Rembrandt Patent Innovations, LLC et al v. Apple, Inc., No. 3:2014cv05094 - Document 130 (N.D. Cal. 2015)
Court Description: ORDER DENYING MOTION TO AMEND INFRINGEMENT CONTENTIONS by Hon. William Alsup denying 118 Motion to Amend/Correct ;.(whalc1, COURT STAFF) (Filed on 12/13/2015)
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Rembrandt Patent Innovations, LLC et al v. Apple, Inc. Doc. 130 1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 11 For the Northern District of California United States District Court 10 REMBRANDT PATENT INNOVATIONS LLC, and REMBRANDT SECURE COMPUTING, LP, 12 13 14 15 No. C 14-05094 WHA (lead) No. C 14-05093 WHA (consolidated) Plaintiffs, v. ORDER DENYING MOTION TO AMEND INFRINGEMENT CONTENTIONS APPLE INC., Defendant. / 16 17 INTRODUCTION 18 In this patent-infringement action involving initialization of computer systems, the 19 patent owner moves to amend its fifth amended disclosure of asserted claims and infringement 20 contentions. For the reasons stated below, the patent owner’s motion is DENIED. 21 22 STATEMENT Plaintiffs Rembrandt Patent Innovations, LLC, and Rembrandt Secure Computing, LP 23 (collectively, “Rembrandt”) are non-practicing entities. Rembrandt Patent Innovations owns 24 United States Patent No. 6,185,678. Rembrandt Secure Computing is an exclusive licensee of 25 the ’678 patent and possesses the right to sue and recover for infringement thereof. Rembrandt 26 commenced this action in 2014 in the Eastern District of Texas, claiming that defendant Apple 27 Inc.’s “servers and other Apple electronic devices that support iTunes functionality, and any 28 Apple electronic devices configured or adapted to operate with Apple’s iPhone OS or iOS” infringed the ’678 patent (Compl. at ¶ 13). Dockets.Justia.com 1 Pursuant to the Patent Local Rules in the Eastern District of Texas, Rembrandt served its 2 initial disclosure of asserted claims and infringement contentions in June 2014. Rembrandt 3 accused twenty products across three different categories of infringing the ’678 patent in their 4 initial infringement contentions (Schlesinger Decl., Exh. 1 at 3): 5 CATEGORY ACCUSED PRODUCTS IN INITIAL INFRINGEMENT CONTENTIONS iPhone iPhone, iPhone 3, iPhone 3G, iPhone 3Gs, iPhone 4, iPhone 4s, iPhone 5, iPhone 5c, iPhone 5s iPod iPod Touch 1st Generation, iPod Touch 2nd Generation, iPod Touch 4th Generation, iPod Touch 5th Generation iPad iPad, iPad 2, iPad 3rd Generation, iPad 4th Generation, iPad Air, iPad Mini, iPad Mini 2 6 7 8 9 11 For the Northern District of California United States District Court 10 12 13 In October 2014, pursuant to the Patent Local Rules in the Eastern District of Texas, 14 Rembrandt served its first amended infringement contentions after it reviewed Apple’s source 15 code for the accused software products (id., Exh. 3). Later that month, a judge in the Eastern 16 District of Texas granted Apple’s motion to transfer the action to this district and assigned to 17 the undersigned judge (Dkt. No. 17). 18 In March 2015, Rembrandt served Apple with its second amended infringement 19 contentions, merely reformatting its extant contentions to comply with this district’s Rules. 20 Later in March, Rembrandt moved for leave to file its third amended infringement contentions, 21 which accused four new products that Apple released in late 2014 and added infringement 22 theories under the doctrine of equivalents for many of the asserted claim elements (Dkt. No. 68- 23 23): 24 25 26 27 28 2 1 CATEGORY NEWLY-ACCUSED PRODUCTS IN THIRD AMENDED INFRINGEMENT CONTENTIONS 3 iPhone iPhone 6, iPhone 6s 4 iPod [none] 5 iPad iPad Air 2, iPad Mini 3 2 6 Apple filed a statement of non-opposition, and an order granted Rembrandt’s motion (Dkt. Nos. 7 73 & 74). 8 9 11 For the Northern District of California United States District Court 10 12 In July 2015, Rembrandt sought leave to file its fourth amended infringement contentions, which updated its source code citations (Dkt. No. 93). Apple filed a statement of non-opposition, and an order granted Rembrandt’s motion (Dkt. Nos. 98 & 99). In September 2015, Rembrandt sought leave to file its fifth amended infringement contentions, which added one product that Apple released in July (Dkt. No. 101): 13 CATEGORY NEWLY -ACCUSED PRODUCTS IN FIFTH AMENDED INFRINGEMENT CONTENTIONS 15 iPhone [none] 16 iPod iPod Touch 6th Generation 17 iPad [none] 14 18 Apple filed a statement of non-opposition, but noted that it asked Rembrandt whether its fifth 19 amendment would be its last, to which Rembrandt responded, “[w]e see no reason to agree that 20 this is the last product, especially since Apple is about to offer new products” (Dkt. No. 103). 21 An order granted Rembrandt’s motion to file its fifth amended infringement contentions (Dkt. 22 No. 104). 23 As a result of Rembrandt’s serial amendments, there are now twenty-five accused 24 hardware products as well as eight versions of the operating system at issue. Discovery 25 regarding those products is ongoing, including nineteen outstanding depositions (not including 26 30(b)(6) witnesses). 27 28 Rembrandt now moves to file its sixth amended infringement contentions, seeking to add four new versions of Apple’s hardware products and the newest version of Apple’s mobile 3 1 operating system, iOS 9, which Apple released soon after Rembrandt served its fifth amended 2 infringement contentions (Dkt. No. 118): 3 CATEGORY NEWLY ACCUSED PRODUCTS (PROPOSED SIXTH AMENDED INFRINGEMENT CONTENTIONS) 5 iPhone iPhone 6s, iPhone 6s Plus 6 iPod [none] 7 iPad iPad mini 4th Generation, iPad Pro 4 8 The newly-accused hardware products are updated iterations of hardware products that already 9 accused in this action, and Apple admits that the relevant source code in the previous version of its operating system, iOS 8 (already accused in this action), is representative of iOS 9. Apple 11 For the Northern District of California United States District Court 10 opposes Rembrandt’s motion (Dkt. No. 121). 