement contentions, Judge Illston granted the motion to strike portions of the report discussing claim element 45(d), observing that “the onus is not on Micron” to “piec[e] together” portions of the infringement contentions.
 MLC Intellectual Property, LLC, v. Micron Technology, Inc., Case No. 3:14-cv-03657-SI (JCS), Dkt. 460 (N.D. Cal. April 25, 2019) (“Order”), at 1.
 Id. at 4.
 Id. at 10-11.
 Id. at 11.