1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 CHRIMAR SYSTEMS INC, et al., Case Nos. 16-cv-00186-SI, 16-cv-00558- SI, 16-cv-00624-SI, 16-cv-00897-SI 8 Plaintiffs,

9 v. ORDER GRANTING DEFENDANTS’

MOTIONS FOR SUMMARY

10 RUCKUS WIRELESS, INC., JUDGMENT 11 Defendant. Re: Dkt. Nos. 144, 146

12 13 Before the Court are defendants’ Motions for Summary Judgment. Dkt. No. 144 (Defs’ ‘760 14 MSJ); Dkt. No. 146 (Defs’ ’825 MSJ).1 Having reviewed the parties’ submissions, the Court hereby 15 GRANTS both motions pursuant to Fed. R. Civ. P. 56. 16 17 BACKGROUND 18 Plaintiff Chrimar Systems Inc. and Chrimar Holding Company LLC (collectively, 19 “Chrimar”) filed patent infringement actions against Juniper Networks Inc. (“Juniper”), Ruckus 20 Wireless Inc. (“Ruckus”), Netgear Inc. (“Netgear”), and Fortinet Inc. (“Fortinet”) (collectively, 21 “defendants”) on July 1, 2015, in the Eastern District of Texas. See Dkt. No. 1 (Complaint). The 22 complaint alleged infringement of four patents held by Chrimar: U.S. Patent Nos. 8,115,012 (“’012 23 patent”), 8,942,107 (“’107 patent”), 8,902,760 (“’760 patent”), and 9,019,838 (“’838 patent”). Id. 24 The patents generally relate to ethernet connection technology. Id. In December 2015, the actions 25 were transferred to the Northern District of California. Dkt. No. 89 (Response to Motion to Stay). 26 1 Chrimar filed suit against each defendant creating four separate suits. The Motion for 27 Summary Judgment for the ’760 patent is the same across all four suits. For convenience, the 1 On July 8, 2016, defendant Juniper filed petitions for Inter Partes Review (“IPR”) of the four 2 patents and was later joined by defendants Ruckus and Netgear. Dkt. No. 126 at 2 (CMC Statement). 3 Specifically, Juniper, Ruckus and Netgear challenged original claims 73 and 145 in the ’760 patent. 4 Dkt. No. 144 at 5 (Defs’ ‘760 MSJ). On September 26, 2016, this Court stayed the patent 5 infringement actions until the Patent Trial and Appeal Board (“PTAB”) reached final written 6 decisions with respect to the four IPR petitions. Dkt. No. 96 at 10 (Order Granting Motion to Stay). 7 An ex parte reexamination was filed by a third party on the ’760 patent prior to the PTAB’s 8 final written decision, and claims 73-100, 104-169, and 173-219 were amended and found 9 patentable; amended claims 73 and 145 are of particular relevance for the instant motion regarding 10 the ’760 patent. Dkt. No. 122 at 2; see Dkt. No. 144 at 5 (Defendants’ ‘760 MSJ). Claim 145’s 11 amendments modified the claim’s dependencies but did not otherwise change the language of claim 12 145 itself. Compare Dkt. No. 149 at 8 with Dkt. No. 144 at 3-4. Amended claim 145 reads:

