United States District Court, N.D. California
ORDER DENYING DEFENDANT APPLE, INC.'S MOTION FOR
LEAVE TO AMEND ITS INVALIDITY CONTENTIONS RE: DKT. NO.
M. Ryu, Judge
Apple, Inc. (“Apple”) moves to amend its
invalidity contentions to address the Honorable Haywood S.
Gilliam's construction of the term “narrow sound
duct.” [Docket No. 242]; see also November 4,
2016 Claim Construction Order (“Claim Construction
Order”) at 12 [Docket No. 206]. Plaintiff Slot Speaker
Technologies, Inc. (“SST”) opposes. [Docket No.
255]. The court held oral argument on March 23, 2017. Having
considered the parties' briefing and oral argument,
Apple's motion is DENIED.
Factual & Procedural History
factual allegations in this case have been summarized in
earlier orders, so the court will not repeat them in detail
here. Briefly, SST filed a patent infringement suit against
Apple alleging that Apple's products, which include the
iPhone 4 and later models, as well as its iPad and iMac
products, infringe SST's patents by incorporating
narrow-profile speaker units that output sound through a duct
or aperture having a narrow dimension. First Amended
Complaint (“FAC”), ¶¶ 10, 14 [Docket
September 24, 2015, Apple served its Initial Invalidity
Contentions. See Apple's Initial Invalidity
Contentions [Ex. 1 to Docket No. 90]; see also
Capuyan Decl., ¶ 22. [Docket No. 242-1].
November 6, 2015, SST served its Patent Local Rule 4-2
Preliminary Claim Constructions. See THX (now SST)
PLR 4-2 Preliminary Claim Constructions (“Rule 4-2
Preliminary Claim Constructions”) [Ex. A to Smith
Decl.]. SST proposed construing the term “narrow sound
duct” as a “duct that is narrow in relation to
the wavelength of the sound to be reproduced.”
Id. at 2.
December 9, 2015, the parties filed their Joint Claim
Construction Statement. SST's proposed construction of
the term “narrow sound duct” remained unchanged
from its November 2015 Rule 4-2 Preliminary Claim
Constructions. See Joint Claim Statement at 2
[Docket No. 58]. (“Plaintiff's Construction”
of a “narrow sound duct:” “a duct that is
narrow in relation to the wavelength of the sound to be
February and March 2016, the parties submitted their claim
construction briefs. See Docket Nos. 74, 84, 88.
SST's proposed construction of the term “narrow
sound duct” remained unchanged. See THX's
(now SST's) Opening Claim Construction Brief at 6-11
[Docket No. 74]; THX (SST's) Reply Claim Construction
Brief at 4-6 [Docket No. 88].
25, 2016, Judge Gilliam held a claim construction hearing,
during which SST continued to advance its construction of the
term “narrow sound duct” as a “duct that is
narrow in relation to the wavelength of sound to be
reproduced.” See generally 5/25/16 Hearing Tx.
at 45:21-63:24 [Ex. B to Smith Decl.].
November 4, 2016, Judge Gilliam issued the claim construction
order, in which he adopted SST's proposed construction of
the term “narrow sound duct” without
modification. See Claim Construction Order at 12
(“As such, the Court construes ‘narrow sound
duct' as ‘a duct that is narrow in relation to the
wavelength of the sound to be reproduced.'”).
November 22, 2016, Apple notified SST that it might seek
leave to amend its invalidity contentions under Patent L.R.
3-6(a) in light of the claim construction order. See
11/22/16 Joint Case Management Statement at 5 [Docket No.
thereafter, Apple confirmed its intent to seek leave to amend
on December 7, 2016, and provided SST with its proposed
amendments on December 21, 2016. Over the next three weeks,
Apple tried to secure SST's ...