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Contour IP Holding, LLC v. GoPro, Inc.

United States District Court, N.D. California

November 17, 2017

GOPRO, INC., Defendant.


          William H. Orrick, United States District Judge.


         Contour 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.

         The 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.



         On 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.

         The 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).


         A. Utah Action[1]

         On 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.[2] 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).

         GoPro 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 Delaware.

         B. Delaware

         Plaintiffs 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.[3] 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 ...

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