-VBK Nomadix, Inc. v. Hewlett-Packard Company et al, No. 2:2009cv08441 - Document 807 (C.D. Cal. 2012)
Court Description: ORDER Denying Defendants' Motion for Leave to Supplement Their Invalidity Contentions 715 by Judge Dean D. Pregerson. For all these reasons, the court denies Defendants Motion for Leave to Supplement their Invalidity Contentions. (See Order for Details). (sch)
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-VBK Nomadix, Inc. v. Hewlett-Packard Company et al Doc. 807 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 NOMADIX, INC., 12 13 14 15 16 17 18 19 20 21 22 23 24 Plaintiff, v. HEWLETT-PACKARD COMPANY, a Delaware corporation; WAYPORT, INC., a Delaware corporation; IBAHN CORPORATION, a Delaware corporation; GUEST-TEK INTERACTIVE ENTERTAINMENT LTD., a Canadian corporation; GUEST-TEK INTERACTIVE ENTERTAINMENT, INC.; a California corporation; LODGENET INTERACTIVE CORPORATION, a Delaware corporation; LODGENET STAYONLINE, INC., a Delaware corporation; ARUBA NETWORKS, INC.; a Delaware corporation; SUPERCLICK, INC., A Washington corporation; SUPERCLICK NETWORKS, INC., a Canadian corporation, 25 26 27 28 Defendants. ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 09-08441 DDP (VBKx) ORDER DENYING DEFENDANTS’ MOTION FOR LEAVE TO SUPPLEMENT THEIR INVALIDITY CONTENTIONS [Docket No. 715] Defendants Wayport, Inc., Hewlett-Packard Co., iBahn Corp., Aruba Networks, Inc., Superclick, Inc., Superclick Networks, Inc., Dockets.Justia.com 1 and Solutioninc Technologies Ltd. (collectively, “Defendants”) have 2 filed a Motion for Leave to Supplement Their Invalidity Contentions 3 (“Motion”). 4 Patent No. 6,636,894 (“‘894 Patent”) is invalid in light of U.S. 5 Patent No. 6,779,118 (“‘118 Patent”); and 2) U.S. Patent No. 6 7,689,716 (“‘716 Patent”) is invalid in light of the Stanford 7 Secure Public Internet Access Handler (“SPINACH”) system and other 8 references.1 9 Decl.”), Exs. 2-3.) Defendants’ current contentions state that: 1) U.S. (Decl. of Benedict Frey in Supp. of Mot. (“Frey Defendants now request leave to add invalidity 10 contentions against U.S. Patent Nos. 7,194,554 (“‘554 Patent”), 11 6,868,399 (“‘399 Patent”), 6,130,892 (“‘892 Patent”), 7,088,727 12 (“‘727 Patent”), and 7,554,995 (“‘995 Patent”). 13 Having reviewed the parties’ moving papers and heard oral argument, 14 the court denies the Motion and adopts the following Order. 15 I. 16 (Id., Exs. 8-12.) BACKGROUND In July 2010, Defendants served initial invalidity contentions 17 against the ‘894 Patent asserted in Nomadix’s original complaint. 18 The contentions included an invalidity chart explaining how the 19 ‘894 Patent was anticipated by the ‘118 Patent issued to Dr. 20 Koichiro Ikudome. 21 acquainted with Dr. Ikudome’s work since at least 2008, when 22 Linksmart Wireless Technologies, LLC - in which Dr. Ikudome is a 23 partner - sued Defendants Wayport and iBahn for infringing the ‘118 24 Patent. (Mot. at 2.) (Opp’n at 2-3.) Defendant Wayport has been During the course of that lawsuit, 25 1 26 27 28 In both their current and proposed contentions, Defendants have alleged invalidity both for lack of novelty under 35 U.S.C. § 102 and for obviousness under § 103, based on various combinations of references. It is not necessary for purposes of this Order to distinguish between those specific contentions or the particular combinations relied upon. 2 1 Wayport deposed Dr. Ikudome, with the deposition subject to a 2 protective order. 3 licensee of the ‘118 Patent. 4 In October 2010, Wayport became a (Id.) The July 2010 invalidity contentions also provided a more 5 general 42-page table of prior art references, including the 6 SPINACH system as disclosed in a 1997 article by Elliot Poger and 7 Mary Baker, “Secure public internet access handler (SPINACH),” and 8 a 1999 article by Guido Appenzeller, Mema Roussopolous, and Mary 9 Baker, “User-Friendly Access Control for Public Network Ports.” 10 (Frey Decl., Ex. 1.) 11 general statements that: 1) “[t]he following references may 12 constitute prior art to one or more of U.S. Patent Nos. [‘892, 13 ‘727, ‘995, ‘894, ‘554, ‘399, ‘110, and ‘716]”; and 2) one or more 14 of these references may anticipate or render obvious one or more of 15 the patent claims. 16 Defendants prefaced the table with the (Id.) The ‘716 Patent issued to Nomadix in March 2010. In July 17 2011, Defendants updated their invalidity contentions to include 18 express assertions that the ‘716 Patent was invalid in light of the 19 SPINACH system as disclosed in the 1999 article, in combination 20 with other references. 21 was one of the key developers of the SPINACH system and has been a 22 consultant to Defendant Wayport since September 2009. 23 Opp’n at 3-4.) 