The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
(1) GRANTING CANON'S MOTION TO STRIKE [Doc. Nos. 301]
(2) GRANTING IN PART AND DENYING IN PART APPLE'S MOTION TO STRIKE [Doc. Nos. 310, 316]
(3) GRANTING IN PART AND DENYING IN PART LG'S MOTION TO STRIKE [Doc. Nos. 307, 315]
On September 10, 2012, Defendants Canon U.S.A., Inc. and Canon, Inc. (collectively "Canon"), LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc. (collectively "LG"), and Apple, Inc. ("Apple") filed motions to strike Plaintiff Multimedia Patent Trust ("MPT")'s final infringement contentions. (Doc. Nos. 301, 307, 310, 314-16.) On September 21, 2012, MPT filed its response in opposition to Defendants' motions. (Doc. Nos. 324, 328.) On September 24 and 25, 2012, the Defendants filed their replies in support of their motions. (Doc. Nos. 334, 337, 343.) On September 28, 2012, the Court held a telephonic hearing on the matter. Christopher Mathews, Frederick A. Lorig, Bruce R. Zisser, Matthew V. Herron, and Diane Hutnyan appeared for MPT. Juanita Brooks, Lara S. Garner, and Richard Sterba appeared for Apple. Justin Barnes appeared for LG. Richard Martinelli and Alyssa Caridis appeared for Canon. For the reasons below, the Court GRANTS Canon's motion to strike, GRANTS IN PART and DENIES IN PART Apple's motion to strike, and GRANTS IN PART and DENIES IN PART LG's motion to strike.
On December 20, 2010, MPT filed a complaint for patent infringement against Defendants Apple, LG, and Canon. (Doc. No. 1, Compl.) The complaint alleges that Defendants are liable for infringement of one or more of four patents related to video compression technology: U.S. Patent Nos. 4,958,226 ("the '266 patent"), 5,227,878 ("the '878 patent"), 5,500,678 ("the '678 patent"), and 5,136,377 ("the '377 patent') (collectively the "patents-in-suit"). (Id.) On March 21, 2011, Apple, LG, and Canon filed their answers. (Doc. Nos. 38-39, 41.)
On May 31, 2011, the Court issued a partial scheduling order requiring MPT to serve its preliminary infringement contentions by December 8, 2011. (Doc. No. 65.) On December 8, 2011, MPT served its preliminary infringement contentions, but acknowledged that they were not as detailed as they might have been. (Doc. No. 122.) On December 16, 2011, the Court set a new deadline requiring MPT to serve revised supplemental infringement contentions by May 1, 2012. (Id.) On May 1, 2012, MPT served its supplemental infringement contentions. (Doc. No. 328-1, Declaration of Christopher Mathews ("Mathews Decl.") Exs. 4-6.) The Defendants moved to strike MPT's supplemental infringement contentions, arguing that the contentions were deficient because they did not contain complete claim charts. (Doc. No. 162.) On May 30, 2012, the Court denied the motions to strike without prejudice. (Doc. No. 175.)
On June 8, 2012, after conferring with the parties, the Court issued a full scheduling order setting forth all the case management deadlines up to trial. (Doc. No. 184.) This Order required MPT to serve its final infringement contentions by September 4, 2012. (Id.) On August 17, 2012, the Court entered its claim construction order in this case, which adopted the Court's prior constructions from MPT v. DirecTV, 09-cv-278, except for a few changes. (Doc. No. 258.) On September 4, 2012, MPT served its final infringement contentions without first seeking leave of court to amend its contentions. (Doc. No. 328-1, Mathews Decl. Exs. 1-3) On September 5, 2012, the Court held a telephonic status conference to discuss amendments to the case management scheduling order with the parties. (Doc. No. 298.) On September 6, 2012, the Court adopted the parties' proposed revisions to the scheduling order, which moved the deadlines for expert reports back by one week. (Doc. No. 300.) By the present motions to strike, Defendants ask the Court to strike MPT's final infringement contentions. (Doc. Nos. 301, 307, 310, 314-16.)
I. Legal Standards on Infringement Contentions
The Southern District of California's Patent Local Rules require a party claiming patent infringement to serve on all parties "Preliminary Infringement Contentions" meeting the requirements of Patent Local Rule 3.1 within fourteen (14) days of the initial case management conference. Patent L.R. 3.1. Under Patent Local Rule 3.6, each party's "Preliminary Infringement Contentions" will be deemed to be that party's final contentions, except:
If a party claiming patent infringement believes in good faith that (1) the court's Claim Construction Ruling so requires, or (2) the documents produced pursuant to Patent L.R. 3.4 so require, then not later than thirty (30) days after service by the court of its Claim Construction Ruling, that party may serve "Final Infringement Contentions" without leave of court that amend its "Preliminary Infringement Contentions" with respect to the information required by Patent Local Rules 3.1.c and d.*fn1 Patent Local Rule 3.7 allows for the amendment of a party's "Preliminary Infringement Contentions" for any reason other than those allowed by Patent Local Rule 3.6 "only by order of the court, which will be entered only upon a showing of good cause."
To make a satisfactory showing of good cause, a party seeking to amend its infringement contentions must show that it "acted with diligence in promptly moving to amend when new evidence is revealed in discovery." O2 Micro Int'l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1363 (Fed. Cir. 2006); see also CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009) ("The 'good cause' requirement disallows infringement contentions from becoming moving targets throughout the lawsuit."). The party seeking leave to amend bears the burden of establishing diligence. O2 Micro, 467 F.3d at 1366. Further, even if the moving party establishes diligence, the Court should ...