DSS Technology Management, Inc. v. Apple, Inc.

Filing 413

ORDER by Judge Haywood S. Gilliam, Jr. ON DSS'S 215 MOTION TO AMEND INFRINGEMENT CONTENTIONS AND APPLE'S 220 CROSS-MOTION TO STRIKE EXPERT REPORT. (This order grants in part and denies in part docket no. 213 , 219 , 231 , 233 , 246 ; denies docket no. 215 and grants docket no. 220 ). (ndrS, COURT STAFF) (Filed on 1/14/2020)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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DSS TECHNOLOGY MANAGEMENT,
INC.,

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Plaintiff,
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v.
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APPLE, INC.,

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United States District Court
Northern District of California

Defendant.

Case No. 14-cv-05330-HSG
ORDER ON DSS'S MOTION TO
AMEND INFRINGEMENT
CONTENTIONS AND APPLE'S
CROSS-MOTION TO STRIKE
EXPERT REPORT
REDACTED VERSION

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Re: Dkt. Nos. 213, 215, 219, 220, 231, 233,

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246

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Pending before the Court is DSS’s motion to amend infringement contentions, Dkt. Nos.,

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215 (“Mot.”), 220 (“Opp./XMot.”), 232 (“Reply”), and Apple’s cross-motion to strike DSS’s

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infringement expert report, Dkt. Nos. 220, 234 (“XOpp.”), 249 (“XReply”). The parties also filed

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related motions to seal portions of its briefs and accompanying exhibits. Dkt. Nos. 213, 219, 231,

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233, 246. For the reasons provided below, the Court DENIES DSS’s motion to amend

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infringement contentions and GRANTS Apple’s cross-motion to strike DSS’s infringement expert

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report.1

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I.

BACKGROUND

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Plaintiff DSS Technology Management, Inc. filed its complaint against Defendant Apple,

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Inc. on November 26, 2013, in the Eastern District of Texas, alleging infringement of U.S. Patent

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Nos. 6,128,290 (the “’290 patent”) and 5,699,357 (the “’357 patent”). Dkt. No. 1. DSS later

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withdrew all infringement allegations as to the ’357 patent, so presently only the ’290 patent is at

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issue. See Dkt. No. 96 at 2, 4. DSS alleges that Apple’s development and sale of computers and

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The Court finds this matter appropriate for disposition without oral argument and the matter is
deemed submitted. See Civ. L.R. 7–1(b).

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device and its peripherals to the claims of . . . the ’290 patent.” Id. Ex. C at 1. As relevant to the

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issues presented in the parties’ motions, Bluetooth version 2.1 introduced Sniff Subrating Mode.

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Dkt. No. 220-2 at 2. Previous versions relied on Sniff Mode only. Id.
On November 7, 2014, the originally-assigned judge in the Eastern District of Texas

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granted Defendant’s motion to transfer the case to the Northern District of California. Dkt. No.

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85. On February 13, 2015, the case was reassigned to this Court. On December 4, 2014,

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Defendant filed two petitions for inter partes review (IPR) of the ’290 patent. Dkt. No. 99 at 1.

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All of the ’290 patent claims asserted by Plaintiff were covered by Defendant’s petitions. Id. at 3.

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On May 1, 2015, the Court stayed this case pending results of the IPRs. Dkt. No. 122. Both IPRs

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resulted in a final decision in Plaintiff’s favor, and the Court lifted the stay on July 27, 2018. Dkt.

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United States District Court
Northern District of California

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No. 145.
After holding a technology tutorial hearing on September 14, 2018 and a claim

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construction hearing on September 21, 2018, the Court issued a claim construction order on

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December 6, 2018. See Dkt. No. 175. The Court construed the disputed terms from Claims 1

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through 4 of the ’290 Patent. Immediately following the hearing, the Court conducted a further

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Case Management Conference. The Court scheduled various dates in the action, including a fact

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discovery cut-off date of June 14, 2019. See Dkt. No. 183.

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II.

