MasterObjects, Inc. v. Google, Inc.
Filing
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ORDER by Judge Hamilton denying 130 Motion for Leave to File (pjhlc2, COURT STAFF) (Filed on 5/2/2013)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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MASTEROBJECTS, INC.,
Plaintiff,
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GOOGLE, INC.,
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For the Northern District of California
v.
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United States District Court
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No. C 11-1054 PJH
ORDER DENYING LEAVE TO FILE
FOURTH AMENDED COMPLAINT
Defendant.
_______________________________/
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Plaintiff’s motion for leave to file a fourth amended complaint came on for hearing
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before this court on May 1, 2013. Plaintiff MasterObjects, Inc. (“plaintiff”) appeared through
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its counsel, Diane Rice. Defendant Google Inc. (“defendant”) appeared through its
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counsel, Joseph Lee. Having read the papers filed in conjunction with the motion and
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carefully considered the arguments and the relevant legal authority, and good cause
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appearing, the court hereby DENIES plaintiff’s motion as follows.
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Plaintiff seeks to add allegations of willful infringement against defendant. In support
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of these allegations, plaintiff points to a notice letter sent from its patent counsel to
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defendant, on June 27 2008, providing notice of “the MasterObjects patent applications,
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technology, products, and invention.” However, as defendant points out, at the time that
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this letter was sent, none of the patents-in-suit had yet issued. Even though plaintiff argues
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that it was actively prosecuting its patent applications at the time, the Federal Circuit has
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made clear that “[t]o willfully infringe a patent, the patent must exist and one must have
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knowledge of it.” State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir.
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1985) (emphasis in original). “Filing an application is no guarantee that any patent will
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issue and a very substantial percentage of applications never result in patents. What the
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scope of claims in patents that do issue will be is something totally unforeseeable.” Id.
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Plaintiff further argues that defendant “willfully turned a blind eye” to whether its product
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infringed the patents-in-suit. To show willful blindness, plaintiff must show that defendant:
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(1) subjectively believed there was a high probability a particular fact existed or was true;
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and (2) took deliberate actions to avoid learning of that fact. Global-Tech Appliance, Inc. v.
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SEB S.A., __ U.S. __, 131 S.Ct. 2060, 2070 (2011). However, plaintiff’s allegations still
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depend on the existence of a valid patent, because if there was no valid patent, there can
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be no willful infringement. In other words, if there was no valid patent to infringe, there is
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no way that Google could have willfully blinded itself to the “particular fact” of its
infringement. Thus, any allegations regarding Google’s pre-issuance conduct are irrelevant
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For the Northern District of California
United States District Court
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to the issue of willful infringement.
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It was only after this lawsuit was filed (on March 7, 2011) that the patents-in-suit
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issued. Specifically, U.S. Patent No. 8,060,639 issued on November 15, 2011, and U.S.
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Patent No. 8,112,529 issued on February 7, 2012. Thus, any allegation of willful
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infringement would need to be based on post-filing conduct. The Federal Circuit has held
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that, when a patentee does not move for a preliminary injunction to stop the allegedly
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infringing activity, it “should not be allowed to accrue enhanced damages based solely on
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the infringer’s post-filing conduct.” In re Seagate, 497 F.3d 1360, 1374 (Fed. Cir. 2007). In
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this case, plaintiff did not seek a preliminary injunction, and thus cannot establish a claim
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for willful infringement based on only post-filing conduct.
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The court further notes that the lion’s share of plaintiff’s willfulness-related
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allegations relate to defendant’s prosecution of its own patents, which are not at issue in
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this case. Thus, even if all of plaintiff’s proposed new allegations are taken as true, they
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would not support a finding of willfulness. Accordingly, the court finds that, regardless of
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any delay in seeking amendment or prejudice that would result, plaintiff’s proposed
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amendment would be futile, and the court DENIES plaintiff’s motion for leave to file a fourth
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amended complaint.
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IT IS SO ORDERED.
Dated: May 2, 2013
______________________________
PHYLLIS J. HAMILTON
United States District Judge
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For the Northern District of California
United States District Court
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