Acer, Inc. et al v. Technology Properties Limited et al, No. 5:2008cv00877 - Document 286 (N.D. Cal. 2011)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS' MOTIONS TO AMEND INFRINGEMENT CONTENTIONS. Signed by Judge Jeremy Fogel on May 13, 2011. (jflc1, COURT STAFF) (Filed on 5/13/2011)
Download PDF
<![CDATA[
Acer, Inc. et al v. Technology Properties Limited et al Doc. 286 1 2 **E-Filed 5/13/2011** 3 4 5 6 7 IN THE UNITED STATES DISTRICT COURT 8 FOR THE NORTHERN DISTRICT OF CALIFORNIA 9 SAN JOSE DIVISION 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 ACER, INC., ACER AMERICA CORPORATION and GATEWAY, INC. Case No. 5:08-cv-00877 JF/HRL Plaintiffs, v. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED, Defendants. __________________________________ Case No. 5:08-cv-00882 JF/HRL HTC CORPORATION, HTC AMERICA, INC., Plaintiffs, v. TECHNOLOGY PROPERTIES LIMITED, PATRIOT SCIENTIFIC CORPORATION, and ALLIACENSE LIMITED, Defendants. 26 27 28 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) Dockets.Justia.com 1 2 BARCO N.V., a Belgian Corporation Case No. 5:08-cv-05398 JF/HRL 3 Plaintiff, 4 v. ORDER1 GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS 5 6 7 8 TECHNOLOGY PROPERTIES LTD., PATRIOT SCIENTIFIC CORP., ALLIACENSE LTD., 9 10 11 Defendants. ____________________________________ Defendants Technology Properties Ltd., Patriot Scientific Corp., and Alliacense, Ltd. 12 (collectively, “TPL”) seek leave to amend their infringement contentions with respect to United 13 States Patent Nos. 5,530,890 (“the ‘890 patent”) and 5,440,749 (“the ‘749 patent”) in each of the 14 above-captioned actions.2 The Court heard oral argument on April 22, 2011. Because TPL 15 seeks to assert certain claims that it reasonably could not have asserted prior to the 16 reexamination of the patents, the motions will be granted in part and denied in part. 17 18 I. BACKGROUND TPL first sought to amend its preliminary infringement contentions nearly one year ago, 19 after this Court lifted a stay that was imposed pending reexamination of several of the patents-in- 20 suit by the United States Patent and Trademark Office (“USPTO”). Although TPL was 21 permitted to amend its infringement contentions at that time with respect to the ‘336 patent,3 the 22 23 1 This disposition is not designated for publication in the official reports 2 Pursuant to Civil L.R. 3-12, the three actions have been related. 24 25 26 27 28 3 Amendment to the ‘336 infringement contentions was permitted because all parties agreed that amended invalidity and infringement contentions were needed after the reexamination of the ‘336 patent. See Transcript of Case Management Conference Held on February 12, 2010; Order Following Case Management Conference, filed February 22, 2010. 2 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 Court denied TPL’s motion to amend its contentions with respect to United States Patent No. 2 6,598,148 (“the ‘148 patent”) and the ‘749 and ‘890 patents, finding that TPL had not been 3 diligent. Order Denying Defendants’ Motions to Amend Infringement Contentions, filed 4 September 10, 2010. 5 TPL now renews its motion to amend its infringement contentions with respect to the ‘749 and 6 ‘890 patents based upon subsequent activity by the USPTO. 7 A. The Reexaminations 8 In November 2010, the USPTO issued a Notice of Intent to Issue Reexamination 9 Certificate (“NIRC”) for the ‘890 patent. Upon receipt of the NIRC, TPL notified Plaintiffs of 10 its intention to seek leave to assert new claims once the Reexamination Certificate issued. Mar 11 Decl. Ex. B. On March 1, 2011, TPL received the Reexamination Certificate, confirming the 12 patentability of existing claims 5–10 and new claims 11–20. Apart from one clarification to 13 independent claim 11, new claims 11-20 track the patent’s original claims 1-10 word-for-word. 14 TPL served the proposed amendments to its infringement contentions the same day. The 15 proposed amended contentions assert claims 7, 9, 11, 12, 13, 17, and 19 against each Plaintiff. 16 On February 11, 2011, the USPTO issued the NIRC for the ‘749 patent, confirming the 17 patentability of claims 1-7, 10-20, 21-27, 30, and 34-62. Claim 9 was canceled and replaced by 18 claim 59. TPL expects thirty new claims to be confirmed by the final Reexamination Certificate. 