The opinion
1
2
3
4 UNITED STATES DISTRICT COURT
5 NORTHERN DISTRICT OF CALIFORNIA
6
7 CONCURRENT VENTURES, LLC, et al., Case No. 25-cv-09567-JST
8 Plaintiffs,
ORDER GRANTING IN PART
9 v. MOTION TO STRIKE INVALIDITY
CONTENTIONS
10 ADVANCED MICRO DEVICES INC., et
al., Re: ECF Nos. 190, 205
11
Defendants.
12
13 Before the Court are two motions concerning Defendants’ invalidity contentions in this
14 patent infringement action. The first is Defendants’ motion to confirm that their invalidity
15 contentions do not violate their Sotera stipulation. ECF No. 190. That motion is denied. The
16 second is Plaintiffs’ motion to strike certain invalidity contentions on the grounds that they violate
17 the Sotera stipulation and fail to comply with the Patent Local Rules. ECF No. 205. That motion
18 is granted in part and denied in part for the reasons set forth below.
19 I. BACKGROUND
20 Plaintiffs Concurrent Ventures, LLC, and Xtream Edge, Inc., filed this patent infringement
21 action against Defendants Advanced Micro Devices, Inc., (“AMD”) and Pensando Systems, Inc.,
22 in the Western District of Texas on March 29, 2024. ECF No. 1. Plaintiffs assert that Defendants
23 infringed five patents, which broadly aim to “increase the efficiency of communications between
24 [computer processing units, or] CPUs and other network components.” Id. ¶ 4, 12–16.
25 Between December 2024 and March 2025, Defendants filed petitions with the Patent Trial
26 and Appeal Board (“PTAB”) requesting inter partes review (“IPR”) of four of the five asserted
27 patents: U.S. Patent No. 10,985,943 (“the ’943 patent”), U.S. Patent No. 8,924,596 (“the ’596
1 ’753 patent”). ECF No. 78 at 1. On April 22, 2025, they filed a Sotera stipulation before the
2 district court, entitled “Defendants’ Stipulation Regarding Invalidity Contentions.” Id.; see Sotera
3 Wireless, Inc. v. Masimo Corp., No. IPR2020-01019, 2020 WL 7049373, at *7 (P.T.A.B. Dec. 1,
4 2020) (precedential). The stipulation provided that for each asserted patent for which IPR is
5 instituted, “Defendants will not pursue in this case the specific grounds [pursued through IPR] in
6 connection with the [asserted] patent and the challenged claims for that patent as originally issued,
7 or on any other ground for which the Board institutes, that was raised or could have been
8 reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis
9 of prior art patents or printed publications).” Id. at 3–4.
10 In opposing discretionary denial of their IPR petitions, Defendants relied on their Sotera
11 stipulation, arguing that it “mitigat[ed] the concern of duplicative efforts between the district court
12 and the Board.” ECF No. 206-5 at 10, ECF No. 206-6 at 10, 206-7 at 10. Three of the four IPRs
13 (those challenging the ’596, ’943, and ’753 patents) were subsequently instituted. ECF No. 190 at
14 7.
15 The case was transferred to this district on November 3, 2025. ECF No. 121. Plaintiffs
16 served infringement contentions on December 30, 2025, and Defendants served invalidity
17 contentions on February 13, 2026. ECF No. 190 at 7. The invalidity contentions include
18 extensive invalidity grounds that were or could have been raised in the IPRs, including via
19 incorporation by reference of the IPR petitions themselves. See ECF No. 205-14; ECF Nos. 205-
20 15–205-30.
21 On February 20, 2026, Plaintiffs sent a letter to Defendants arguing, in part, that the
22 invalidity contentions violated the Sotera stipulation. Id. On March 9, 2026, Plaintiffs emailed
23 the U.S. Patent and Trademark Office (“USPTO”) Director alleging that Defendants reneged on
24 their Sotera stipulations and requesting termination of the IPRs. ECF No. 190-3 at 2. On March
25 10, Defendants filed an amended stipulation concerning their invalidity contentions explaining
26 that the earlier invalidity contentions had included grounds covered by the IPRs only as a
27 “reservation of rights in the unlikely event that one or more of Defendants’ IPRs is de-instituted”
1 case any ground that was raised or could have been reasonably raised in those IPRs.” ECF No.