LEGAL STANDARD
The Patent Local Rules state that a plaintiff must provide:
(b) Separately for each asserted claim, each accused apparatus,
product, device, process, method, act, or other instrumentality
(“Accused Instrumentality”) of each opposing party of which the
party is aware. This identification shall be as specific as possible.
Each product, device, and apparatus shall be identified by name or
model number, if known. Each method or process shall be identified
by name, if known, or by any product, device, or apparatus which,
when used, allegedly results in the practice of the claimed method or
process;
...
(e) A chart identifying specifically where each limitation of each
asserted claim is found within each Accused Instrumentality,
including for each limitation that such party contends is governed by
35 U.S.C. § 112(6), the identity of the structure(s), act(s), or
material(s) in the Accused Instrumentality that performs the claimed
function.
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See Patent L.R. 3–1(b), (e). “[A]ll courts agree that the degree of specificity under Local Rule 3–1

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must be sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a

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‘reasonable chance of proving infringement.’” Shared Memory Graphics LLC v. Apple, Inc., 812

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F. Supp. 2d 1022, 1025 (N.D. Cal. 2010) (quoting View Eng’g, Inc. v. Robotic Vision Sys., Inc.,

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208 F.3d 981, 986 (Fed. Cir. 2000)).

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The Patent Local Rules seek to “balance the right to develop new information in discovery

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with the need for certainty as to the legal theories.” O2 Micro Int’l Ltd. v. Monolithic Power Sys.,

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Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Accordingly, under Patent Local Rule 3-6,

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amendment to infringement contentions “may be made only by order of the Court upon a timely
showing of good cause.” In determining whether good cause exists, the Court considers (1)

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United States District Court
Northern District of California

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whether the moving party was diligent in moving to amend its contentions, and (2) whether the

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non-moving party would suffer prejudice if leave to amend were granted. Koninklijke Philips N.V.

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v. Acer Inc., No. 18-CV-01885-HSG, 2019 WL 652868, at *1 (N.D. Cal. Feb. 15, 2019) (citation

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omitted). “The party seeking to amend its contentions bears the burden of establishing diligence.”

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Id. (citation and quotations omitted). The moving party must establish diligence in two distinct

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phases: “(1) diligence in discovering the basis for amendment; and (2) diligence in seeking

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amendment once the basis for amendment has been discovered.” Id. (citation and quotations

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omitted). However, good cause “does not require perfect diligence.” Id. (citation and quotations

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omitted). Absent undue prejudice to the non-moving party, good cause may be supported by

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“[r]ecent discovery of material, prior art despite earlier diligent search.” Patent L.R. 3-6(b).

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“In contrast to the more liberal policy for amending pleadings, the philosophy behind

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amending claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’

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approach to claim construction.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 236 F. Supp.

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3d 1110, 1113 (N.D. Cal. 2017) (citation and quotations omitted). The rules were “designed to

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require parties to crystallize their theories of the case early in the litigation and to adhere to those

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theories once they have been disclosed.” O2 Micro, 467 F.3d at 1366 n.12 (citation and

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quotations omitted).

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“[A] party may not use an expert report to introduce new infringement theories, new
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infringing instrumentalities, new invalidity theories, or new prior art references not disclosed in

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the parties’ infringement contentions or invalidity contentions.” ASUS Computer Int’l v. Round

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Rock Research, LLC, No. 12-CV-02099 JST (NC), 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11,

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2014). “The scope of contentions and expert reports are not, however, coextensive.” Apple Inc. v.

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Samsung Elecs. Co., No. 5:12-CV-0630-LHK-PSG, 2014 WL 173409, at *1 (N.D. Cal. Jan. 9,

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2014). “Infringement contentions need not disclose specific evidence, whereas expert reports

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must include a complete statement of the expert’s opinions, the basis and reasons for them, and

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any data or other information considered when forming them.” Digital Reg of Texas, LLC v.

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Adobe Sys. Inc., No. CV 12-01971-CW (KAW), 2014 WL 1653131, at *2 (N.D. Cal. Apr. 24,
2014) (internal quotation marks omitted). “The threshold question in deciding whether to strike an

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United States District Court
Northern District of California

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expert report is whether the expert has permissibly specified the application of a disclosed theory

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or impermissibly substituted a new theory altogether.” Id.

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III.

ANALYSIS
The motion to amend infringement contentions and the cross-motion to strike DSS’s expert

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report put essentially DSS’s entire case at issue. The Amended PICs allege that Apple’s products

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using versions of Bluetooth between v.2.1 and 4.0 infringed the ’290 patent. Bluetooth Sniff

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Subrating Mode became an optional feature beginning with v2.1; prior versions—v1.0 to 2.0—

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only had Bluetooth Sniff Mode. Without dispute, Apple’s products
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its motion, DSS asks the Court for leave to amend its infringement contentions to include

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contentions relating to Broadcom proprietary mode. DSS also argues that the Amended PICs put

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Apple on notice that its products operating in just Bluetooth Sniff Mode infringe the ’290 patent.

