GoPro, Inc. v. 360Heros, Inc.

Filing 54

ORDER DENYING DEFENDANT'S MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS 42 . (Illston, Susan) (Filed on 4/6/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOPRO, INC.,
Plaintiff,

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ORDER DENYING DEFENDANT'S
MOTION FOR LEAVE TO AMEND
INFRINGEMENT CONTENTIONS

v.

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360HEROS, INC.,

Re: Dkt. No. 42

Defendant.

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United States District Court
Northern District of California

Case No. 16-cv-01944-SI

Before the Court is defendant 360Heros, Inc.’s (“360Heros’”) motion for leave to amend

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its infringement contentions.

Dkt No. 42.

Pursuant to Civil Local Rule 7-1(b), the Court

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determines that this matter is appropriate for resolution without oral argument and VACATES the

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hearing scheduled for April 14, 2017.

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defendant’s motion.

For the reasons set forth below, the Court DENIES

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BACKGROUND

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Plaintiff GoPro, Inc. (“GoPro”) filed this action on April 13, 2016. In its complaint, GoPro

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accuses 360Heros of infringing its “HERO” and “ABYSS” trademarks, infringing copyrighted

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images, and engaging in unfair competition. See Compl. (Dkt. No. 1). GoPro’s complaint also

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seeks

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(the “’019 patent”). Id. ¶¶ 73-76. 360Heros, owner of the ’019 patent, filed a counterclaim

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against GoPro for patent infringement. Countercl. (Dkt. No. 25).

a

declaratory

judgment

of

non-infringement

of

U.S.

Patent

No.

9,152,019

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On October 21, 2016, 360Heros served its initial asserted claims and infringement

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contentions, accusing GoPro’s Odyssey and Abyss devices of literal infringement of the

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’019 patent. See Lowe Decl., Ex. 202 (Dkt. No. 42-1) at 23-42.1 360Heros now seeks the Court’s

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leave to amend its infringement contentions to accuse GoPro’s Omni device. Mot. (Dkt. No. 42).

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LEGAL STANDARD

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Patent Local Rule 3-6 provides,

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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:

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(a) A claim construction by the Court different from that
proposed by the party seeking amendment;

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(b) Recent discovery of material, prior art despite earlier diligent
search; and

United States District Court
Northern District of California

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(c) Recent discovery of nonpublic information about the Accused
Instrumentality which was not discovered, despite diligent efforts,
before the service of the Infringement Contentions.

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N.D. Cal. Patent L.R. 3-6.

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“The local patent rules in the Northern District of California . . . requir[e] both the plaintiff

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and the defendant in patent cases to provide early notice of their infringement and invalidity

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contentions, and to proceed with diligence in amending those contentions when new information

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comes to light in the course of discovery. The rules thus seek to balance the right to develop new

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information in discovery with the need for certainty as to the legal theories.” O2 Micro Int’l Ltd.

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v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365–66 (Fed. Cir. 2006). In contrast to the more

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liberal policy for amending pleadings, “the philosophy behind amending claim charts is decidedly

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conservative, and designed to prevent the ‘shifting sands’ approach to claim construction.” LG

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Elecs. Inc. v. Q–Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (citation omitted).

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The moving party bears the burden of establishing diligence. O2 Micro, 467 F.3d at 1355.

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Where the moving party is unable to show diligence, there is “no need to consider the question of

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prejudice,” although a court in its discretion may elect to do so. See id. at 1368 (affirming district

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Unless otherwise indicated, pinpoint citations are to ECF-generated page numbers.
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court’s denial of leave to amend upon finding the moving party was not diligent, without

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considering the question of prejudice to the non-moving party).
“If the court finds that the moving party has acted with diligence, it must then determine

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whether the nonmoving party would suffer prejudice if the motion to amend were granted.” Apple

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Inc. v. Samsung Elecs. Co. Ltd, No. 12-cv-0630-LHK (PSG), 2013 WL 3246094, at *1 (N.D. Cal.

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June 26, 2013) (internal quotation marks omitted). “Prejudice is typically found when amending

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contentions stand[s] to disrupt the case schedule or other court orders.” Karl Storz Endoscopy-

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Am. v. Stryker Corp., No. 14-0876-RS (JSC), 2016 U.S. Dist. LEXIS 176876, at *8 (N.D. Cal.