2 182 at 2. On March 13, 2026, the Director initiated Director Review to “consider whether
3 [Defendants] have violated their Sotera stipulation” based on their invalidity contentions in this
4 action, and whether to terminate the IPRs as a result. ECF No. 190-5 at 3.
5 On March 20, Defendants filed the first of the two motions before the Court, asking this
6 Court to issue an order confirming that no Sotera violation had occurred. ECF No. 190.
7 Accompanying that motion was an administrative motion to expedite, which argued that “[a]
8 prompt ruling on this issue is necessary so the USPTO Director can have the guidance of this
9 Court when deciding Plaintiffs’ motions to terminate, and to allow the instituted IPR proceedings
10 to move forward as the Sotera Stipulation remains in effect.” ECF No. 191. Denying the motion
11 to expedite, this Court observed that “there is no reason for this Court to rush its decision in an
12 effort to decide that question before the Patent Trial and Appeals Board does.” ECF No. 194 at 1.
13 Plaintiffs opposed the motion for a finding of no Sotera violation on April 3, 2026, ECF No. 206,
14 and Defendants replied on April 10, 2026, ECF No. 209.
15 Also on April 3, Plaintiffs filed a motion to strike portions of Defendants’ invalidity
16 disclosures. ECF No. 205. That motion argues that Defendants violated the Sotera stipulation
17 because the invalidity contentions “expressly assert every one of the paper grounds and references
18 Defendants rely on in each of the IPRs.” Id. at 8; ECF No. 205-14. It also argues that
19 Defendants’ invalidity charts fail to identify the theories of combinations alleged to render the
20 claims obvious, that they lack the required level of specificity because they reserve unidentified
21 theories, and that they omit required information about identified system art. ECF No. 205.
22 Defendants opposed the motion to strike on April 17, 2026. ECF No. 211. Plaintiffs replied on
23 April 24, 2026. ECF No. 214.
24 On May 12, 2026, the Director issued his decision, de-instituting IPR because Defendants’
25 invalidity contentions in this proceeding violated their Sotera stipulation. ECF No. 219-1 at 6.
26 II. JURISDICTION
27 The Court has jurisdiction under 28 U.S.C. § 1331.
1 III. DISCUSSION
2 A. Sotera Stipulation Violation1
3 A Sotera stipulation is a stipulation that an IPR petitioner who is also a defendant in a
4 patent case will not pursue in the district court proceeding the specific asserted grounds or any
5 other ground that was raised or could have been reasonably raised in the IPR petition. See Sotera
6 Wireless, 2020 WL 7049373, at *7. It is designed to mitigate “concerns of duplicative efforts
7 between the district court and the Board, as well as concerns of potentially conflicting decisions.”