24 The article’s co-author, Dr. Roussopolous, (Mot. at 1; In October 2011, Defendants served a subpoena on Dr. Ikudome. 25 (Mot. at 3.) 26 Nomadix present. 27 testimony, Defendants served Nomadix with supplemental invalidity 28 contentions on November 4, 2011. On November 1, 2011, Defendants deposed him, with (Id.) Based on Dr. Ikudome’s deposition (Id. at 4.) 3 The contentions 1 added that the ‘118 Patent and other references invalidated not 2 only Nomadix’s ‘894 Patent, but its ‘554 Patent and ‘399 Patent as 3 well. 4 request that they stipulate to these supplemental contentions, 5 which are now the subject of this Motion. 6 (Frey Decl., Ex. 1.) Nomadix did not respond to Defendants’ Also in October 2011, Defendants discovered a 1996 article by 7 Jos Vos, “Linux firewall facilities for kernel-level screening” 8 (“Vos article”). 9 the article through ongoing Internet searches for prior art. (Mot. at 4.) Defendants state that they found (Id.) 10 However, the Vos article was also cited in the 1997 SPINACH article 11 referenced in Defendants’ initial contentions. 12 Then, on November 3, 2011, Defendant Wayport noticed a 13 deposition of Dr. Roussopolous for November 16, 2011. 14 Defendants state that they had previously been unable to depose Dr. 15 Roussopolous, because she was unwilling to travel to the United 16 States from her home in Greece. 17 speak with Dr. Roussopolous informally in Greece on November 15, 18 2011. 19 had filed a motion to quash. 20 (Id.) (Mot. at 3.) However, Defendants were able to The deposition itself did not take place, as Nomadix (Id.) Based on information learned from their conversation with Dr. 21 Roussopolous and disclosed in the Vos article, Defendants served 22 Nomadix with additional supplemental invalidity contentions on 23 November 21, 2011. 24 the supplemental contentions, and Defendants therefore filed this 25 Motion on November 30, 2011. 26 II. 27 28 (Mot. at 4.) Nomadix declined to stipulate to (Id.) LEGAL STANDARD The parties have adopted a modified version of the Northern District of California’s Patent Local Rules. 4 Rule 3-1 requires a 1 defendant asserting an invalidity defense to serve invalidity 2 contentions on the plaintiff within 45 days of receipt of 3 infringement contentions. 4 contentions may only be amended “by order of the Court upon a 5 timely showing of good cause.” 6 of material, prior art despite earlier diligent search” can support 7 a finding of good cause, “absent undue prejudice to the non-moving 8 party.” 9 supplement contentions where the amendments develop previously Id. R. 3-6. After this time, the invalidity Relevant here, “[r]ecent discovery Courts have also found good cause to 10 identified invalidity theories, and do not add new theories late in 11 discovery. 12 Integration, Inc., No. C 06-7477, 2008 WL 2622794, at *4-5 (N.D. 13 Cal. Jul. 1, 2008). 14 “requires a showing of diligence,” and “[t]he burden is on the 15 movant to establish diligence.” 16 Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). 17 Golden Hour Data Sys., Inc. v. Health Servs. However, demonstrating good cause also O2 Micro Int’l Ltd. v. Monolithic More broadly, leave to amend “shall be freely given when 18 justice so requires.” 19 Rules are “not a straitjacket into which litigants are locked from 20 the moment their contentions are served. 21 of flexibility, at least near the outset.” 22 LLC v. Finistar Corp., No. C 06-04206, 2007 WL 716131, at *2 (N.D. 23 Cal. Mar. 2, 2007). 24 charts is decidedly conservative, and designed to prevent the 25 shifting sands approach to claim construction.” 26 WL 2622794, at *2 (internal quotation marks omitted). 27 Rules thus balance “the right to develop new information in Fed. R. Civ. P. 15(a). The Patent Local There is a modest degree Comcast Commc’ns Corp., However, “the philosophy behind amending claim 28 5 Golden Hour, 2008 The Local 1 discovery with the need for certainty as to the legal theories.” 2 Id. (internal quotation marks omitted). 3 III. DISCUSSION 4 As mentioned, good cause requires a showing of diligence by 5 the moving party. 6 requirement. 7 ‘118 Patent and the SPINACH references in July 2010, in detailed 8 invalidity contentions against the ‘894 and ‘716 Patents. 9 Defendants also deposed Dr. Ikudome just one week after having Defendants argue that they have met this First, Defendants note that they timely disclosed the 10 subpoenaed him in October 2011, and would have deposed Dr. 11 Roussopolous two weeks later had Nomadix not objected. 12 3.) 13 Roussopolous, and discovering the Vos article, Defendants promptly 14 served Nomadix with updated contentions. 15 Defendants filed this Motion within a week of Nomadix’s refusal to 16 stipulate to the updated contentions. 