13 The BaseT Ethernet system according to any one of claims 73, 82- 91, 94-100, 104- 107, 108-121, 127-132, 134-139, or 140-144 wherein the piece of BaseT Ethernet 14 terminal equipment is a powered-off piece of BaseT Ethernet equipment. 15 Dkt. No. 144 at 3-4 (amended claim 145 in the ’760 patent no longer depends on claims 101-103). 16 Claim 73’s amendments included the additional limitation of “the piece of central network 17 equipment is a BaseT Ethernet hub[.]” Dkt. No. 144 at 3 (Defs’ ‘760 MSJ). The PTAB did not 18 review the ’760 patent’s amended claims that were found patentable during the ex parte 19 reexamination, including claims 73 and 145. Dkt. No. 144 at 4 (Defs’ ‘760 MSJ). 20 On April 26, 2018, the IPR proceeding found original claim 73 and 145 in the ’760 patent 21 invalid based on prior art. Dkt. No. 144 at 5 (Relevant prior arts include Hunter et al., PCT 22 Publication No. WO 96/23377 (published Aug. 1, 1996) (“Hunter”) and Bulan et al., U.S. Patent 23 No. 5,089,927 (issued Feb. 18, 1992) (“Bulan”)) (Defendants’ ‘760 MSJ). Chrimar appealed all 24 four of the PTAB’s final written decisions to the U.S. Court of Appeals for the Federal Circuit. Dkt. 25 No. 126. The Federal Circuit upheld the PTAB decision, including that original claims 73 and 145 26 of the ‘760 patent were invalid based on prior art. Id. Chrimar filed a petition for Writ of Certiorari 27 in the United States Supreme Court challenging the Federal Circuit’s affirmations. Id. On February 1 On March 21, 2019, Chrimar sent letters to each of the defendants’ outside counsel alleging 2 infringement of U.S. Patent No. 9,812,825. Dkt. No. 146 at 8 (Defs’ ’825 MSJ). The letter states, 3 in relevant part:

4 As you know, we represent Chrimar Holding Company, LLC and Chrimar Systems, Inc. (collectively, “Chrimar”) in connection with 5 certain intellectual property matters, including Chrimar’s lawsuit with Juniper Networks Inc. (“Juniper”). I write to inform you that besides 6 the Chrimar patents already asserted against Juniper, Juniper also infringes U.S. Patent No. 9,812,825 (“the ’825 patent,” attached). 7 Chrimar contends that at least the following products sold by Juniper (identified by product type and model number) infringe at least one 8 claim of the ’825 patent. 9 Id. (the letters to the defendants are substantively the same). In the letters, Chrimar lists defendants’ 10 products that allegedly infringe at least one claim of the ’825 patent’s 68 claims. Dkt. No. 146 at 6 11 n.2 (Chrimar listed 98 Juniper products, 70 Netgear products, 47 Fortinet products, and 32 Ruckus 12 products) (Defendants’ ’825 MSJ). On May 23, 2019, the ’825 patent expired. Id. at 8. 13 On December 16, 2019, this Court lifted the stay. Dkt. No. 123 (Order Lifting Stay). On 14 February 7, 2020, Chrimar filed its third amended complaint (“TAC”) across all four lawsuits, 15 alleging four causes of action for infringement of: (1) the ’107 Patent, (2) the ’760 Patent, (3) the 16 ’838 Patent, and (4) the ’825 Patent. Dkt. No. 129 (TAC). Chrimar’s TAC pleaded infringement 17 of the ’760 patent’s amended claim 145 and, for the first time, alleged infringement of the ’825 18 patent.2 Dkt. No. 129 at 3 (TAC). Chrimar argues defendants infringe claim 97+145 which has 19 limitations based on claims 73, 95, 96, and 97. Id. Defendants filed a Motion to Strike, or in the 20 alternative, to Dismiss the first cause of action of plaintiff’s TAC for infringement of the ’107 patent. 21 Dkt. No. 131. The Court dismissed the ’107 patent cause of action with prejudice. Dkt. No. 136. 22 On May 22, 2020, defendants filed the instant Motions for Summary Judgment. Dkt. No. 144 (Defs’ 23 ‘760 MSJ); Dkt. No. 146 (Defs’ ’825 MSJ). 24 25

