United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO
AMEND INFRINGEMENT CONTENTIONS RE: DKT. NO. 42
ILLSTON United States District Judge
the Court is defendant 360Heros, Inc.'s
(“360Heros'”) motion for leave to amend its
infringement contentions. Dkt No. 42. Pursuant to Civil Local
Rule 7-1(b), the Court determines that this matter is
appropriate for resolution without oral argument and VACATES
the hearing scheduled for April 14, 2017. For the reasons set
forth below, the Court DENIES defendant's motion.
GoPro, Inc. (“GoPro”) filed this action on April
13, 2016. In its complaint, GoPro accuses 360Heros of
infringing its “HERO” and “ABYSS”
trademarks, infringing copyrighted images, and engaging in
unfair competition. See Compl. (Dkt. No. 1).
GoPro's complaint also seeks a declaratory judgment of
non-infringement of U.S. Patent No. 9, 152, 019 (the
“'019 patent”). Id. ¶¶
73-76. 360Heros, owner of the '019 patent, filed a
counterclaim against GoPro for patent infringement.
Countercl. (Dkt. No. 25).
October 21, 2016, 360Heros served its initial asserted claims
and infringement contentions, accusing GoPro's Odyssey
and Abyss devices of literal infringement of the '019
patent. See Lowe Decl., Ex. 202 (Dkt. No. 42-1) at
23-42. 360Heros now seeks the Court's leave
to amend its infringement contentions to accuse GoPro's
Omni device. Mot. (Dkt. No. 42).
Local Rule 3-6 provides, Amendment of the Infringement
Contentions or the Invalidity Contentions may be made only by
order of the Court upon a timely showing of good cause.
Non-exhaustive examples of circumstances that may, absent
undue prejudice to the non-moving party, support a finding of
good cause include:
(a) A claim construction by the Court different from that
proposed by the party seeking amendment;
(b) Recent discovery of material, prior art despite earlier
diligent search; and
(c) Recent discovery of nonpublic information about the
Accused Instrumentality which was not discovered, despite
diligent efforts, before the service of the Infringement
N.D. Cal. Patent L.R. 3-6.
local patent rules in the Northern District of California . .
. requir[e] both the plaintiff and the defendant in patent
cases to provide early notice of their infringement and
invalidity contentions, and to proceed with diligence in
amending those contentions when new information comes to
light in the course of discovery. The rules thus seek to
balance the right to develop new information in discovery
with the need for certainty as to the legal theories.”
O2 Micro Int'l Ltd. v. Monolithic Power Sys.,
Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). In
contrast to the more liberal policy for amending pleadings,
“the philosophy behind amending claim charts is
decidedly conservative, and designed to prevent the
‘shifting sands' approach to claim
construction.” LG Elecs. Inc. v. Q-Lity Computer
Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (citation
moving party bears the burden of establishing diligence.
O2 Micro, 467 F.3d at 1355. Where the moving party
is unable to show diligence, there is “no need to
consider the question of prejudice, ” although a court
in its discretion may elect to do so. See id. at
1368 (affirming district court's denial of leave to amend
upon finding the moving party was not diligent, without
considering the question of prejudice to the non-moving
the court finds that the moving party has acted with
diligence, it must then determine whether the nonmoving party
would suffer prejudice if the motion to amend were
granted.” Apple Inc. v. Samsung Elecs. Co.
Ltd, No. 12-cv-0630-LHK (PSG), 2013 WL 3246094, at *1
(N.D. Cal. June 26, 2013) (internal quotation marks omitted).
“Prejudice is typically found when amending contentions
stand[s] to disrupt the case schedule or other court
orders.” Karl Storz Endoscopy-Am. v. Stryker
Corp., No. 14-0876-RS (JSC), 2016 U.S. Dist. LEXIS
176876, at *8 (N.D. Cal. Dec. 21, 2016). “Courts have
allowed amendments when the movant made an honest mistake,