17 emphasize, took place before the close of fact discovery on 18 December 2, 2011. 19 (Mot. at 2- Then, after deposing Dr. Ikudome, speaking informally with Dr. (Id.) Finally, All of this, Defendants Defendants offer no explanation, however, for their delay in 20 deposing or otherwise speaking with Dr. Ikudome and Dr. 21 Roussopolous. 22 asserted Nomadix patents and, with the exception of the Vos 23 article, the prior art upon which Defendants base their invalidity 24 defenses since at least July 2010. 25 been familiar with the ‘118 Patent and the work of Dr. Ikudome 26 since its 2008 litigation with Linksmart, and has worked with Dr. 27 Roussopolous as a consultant since 2009. 28 Defendants respond that their prior deposition of Dr. Ikudome was There is no dispute that Defendants have had the 6 Further, Defendant Wayport has (Opp’n at 3.) Although 1 unavailable in this suit due to a protective order, this does not 2 explain why they did not simply depose him again sooner, instead of 3 waiting until late in discovery. 4 adequately explain their delay in discovering the Vos article, when 5 it was one of only eleven references cited in the 1997 SPINACH 6 paper upon which they based their initial invalidity contentions. 7 Likewise, Defendants fail to In short, Defendants were aware, or should have been aware, of 8 the three sources underlying their supplemental invalidity 9 contentions – and, at least to some degree, the relevance of these 10 sources - since July 2010 or before. 11 the eve of the close of fact discovery to schedule the relevant 12 depositions and seek to supplement their contentions. 13 finds that this does not constitute due diligence. 14 Appliance, Inc. v. Sun Microsystems, Inc., Nos. C-07-06053 & 15 C-07-05488, 2009 WL 2761924, at *2-3 (N.D. Cal. Aug. 31, 2009) 16 (denying plaintiff leave to amend its infringement contentions, 17 because it failed to exercise diligence in deposing a witness for a 18 third party that it had previously accused of infringement). Yet Defendants waited until The court See Network 19 Moreover, in making good cause determinations as to prior art 20 in particular, courts have “examined such factors as the relevance 21 of the newly-discovered prior art, whether the request to amend is 22 motivated by gamesmanship, the difficulty of locating the prior 23 art, and whether the opposing party will be prejudiced by the 24 amendment.” 25 Inc., No. C 04-03526, 2008 WL 2168379, at *1 (N.D. Cal. May 22, 26 2008). 27 is highly relevant because it anticipates or renders obvious 28 Nomadix’s asserted patents. Acco Brands, Inc. v. PC Guardian Anti-Theft Prods., Here, Defendants emphasize that the material they would add Taking Defendants’ representations as 7 1 true, the court agrees that this factor weighs in Defendants’ 2 favor. 3 that this material was not at all difficult for Defendants to 4 locate. 5 gamesmanship, these first three factors are inconclusive. 6 prejudice analysis tips the balance against Defendants. 7 As discussed above, however, the evidence strongly suggests Because there is no evidence one way or the other as to But the Defendants argue that there is no prejudice here, because they 8 are not shifting or adding theories, but simply developing “the 9 same theory set forth in the preliminary invalidity contentions in 10 July 2010 and first supplemental invalidity contentions in July 11 2011.” 12 that the ‘118 Patent and the SPINACH system rendered invalid 13 Nomadix’s ‘894 and ‘716 Patents, respectively. 14 explains, however, Defendants seek to go well beyond developing 15 these prior theories. 16 and SPINACH system invalidate several additional Nomadix patents. 17 Likewise, Defendants contend that three other patents are 18 invalidated by a new reference – the Vos article. 19 Defendants now theorize that prior art invalidates seven Nomadix 20 patents, instead of only two. 21 that responding to these new contentions would require additional 22 fact discovery, which is now closed.2 23 As Nomadix Defendants now contend that the ‘118 Patent In short, Nomadix therefore reasonably argues /// 25 Specifically, those contentions alleged /// 24 (Reply at 8.) /// 26 2 27 28 For instance, to rebut arguments of invalidity under 35 U.S.C. § 102(a), Nomadix would likely need to investigate the facts surrounding conception and reduction to practice of its patented invention. (Opp’n at 7.) 8 1 2 3 IV. CONCLUSION For all these reasons, the court denies Defendants’ Motion for Leave to Supplement their Invalidity Contentions. 4 5 6 IT IS SO ORDERED. 7 8 9 Dated: March 22, 2012 DEAN D. PREGERSON United States District Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9
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