26 2 In the TAC, Chrimar initially argued defendants infringe claim 73+145 and claim 97+145 of the reexamined ’760 patent. See Dkt. No. 144-4, Exhibit 1. However, Chrimar withdrew “its 27 allegation that defendants infringe claim 73+145 (i.e., amended claim 145 across 73)” and argues 1 LEGAL STANDARD 2 Summary judgment is proper “if the movant shows that there is no genuine dispute as to any 3 material fact and . . . is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The moving 4 party bears the initial burden of showing no genuine issue of material fact exists. Celotex Corp. v. 5 Catrett, 477 U.S. 317, 323 (1986). The moving party, however, has no burden to disprove matters 6 for which the non-moving party will bear the burden of proof at trial. The moving party need only 7 demonstrate to the Court an absence of evidence to support the non-moving party's case. Id. at 325. 8 Once the moving party has met its burden, the burden shifts to the nonmoving party to “set forth, 9 by affidavit or as otherwise provided in Rule 56, ‘specific facts showing that there is a genuine issue 10 for trial.’” T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 11 1987) (citing Celotex, 477 U.S. at 324). To carry this burden, the non-moving party must “do more 12 than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. 13 Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “The mere existence of a scintilla 14 of evidence . . . [is] insufficient; there must be evidence on which the jury could reasonably find for 15 the [non-moving party].” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). 16 In deciding a summary judgment motion, the Court must view the evidence in the light most 17 favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255. 18 “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences 19 from the facts are jury functions, not those of a judge . . . ruling on a motion for summary judgment.” 20 Id. However, conclusory, speculative testimony is insufficient to raise genuine issues of fact and 21 defeat summary judgment. Thornhill Publ'g Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 22 1979). The evidence the parties present must be admissible. Fed. R. Civ. P. 56(c)(2). 23