19 Asserting that it wishes to avoid further delay in the instant proceedings, TPL seeks to amend its 20 infringement contentions with respect to the ‘749 patent before the Certificate issues: it seeks to 21 assert claims 1, 23, 24, 43, 44, 45, 47, 54, 55, and 59 against each Plaintiff. Together, the 22 proposed amendments would add a total of thirteen newly-accused products in the HTC action 23 and one newly-accused product in the Acer action, each of which TPL contends entered or will 24 enter the U.S. market after June 2010, when TPL last attempted to amend its contentions.4 25 II. LEGAL STANDARD 26 27 28 4 After it filed the instant motions, TPL withdrew its request to add several newlyaccused products in the Acer and Barco actions. 3 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 An action is governed by the version of the local rules in effect at the time the underlying 2 action is filed. See Seiko Epson Corp. v. Coretronic Corp., No. C 06-06946 MHP, 2008 WL 3 2563383, at *2 (N.D. Cal. June 23, 2008). Plaintiffs Acer Inc., Acer America Corporation, and 4 Gateway, Inc. (collectively, “Acer”) and HTC Corporation and HTC America, Inc. (collectively, 5 “HTC”) filed their actions on February 8, 2008. Under the Patent Local Rules in effect at that 6 time, “[a]mendment or modification of the Preliminary or Final Infringement Contentions . . . , 7 other than as expressly permitted in Patent L.R. 3-6, may be made only by order of the Court, 8 which shall be entered only upon a showing of good cause.”5 Patent L.R. 3-7. The Patent Local 9 Rules were amended effective March 1, 2008. Plaintiff Barco, N.V. (“Barco”) filed its action on 10 11 12 13 14 December 1, 2008. The version of Patent Local Rule 3-6 in effect as of that date provides that: Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause 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 Contentions. 15 The Advisory Subcommittee commented that even after March 1, 2008, Patent Local Rule 3-6 16 would continue to be “regulated by the well-established ‘good cause’ test.” Patent Local Rules 17 Advisory Subcommittee Report at 2. Thus, prior cases discussing the concept of “good cause” 18 remain relevant precedent. 19 In order to demonstrate good cause, TPL must show first that it was diligent in amending 20 its contentions and then that the non-moving parties will not suffer undue prejudice if the motion 21 to amend is granted. O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366-68 22 (Fed. Cir. 2006) (concluding that if a party seeking to amend did not demonstrate diligence, there 23 24 5 25 26 27 28 The applicable version of Patent Local Rule 3-6(a) allows a party alleging infringement to amend its infringement contentions without leave of court if the party believes in good faith that the amendment is required by the court’s claim construction ruling or documents produced in connection with the opposing party’s invalidity contentions. Here, the Court has not issued a claim construction ruling, nor does TPL allege that it seeks to amend in response to the invalidity contentions served by Plaintiffs. 4 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 was “no need to consider the question of prejudice”).6 See also Johnson v. Mammoth 2 Recreations, 975 F.2d 604, 609 (9th Cir. 1992) (citation omitted) (“Although the existence or 3 degree of prejudice to the party opposing the modification might supply additional reasons to 4 deny a motion, the focus of the [good cause] inquiry [under Federal Rule of Civil Procedure 5 16(b)] is upon the moving party’s reasons for seeking modification. If that party was not diligent, 6 the inquiry should end.”). While the court in O2 Micro considered “how quickly the party 7 moves to amend its contentions once a new theory of infringement . . . comes to light,” Hon. 8 James Ware & Brian Davy, The History, Content, Application and Influence of the Northern 9 District of California Patent Local Rules, 25 SANTA CLARA COMPUTER & HIGH TECH. L.J. 965, 10 995 (2009), this Court has concluded that “the Court also must address whether the party was 11 diligent in discovering the basis for the proposed amendment.” West v. Jewelry Innovations, 12 Inc., No. C07-1812 JF (HRL), 2008 WL 4532558, at *2 (N.D. Cal. Oct. 8, 2008). 13 The party seeking to amend its contentions bears the burden of establishing diligence. 