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Apple disagrees and argues that DSS did not show diligence in seeking amendment, and that the

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Amended PICs do not allege that Apple’s products operating in Sniff mode infringe the ’290

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patent. Accordingly, Apple asks the Court to strike DSS’s expert report for impermissibly

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substituting two new theories. The Court addresses each motion in turn.

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//

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//
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A.

Motion to Amend Infringement Contentions

DSS seeks to add

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as an

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infringing mode to its Amended Contentions. Mot. at 21–25. This proposed amendment arises

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out of DSS’s purported recent discovery on May 15, 2019, during a Rule 30(b)(6) deposition, that

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Apple
. Mot. at 21–22. As noted above, the Court must

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consider whether DSS acted with diligence in moving to amend its contentions and whether Apple

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would suffer prejudice if leave to amend were granted.

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i.

Diligence

The Court finds that DSS did not display sufficient diligence to show good cause to add
to its infringement contentions.

United States District Court
Northern District of California

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Specifically, DSS did not display diligence in discovering the basis for this amendment. DSS

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alleges that it discovered the basis for amendment during the deposition of Jason Giles, on May

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15, 2019, when Giles explained that
. Mot. at 21; see also Dkt. No. 213-15 at 4–5. But DSS should have discovered

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that information sooner. The Court provides a brief review of the case’s timeline to explain its

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holding.

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a. Early Litigation (2014)
Apple made its source code available to DSS by August 2014. Dkt. No. 219-6. During

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this initial period, DSS had from August 2014 until the stay of the case pending transfer of venue,

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which occurred on October 28, 2014, to discover Apple’s
. See Dkt. No. 83. Apple represents that “[a] prompt

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inspection of Apple’s source code . . . would have revealed the flaw in DSS’ infringement case.”

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Opp./XMot. at 15. Apple points to documents, including source code configuration files,

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produced during this early time period that showed Apple’s
. Id. at 15–16. Minimally, the bill of materials for Apple

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Wireless Keyboard indicates that

provides a unit related to the Bluetooth capabilities of

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the keyboard. Dkt. No. 219-8 at 2, 8. DSS’s July 19, 2018 letter to Apple acknowledged receipt
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of the document, and made clear that DSS was aware that

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component. Dkt. No. 231-12 at 4, 7–8. Additionally, source code produced in 2014 revealed that

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Apple

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a feature titled

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provided a Bluetooth

, and indicated that Apple implemented
See Dkt. Nos. 219-10, 219-12.

DSS responds that it could not make the discovery during this time because Apple had not

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provided the complete source code. Reply at 13. However, the documents that DSS cites in

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support of its claim that Apple failed to provide the appropriate source code at these early stages

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of the litigation do not support its position. For instance, Dkt. No. 231-8 simply indicates DSS’s

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intention to investigate the source code, not, as DSS alleges, a “discover[y] that Apple had not
provided the source code DSS needed.” Reply at 13. Similarly, DSS’s letter to Apple on July 19,

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Northern District of California

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2018, “reiterates [DSS’s] request for inspection” of Apple’s source code, and does not necessarily

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show any deficiencies in Apple’s source code production. Dkt. No. 231-12 at 7. In the letter, DSS

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noted that “it is unclear whether the source code that Apple represented would be produced

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included the firmware for the Bluetooth chips contained in the Accused Devices,” and requested

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the source code relating to

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support DSS’s allegation that Apple failed to produce the source code, but instead suggests that

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DSS had not substantively reviewed the source code between August 2014 and October 28, 2014

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to determine whether the source code was complete.

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be produced, if it was not already. Id. at 7–8. This does not

b. Post Lifting of Stay (July 27, 2018–onwards)
DSS argues that after the stay was lifted, Apple failed to supplement its production as

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requested in DSS’s July 19, 2018 letter. Reply at 9–10. Additionally, Apple’s change of counsel

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further delayed inspection of the source code and receipt of documents. Id. DSS finally reviewed

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the source code again on November 28, 2018, noting deficiencies in technical and non-technical

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document productions. See Dkt. No. 231-22 at 3, Dkt. No. 231-23. DSS alleges that at the

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January 9, 2019 code review Apple’s counsel first mentioned that

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code that it needed. Reply at 11. Thereafter, DSS served a document subpoena on

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January 29, 2019, Dkt. No. 220-5, inspected

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220-6, and deposed

likely had the source
on

source code on April 12, 2019, Dkt. No.
about
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on June 4, 2019, Dkt. No.