DISCUSSION RE ISSUE 1

24 Motion for Summary Judgment on U.S. Patent 8,902,760 25 I. Patent Validity 26 “A patent shall be presumed valid.” 35 U.S.C. § 282.3 “Each claim of a patent (whether in 27 1 independent, dependent, or multiple dependent form) shall be presumed valid independently of the 2 validity of other claims; dependent or multiple dependent claims shall be presumed valid even 3 though dependent upon an invalid claim.” 35 U.S.C § 282. A patent claim is invalid for obviousness 4 “if the differences between the subject matter sought to be patented and the prior art are such that 5 the subject matter as a whole would have been obvious at the time the invention was made to a 6 person having ordinary skill in the art . . . .” 35 U.S.C. § 103. “The burden of establishing invalidity 7 of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282. 8 Here, defendants argue the IPR’s final invalidity decision, affirmed in its entirety by the 9 Federal Circuit, renders amended claim 145 invalid and Chrimar is precluded from re-litigating the 10 issue of amended claim 145’s validity. Dkt. No. 144 at 5 (Defs’ ‘760 MSJ). Specifically, the IPR 11 found the ’760 patent’s original 145 claim obvious in relation to prior art. Id. Thus, the Court must 12 decide whether Chrimar is precluded from re-litigating amended claim 145’s validity in light of the 13 Federal Circuit’s final decision. 14 15 II. Issue Preclusion 16 “Issue preclusion (sometimes called collateral estoppel) bars re-litigation of issues 17 adjudicated in an earlier proceeding . . . .” Roche Palo Alto LLC v. Apotex, Inc., 526 F. Supp. 2d 18 985, 994 (N.D. Cal. 2007), aff'd, 531 F.3d 1372 (Fed. Cir. 2008). The Federal Circuit splits the 19 analysis in two parts. Soverain Software LLC v. Victoria's Secret Direct Brand Mgmt., LLC, 778 20 F.3d 1311, 1314 (Fed. Cir. 2015). 21 First, “the law of the regional circuit [applies] to the general procedural question of whether 22 issue preclusion applies.” Soverain, 778 F.3d at 1314 (emphasis added) (citing RF Del., Inc. v. Pac. 23 Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003)). In the Ninth Circuit, 24 issue preclusion has three requirements: (1) “the first proceeding ended with a final judgment on the 25 merits,” (2) “the party against whom collateral estoppel is asserted was a party or in privity with a 26 party at the first proceeding,” and (3) “the issue necessarily decided at the previous proceeding is 27 identical to the one which is sought to be relitigated.” Roche Palo Alto LLC, 526 F. Supp. 2d at 1 Second, the law of the Federal Circuit applies “to questions involving substantive issues of 2 patent law.” Soverain, 778 F.3d at 1314 (emphasis added) (citing Ohio Willow Wood Co. v. Alps 3 S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). These substantive issues include issue preclusion 4 questions implicating “substantive patent law issues[] or [questions implicating] the scope of [the 5 Federal Circuit’s] previous decisions.” Id. at 1314 (citing RF Del., Inc., 326 F.3d at 1261). 6 7 A. Ninth Circuit Procedural Threshold Inquiry 8 --- Final Judgment on the Merits. Defendants seek to preclude Chrimar’s cause of action 9 regarding the ’760 patent based on the IPR’s final decision wholly affirmed by the Federal Circuit. 10 Dkt. No. 144 at 8 (Defs’ ’760 MSJ). The IPR’s final decision found the challenged claims of the 11 original ’760 patent, including original claim 145, obvious over the prior art Hunter and Bulan. Id. 12 at 5. Original claim 73 and 145 in the ’760 patent were deemed invalid. Id. Chrimar filed a petition 13 for Writ of Certiorari in the United States Supreme Court challenging the Federal Circuit’s 14 affirmations, which was denied. Id. The IPR ended with a final judgment on the merits, affirmed 15 by the Federal Circuit. 16 Chrimar argues issue preclusion does not apply because defendants’ burden of proof is 17 higher in the federal district court than before the PTAB. Dkt. No. 149 at 12 (The burden in the 18 PTAB is based on the preponderance of the evidence, and the burden in the district court is based 19 on clear and convincing evidence) (Opp. to ’760 MSJ). This argument is unpersuasive. “[Supreme 20 Court precedent] and the Restatement make clear that issue preclusion is not limited to those 21 situations in which the same issue is before two courts. Rather, where a single issue is before a 22 court and an administrative agency, preclusion also often applies.” B & B Hardware, Inc. v. Hargis 23 Indus., Inc., 575 U.S. 138, 148 (2015) (emphasis in original) (holding a federal court should give 24 preclusive effect to Trademark Trial and Appeal Board decisions if ordinary elements of issue 25 preclusion are met).4 Additionally, an agency’s adjudication can permit issue preclusion if the 26 agency adjudicates within its authority. B & B Hardware, Inc., 575 U.S. at 156 n.4. Here, the PTAB 27 1 adjudicated the validity of claim 145 within its authority. The IPR ended with a final judgment on 2 the merits which was affirmed by the Federal Circuit. 3 --Privity. Here, Chrimar was a party in the IPR and is a party in the instant suit. Dkt. No. 4 144 at 5 (Defs’ ‘760 MSJ). Thus, Chrimar meets the privity requirement. 