8 Id. It “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.”
9 Id.
10 Defendants do not dispute that their invalidity contentions extensively asserted grounds
11 that either were or could have been raised in the IPRs. See ECF No. 205 at 8–9; ECF No. 211 at
12 6. Rather, because Defendants’ Sotera stipulation promised not to “pursue in this case” grounds
13 that were or could have been raised in the IPR, the dispute between the parties largely turns on the
14 meaning of the term “pursue.” Defendants argue that “they are not pursuing invalidity on prior art
15 grounds that could be raised in the parallel IPRs, but that they disclosed such prior art in their
16 initial invalidity contentions to comply with Local Rule 3-3 as a reservation of rights in case the
17 IPRs are ‘de-instituted.’” ECF No. 211 at 6; see also ECF No. 190 at 12–13 (arguing that the
18 Court must decide “whether merely disclosing prior art in a discovery document, as a contingent
19 preservation of Defendants’ rights and for discovery purposes, constitutes ‘pursuing’ the disclosed
20 prior art at trial or on the merits in this action”). Because the case had not yet progressed through
21
22
1 Defendants’ motion for a finding of no Sotera violation, ECF No. 190, seeks an impermissible
advisory opinion pertaining not to the proceedings in this Court, but to the parallel IPR
23
proceedings. See Church of Scientology of California v. United States, 506 U.S. 9, 12 (1992) (“It
has long been settled that a federal court has no authority to give opinions upon moot questions or
24
abstract propositions, or to declare principles or rules of law which cannot affect the matter in
issue in the case before it.”); ECF No. 209 at 7 (Defendants’ concession that they do “not ask the
25
Court to issue any instructions or rulings to the Director”). And the Director’s institution or de-
institution decision is, in any event, unreviewable. See 35 U.S.C. § 314(d); Thryv, Inc v. Click-To-
26
Call Techs., LP, 590 U.S. 45, 53 (2020). Nonetheless, the Court considers the arguments raised in
that briefing in ruling on Plaintiffs’ motion to strike certain invalidity contentions. As this order
27
concludes that the Sotera stipulation was violated, the motion for a finding of no Sotera violation
1 claim construction, exchange of expert reports, or summary judgment, Defendants argue, “it
2 makes no sense to even contend that a Sotera violation has occurred.” ECF No. 190 at 14. That is
3 because, in Defendants’ view, the risk of duplicative efforts and conflicting decisions between for
4 a does not occur until those later stages. Id. at 16.
5 By asserting the IPR grounds in their invalidity contentions, Defendants violated the
6 Sotera stipulation. The stipulation was not limited to particular stages of the litigation. ECF No.
7 78. In fact, Defendants entitled it “Stipulation Regarding Invalidity Contentions,” which at least
8 strongly suggests that it was meant to pertain to the invalidity contentions themselves. Id. at 1.
9 The invalidity contentions state without qualification that the asserted claims are anticipated
10 and/or rendered obvious by the violative paper references, which are further explained via
11 voluminous citations. See ECF No. 205-14. They also expressly and repeatedly incorporate by
12 reference the grounds described in the petitions for IPR. Id. These asserted invalidity grounds
13 compel a response from Plaintiffs in the form of fact discovery and ultimately expert analysis.
14 Defendants’ view that asserting grounds in the invalidity contentions constitutes only “disclosure”
15 and not also “pursuit” is unsustainable.
16 Although Defendants recharacterize the asserted IPR grounds as merely a “reservation of
17 rights” in case IPR is de-instituted,2 the invalidity contentions did not describe them as such. See
18 ECF No. 205-14 at 11, 61, 103. And critically, the Sotera stipulation also did not reserve the right
19
20 2 Defendants allege that de-institution is becoming more common, citing Hulu, LLC v. Piranha
21 Media Distribution, LLC, IPR2024-01252, Paper 27 (Acting Dir. Apr. 17, 2025) and Revvo
Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Dir. Nov. 3, 2025). In
22 Hulu, IPR was de-instituted because the district court had already entered judgment finding that
the claims challenged in the IPR were invalid under 35 U.S.C. § 101. Hulu, IPR2024-01252,
23 Paper 27, at 2. The Director concluded that “where a district court already has found the
challenged claims invalid, the efficiency and integrity of the patent system is best served by
24
denying institution.” Id. at 3. And in Revvo Techs., IPR was de-instituted because the petitioner
25 had taken contrary claim construction positions before the Board and the district court without
sufficiently explaining the discrepancy. Revvo Techs., IPR2025-00632, Paper 20, at 5. Any
26 nascent practice of de-institution does not alter the Court’s analysis. In Hulu, the defendant was
evidently not harmed by the de-institution of IPR given the Section 101 ruling. And in Revvo
27 Techs., de-institution was attributable to the defendant’s own misconduct, as is the case here. In
1 to pursue those invalidity grounds in this litigation. Rather, it waived pursuit of the IPR grounds
2 in exchange for the institution of IPR without any qualifications or conditions pertaining to the
3 possibility that IPR would later be de-instituted. ECF No. 78. The Director relied on that
4 unconditional Sotera stipulation in deciding to institute IPR. Had Defendants wished to preserve
5 their ability to pursue IPR grounds in district court after de-institution, then they could—and
6 should—have included such a provision in the Sotera stipulation. The Director would then have
7 taken that provision into account in deciding whether to institute IPRs in the first place.3
8 That also addresses Defendants’ fairness arguments. Defendants repeatedly argue that it is
9 unfair to hold them to their Sotera stipulation given de-institution of the IPRs because the Sotera
10 stipulation is predicated on instituted IPR proceedings and the need to avoid duplicative efforts or
11 conflicting results. See, e.g., ECF No. 190 at 14 n.4; ECF No. 211 at 11. Indeed, it may be harsh
12 to deny Defendants any forum to litigate their invalidity contentions. But that consequence
13 follows from Defendants’ conduct in unconditionally promising not to pursue IPR grounds in this
14 litigation to secure IPR and then pursuing those grounds here nonetheless.
