Unicorn Energy AG v. Tesla, Inc.

Background

Unicorn Energy AG alleges that certain Tesla products infringe U.S. Patent No. 10,008,869, which concerns energy-storing components that communicate with and transfer energy to other energy-storing components. The case was originally filed in the Eastern District of Texas and was later transferred to the Northern District of California.

Unicorn served infringement contentions under Patent Local Rule 3-1 on May 10, 2022. Those contentions were required to identify the asserted patent claims, the accused products, and where and how each limitation of each asserted claim appeared in each accused product. The parties then exchanged invalidity contentions, conducted claim-construction proceedings, and engaged in discovery.

Tesla’s Motion

Tesla moved to strike Unicorn’s infringement contentions. Tesla argued that the contentions relied largely on a 2016 Tesla patent application called “Ozbek,” rather than on the accused products themselves. Tesla also argued that Unicorn had not adequately explained which components in Tesla’s Megapack and Powerwall products corresponded to components described in Ozbek.

Tesla further challenged Unicorn’s theories concerning the patent limitations referred to as the “gateway,” “switch,” “communication interface,” and “transport interface.” Among other things, Tesla argued that Unicorn had not adequately identified which direct-current-to-direct-current converter served as the claimed gateway, improperly relied on one converter to satisfy multiple claim limitations, and failed to identify an adequate theory for the two interface limitations.

Unicorn defended its use of Ozbek and pointed to Tesla product information as supporting its contentions. Unicorn also maintained that its theories concerning the challenged limitations were adequate. Although Tesla did not request permission for Unicorn to amend its contentions, Unicorn conditionally asked for permission to amend if the court found any deficiency.

Analysis

The court concluded that Tesla’s motion was untimely. Unicorn served its contentions more than a year before Tesla filed the motion. During that period, Tesla raised concerns in discussions with Unicorn but proceeded with invalidity contentions and claim construction. The court reasoned that if the contentions were so deficient that Tesla could not prepare its invalidity contentions or participate in claim construction, Tesla should have moved earlier to strike or amend them.

The court rejected Tesla’s explanation that it delayed because it believed Unicorn would have an automatic right to amend after claim construction. Patent Local Rule 3-6 identifies a claim construction different from the one proposed by the party seeking amendment as an example of circumstances that may support amendment, but the rule does not create an automatic right to amend after claim construction.

The court also viewed Tesla’s motion as an effort to limit possible future disputes about whether Unicorn’s expert opinions would be supported by its infringement contentions. The court stated that such disputes are generally better addressed after experts serve their reports. In addition, some of Tesla’s arguments concerned claim construction, non-infringement, or invalidity issues that were not properly before the court on a motion to strike infringement contentions.

Disposition

The court rejected Tesla’s arguments that Unicorn’s infringement contentions were inadequate and should be stricken. It also concluded that it would not be appropriate at that time to allow Unicorn to amend its contentions to add more detail because Unicorn had not made a timely showing of good cause under Patent Local Rule 3-6.

The court therefore denied Tesla’s motion to strike. The opinion was signed by Susan Van Keulen, United States Magistrate Judge, after Judge Beth Freeman referred the motion to her.