5 --Identicality of Issues. The IPR, in relevant part, determined original claim 73 and 145 in 6 the ’760 patent were obvious in light of prior art. Dkt. No. 144 at 9 (Defs’ ’760 MSJ). The instant 7 dispute relates to the validity of amended claim 145. Dkt. No. 149 at 6 (Opp. to ’760 MSJ). As 8 discussed below, defendants argue that because amended claims 73 and 145 are substantively 9 similar to the original claims which were invalided by the IPR’s final written decision, the Court 10 should preclude Chrimar from relitigating the same issue. Chrimar concedes the IPR found original 11 claims 73 and 145 invalid, but distinguishes the instant dispute, arguing the IPR did not concern 12 amended claim 145 which has different limitations. Dkt. No. 149 at 8; see Dkt. No. 144 at 3-4 13 (amended claim 145 no longer depends on claims 101-103). 14 This argument is unpersuasive. As a procedural matter, the Roche Palo Alto LLC court 15 indicates the relevant “issue” is the patent validity itself. Roche Palo Alto LLC, 526 F. Supp. 2d at 16 994–95 (N.D. Cal. 2007) (citing Applied Medical Resources Corp. v. U.S. Surgical Corp., 352 17 F.Supp.2d 1119, 1124–26 (C.D. Cal. 2005)) (using Ninth Court issue preclusion precedent in a 18 patent matter involving issue preclusion). Here, the inquiry relates to the validity of the ‘760 19 patent’s 145 claim. Thus, as a procedural matter, the IPR could have preclusive effects based on 20 the application of substantive Federal Circuit precedent. 21 22 B. Substantive Application of Federal Circuit Precedent 23 Defendants argue the IPR and the instant suit involve identical issues. Dkt. No. 144 at 9 24 (Defs’ ’760 MSJ). Chrimar asserts the IPR did not reach the controversy in the instant suit because 25 amended claim 145 was not at issue in the IPR proceeding. Dkt. No. 149 at 8, 14 (Opp. to ’760 26 MSJ). Chrimar argues the IPR decision does not preclude it from asserting an infringement cause 27 of action based on claim 97+145 which has limitations based on claims 73, 95, 96, and 97. Dkt. 1 combination discloses the specific limitations in 97+145. Dkt. No. 149 at 11 (Opp. to ’760 MSJ). 2 Chrimar’s argument is not persuasive. “[The Federal Circuit] does not limit [issue 3 preclusion/] collateral estoppel to patent claims that are identical. Rather, it is the identity of 4 the issues that were litigated that determines whether collateral estoppel should apply.” Ohio 5 Willow Wood Co., 735 F.3d at 1342 (citing Bourns, Inc. v. U.S., 537 F.2d 486, 491 6 (1976); Westwood Chem., Inc. v. U.S., 525 F.2d 1367, 1372 (1975)). “If the differences between 7 the unadjudicated patent claims and adjudicated patent claims do not materially alter the question 8 of invalidity, collateral estoppel applies.” Ohio Willow Wood Co., 735 F.3d at 1342 (citing 9 Bourns, 537 F.2d at 493). Here, unadjudicated amended claim 145 and the adjudicated claim 145 10 have two differences. First, amended claim 145 no longer depends on claim 101-103. Dkt. No. 144 11 at 3-4 (Defs’ ’760 MSJ). Amended claim 145 reads: 12 The BaseT Ethernet system according to any one of claims 73, 82- 91, 94-100, 104-107, 108-121, 127-132, 134-139, or 140-144 wherein 13 the piece of BaseT Ethernet terminal equipment is a powered-off piece of BaseT Ethernet equipment. 14 15 Dkt. No. 144 at 3-4 (Defs’ ’760 MSJ). Original claim 145 included claims 101-103 in the original 16 claim language. Id. Second, amended claim 145 depends on amended claim 73. Id. at 3. The IPR 17 has preclusive effects because these differences do not materially alter the question of invalidity. 18 The fact that amended claim 145 is no longer dependent upon claims 101-103 does not 19 materially alter the subject matter of amended claim 145. A multiple-dependent claim, like the 20 original and amended claim 145, may be dependent on different claims but their subject matter stays 21 the same. The differences between the claims is amended claim 145 excludes 3 claims. Id. at 3-4. 22 The IPR determined original claim 145 was obvious based on prior art and therefore invalid. Dkt. 23 No. 144 at 5 (Defs’ ‘760 MSJ). A patent claim is invalid for obviousness “if the differences between 24 the subject matter sought to be patented and the prior art are such that the subject matter as a whole 25 would have been obvious at the time the invention was made to a person having ordinary skill in the 26 art . . . .” 35 U.S.C. § 103 (emphasis added). Thus, the IPR determined original claim 145’s subject 27 matter, as a whole, was invalid based on Hunter and Bulan. The subject matter as a whole of 1 Ethernet systems. Dkt. No. 144 at 9 (Defs’ ‘760 MSJ). 2 Additionally, amended claim 145’s dependency on amended claim 73 does not materially 3 alter the question of invalidity. Amended claim 73 adds the limitation: 4 the piece of central network equipment is a BaseT Ethernet hub 5 Dkt. No. 144 at 9 (Defs ’760 MSJ) (emphasis added). This added limitation does not materially 6 alter the question of invalidity because the PTAB determined Hunter meets this limitation when the 7 PTAB invalidated claim 1 of the original ’760 patent. Dkt. No. 144 at 9 (Defs’ ’70 MSJ); Dkt. No. 8 144-5, Exhibit 2 at 18 (IPR Final Written Decision). Specifically, Hunter teaches:

