Contour IP Holding, LLC v. GoPro, Inc.

Filing 360

ORDER ON DISCOVERY DISPUTES CONCERNING GOPRO'S INVALIDITY REPORT AND CONTOUR'S EXPERT REPORTS by Judge William H. Orrick granting in part and denying in part 347 , 351 Administrative Motions to File Under Seal. (jmdS, COURT STAFF) (Filed on 4/6/2020)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
CONTOUR IP HOLDING, LLC,

7

Plaintiff,

8
v.

9

GOPRO, INC.,

10

Defendant.

11

United States District Court
Northern District of California

Case No. 3:17-cv-04738-WHO
ORDER ON DISCOVERY DISPUTES
CONCERNING GOPRO’S
INVALIDITY REPORT AND
CONTOUR’S EXPERT REPORTS
Re: Dkt. Nos. 347, 351, 352

12
On March 20 and 25, 2020, plaintiff Contour IP Holding, LLC and defendant GoPro, Inc.

13
14

filed two discovery dispute letters along with motions to seal exhibits filed with the disputes. I

15

will resolve the disputes and the sealing requests as set forth below.

16

I.

CONTOUR’S OBJECTIONS TO GOPRO’S INVALIDITY REPORT

17

Contour asks me to strike paragraphs 94–137 and 143–64 of Kevin Almeroth’s invalidity

18

report. First it argues that GoPro is using the report to sneak in new invalidity theories and prior

19

art references despite my order denying leave to amend. See Dkt. No. 335. GoPro counters that it

20

properly relies on the prior art for background, to establish the knowledge of a person of ordinary

21

skill in the art, and in support of defenses not subject to disclosure requirements. As I have noted

22

before, GoPro will indeed be able to use these references in the manner it suggests. In the event

23

that a rebuttal report and a deposition do not clarify that Almeroth’s use is appropriate, Contour

24

should file its objections in the form of a Daubert motion or a motion in limine. Given the

25

contents of Contour’s challenge, the latter seems more appropriate.

26

The parties further dispute GoPro’s use of the Sony Handycam Handbook as an

27

invalidating reference when, according to Contour, the Handbook was initially disclosed only as a

28

general descriptor of the state of the art. In response, GoPro argues that it reserved the right to use

1

all references, including the Handbook, for invalidity in addition to the purpose expressly

2

disclosed. Contour has raised concerns about this tactic in the past, and I have indicated that I

3

disfavor it. If “reservation of rights” and “including but not limited to” language could function in

4

the way GoPro wishes, then its invalidity contentions could not give Contour proper notice as

5

required by the Patent Local Rules. GoPro will not be permitted to use the Sony Handycam

6

Handbook as an invalidating reference.

7

II.

GOPRO’S OBJECTIONS TO CONTOUR’S EXPERT REPORTS
In the second dispute, GoPro argues that the expert report of Jing Hu includes new

8

evidence and undisclosed infringement theories. Contour counters that the theories are not new

10

and that its use of the documentary evidence is proper because GoPro did not produce them until

11

United States District Court
Northern District of California

9

December 2019, the final month of discovery. I agree with Contour. The parties’ joint discovery

12

dispute statements have frequently centered around GoPro’s slow production of discovery;

13

Contour is entitled to rely on the documents GoPro challenges. GoPro has not persuaded me that

14

Hu’s report includes a genuinely new theory.
Finally, GoPro argues that the expert report of Keith Ugone includes a new damages

15
16

demand that is unsupported by the Hu report. Although I am inclined to agree with Contour that

17

the gaps and weaknesses GoPro complains of go to weight rather than admissibility, this dispute,

18

too, is more appropriate for a Daubert motion or a motion in limine.

19

III.

20

SEALING REQUESTS
The parties seek to file exhibits to both discovery disputes under seal. Dkt. Nos. 347, 351.

21

Contour, GoPro, and several third parties submitted declarations in support of sealing as required

22

by Civil Local Rule 79-5(d)(1)(A). Because both disputes include an Exhibit A and an Exhibit B,

23

I refer to the exhibits associated with the first dispute as “A1” and “B1” and those associated with

24

the second dispute as “A2” and “B2.”

25

First, through the declaration of Michelle A. Clark GoPro requests that Exhibit B1 remain

26

under seal in its entirety and specifies the following redactions for Exhibit A1: pages 22 (fn. 28),

27

144-145 (¶¶ 329, 330, 331; fn. 292), 228 (second sentence of ¶ 473), 318 (second sentence of ¶

28

666), 360 (third sentence of ¶ 779), and 383 (first three lines). Dkt. No. 350. According to the
2

1

declaration, these documents contain information about GoPro product development and

2

communications with its vendors, which GoPro maintains and confidential and which its vendors

3

are obligated to maintain as confidential pursuant to nondisclosure agreements.

4

Second, the declaration of Michael Morehead, general counsel of third-party Ambarella

5

Corporation, requests that the following portions of Exhibit A1 remain under seal: page 26 lines

6

2–4 and footnote 29, page 28 lines 1–3 and footnote 30, page 30 footnote 33, and page 359 lines

7

26–27. Dkt. No. 355. Morehead requests that the following portions of Exhibit B1 remain under

8

seal: page 39, the two sentences beginning with the phrase “Ambarella testified that.” A second

9

declaration from Morehead requests that the following portions of Exhibit A2, including some
associated diagrams, remain under seal: ¶¶ 150–163, 251, 262, 266–67, 270, 281, 407–09, 412–

11

United States District Court
Northern District of California

10

16, 429–31, 434–38. Dkt. No. 359. These requested redactions cover source code and other

12

information related to the design and development of Ambarella’s chipsets, which it expended

13

significant resources to develop and which it maintains as confidential.

14

Third, the declaration of Jerome Pereira, a former employee of third-party Vidcie, requests

15

that the following portions of Exhibit A1 remain under seal: paragraphs 106–120, the first

16

sentence of paragraph 121, and paragraphs 122–137. Dkt. No. 356. According to Pereira, the

17

information includes, for example, sales numbers and profitability, design documentation and

18

strategy, and technical documents, all of which Vidcie maintained confidential.

19

Fourth, the declaration of Akira Irie, counsel for third-party Socionext Inc., requests that

20

paragraphs 98 and 136 of Exhibit A2 remain under seal. Dkt. No. 357. These paragraphs include

21

information related to Socionext’s confidential product design.

22

Finally, Contour counsel John R. Keville requests on behalf of third-party Contour, LLC

23

that the following portions of Exhibit B2 remain under seal: ¶ 6.a n.10, ¶ 6.b.i & n.12, the

24

rightmost columns of first two rows of Table 5. Dkt. No. 358. These redactions cover

25

confidential licensing and business strategies, including references to internal product

26

development, partnerships, and valuation of features of the Asserted Patents.

27

There is good cause to seal the narrowly tailored information described above. Within 20

28

days of the date of this Order, the party that originally submitted the exhibits shall resubmit them
3

1
2
3

including only the redactions requested and approved above.
IT IS SO ORDERED.
Dated: April 6, 2020

4
5
William H. Orrick
United States District Judge

6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
4