Contour IP Holding, LLC v. GoPro, Inc.

Filing 558

ORDER ON INVALIDITY CONTENTIONS re 554 Statement. Signed by Judge William H. Orrick on 09/15/2021. (jmdS, COURT STAFF) (Filed on 9/15/2021)

Case 3:17-cv-04738-WHO Document 558 Filed 09/15/21 Page 1 of 2

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

CONTOUR IP HOLDING, LLC,
Plaintiff,

8
9
10

United States District Court
Northern District of California

11

Case No. 3:17-cv-04738-WHO
ORDER ON INVALIDITY
CONTENTIONS

v.
GOPRO, INC.,

Re: Dkt. No. 554

Defendant.

12
13

Based on the parties’ joint submission, I rule as follows. GoPro will be limited in the

14

second suit to no more than 15 prior art references and 30 prior art combinations, the same number

15

permitted in the first suit—indeed, the same number it agreed to in the first suit. See January 17,

16

2017 oral order (between Dkt. Nos. 112 and 113); Dkt. No. 219 (stipulated order adopting same

17

limitation). The parties should stipulate to a timeline for GoPro to make this narrowing and

18

submit a joint letter brief within seven days if they cannot.

19

It is true, as GoPro argues, that the limits from the first case need not automatically bind

20

the second because even consolidated cases remain in some senses separate. See Hall v. Hall, 128

21

S.Ct. 1118, 1125 (2018). Nor do the Local Patent Rules place automatic limits. But courts may

22

still place reasonable limits on the volume of prior art references as a matter of prudent case

23

management. See MyMedical Recs., Inc. v. Walgreen Co., No. 2:13-CV-00631-ODW, 2014 WL

24

2931695, at *1 (C.D. Cal. June 27, 2014) (citing authorities); see, e.g., Federal Circuit Model

25

Order Limiting Excess Patent Claims and Prior Art (placing such limits). Further, claim

26

construction has now occurred, so it is fair for GoPro to narrow its contentions to what will

27

ultimately be permitted. GoPro must be clear about which specific references and combinations

28

will be at issue, rather than relying on countless unidentified combinations. Cf. Ironworks Patents

Case 3:17-cv-04738-WHO Document 558 Filed 09/15/21 Page 2 of 2

1

LLC v. Samsung Elecs. Co., 2017 WL 4573366, at *3 (N.D. Cal. Oct. 13, 2017) (striking

2

contentions when “[i]t is impossible to determine from Samsung’s disclosures what claims it

3

contends are obvious and what combination of references renders the claim obvious”).

4

But striking the invalidity contentions in their entirety, as Contour urges, would be unfair

5

and it has pointed to no authority that suggests it is required. Contour chose to launch a second

6

lawsuit and expanded its infringement contentions, inviting new invalidity theories. Contour has

7

also been aware of this issue for several months, but only acted now; it cannot manufacture the

8

windfall of avoiding any invalidity arguments. It is, however, entitled to a reasonably manageable

9

universe of prior art references, which I impose here.

10

United States District Court
Northern District of California

11

IT IS SO ORDERED.
Dated: September 15, 2021

12
13
William H. Orrick
United States District Judge

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
2