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Dec. 21, 2016). “Courts have allowed amendments when the movant made an honest mistake, the

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request to amend did not appear to be motivated by gamesmanship, or where there was still ample

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United States District Court
Northern District of California

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time left in discovery.” Id. (citation and internal quotation marks omitted).

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DISCUSSION

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In order to demonstrate good cause for its proposed amendments, 360Heros bears the

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burden to establish diligence. The diligence required is twofold: “(1) diligence in discovering the

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basis for amendment; and (2) diligence in seeking amendment once the basis for amendment has

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been discovered.” Monolithic Power Sys., Inc. v. Silergy Corp., No. 14-1745-VC (KAW), 2015

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WL 5440674, at *2 (N.D. Cal. Sept. 15, 2015).

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360Heros argues that it was diligent in discovering the basis for amendment and in seeking

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leave to amend. 360Heros’ CEO, Michael Kintner, states that despite multiple attempts, he was

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unable to closely examine GoPro’s Omni device until January 2017. Kintner Decl. (Dkt. No. 42-

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2) ¶¶ 2, 4-6. Kintner viewed the Omni up close and took numerous photographs on January 5,

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2017 at the Consumer Electronics Show (“CES”) in Las Vegas. Id. ¶¶ 2-3. Between January 5

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and mid-February, 360Heros used these photographs to build an infringement case against the

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Omni.

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identifying the Omni as an accused product. Id. ¶ 3; Lowe Decl., Ex. 203 (Dkt. No. 42-1) at 47-

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49. Nearly one month later, on March 10, 2017, 360Heros filed this motion.

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Id.

On February 14, 2017, 360Heros served a supplemental interrogatory response

GoPro argues that 360Heros was not diligent in investigating the Omni, which GoPro
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claims was publicly available for purchase in August 2016, months before CES. A GoPro Senior

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Product Manager, Jonathan Thorn, states that the Omni was available for sale to the general public

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on the GoPro website on August 17, 2016. Thorn Decl. (Dkt. No. 48-15) ¶ 7. GoPro further

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argues that 360Heros only sought leave to amend its contentions after GoPro asked the Court to

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strike the contentions in a discovery letter. See Dkt. No. 39.
360Heros was not diligent in seeking leave to amend its contentions. First, the Omni was

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available for purchase on GoPro’s website in August 2016, before 360Heros filed its infringement

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counterclaim. The Court is not convinced that the Omni’s $5,000 price tag genuinely deterred

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360Heros from acquiring one and investigating its infringement claims. See Reply (Dkt. No. 50)

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at 2. 360Heros identified the Omni as an infringing product in its counterclaim on August 22,

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United States District Court
Northern District of California

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2016. Countercl. ¶ 15. 360Heros had ample time before serving its initial contentions to purchase

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an Omni device, investigate it, and draft appropriate contentions. That 360Heros could find no

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way of investigating an Omni between August 2016 and January 2017 strains credulity.

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Second, even assuming that 360Heros did not have the opportunity to make its

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infringement case against the Omni until January 5, 2017, it fails to adequately explain why it took

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from January 5, 2017 until March 10, 2017 – over two months – to file a motion for leave to

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amend. After serving its supplemental interrogatory on GoPro in February, 360Heros took almost

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a month to seek the Court’s leave. The Court again notes that 360Heros specifically named the

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Omni in its infringement counterclaim. If anything, this means that once 360Heros had whatever

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information it needed to accuse the Omni, 360Heros should have quickly prepared its updated

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contentions and sought leave to amend. Instead, it took over two months to file this motion,

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leaving no opportunity for a ruling from the Court prior to the parties’ initial Markman briefing.2

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Because 360Heros has not shown diligence, there is “no need to consider the question of

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prejudice.” O2 Micro, 467 F.3d at 1368. Accordingly, 360Heros’ motion for leave to amend its

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infringement contentions is DENIED.

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360Heros’ attempt to blame the delay on the parties’ discovery disagreements is not
persuasive. 360Heros had sufficient information to serve its amended contentions on GoPro in
mid-February, contentions it based on Mr. Kintner’s photographs from CES; the alleged discovery
delays had no impact on its ability to seek leave of this Court to make the same amendments.
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CONCLUSION

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For the foregoing reasons, defendant’s motion is DENIED.

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This order resolves Dkt. No. 42.

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IT IS SO ORDERED.

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Dated: April 6, 2017
______________________________________
SUSAN ILLSTON
United States District Judge

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United States District Court
Northern District of California

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