Withrow Networks, Inc. v. Google, LLC

Background

Withrow alleged that Google, LLC and YouTube, LLC infringed U.S. Patent No. 10,771,849, which the opinion describes as generally directed to adaptive-bitrate streaming technology for multimedia. Withrow served disclosures under Patent Local Rule 3-1, identifying infringement contentions for five accused instrumentalities involving the YouTube system and service, Google’s Transcoder API system and service, and Google’s Live Stream API system and service.

The defendants moved to strike portions of Withrow’s infringement contentions for failure to comply with Patent Local Rule 3-1. The rule requires a patent-infringement claimant to identify each accused instrumentality as specifically as possible and to chart where and how each limitation of each asserted claim is found. The court explained that striking infringement contentions is a severe sanction and that such motions are often treated as requests to amend the contentions.

Court’s Analysis

Transcoder API and Live Stream API contentions. The court agreed that Withrow’s contentions did not provide reasonable notice of where and how each claim limitation was found. The contentions relied on screenshots and snippets of text or data with little explanation, leaving the defendants and the court to infer the infringement theories. The court therefore ordered Withrow to amend those contentions rather than striking them outright.

The court also required Withrow to make its direct-infringement theories against Google clear. Withrow had to state whether it contended that Google directly infringed only when Google used the accused instrumentalities, when others used them, or when some other event occurred. Withrow also had to clarify whether it claimed that Google offered or sold an infringing apparatus or system, or instead claimed that infringement occurred when others combined and used Google components. The court stated that whether Withrow had actually alleged a viable direct-infringement claim was better addressed at summary judgment or another merits stage.

Representative components. Withrow had charted Shaka Player and argued that it could represent ExoPlayer and any multimedia player complying with the relevant standard. The court held that a representative contention requires analysis showing that the charted and uncharted instrumentalities share the same critical characteristics. If Withrow wished to rely on Shaka Player as representative of ExoPlayer, it had to explain why; otherwise, it had to chart the distinct infringing combinations separately.

Open-ended descriptions. The court held that descriptions such as “any multimedia player,” “all Defendant Servers,” “all Google Pixel Phones,” and “all Google Pixel Tablets” did not identify accused components as specifically as possible. The court granted the motion to strike the contentions to the extent they relied on those descriptions. It allowed Withrow to amend if it had a basis under Rule 11 for contentions concerning particular components and noted that appropriately identified components sharing all critical characteristics could be charted using a representative component.

Google TV. The court did not strike Withrow’s references to Google TV because the references did not constitute infringement contentions. The court said it would address Withrow’s request for discovery about Google TV separately in an order resolving the parties’ discovery dispute.

Disposition

The court granted in part and denied in part the defendants’ motion to strike Withrow’s infringement contentions. Where the court found deficiencies, it required or permitted Withrow to amend as described in the order. Withrow could not make other amendments unless the defendants agreed or the court granted permission. The amended contentions had to be served by September 5, 2025. Judge Virgina K. DeMarchi signed the order as a United States magistrate judge.

What the Order Did Not Decide

The order addressed the adequacy and specificity of preliminary patent infringement disclosures. It did not decide whether Google or YouTube actually infringed the patent or whether Withrow would ultimately prevail on its patent claims.