15 Defendants also argue that they did not violate their Sotera stipulation by disclosing the
16 IPR invalidity grounds in their contentions because doing so was required by Patent Local Rule 3-
17 3. ECF No. 190 at 17–18. Patent Local Rule 3-3 requires that invalidity contentions identify
18 “each item of prior art that allegedly anticipates each asserted claim or renders it obvious.” Patent
19 L.R. 3-3(a). Defendants assert that “[c]ourts in this district have repeatedly required defendants to
20 disclose all invalidity grounds even when they did not intend to ultimately pursue those grounds at
21 the expert discovery, summary judgment, or trial stage.” ECF No. 190 at 17. But they cite no
22 cases supporting that proposition. Id.; ECF No. 211 at 7–8. On the contrary, Defendants’ cited
23 cases establish only that a defendant must include in its contentions any invalidity grounds that it
24 does mean to pursue. Catch a Wave Techs., Inc. v. Sirius XM Radio, Inc. denied a motion to
25
26 3 For these reasons, Defendants’ amended stipulation concerning their invalidity contentions does
not cure the violation by explaining that the precluded invalidity contentions were included only
27 as a reservation of rights. The fact that the violation is limited to a particular set of circumstances
1 amend invalidity contentions because the defendant had not shown good cause for the late
2 additions. No. C 12-05791 WHA, 2014 WL 186405, at *2 (N.D. Cal. Jan. 16, 2014). Although
3 that court did note that “[t]he rules do not state that defendants can limit themselves to only
4 references they believe are relevant to plaintiff's read of the patent,” it did so in the context of
5 rejecting the defendant’s argument that it should be allowed to add and pursue a reference not
6 previously disclosed because that reference had “‘only become relevant’ as plaintiff’s claim
7 construction position expanded.” Id. There was no question that the defendant intended to pursue
8 the invalidity ground at issue, but had failed to preserve its right to do so. The same is true of
9 MLC Intell. Prop., LLC v. Micron Tech., Inc.—it rejected the defendant’s argument that
10 subsequent events rendered certain references more significant and therefore justified adding them
11 belatedly to the invalidity contentions. No. 14-CV-03657-SI, 2018 WL 6046465, at *3 (N.D. Cal.
12 Nov. 19, 2018). Far from supporting Defendants’ position that the patent local rules require them
13 to assert grounds they do not intend to pursue, these cases show that the invalidity grounds are a
14 mechanism for preserving grounds that the defendant does mean to pursue.
15 Defendants’ characterization of the local rules is also out of step with the purpose of
16 invalidity contentions. Generally, invalidity contentions are intended to “confin[e] discovery and
17 trial preparation to information that is pertinent to the theories of the case,” O2 Micro Int’l Ltd. v.
18 Monolithic Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006), and to “streamline the
19 litigation process,” Evolusion Concepts, Inc. v. Cross Eng’g, LLC, No. 18-CV-0871 DMS (MSB),
20 2019 WL 13149923, at *1 (S.D. Cal. Apr. 8, 2019). Disclosing invalidity contentions that one
21 does not intend to pursue undermines these objectives by unnecessarily expanding or obfuscating
22 the universe of the case.
