Word to Info Inc. v. Google Inc.

          ORDER GRANTING MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS AND DENYING AS MOOT MOTION TO STRIKE, Re: Dkt. 115, 116, 129, 131, 138

          WILLIAM H. ORRICK UNITED STATES DISTRICT JUDGE

         INTRODUCTION

         Plaintiff Word to Info, Inc. ("WTI") brings these two separate lawsuits - one against defendant Facebook Inc. ("Facebook") (No. 15-cv-03485-WHO) and the other against Google Inc. ("Google") (No. 15-cv-03486-WHO) - accusing both defendants of infringing the same seven patents, United States Patent Nos. (1) 5, 715, 468 ("the '468 patent"); (2) 6, 138, 087 ("the '087 patent"); (3) 6, 609, 091 ("the '091 patent"); (4) 7, 349, 840 ("the '840 patent"); (5) 7, 873, 509 ("the '509 patent"); (6) 8, 326, 603 ("the '603 patent"); and (7) 8, 688, 436 ("the '436 patent"). The patents-in-suit all share a specification and relate to natural language processing.

         WTI moves for leave to amend its infringement contentions with respect to both Facebook and Google. Google moves to strike WTI's original infringement contentions. For the reasons discussed below, WTI's motions to amend are GRANTED, and Google's motion to strike WTI's original infringement contentions is DENIED AS MOOT.

         BACKGROUND

         I.WTI v. FACEBOOK

         A. Basic Procedural History

         WTI initiated its action against Facebook on December 14, 2015 in the United States District Court for the Northern District of Texas. Dkt. No. 1. On May 8, 2015, WTI served Facebook with infringement contentions pursuant to the Northern District of Texas's Amended Miscellaneous Order No. 62, paragraph 3-1, which the parties describe as "substantively similar" to this district's Patent Local Rule 3-1. Joint Case Management Statement at 2-3, 13 (Dkt. No. 69). On July 23, 2015, the case was transferred to this district. Dkt. No. 49. The parties have since continued to treat the infringement contentions served on May 8, 2015 as the operative infringement contentions in the case.

         During the initial case management conference on November 10, 2015, I set a schedule for reducing the asserted claims and prior art references, requiring (1) WTI to preliminarily elect no more than 10 claims per patent and 32 claims in total by December 14, 2015, and then to finally elect no more than 5 claims per patent and 16 claims in total by 28 days after the claim construction ruling; and (2) Facebook to preliminarily elect no more than 18 references per patent and 50 references in total by February 5, 2016, and then to finally elect no more than nine references per patent and 25 references in total by 14 days after WTI's final election of asserted claims. Dkt. No. 73.

         At the end of the case management conference, Facebook asked to confirm "that in the December date when we get the reduction in claims, it's a full citation to the code that they've had access to, these are final contentions at this point, . . . that's what your Honor is anticipating."^[1]Hearing Tr. at 21 (Dkt. No. 78). I stated, "Under the local rules, that's what I'm anticipating." Id. WTI added, "Final except for leave to amend with good cause, " and I responded, "Right." Id.

         The Civil Minutes issued following the case management conference set out the following case management deadlines:

         CLAIM CONSTRUCTION SCHEDULE

Invalidity Contentions:	February 5, 2016
Exchange of proposed terms:	February 19, 2016
Exchange of preliminary constructions:	February 26, 2016
Joint claim construction statement:	March 18, 2016
Complete claim construction discovery:	April 15, 2016
Opening Brief:	April 29, 2016
Response Brief:	May 13, 2016
Reply Brief:	May 27, 2016
Claim Construction Tutorial:	June 10, 2016
Claim Construction Hearing:	June 17, 2016

PRETRIAL SCHEDULE

Deadline to amend/add parties:	December 31, 2015
Fact discovery cutoff:	November 11, 2016
Expert disclosure:	December 15, 2016
Expert rebuttal:	February 16, 2017
Expert discovery cutoff:	March 6, 2017
Dispositive Motions heard by:	May 10, 2017
Pretrial Conference:	September 11, 2017
Trial:	October 10, 2017

Dkt. No. 73. Pursuant to stipulation by the parties, the deadline for serving invalidity contentions was extended to February 12, 2016 for Facebook and to February 19, 2016 for Google, the deadline for proposing terms for construction was extended to March 18, 2016, and the deadline for submitting the joint claim construction statement was extended to April 1, 2016. Dkt. No. 84.

         B. WTI's Review of Source Code and Service of Amended Infringement Contentions

         Starting in June 2015 - while the case was still pending in Texas - the parties exchanged emails regarding a stipulated protective order without agreeing on a final draft. See, e.g., Mead Decl. Ex. A & Corrected Ex. H (Dkt. Nos. ...