United States District Court, N.D. California
PERSONALWEB TECHNOLOGIES, LLC AND LEVEL 3 COMMUNICATIONS, LLC, Plaintiffs,
GITHUB, INC., Defendant.
ORDER GRANTING IN PART PLAINTIFF’S MOTION FOR
LEAVE TO AMEND INFRINGEMENT CONTENTIONS RE: DKT. NO.
R. LLOYD United States Magistrate Judge
Technologies, LLC (“PersonalWeb”) and Level 3
Communications, LLC (“Level 3”) (collectively
“Plaintiffs”) sued GitHub, Inc. for patent
infringement in the U.S. District Court for the Eastern
District of Texas. Dkt. No. 24. Plaintiffs sued IBM in a
separate action in the same district. PersonalWeb
Technologies, LLC v. IBM, No. 6:12-CV-661-LED (E.D. Tex.
2012). Plaintiffs served infringement contentions in December
2013. Dkt. No. 85-9 at 7. The court stayed both cases for
fourteen months pending completion of related inter partes
proceedings before the USPTO. Dkt. Nos. 62, 72. Judge Rodney
Gilstrap lifted the stay and consolidated the GitHub and IBM
cases for pretrial purposes. Dkt. No. 80.
February 2016, Judge Gilstrap issued an Order of Conditional
Transfer to the Northern District for both GitHub and IBM
effective “immediately upon entry of [his]
Markman opinion.” Dkt. 89 at 6. Judge Gilstrap
issued his claim construction order on March 11. Dkt. No. 93.
The case appeared on the Northern District docket on March
15, Dkt. No. 97, and was eventually reassigned to Judge
Davila on April 1, Dkt. No. 113. On May 31, PersonalWeb moved
this court to amend its infringement contentions. Dkt. No.
122. The court vacates the hearing set for this motion and
now grants the motion in part for the reasons discussed
may amend its infringement contentions “only by order
of the Court upon a timely showing of good cause.”
Patent L.R. 3-6. “Good cause for granting a motion to
amend infringement contentions exists when the moving party
shows (1) that it was diligent in amending its contentions;
and (2) that the nonmoving party will not suffer undue
prejudice if the motion is granted.” Angioscore,
Inc. v. TriReme Med., Inc., No. 12-cv-03393-YGR, 2015 WL
75187, at *4 (N.D. Cal. Jan. 6, 2015) (citing O2 Micro
Int’l Ltd. v. Monolithic Power Sys., Inc., 467
F.3d 1355, 1366 (Fed. Cir. 2006)). One of the enumerated
bases supporting a finding good cause is “[a] claim
construction by the Court different from that proposed by the
party seeking amendment.” Patent L.R. 3-6(a).
court’s differing claim construction “in and of
itself does not constitute good cause, ” and the moving
party must still establish its diligence. Verinata
Health, Inc. v. Sequenom, Inc., No. 12-cv-00865-SI, 2014
WL 789197, at *2 (N.D. Cal. Feb. 26, 2014). The Local Rules
previously required parties to move to amend infringement
contentions “not later than 30 days after service by
the Court of its Claim Construction Ruling.” See LG
Elecs. Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367
(N.D. Cal. 2002). The rules now require only that the motion
be “timely, ” Patent L.R. 3-6, but some Northern
District courts continue to treat 30 days as a noteworthy
threshold, see Tech. Properties Ltd. LLC v. Canon
Inc., No. 14-3643-CW, 2016 WL 1360756, at *3 (N.D. Cal.
Apr. 6, 2016). “However, even if the movant was
arguably not diligent, the court retains discretion to grant
leave to amend.” Linex Techs., Inc. v.
Hewlett-Packard Co., No. C13-159 CW, 2013 WL 5955548, at
*1 (N.D. Cal. Nov. 6, 2013); see also Apple Inc. v.
Samsung Electronics Co., No. CV 12-00630 LHK, 2012 WL
5632618 (N.D. Cal. Nov. 15, 2012).
Gilstrap’s claim construction was different from that
proposed by Plaintiffs. Dkt. No. 93. Plaintiffs argued that
the court should give the disputed terms “licensed,
” “unlicensed, ” “authorized, ”
“unauthorized, ” and “authorization”
their plain and ordinary meaning. Dkt. No. 85 at 7, 9. The
court instead provided a specific construction for each term.
Dkt. No. 93 at 25, 28. This discrepancy supports a finding of
good cause. Patent L.R. 3-6(a).
must also show that they were diligent in moving the court.
Verinata Health, 2014 WL 789197, at *2. Judge
Gilstrap issued his claim construction opinion on March 11.
Dkt. No. 93. The Judicial Office assigned the case to Judge
Davila on April 1. Dkt. No. 113. Plaintiffs moved the court
to amend their infringement contentions on May 31,
approximately two months after the case was docketed with
Judge Davila and two and a half months after Judge Gilstrap
issued his claim construction opinion. Dkt. Nos. 93, 122.
Given the recent transfer of this case to the Northern
District and the fact that its initial case management
conference is still over one month away, Dkt. No. 117, the
court is satisfied that Plaintiffs have acted diligently.
See Radware Ltd. v. F5 Networks, Inc., No.
13-cv-02021-RMW, 2014 WL 3728482, at *2 (N.D. Cal. 2014)
(finding diligence despite a three month delay).
may deny a party’s motion to amend infringement
contentions if granting it would cause “undue prejudice
to the non-moving party.” Patent L.R. 3-6. Plaintiffs
represent that “GitHub does not oppose [their] motion
as to these amendments, ” Dkt. No. 122 at 7. See
also Dkt. No. 124 at 2. Defendant filed a response and
attached “the specific amendments proposed by
PersonalWeb and agreed to by GitHub, ” Dkt. No. 123 at
2. Plaintiffs’ proposed amendment covers claims based
on U.S. Patent Nos. 6, 928, 442 and 8, 099, 420 but not U.S.
Patent No. 6, 415, 280. Dkt. Nos. 123-2, 123-3.
Plaintiffs’ reply acknowledges Defendant’s effort
to “clarify the scope of the agreed-upon
amendment.” Dkt. No. 124 at 2. The reply does not
dispute the scope of that agreement.
court is satisfied that granting Plaintiffs’ motion to
make the “agreed-upon amendment, ” Dkt. 123 at 2,
will not cause undue prejudice to Defendant, as Defendant has
reviewed and agreed to it. If Plaintiffs wish to make any
amendment to their infringement contentions other than that
which Defendant agreed to, see Dkt. Nos. 123-2,
123-3, they must file a separate motion seeking leave to do
moved the court to amend their infringement contentions. The
Patent Local Rules require a party to show good cause and
establish diligence before the court will grant a motion to
amend. The court is satisfied that Plaintiffs have met the
requirements of Patent Local Rule 3-6 with regard to the
amendment both ...