GoPro, Inc. v. 360Heros, Inc.
Filing
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ORDER RE: DISCOVERY (Illston, Susan) (Filed on 3/22/2017)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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GOPRO, INC.,
Case No. 16-cv-01944-SI
Plaintiff,
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ORDER RE: DISCOVERY
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v.
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360HEROS, INC.,
Re: Dkt. No. 39
Defendant.
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The parties have filed two joint statements concerning discovery issues. Dkt. Nos. 39, 41.
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In the first joint letter (Dkt. No. 39), GoPro asks the Court to: (1) strike 360Heros’ additional
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United States District Court
Northern District of California
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infringement contentions; and (2) exclude Markman testimony of two 360Heros witnesses, Mr.
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Peter Bilinski and Dr. Randall King, due to untimely and inadequate disclosure. This order
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concerns only the first joint letter; the second joint letter, Dkt. No. 41, will be addressed by
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separate order.
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First, approximately two weeks after the parties filed this joint letter, 360Heros filed a
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motion for leave to amend its infringement contentions. See Dkt. No. 42. Because the Court’s
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decision on 360Heros’ motion will fully resolve the parties’ dispute regarding 360Heros’ new
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infringement contentions, the Court disregards these portions of the parties’ joint letter.
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Second, GoPro asks the Court to exclude claim construction testimony -- presumably live
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testimony -- from two 360Heros witnesses due to untimely disclosure. GoPro states that 360Heros
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failed to disclose its reliance on this witness testimony in its January 6, 2017 Patent Local Rule 4-
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2 preliminary claim construction materials, disclosing the witnesses a month later during a meet-
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and-confer call. First Joint Letter (Dkt. No. 39) at 2. 360Heros does not dispute these facts, but
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argues that its failure to disclose these witnesses in the Patent Local Rule 4-2 preliminary
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exchange of extrinsic evidence is not fatal. Id. at 5. 360Heros argues that the parties are not
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“locked forever into their preliminary claim constructions under Pat. L.R. 4-2,” which would
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“ignore[] the obligation to meet and confer thereafter. . . . [and] the need to develop facts
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responding to claim construction arguments . . . .” Id.
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The Patent Local Rules provide a framework through which parties begin the claim
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construction process early, and gradually refine their positions. See N.D. Cal. Pat. L.R. 4. Parties
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must first exchange proposed terms for construction, and meet and confer to resolve differences.
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Id. 4-1. The parties then exchange their proposed constructions of each term and identify the
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intrinsic and extrinsic support for their positions, including “testimony of percipient and expert
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witnesses.” Id. 4-2(a)-(b). “With respect to any supporting witness, percipient or expert, the
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identifying party shall also provide a description of the substance of that witness’ proposed
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testimony . . . .” Id. 4-2(b). The parties must again meet and confer to finalize their Joint Claim
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Construction and Prehearing Statement. Id. 4-2(c); see id. 4-3 (providing for filing of the Joint
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Claim Construction and Prehearing Statement).
United States District Court
Northern District of California
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This Court does not disallow live testimony during claim construction, but finds that it
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takes up a significant amount of the parties’ limited time in court and is often unhelpful. The
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Court holds a strong preference for Markman testimony, where necessary, to be submitted by
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declaration. 360Heros’ initial failure to identify its Markman witnesses under Patent Local Rule
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4-2 does not automatically preclude it from using live witness testimony during claim
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construction. However, as the claim construction discovery period has expired, see N.D. Cal.
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Patent L.R. 4-4, insufficient time remains for GoPro to depose 360Heros’ two witnesses or to offer
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its own live rebuttal witnesses before Markman briefing begins.
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Accordingly, it is hereby ORDERED that: (i) 360Heros may offer its proposed testimony
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by sworn declaration only; (ii) GoPro may submit expert or percipient declarations of its own if it
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so chooses; (iii) GoPro’s request for fees and costs associated with these disputes is DENIED.
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This order resolves Dkt. No. 39.
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IT IS SO ORDERED.
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Dated: March 22, 2017
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SUSAN ILLSTON
United States District Judge
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