MasterObjects, Inc. v. Amazon.com, Inc.

Background

MasterObjects, Inc. brought this patent-infringement action against Amazon.com, Inc. The patents concern asynchronous communication technology that allows search engines to suggest search terms based on characters a user types into a search bar. The action was originally filed in the Southern District of New York and later moved to the Northern District of California, where patent litigation is governed by specific local rules.

MasterObjects served its first infringement contentions in July 2020 and amended contentions in April 2021. After the parties disputed their discovery obligations, they agreed that Amazon would make a curative document production by September 17, 2021, and MasterObjects would revise its infringement contentions five weeks later. The court adopted that agreement.

Amazon’s Motion

Amazon moved to strike MasterObjects’ infringement contentions for claim 13 of U.S. Patent No. 9,760,628 under Patent Local Rule 3-1(c). That rule requires a patent owner to provide a chart identifying specifically where and how each limitation of an asserted claim appears in each accused product or system. It also requires identification of the relevant structure, act, or material when the patent owner relies on a particular type of claim limitation governed by 35 U.S.C. § 112(6).

Amazon focused on claim 13’s caching limitation. The limitation concerns a server system that caches query results and later determines results by looking up the query in the cache, avoiding another query for the same input or using a second cache.

Court’s Analysis

The court concluded that MasterObjects’ claim chart did not provide the required reasonable notice. The chart began by repeating the claim language and then included eighteen pages of screenshots from technical documents without explanatory commentary. The court held that merely describing the accused system did not explain where and how the claim limitation appeared in Amazon’s products.

The court also found MasterObjects’ source-code citations inadequate. MasterObjects cited nine source-code files and stated generally that the files contained code that cached query results and looked up queries in the cache. The court held that the citations lacked sufficient specificity and explanation. It noted that, when source code is available, a patent owner must provide pinpoint citations identifying where each claim limitation appears, citing that requirement as described in prior decisions.

The court rejected MasterObjects’ argument that the documents and screenshots were sufficient because Amazon’s attorneys could understand them. The court stated that the infringement contentions had to tie the claim language specifically to features in the accused product. It also noted the court’s concern that MasterObjects had wanted to avoid stating its theory until after a corporate deposition.

Leave to Amend

Although the court found the contentions deficient, it permitted MasterObjects to amend them. The court considered that MasterObjects first served its contentions in a district without the same patent local rules, that its first amended contentions preceded Amazon’s curative document production, and that links to relevant source code had previously been disabled in Amazon’s documents. The court also recognized MasterObjects’ assertion that Amazon had obligations to produce source code or other documentation sufficient to show how identified aspects of the accused system operated. These circumstances led the court to allow another amendment despite concerns about delay and possible prejudice to Amazon.

Disposition

The court granted in part Amazon’s motion. It struck MasterObjects’ infringement contentions as to claim 13, with leave to amend, and required revised contentions by December 23, 2021. The court ordered MasterObjects to pay Amazon’s reasonable attorney’s fees and costs incurred in bringing the motion, up to $15,000. Because the court did not rely on MasterObjects’ supplemental briefing, it denied as moot MasterObjects’ administrative motion for leave to supplement the record.