United States District Court, N.D. California
ORDER DENYING MOTION TO DISMISS AND DENYING MOTION TO
STRIKE RE: DKT. NO. 188, 196
William H. Orrick, United States District Judge.
IP Holding, LLC (“CIPH”) filed this patent
infringement action against GoPro in the District of Delaware
nearly two years ago, the same day that its parent company
voluntarily dismissed an action in Utah district court
alleging infringement of the same patents-in-suit. The Utah
action was filed a year before it was voluntarily dismissed.
The present action was transferred to this district on August
16, 2017. Even though the case has been pending for nearly
two years, GoPro has yet to answer. On September 6, 2017, it
filed a motion to dismiss, or in the alternative, to strike
CIPH's claims for contributory and willful infringement.
CIPH asserts that GoPro's motion is untimely, and in
opposition, moves to strike the motion.
dispute's extensive procedural history provides some
justification for the timing of GoPro's motion, although
I think CIPH has the better side of that argument. More to
the point, it would be an inefficient and unnecessary waste
of resources to analyze the claims in CIPH's pleading
when the parties have conducted extensive discovery and have
(or will soon have) enough information to address the merits
of those claims on summary judgment. GoPro's motion to
dismiss is DENIED as untimely. CIPH's motion to strike is
DENIED. GoPro shall file an answer within 20 days.
November 30, 2015, Plaintiff Contour IP Holding, LLC
(“CIPH”) brought the present action against
GoPro, Inc. (“GoPro”) for infringement of U.S.
Patent Nos. 8, 890, 954 (“the '954 patent”)
and 9, 896, 694 (“the '694 patent”). Compl.
¶4 (Dkt. No. 1). Both patents are entitled
“Portable Digital Video Camera Configured for Remote
Image Acquisition Control and Viewing.” Compl.
¶¶ 15, 16. The patents contain both apparatus
claims and method claims. The complaint alleges six
claims-direct, induced, and contributory infringement for
each of the patents-in-suit.
case was initially brought by CIPH, a non-practicing entity
that holds the rights to the patents, and iON Worldwide Inc.
(“iON”), “a maker and seller of wearable
and gear-mountable camera products[.]” Compl.
¶¶ 2, 13. “This case has a very convoluted
procedural history” that predates the filing of this
complaint. Memorandum Order on GoPro's Mot. to Transfer
at 3 (“Venue Order”)(Dkt. No. 154).
January 5, 2015, Contour LLC (“Contour”), a
non-party to the present action and then-assignee of the
asserted patents, named GoPro as a defendant in an action
filed in district court in Utah approximately six weeks
earlier against Camp Saver, LLC, a local retailer of GoPro
products. Compl. ¶ 19. The complaint alleged
infringement of the same patents asserted here. Id.
Contour and iON “entered into an agreement to
merge” in May 2015, which included iON's right to
hold an exclusive license to the asserted
patents. Venue Order at 3. GoPro and Camp Saver
moved to dismiss the claims for indirect and willful
infringement, which was set for hearing on January 12, 2016.
Id.; see also Mot. to Dismiss at 3
(“MTD”)(Dkt. No. 188).
filed petitions for inter partes review (“IPR”)
on April 20, 2015, and the Patent Trial and Appeal Board
(“PTAB”) instituted proceedings on October 28,
2015 as to all 20 claims in the '694 patent and 21 of the
30 claims of the '954 patent. Compl. ¶ 21; see
also MTD at 3. On November 30, 2015, Contour voluntarily
dismissed its complaint in the Utah action. Contour, LLC
v. GoPro, Inc., et al., Utah District Court Case No.
2:14-cv-864, Dkt. No. 57; see also Venue Order at 4.
The same day, CIPH and iON filed suit against GoPro in
state that they filed the Delaware action “in order to
realign parties after the merger and to advance the dispute
in a forum more convenient to iON than the Utah
Action.” Compl. ¶ 22. But on September 6, 2016,
plaintiffs moved to dismiss iON as a co-plaintiff with
prejudice because it was no longer an exclusive licensee and
therefore lacked standing to sue for patent
infringement. Dkt. No. 73[under seal]; Dkt. No.
74[redacted]. On September 16, 2016, Magistrate Judge
Christopher Burke issued a Report and Recommendation that
recommended granting plaintiffs' motion ...