United States District Court, N.D. California
ORDER DENYING DEFENDANT UBISOFT, INC.'S MOTION TO STRIKE (Dkt. No. 492)
KANDIS A. WESTMORE, Magistrate Judge.
Plaintiff Digital Reg of Texas, LLC ("Digital Reg") filed this action against several defendants, including Ubisoft, Inc. ("Ubisoft"), for patent infringement in violation of the U.S. Patent Act, 35 U.S.C. § 271. On July 3, 2013, the Court ordered Digital Reg to amend its infringement contentions to comply with Patent L.R. 3-1. (Dkt. No. 405.) On July 31, 2013, Digital Reg served its amended infringement contentions. (Ubisoft's Mot. to Strike, "Def.'s Mot., " Dkt. No. 492 at 2.)
On February 7, 2014, Ubisoft filed a motion to strike Plaintiff's amended infringement contentions and associated expert reports before the presiding judge, because the motion was filed after the close of discovery. (Def.'s Mot. at 5, n. 1.) Thereafter, the matter was referred to the undersigned for resolution.
Ubisoft contends that Plaintiff has impermissibly used the Court's order to amend its infringement contentions to add new theories of infringement without leave to amend as required by Patent L.R. 3-6, which requires a timely showing of good cause.
In accordance with Civil L.R. 7-1(b), this matter is deemed suitable for disposition without hearing. In light of moving papers and documents submitted by the parties, for the reasons set forth below, the Court DENIES Ubisoft's motion to strike on the grounds that Digital Reg is not asserting a new theory of infringement.
Digital Reg alleges that Defendant Ubisoft directly and indirectly infringe on U.S. Patent Nos. 6, 751, 670 ("670 Patent"), 7, 127, 515 ("515 Patent"), 7, 272, 655 ("655 Patent"), 7, 562, 150 ("150 Patent"), 7, 673, 059 ("059 Patent"), all of which concern the tracking of electronic content.
On October 28, 2011, Digital Reg served its original infringement contentions ("Original ICs") while this case was venued in the Eastern District of Texas.
On March 28, 2012, the case was transferred to the Northern District of California. At the July 25, 2012 Case Management Conference, the presiding judge ordered Digital Reg to supplement its ICs to comply with this district's Patent L.R. 3-1(d), (h), which concern allegations of indirect infringement. On August 30, 2012, Digital Reg served its supplemental ICs on all Defendants. On October 16, 2012, this action was referred to the undersigned for all discovery purposes.
On March 14, 2013 the parties filed a joint discovery letter, in which Ubisoft contended that Plaintiff's infringement contentions were deficient. (3/14/2013 Joint Letter, Dkt. No. 304.) Also in that joint letter, Ubisoft characterized "Uplay" as a branding change, and represented that its supplemental source code production reflected that rebranding. Id. at 6.
On July 3, 2013, the Court ordered Digital Reg to amend its infringement contentions. (Dkt. No. 405.) Digital Reg served its amended infringement contentions ("Amended ICs") on July 31, 2013, which narrowed the accused system to Uplay.
On February 7, 2014, Ubisoft filed a motion to strike Plaintiff's amended infringement contentions and associated expert reports.
II. LEGAL STANDARD
Patent Local Rule 3-1 requires a party claiming patent infringement to serve on all parties a disclosure of asserted claims and infringement contentions (ICs). The purpose of Patent L.R. 3-1 is "to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed." InterTrust Technologies Corp. v. ...