9 a 10Base-T Ethernet system with a piece of central 10Base-T Ethernet equipment, such as a hub, and a piece of 10Base-T Ethernet terminal 10 equipment, such as an Integrated Services Terminal Equipment (“ISTE”) device. 11 12 Dkt. No. 144-5, Exhibit 2 at 18 (emphasis added) (IPR Final Written Decision). 13 Ultimately, like the patentee in Soverain Software LLC, Chrimar has “failed to explain how 14 the additional limitations would change an invalidity analysis” and has “not met its burden in 15 opposing summary judgment.” Soverain Software LLC, 778 F.3d at 1319 (citing Ohio Willow Wood 16 Co., 735 F.3d at 1343). Thus, Chrimar is precluded from re-litigating the validity of the ’760 patent 17 and the defendants’ motion regarding the’ 760 patent is GRANTED. 18

DISCUSSION RE ISSUE 2

19 Motion for Summary Judgment on U.S. Patent 9,812,825 20 In patent infringement suits, the party claiming infringement must give notice to the alleged 21 infringer to recover damages pursuant to 35 U.S.C. § 287. A party claiming infringement may give 22 constructive notice or actual notice. Id. Constructive notice requires markings of the patented 23 articles. Id. “Actual notice requires the affirmative communication of a specific charge of 24 infringement by a specific accused product or device.” Amsted Indus. Inc. v. Buckeye Steel Castings 25 Co., 24 F.3d 178, 187 (Fed. Cir. 1994). Here, Chrimar’s basis for notice is a letter sent to each of 26 defendants’ counsel. Dkt. No. 146 at 6 (Defs’ ’825 MSJ); See Dkt. No. 108 ¶ 51 (TAC) (“Juniper 27 has been on notice of the ’825 Patent since at least as early as March of 2019.”). Thus, the Court 1 “To serve as actual notice, a letter must be sufficiently specific to support an objective 2 understanding that the recipient may be an infringer.” Funai Elec. Co. v. Daewoo Elecs. Corp., 616 3 F.3d 1357, 1373 (Fed. Cir. 2010) (citing Gart v. Logitech, Inc., 254 F.3d 1334, 1346 (Fed. Cir. 4 2001)). Actual notice “is satisfied when the recipient is informed of the identity of the patent and 5 the activity that is believed to be an infringement . . . .” SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 6 127 F.3d 1462, 1470 (Fed. Cir. 1997). A patentee’s communication is “sufficient specificity” based 7 on the action of the patentee. Gart, 254 F.3d at 1346. 8 Chrimar argues the letter provides sufficient notice of a specifically accused product or 9 device. Dkt. No. 148 at 9 (Opp. to ’825 MSJ). Chrimar’s letter states defendants “infringe[] U.S. 10 Patent No. 9,812,825 (“the ’825 patent,” attached),” thus identifying the patent number and 11 attaching the patent to the notice letter. Id. In a vacuum, Chrimar’s letter seems sufficiently specific 12 to support an objective understanding that the recipient may be an infringer. See U.S. Philips Corp. 13 v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1375 (Fed. Cir. 2007) (A finding of actual notice where a 14 copy of the front page of the patent was attached to the letter). However, the circumstances 15 surrounding the notice influence the analysis. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 16 1446 (Fed. Cir. 1998) (citing Amsted, 24 F.3d at 187)) (“In determining whether the patentee marked 17 its products sufficiently to comply with the constructive notice requirement, the focus is not on what 18 the infringer actually knew, but on whether the patentee's actions were sufficient, in the 19 circumstances, to provide notice in rem.”).5 20 Defendants argue Chrimar’s letter does not sufficiently identify a specific charge of 21 infringement. Dkt. No. 146 at 11 (Defs’ ’825 MSJ). Chrimar “listed 98 different Juniper products 22 and asserted generally and without explanation that all 98 infringed ‘one or more’ of the 68 claims 23 of the ’825 Patent.” Id. Under these circumstances, defendants argue Chrimar’s vague assertion 24