14 O2 Micro, 467 F.3d at 1366-67. “Unlike the liberal policy for amending pleadings, the 15 philosophy behind amending claim charts is decidedly conservative, and designed to prevent the 16 ‘shifting sands’ approach to claim construction.” LG Elecs. Inc. v. Q-Lity Computer Inc., 211 17 F.R.D. 360, 367 (N.D. Cal. 2002). The rules were “designed to require parties to crystallize their 18 theories of the case early in the litigation and to adhere to those theories once they have been 19 disclosed.” O2 Micro, 467 F.3d at 1366 n. 12 (quoting Nova Measuring Instruments Ltd. v. 20 Nanometrics, Inc., 417 F. Supp.2d 1121, 1123 (N.D. Cal .2006)). “Nevertheless, judges in this 21 district have recognized that the Patent Local Rules are ‘not a straitjacket into which litigants are 22 locked from the moment their contentions are served. There is a modest degree of flexibility, at 23 least near the outset.’” Halo Electronics, Inc. v. Bel Fuse Inc., No. C07-06222 RMW (HRL), 24 25 26 27 28 6 Other factors relevant to this inquiry include “the relevance of the newly-discovered prior art, whether the request to amend is motivated by gamesmanship, [and] the difficulty of locating the prior art.” Acco Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., No. C 04-03526 SI, 2008 WL 2168379 at *1 (N.D. Cal., May 22, 2008) (citing Yodlee, Inc. v. CashEdge, Inc., No. C 05-01550 SI, 2007 WL 1454259, at *2-3 (N.D. Cal. May 17, 2007)). 5 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 2010 WL 3489593, at * 1 (N.D. Cal. Sep. 3, 2010) (citing Comcast Cable Communications 2 Corp., LLC v. Finisar Corp., No. C06-04206, 2007 WL 716131 at *2 (N.D.Cal. Mar.2, 2007). 3 III. DISCUSSION 4 After nearly three years of litigation, this case still is in its early stages. Plaintiffs suggest 5 that TPL’s current effort to amend its infringement contentions is motivated by gamesmanship, 6 as evidenced by the fact that TPL did not file the instant motions until after claim construction 7 briefing was complete. In response, TPL argues that the timing of its proposed amendments was 8 dictated by the reexamination process, noting that it kept Plaintiffs abreast of developments in 9 that process until it became clear which claims would emerge and in what form. 10 A. 11 Non-Opposition HTC and Acer do not object to the substitution of claims 1 and 2 of the ‘890 patent by 12 replacement claims 11 and 12,7 nor do they object to the substitution of claim 9 of the ‘749 13 patent by replacement claim 59. Each Plaintiff also agrees to permit amendment with respect to 14 claim 1 of the ‘749 patent in order to address the new limitations that were added to that claim 15 during the reexamination. 16 B. 17 Diligence TPL contends that because it was uncertain which claims would survive reexamination, it 18 could not conduct a detailed infringement analysis prior to the issuance of the NIRCs for the 19 ‘749 and ‘890 patents. Although TPL brought its previous motion to amend based in part on 20 claims that stood rejected as of June 2010, it certainly was not required to do so. In the present 21 context, diligence does not require that a party awaiting USPTO action assert all potential 22 claims. Instead of promoting an orderly process, such a request would add confusion and 23 uncertainty to the litigation. 24 25 After it received the NIRC for the ‘890 patent, TPL promptly notified Plaintiffs of its intent to amend its ‘890 contentions (Mar Decl. Ex. B), and it began investigating products that 26 27 7 28 Barco also does not object to the substitution of claim 1 of the ‘890 patent by claim 11. 6 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 might infringe the pending claims. See Mar. 17, 2011 Brataadiredja Decl. ¶ 4. TPL thus was 2 prepared to serve its amended contentions on the same day that the Reexamination Certificate 3 issued. With respect to the ‘749 patent, TPL offered to assert claims conditionally based on the 4 NIRC, and it completed its investigation of infringing products and served its proposed amended 5 contentions approximately one month after the NIRC issued. See Mar. 25, 2011 Brataadiredja 6 Decl. ¶ 3. 7 HTC points out that as a matter of law, the scope of the claims asserted under the ‘749 8 and ‘890 patents could not have been altered by the reexaminations. 35 U.S.C. § 305 (“No 9 proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in 10 a reexamination proceeding under this chapter.”). Accordingly, HTC contends that the universe 11 of potentially infringing products likewise could not have expanded, and TPL did not need to 12 wait for the issuance of the NIRCs before conducting its renewed investigation into infringing 13 products. However, given the fact that TPL did not know which claims would emerge from the 14 reexamination, it was not unreasonable for TPL to investigate potentially infringing products 15 after the NIRCs were issued. 