MasterObjects, Inc. v. Google, Inc.

Filing 145

ORDER by Judge Hamilton denying 130 Motion for Leave to File (pjhlc2, COURT STAFF) (Filed on 5/2/2013)

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1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 6 7 MASTEROBJECTS, INC., Plaintiff, 8 GOOGLE, INC., 11 For the Northern District of California v. 10 United States District Court 9 No. C 11-1054 PJH ORDER DENYING LEAVE TO FILE FOURTH AMENDED COMPLAINT Defendant. _______________________________/ 12 13 Plaintiff’s motion for leave to file a fourth amended complaint came on for hearing 14 before this court on May 1, 2013. Plaintiff MasterObjects, Inc. (“plaintiff”) appeared through 15 its counsel, Diane Rice. Defendant Google Inc. (“defendant”) appeared through its 16 counsel, Joseph Lee. Having read the papers filed in conjunction with the motion and 17 carefully considered the arguments and the relevant legal authority, and good cause 18 appearing, the court hereby DENIES plaintiff’s motion as follows. 19 Plaintiff seeks to add allegations of willful infringement against defendant. In support 20 of these allegations, plaintiff points to a notice letter sent from its patent counsel to 21 defendant, on June 27 2008, providing notice of “the MasterObjects patent applications, 22 technology, products, and invention.” However, as defendant points out, at the time that 23 this letter was sent, none of the patents-in-suit had yet issued. Even though plaintiff argues 24 that it was actively prosecuting its patent applications at the time, the Federal Circuit has 25 made clear that “[t]o willfully infringe a patent, the patent must exist and one must have 26 knowledge of it.” State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 27 1985) (emphasis in original). “Filing an application is no guarantee that any patent will 28 issue and a very substantial percentage of applications never result in patents. What the 1 scope of claims in patents that do issue will be is something totally unforeseeable.” Id. 2 Plaintiff further argues that defendant “willfully turned a blind eye” to whether its product 3 infringed the patents-in-suit. To show willful blindness, plaintiff must show that defendant: 4 (1) subjectively believed there was a high probability a particular fact existed or was true; 5 and (2) took deliberate actions to avoid learning of that fact. Global-Tech Appliance, Inc. v. 6 SEB S.A., __ U.S. __, 131 S.Ct. 2060, 2070 (2011). However, plaintiff’s allegations still 7 depend on the existence of a valid patent, because if there was no valid patent, there can 8 be no willful infringement. In other words, if there was no valid patent to infringe, there is 9 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 11 For the Northern District of California United States District Court 10 to the issue of willful infringement. 12 It was only after this lawsuit was filed (on March 7, 2011) that the patents-in-suit 13 issued. Specifically, U.S. Patent No. 8,060,639 issued on November 15, 2011, and U.S. 14 Patent No. 8,112,529 issued on February 7, 2012. Thus, any allegation of willful 15 infringement would need to be based on post-filing conduct. The Federal Circuit has held 16 that, when a patentee does not move for a preliminary injunction to stop the allegedly 17 infringing activity, it “should not be allowed to accrue enhanced damages based solely on 18 the infringer’s post-filing conduct.” In re Seagate, 497 F.3d 1360, 1374 (Fed. Cir. 2007). In 19 this case, plaintiff did not seek a preliminary injunction, and thus cannot establish a claim 20 for willful infringement based on only post-filing conduct. 21 The court further notes that the lion’s share of plaintiff’s willfulness-related 22 allegations relate to defendant’s prosecution of its own patents, which are not at issue in 23 this case. Thus, even if all of plaintiff’s proposed new allegations are taken as true, they 24 would not support a finding of willfulness. Accordingly, the court finds that, regardless of 25 any delay in seeking amendment or prejudice that would result, plaintiff’s proposed 26 amendment would be futile, and the court DENIES plaintiff’s motion for leave to file a fourth 27 amended complaint. 28 2 1 2 IT IS SO ORDERED. Dated: May 2, 2013 ______________________________ PHYLLIS J. HAMILTON United States District Judge 3 4 5 6 7 8 9 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3

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