23 To side with Defendants would require the Court to read an exception into the Sotera
24 stipulation that does not exist. The Court finds persuasive the Director’s reasoning on this point in
25 his decision de-instituting IPR in this case:
26 Petitioner’s action of incorporating the IPR grounds into its invalidity
contentions violates the Stipulation it filed with the Office. Petitioner
27 stipulated that it “will not pursue” its IPR grounds in the Parallel
operates would effectively allow petitioners to maintain duplicative
1 grounds in district court until the eve of trial. Such a position is
problematic, as it could force patent owners to expend significant
2 resources substantively responding to such grounds in the district
court. This does not ensure that the IPRs are a “true alternative” to
3 parallel litigation.
4 ECF No. 219-1 at 5–6 (citations omitted). Defendants effectively take the position that they can
5 secure institution of IPR in part because of a Sotera stipulation, violate the Sotera stipulation
6 resulting in de-institution of IPR, and then pursue the IPR grounds in district court. The Court
7 concludes otherwise.
8 B. Obviousness
9 Patent Local Rule 3-3(b) requires invalidity contentions to disclose “[w]hether each item of
10 prior art anticipates each asserted claim or renders it obvious.” If obviousness is alleged, the rule
11 further requires “an explanation of why the prior art renders the asserted claim obvious, including
12 an identification of any combinations of prior art showing obviousness.” Id. While a prior
13 version of the rules required such invalidity contentions to describe the theory of motivation to
14 combine certain references, that requirement was removed in 2008. See Fujifilm Corp. v.
15 Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 757575, at *31 (N.D. Cal. Feb. 20,
16 2015). The rules still require, however, “some explanation of obviousness,” to which motivations
17 to combine remain relevant. Id.
18 Courts allow defendants to assert obviousness combinations by group if the theory of
19 obviousness is the same for every possible combination of the two groups. Avago Techs. Gen. IP
20 PTE Ltd. v. Elan Microelectronics Corp., No. C04 05385 JW HRL, 2007 WL 951818, at *4 (N.D.
21 Cal. Mar. 28, 2007); see also Slot Speaker Techs., Inc. v. Apple, Inc., No. 13-CV-01161-HSG
22 (DMR), 2017 WL 235049, at *6 (N.D. Cal. Jan. 19, 2017) (emphasis added).
23 Plaintiffs complain that Defendants include tables that “reserve the right to rely on
24 virtually every conceivable combination of prior art for obviousness, without charting or
25 explaining the substance of any such theory,” asserting generically that a person of ordinary skill
26 in the art would be motivated to combine any reference in the table with any other reference in the
27 table. ECF No. 205 at 11–12. In their opposition, Defendants agree “to remove the reservation
1 concern. ECF No. 211 at 18; ECF No. 214 at 11.
2 For the obviousness combinations that are specifically disclosed, Plaintiffs argue that
3 Defendants fail to explain how the prior art references would be combined. ECF No. 205 at 12.
4 But Defendants provide several examples of theories about why and how a POSITA would be
5 motivated to combine certain prior art references in a certain way. For example, for an
6 enumerated list of combinations that include the IBM Cell Broadband System(s), Defendants’
7 invalidity contentions explain that the “IBM Cell Broadband System(s) teaches queue
8 management, and there were teachings, suggestions, and motivations in the art for IBM Cell
9 Broadband System(s) for implementing queue management functionality,” so a POSITA would
10 “have been motivated to combine IBM Cell Broadband System(s) with known queue management
11 techniques that use software instructions on processors, particularly prior art for multiprocessor
12 systems and flow control.” ECF No. 211 at 14. On its face, this explanation addresses why a
