United States District Court, N.D. California
ORDER ON THE SCOPE OF IPR ESTOPPEL AND ON GOPRO'S
MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS RE: DKT.
NOS. 313, 316
William H. Orrick United States District Judge.
stay pending inter partes review
(“IPR”), this patent infringement case has
resumed with new counsel and new vigor. Before me is
defendant GoPro, Inc.'s motion to amend its invalidity
contentions, which plaintiff Contour IP Holdings, LLC opposes
in part. The parties also ask that I determine the impact of
IPR estoppel on GoPro's case. As set forth below, I grant
in part and deny in part GoPro's motion to amend and
provide the parties with guidance on estoppel.
November 2014, the Patent Office issued U.S. Patent Nos. 8,
890, 954 (“the '954 Patent”) and 8, 896, 694
(“the '694 Patent”) to non-party Contour LLC.
The patents claimed a priority date of September 13, 2010,
making the one-year period for prior art September 13, 2009.
Contour LLC, as the then-assignee of the patents, sued GoPro
in the United States District Court for the District of Utah
in January 2015 alleging infringement of both patents.
See Contour, LLC v. GoPro, Inc., et al., Case No.
2:14-cv-864 (D. Utah 2015).
April 2015, GoPro filed IPR petitions challenging the
validity of the '954 and '694 Patents. See
Dkt. No. 270-4. In October 2015, the Patent Trial and Appeal
Board (“PTAB”) granted GoPro's IPR petitions,
finding that it was reasonably likely that claims 1, 2, and
11-30 of the '954 Patent and claims 1-20 of the '694
Patent were not patentable. When GoPro moved for a stay,
Contour LLC voluntarily dismissed the Utah case on November
30, 2015. See Utah Dkt. No. 57. That same day,
however, Contour filed a similar action against GoPro in the
United States District Court for the District of Delaware.
See Contour IP Holding, LLC v. GoPro, Inc., Case No.
1:15-cv-1108 (D. Del. 2015). GoPro filed a second motion for
a stay pending IPR proceedings, and the court stayed the case
in July 2016. See Del. Dkt. No. 70. In October 2016,
the PTAB issued a final decision against GoPro's
allegations that the claims were unpatentable, GoPro appealed
that decision to the Federal Circuit. See GoPro, Inc., v.
Contour IP Holding LLC, No. 2017-1894 (Fed. Cir.) [Dkt.
the Delaware court lifted the stay, and in November 2016
GoPro filed a motion to transfer venue to this district.
See Del. Dkt. No. 83. GoPro served its initial
invalidity contentions on December 23, 2016. Dkt. No. 311-2.
In July 2017, the Delaware court granted the motion to
transfer, and the case was assigned to me. See Del.
Dkt. No. 174; Dkt. No. 180. In November 2017 I denied
GoPro's motion to dismiss. Dkt. No. 213. GoPro served
supplemental invalidity contentions on February 9, 2018 and
final invalidity contentions on April 2, 2018. Dkt. Nos.
311-3, 311-4. The contentions were the result of commissioned
searches along with internal evidence of prior art and prior
invention. Declaration of Michelle Ann Clark (“Clark
Decl.”) [Dkt. No. 313-1] ¶ 2. On July 16, 2018 I
construed the claims of the two patents at issue.
See Claim Construction Order [Dkt. No. 251].
27, 2018, the Federal Circuit vacated and remanded the
PTAB's decision, and on November 1, 2018 it denied
Contour's combined petition for rehearing and rehearing
en banc. See Gopro, Inc. v. Contour IP Holding LLC,
898 F.3d 1170, 1177 (Fed. Cir. 2018), opinion modified and
superseded, No. 2017-1894, 2018 WL 5660650 (Fed. Cir. Nov. 1,
2018), and opinion withdrawn on denial of reh'g sub nom.
GOPRO, INC., v. CONTOUR IP HOLDING LLC, No.
2017-1894, 2018 WL 5777326 (Fed. Cir. Nov. 1, 2018). On
December 12, 2018, I granted GoPro's motion to stay
pending IPR, finding that a ruling from the PTAB on remand
was likely to simplify the issues in this case. Dkt. No. 286.
31, 2019, the PTAB issued its final written decision on
remand. Clark Decl. Ex. M (July 31, 2019 PTAB Decision on
Remand) [Dkt. No. 313-14]. On September 17, 2019, GoPro
retained new counsel from Quinn Emmanuel Urquhart &
Sullivan, LLP. Clark Decl. ¶ 4. New counsel “began
looking for and engaged experts to look for prior art systems
that would not be subject to 35 U.S.C. § 315(e).”
parties then stipulated to lift the stay as of October 1,
2019. Dkt. No. 295. Within 48 hours, GoPro produced evidence
to Contour from its new counsel's search. Clark Decl.
¶ 4. On October 29, 2019 GoPro provided Contour with its
proposed amended invalidity contentions, which included new
systems for use as primary references. Id. ¶ 5.
GoPro also served third-party subpoenas to various entities
seeking additional evidence of invalidity. Id.
November 13, 2019, GoPro filed the instant motion, and on
November 26, 2019, the parties filed a joint statement
regarding IPR estoppel. See Motion to Amend
Invalidity Contentions (“Mot.”) [Dkt. No. 313];
Joint Statement Regarding Estoppel (“Estoppel
Statement”) [Dkt. No. 316]. I heard argument on January
8, 2020. Dkt. No. 332.
MOTION TO AMEND
Local Rule 3 requires patent disclosures early in a case and
streamlines discovery by replacing the series of
interrogatories that parties would likely have propounded
without it.” ASUS Computer Int'l v. Round Rock
Research, LLC, No. 12-cv-02099-JST, 2014 WL 1463609, at
*1 (N.D. Cal. Apr. 11, 2014) (internal quotation marks and
modifications omitted). The disclosures required under Rule 3
are designed “to require parties to crystallize their
theories of the case early in the litigation and to adhere to
those theories once they have been disclosed.” Nova
Measuring Instruments Ltd. v. Nanometrics, Inc., 417
F.Supp.2d 1121, 1123 (N.D. Cal. 2006). “They are also
designed to provide structure to discovery and to enable the
parties to move efficiently toward claim construction and the
eventual resolution of their dispute.” Golden
Bridge Tech. Inc. v. Apple, Inc., No. 12-cv-04882-PSG,
2014 WL 1928977, at *3 (N.D. Cal. May 14, 2014) (internal
quotation marks omitted); see also O2 Micro Int'l
Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
1365-66 (Fed. Cir. 2006) (“The local patent rules in
the Northern District of California [require] 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.”).
Local Rule 3-6 permits amendment of infringement contentions
only by order of the Court, and only upon a “timely
showing of good cause.” Patent L.R. 3-6. Rule 3-6 lists
several examples of “circumstances that may, absent
undue prejudice to the nonmoving party, support a finding of
good cause.” Id. These 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
Id. In determining whether a party has established
good cause, courts first look to whether the party has shown
that it has acted with diligence. See O2 Micro, 467
F.3d at 1366. “[I]f the moving party was not diligent,
the inquiry should end.” Apple Inc. v. Samsung
Electronics Co. Ltd., No. 12-cv-0630-LHK (PSG), 2013 WL
3246094, at *1 (N.D. Cal. June 26, 2013) (internal quotation
marks omitted). On the other hand, “[i]f the court
finds that the moving party has acted with diligence, it must
then determine whether ...