16 HTC also argues that public information regarding the newly-accused products was 17 available even before TPL sought to amend its contentions in June 2010. However while, 18 information regarding these products may have been available in the form of press releases or 19 other media, it appears that none of the new instrumentalities actually entered the market until 20 after TPL served its amended contentions in May 2010. See, e.g., Chen Decl. Ex. D (press 21 release indicating that the HTC Aria would be available June 20, 2010);8 Id. Ex. F (article 22 indicating that the HTC Desire was released on August 27, 2010). 35 U.S.C. § 271 prohibits the 23 use or sale of infringing products, not the announcement of intent to sell infringing products. 24 Thus, even if public information about these products was available to it prior to June 2010, TPL 25 26 27 28 8 Although TPL submitted a corrected version of its proposed amended contentions to HTC on June 22, 2010, two days after the Aria was released, this correction did not alter the substance of its proposed contentions. See Corrected Amended Patent Local Rule 3-1 Preliminary Infringement Contentions, June 25, 2010 Mar Decl. Ex. B. 7 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 did not have a legal basis for accusing HTC of infringement until the products actually had 2 entered the market.9 Moreover, as TPL points out, nothing requires parties to bring a motion to 3 amend each time a new product enters the market, as this could cause undue delay in the 4 proceedings and prejudice to all parties involved. 5 C. 6 Prejudice Plaintiffs argue that TPL’s attempt to assert claims 7 and 9 of the ‘890 patent in addition 7 to claims 17 and 19 is unnecessary and prejudicial because the latter are mirror images of the 8 former. Acer observes that in order to promote judicial economy courts frequently limit the 9 number of claims that a patentee may assert. See, e.g., Auto Wax Co. v. Mark V Products, No. 10 3:99-CV-0982-M, 2001 WL 292597, at *1 (N.D. Tex. March 14, 2001) (requiring plaintiff to 11 limit number of claims to be tried from 86 to 19); Fenster Family Patent Holdings, Inc. v. 12 Siemens Medical Solutions USA, No. 04-0038-JJF, 2005 WL 2304190, at *3 (D. Del. Sept. 20, 13 2005) (requiring plaintiff to reduce its 90 claims to 10); Verizon Calif., Inc. v. Ronald A. Katz 14 Tech. Licensing, L.P., 326 F.Supp.2d 1060, 1066 (C.D. Cal. 2003) (requiring plaintiff to select a 15 maximum of three representative claims for each patent it contended was infringed). TPL 16 concedes that “[b]ecause the scope of new independent claim 11 is the same as the scope of 17 original independent claim 1, the infringement theories underlying the claim charts for the new 18 claims are the same as those for the original claims.” Mar. 17, 2011 Brataadiredja Decl. ¶ 3. 19 Given that assessment, it appears that the assertion of all four claims would be redundant. 20 Because claim 1 has been canceled and all four claims cover the same ground, logic dictates that 21 TPL be limited to the assertion of claims 17 and 19, which depend from surviving claim 11. 22 Finally, Plaintiffs argue that they will be prejudiced by having to conduct additional prior 23 art research and by having to brief the new claim terms that were added during reexamination. 24 However, any such prejudice is insufficient to outweigh TPL’s right to assert new claims and the 25 26 27 28 9 For this reason, TPL has sought to accuse conditionally the Acer Iconia, which will be released in the United States later this summer. Perhaps TPL could have taken this approach last year with respect to other HTC products it seeks to accuse now. However, it was not required to do so. 8 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1) 1 Court’s interest in resolving the parties’ disputes as comprehensively as is possible. 2 3 IV. ORDER Accordingly, TPL’s motions will be GRANTED IN PART AND DENIED IN PART. 4 TPL may amend its infringement contentions to: (a) assert claims 11, 12, 13, 17, and 19 of the 5 ‘890 patent and claims 1, 23, 24, 43, 44, 45, 47, 54, 55, and 59 of the ‘749 patent against each 6 Plaintiff; (b) include the thirteen newly-accused HTC instrumentalities; and (c) include 7 conditionally the Acer Iconia. A case management conference is hereby scheduled for June 24, 8 2011 at 10:30 a.m. for the purpose of setting a new date and briefing schedule for a claim 9 construction hearing. 10 IT IS SO ORDERED. 11 12 DATED: May 13, 2011 ___________________________ JEREMY FOGEL United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 Case Nos. 5:08-cv-00877-JF/HRL; 5:08-cv-00882-JF/HRL; 5:08-cv-05398-JF/HRL ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTIONS TO AMEND INFRINGEMENT CONTENTIONS (JFLC1)
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