13 POSITA would be motivated to make the combination and how that combination would be made.
14 Defendants’ other example is even more detailed. The invalidity contentions explain that
15 because “Alexander teaches a system with distributed processing across multiple processing units
16 that require queue management and flow control at both the global and local level[,] . . . a POSITA
17 would have naturally looked to other references that provide details related to multiprocessor
18 systems, computer architecture, queue management, reservation systems, and flow control,”
19 including “Drews, which teaches a queue reservation system based on a counter for multiprocessor
20 systems,” “Gewirtz, which teaches a programmable queue structure for multiprocessor systems
21 with flow control based on a queue state register,” or “Goyal, which teaches queue management
22 based on a centralized command processor for multiprocessor systems.” ECF No. 211 at 15. This
23 explanation states which components of the combination are drawn from Alexander (“a system
24 with distributed processing across multiple processing units . . .”) and which would be drawn from
25 each of the three other prior art references discussed (“a queue reservation system,”
26 “programmable queue structure,” etc.).
27 Plaintiffs suggest that these examples typify the deficiencies in Defendants’ invalidity
1 contentions sufficiently describe the combinations rendering the claims obvious.
2 C. Reliance on Undisclosed Invalidity Theories
3 “Our patent local rules require detailed disclosure of a party’s patent invalidity contentions
4 . . . with particularity and as to each prior art for each claim limitation.” Life Techs. Corp. v.
5 Biosearch Techs., Inc., No. C 12-00852 WHA, 2012 WL 4097740, at *1 (N.D. Cal. Sept. 17,
6 2012). This disclosure must include “[t]he identity of each item of prior art that allegedly
7 anticipates each asserted claim or renders it obvious” and a “chart identifying where specifically in
8 each alleged item of prior art each limitation of each asserted claim is found.” Patent L.R. 3–3(a),
9 (c).
10 Plaintiffs argue that Defendants’ invalidity contentions are improper insofar as they
11 describe certain contentions as “non-limiting examples.”4 ECF No. 205 at 14–15; ECF No. 214 at
12 14 (“Plaintiffs request is simple: Defendants should be held to what they actually identified in
13 their invalidity contention charts.”). Plaintiffs are correct that any addition to the invalidity
14 contentions will require leave of Court to amend. Defendants’ arguments about why they are
15 unable to enumerate their invalidity contentions more comprehensively at this juncture—including
16 that they were forced to use open-ended language because of uncertainties arising from Plaintiffs’
17 infringement contentions, ECF No. 211 at 215—go to good cause and can be raised in a future
18 motion for leave to amend.
19 Courts in this circuit have often struck language purporting to reserve the right to add to
20 invalidity contentions without seeking leave to amend. See 0912139 B.C. Ltd. v. Rampion USA
21 Inc., No. C18-1464JLR, 2019 WL 3082290, at *3 (W.D. Wash. July 15, 2019) (“Defendants,
22
23
4 Plaintiffs also assert that for some limitations, “Defendants provide no theory at all, simply
copying the claim language and providing pages of block quotes.” ECF No. 205 at 14. On this
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basis, they seek to strike ten claim charts. Id. at 21. Their motion does not adequately justify this
request. Plaintiffs cite the example of Borkowski ’529, but the chart for that reference connects
25
the relevant claim language to exemplary evidence of anticipation or obviousness from the
reference. ECF No. 205-36. Except for the request to strike the SAVI claim chart, to which
26
Defendants agree, this portion of the motion is denied. ECF No. 211 at 19.
5 Defendants assert that “the Court should order that Plaintiffs must amend their infringement
27
contentions to likewise remove all language that provides information by way of example.” ECF
1 however, cannot effect an end-run around Local Patent Rule 124’s good cause requirement by
2 incorporating by reference uncited material or reserving a right to rely upon uncited material.”);
3 Mitsubishi Elec. Corp. v. Sceptre, Inc., No. 2:14-cv-04994-ODW (AJWx), 2015 WL 2369557, at
4 *2 (C.D. Cal. May 18, 2015) (“Defendants may only rely upon cited portions of prior art
5 references” despite “purport[ing] to reserve the right to rely upon uncited portions of those
6 references.”); see also Ironworks Patents LLC v. Samsung Elecs. Co., Ltd., No. 17-cv-01958 HSG
7 (JSC), 2017 WL 4573366, at *3 (N.D. Cal. Oct. 13, 2017) (striking list of 29 “Additional
8 References” that the defendant sought to reserve the right to rely on, without justification, as
9 invalidating prior art).