25 5 Nike, Inc. explains how the circumstances impact the analysis in the constructive notice setting. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d at 1446. Nike, Inc.’s explanatory parenthetical 26 from Amsted states: “The correct approach to determining notice under section 287 must focus on the action of the patentee, not the knowledge or understanding of the infringer.” Nike, Inc., 138 27 F.3d at 1446 (citing Amsted, 24 F.3d at 187). Under Nike, Inc., the circumstances surrounding actual 1 that 98 accused products violate any one of the 68 claims in the ’825 patent does not provide actual 2 notice. Id. “Chrimar’s letter [leaves defendants] to guess which of the 68 patent claims Chrimar 3 believed were infringed by each of the 98 listed products.” 4 The Court agrees with defendants. Chrimar’s “shotgun approach” improperly shifts the 5 notice burden to the accused infringer. Gart, 254 F.3d at 1346. Chrimar’s letter fails to provide 6 enough detail to support an objective understanding of the specific charge of infringement. Under 7 these circumstances, defendants would have to determine which of the 68 patent claims were 8 infringed by the 98 listed products resulting in a systematic review of each patent claim against each 9 accused product6 totaling 6,664 different infringement combinations.7 10 Chrimar’s letter is void of any language narrowing the different infringement combinations. 11 See Dkt. No. 146 at 8 (Defs’ ’825 MSJ). Nor did Chrimar offer any explanation of why Chrimar 12 believed any of defendants’ products might infringe the ’825 patent. This type of information could 13 help a defendant be “informed of the . . . activity that is believed to be an infringement.” SRI Int'l, 14 Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). 15 Chrimar argues the notice letter in SRI Int'l, Inc. mirrors Chrimar’s notice letter. Compare 16 SRI Int'l, Inc., 127 F.3d at 1469–70 (“products Models Ultramark 4 and 8 may infringe one or more 17 claims of U.S. Patent No. 4,016,750”) with Dkt. No. 146 at 8 (“infringe at least one claim of the 18 ’825 patent”) (Defendants’ ’825 MSJ). However, SRI Int'l, Inc. involved a patent with 18 patent 19 claims and 2 infringing products. SRI Int'l, Inc., 127 F.3d at 1469–70. Here, there are 68 patent 20 claims and 98 products. Dkt. No. 146 at 11 (Defendants’ ’825 MSJ). Actual notice can occur in an 21 infringement suit relating to 98 accused products with a patent that has 68 claims, but to do so 22 requires more than barebones allegations. Chrimar has not put defendants on actual notice. 23 Additionally, “the district court cannot enjoin [a party] from infringing an expired patent.” 24 6 Netgear had 70 accused products. Fortinet had 47 accused products. Ruckus had 32 25 accused products. Dkt. No. 146 at 6 n.2 (Defs’ ’825 MSJ).

26 7 68 claims multiplied by 98 products equals 6,664 different infringement combinations. Netgear would have 4760 different infringement combinations (68 claims multiplied by 70 27 products). Fortinet would have 3196 different infringement combinations (68 claims multiplied by 1 Lans v. Digital Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001). Here, the °825 patent expired 2 || on May 23, 2019. Dkt. No. 146 at 8 (Defendants’ ’825 MSJ). As a matter of law, Chrimar is not 3 entitled to damages pursuant to 35 U.S.C. § 287, due to the lack of notice, or injunctive relief, 4 || because the patent is expired. Thus, defendants’ motion regarding the °825 patent is GRANTED. 5 6 CONCLUSION 7 The Court GRANTS defendants’ Motion for Summary Judgment on the ’760 patent. 8 The Court GRANTS defendants’ Motion for Summary Judgment on the ’825 patent. 9 10 IT IS SO ORDERED. 11 12 |] Dated: July 31, 2020 Site WU tee 14 SUSAN ILLSTON United States District Judge

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