12 Fact discovery closes on March 31, 2016, and the trial is set for July 11, 2016. 13 This order follows full briefing, including supplemental briefing regarding recent 14 amendments to the Federal Rules of Civil Procedure, and oral argument. 15 ANALYSIS 16 Rule 15(d) of the Federal Rules of Civil Procedure provides that a supplemental 17 complaint, not merely an amended complaint, is necessary to set forth “any transaction, 18 occurrence, or event that happened after the date of the pleading to be supplemented.” In other 19 words, the filing date of a complaint ordinarily determines the cut-off date for the scope of the 20 case, and a party must seek leave to extend the case to include claims based on facts that 21 occurred after that date. 22 On December 1, 2015, the amended Federal Rules of Civil Procedure took effect. The 23 amended Rules apply to pending cases “insofar as just and practicable.” H.R. Doc. No. 114-33, 24 at 2 (2015). The changes included the deletion of Rule 84, which provided, “[t]he forms in the 25 Appendix suffice under these rules and illustrate the simplicity and brevity that these rules 26 contemplate.” The Appendix referenced in Rule 84 included Form 18, an example complaint 27 for patent infringement. Form 18 merely included an allegation that the defendant infringed the 28 asserted patent by making, using, or selling “electric motors” without specifying the model of 4 1 the accused motors. The Federal Circuit held that, pursuant to Rule 84, the pleading standard 2 set forth in Form 18, not the pleading standard in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 3 (2007), controls. In re Bill of Lading, 681 F.3d 1323, 1334 (Fed. Cir. 2012). Rule 84 has been 4 abrogated, so In re Bill of Lading no longer applies. 5 Patent Local Rule 3-1(b) requires patent owners to identify each accused product of 6 which the patent owners is aware by serving infringement contentions on the accused infringer 7 “not later than 14 days after the Initial Case Management Conference.” Patent Local Rule 3-6 8 provides that a party may amend its infringement contentions “only by order of the Court upon 9 a timely showing of good cause.” Rembrandt specifically identified the accused products of which it was aware at the time 11 For the Northern District of California United States District Court 10 in its complaint, but it also accused “all reasonably similar products” (Compl. ¶ 13). It has 12 added products released after the filing date to this case by repeatedly amending its 13 infringement contentions (with Apple’s consent), but it has not sought leave to file a 14 supplemental complaint, apparently relying on the belief that its reference to “all reasonably 15 similar products” satisfied the pleading standard set forth on Form 18, even as to newly-released 16 products. Form 18, however, no longer applies. 17 With repeated amendments to its infringement contentions, Rembrandt has already made 18 this case increasingly unmanageable, and has already put undue pressure on the discovery and 19 trial schedule (which schedule is unlikely to be adjusted). It is time to prepare for the trial of 20 the already-accused products, which trial will begin on July 11, 2016. There must be some 21 reasonable cut-off date after which Rembrandt cannot further expand the case simply because 22 Apple’s product cycle has outpaced the resolution of this case. This order would come to the 23 same conclusion even if the issue were simply a matter of our local patent rules (i.e., good cause 24 not shown), but the failure to recognize the pleading problem provides an alternative ground. 25 At oral argument, counsel for plaintiffs cited LSI Corporation v. Funai Electric 26 Company, Ltd., No. 15-4307, slip op. at 2 (N.D. Cal. Dec. 8, 2015) (Edward M. Chen), which 27 denied a motion to dismiss a complaint that failed to specifically identify accused products. 28 That decision is easily distinguished. First, although the decision issued after December 1, it 5 1 applied the pleading standard of Form 18. (The order did not address the amendments to the 2 Rules.) Second, the issue there was whether or not to dismiss a pending complaint, not, as here, 3 whether or not to allow a party to expand the case based on facts that occurred after the case 4 had been filed. LSI Corporation is inapposite. 5 6 This order holds that Rembrandt may not amend its infringement contentions or file a supplemental complaint to expand the case at this late juncture. 7 8 CONCLUSION For the reasons stated above, plaintiffs’ motion to amend their infringement contentions (complying with Iqbal) for follow-on products, paying the filing fee, and seeking to relate the 11 For the Northern District of California is hereby DENIED. This is, of course, without prejudice to Rembrandt filing a new complaint 10 United States District Court 9 new case to the undersigned judge. 12 13 IT IS SO ORDERED. 14 15 Dated: December 13, 2015. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 16 17 18 19 20 21 22 23 24 25 26 27 28 6
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