10 Defendants rely on Avago, but that case does not support a general reservation of rights to
11 assert unclaimed grounds or supplement without receiving leave to amend. 2007 WL 951818, at
12 *2. The court upheld the use of the “see, e.g.” signal in a claim chart, but the defendant had
13 provided “written descriptions of each element of each asserted claim found in the particular prior
14 art reference” and “represented that the exemplar given with the signal is the prior art reference
15 that will be relied upon for the proposition stated in its Contentions.” Id.
16 The Court therefore grants the motion to strike as to language purporting to reserve the
17 right to add new invalidity contentions without seeking leave to amend.
18 D. Sufficient Specification of System Art
19 Patent Local Rule 3-3(a) requires that “[e]ach alleged sale or public use shall be identified
20 by specifying the item offered for sale or publicly used or known, the date the offer or use took
21 place or the information became known, and the identity of the person or entity which made the
22 use or which made and received the offer, or the person or entity which made the information
23 known or to whom it was made known.”
24 Plaintiffs contend that Defendants fail to identify each allegedly invalidating system
25 (identifying them only by “open-ended category”), the date of sale, public use, or disclosure, and
26 the specific entity or person involved in the sale or public disclosure. ECF No. 205 at 17. One
27 exemplary disclosure states that “NVIDIA/Mellanox System(s) including but not limited to
1 Interconnect, Mellanox OFED for Linux, Mellanox Technologies InfiniBand Fabrics, were sold,
2 offered for sale, made known, and/or publicly used before December 6, 2013.” Id. Plaintiffs have
3 not shown that this type of disclosure warrants striking. Defendants identify specific systems
4 (“RDMA Aware Networks,” “ConnectX-2 Single/Dual-Port Adapter Device with Virtual Protocol
5 Interconnect,” etc.) and a distribution or publicity date. Although Defendants do not specifically
6 state that NVIDIA is the entity who made the alleged offer or sale, that fact is implied by the
7 identification of those systems as NVIDIA systems. ECF No. 211 at 27. Information about who
8 received the systems is missing, but Defendants explain that they require discovery to learn it.
9 ECF No. 211 at 27 (“[W]ithout discovery from the third parties at issue, Defendants do not know
10 what financial or sales data the third parties will produce, or for which customers. Defendants
11 have issued subpoenas and will supplement their contentions as soon as the manufacturers of these
12 prior art systems produce evidence regarding the dates of sale and, if produced, the identities of
13 customers.”).
14 To the extent that details are missing, it is more useful to Plaintiffs for these positions to be
15 disclosed to the extent possible now and amended later to add detail, than for them to not be
16 disclosed at all now and added wholesale only once Defendants have all of the necessary
17 information. Amending these disclosures (especially to add undisclosed new systems) may
18 require leave to amend. And if Defendants never disclose all of the information required by the
19 rules, they may be precluded from relying the sales or public use allegations at issue. Nonetheless,
20 Plaintiffs have not justified striking these disclosures under the patent local rules. See O2 Micro,
21 467 F.3d at 1366 (“If a local patent rule required the final identification of infringement and
22 invalidity contentions to occur at the outset of the case, shortly after the pleadings were filed and
23 well before the end of discovery, it might well conflict with the spirit, if not the letter, of the notice
24 pleading and broad discovery regime created by the Federal Rules.”).
25 CONCLUSION
26 For the reasons set forth in this order, the Court hereby strikes all grounds asserting
27 anticipation or obviousness based on patents and printed publications alone or in combination with
] invalidity contentions, the Court also strikes reservation-of-right language in Defendants’ claim
2 || charts stating that each theory is exemplary or a non-limiting example. The motion to strike, ECF
3 No. 205, is otherwise denied.
4 IT IS SO ORDERED.
5 || Dated: September 14, 2026
6
JON S. TI
7 United States District Judge
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