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213-10. DSS also served a Rule 30(b)(6) notice for technical topics on May 6, 2019, Dkt. No.

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219-20 at 4, and deposed Apple’s Jason Giles on May 15, 2019, Mot. at 22. DSS alleges that all

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delay was attributable to Apple and

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this motion seeking to amend to its infringement contentions on July 8, 2019. See Mot.

during this time. Reply at 17–18. DSS then filed

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“The critical issue is not when [DSS] discovered this information, but rather, whether [it]

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could have discovered it earlier had it acted with the requisite diligence.” Google, Inc. v. Netlist,

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Inc., No. C 08-4144 SBA, 2010 WL 1838693, at *2 (N.D. Cal. May 5, 2010). Here, the Court

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finds that DSS could have discovered that the accused Apple products
earlier. Discovery was open in 2014, for a period in 2015

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(after the case was transferred and before the Court imposed a stay), and then was open after the

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Northern District of California

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Court lifted the stay and issued a scheduling order in 2018. See Dkt. Nos. 83, 106, 149, 183. DSS

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had indications since 2014 that Apple

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documents showing that

, based on
for the peripheral devices and source code
. See Dkt. Nos. 219-8, 219-10.

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While these pieces may not have decisively established Apple’s
, DSS had ample time after the Court lifted the stay on July

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27, 2018, but before the close of discovery, to make this further determination. Additionally, DSS

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knew that Bluetooth Sniff Subrating Mode was an optional feature, and should have been on high

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alert to confirm through Apple’s source code that its products operated in such a mode. Instead,

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even accepting DSS’s allegation that it had been attempting to depose Mr. Giles since March 5,

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2019, approximately seven months passed after DSS had these indications before it requested a

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Rule 30(b)(6) deposition. See KlausTech, Inc. v. Google, Inc., No. 10-CV-05899-JSW (DMR),

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2017 WL 4808558, at *5 (N.D. Cal. Oct. 25, 2017) (“While [DSS] may have had strategic reasons

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to wait until late in discovery to depose a 30(b)(6) witness regarding the accused product[s],

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embarking on such a strategy was fraught with risk, especially under the rubric of the Patent Local

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Rules.”).

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Importantly, while DSS accuses Apple of “fail[ing] to alert DSS that

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the burden was on DSS to detail its infringement theory up front, then substantiate it
through factual discovery and timely seek amendment if necessary. Mot. at 10. DSS should have

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substantively reviewed the source code in 2014 to confirm use of Bluetooth Sniff Subrating Mode,

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and it should have followed up on the indications that Apple

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specific technical requests and taking a timely Rule 30(b)(6) deposition. DSS does allege that

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Apple frustrated the discovery process at various points of the discovery period, yet DSS only

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raised disputes to the Court in two instances. See Dkt. Nos. 158, 188. The first dispute did not

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concern any of the issues noted here, but only concerned documents relating to a witness in

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preparation for the claim construction hearing. See Dkt. No. 158. The second was filed on May

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22, 2019, concerned the precise dispute that resulted in the present motion, and occurred too late

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United States District Court
Northern District of California

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to indicate DSS’s diligence. See Dkt. No. 188. If DSS seeks to rely on Apple’s purported actions

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to frustrate discovery, it needed to raise this dispute with the Court in a timely manner. Because it

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failed to do so, DSS cannot show diligence in reviewing the source code.

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by making

DSS’s attempt to now bring an entirely new theory of infringement, five years after the

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case was first filed, after IPR, and after the close of discovery certainly does not reflect the

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diligence required to meet the good cause standard. Instead, it appears to be a last ditch effort to

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maintain this litigation now that it is established that Apple does not practice its accused theory of

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infringement. See Capella Photonics, Inc. v. Cisco Sys. Inc., No. 14-CV-03348-EMC, 2019 WL

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2359096, at *4 (N.D. Cal. June 4, 2019) (“Having exhausted its first bite, and exercising no

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diligence in putting at issue the claims Plaintiff now belatedly seeks to amend into this case . . .

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Plaintiff’s conduct in seeking to start litigation anew after losing round one can best be

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characterized as tactical.”).

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ii.

Prejudice

There is “no need to consider the question of prejudice” when the moving party is unable

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to show diligence. O2 Micro, 467 F.3d at 1368. While the Court need not address this prong,

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allowing DSS to amend its infringement contentions at this stage clearly would prejudice Apple.

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The Court already has conducted the claim construction hearing, and fact and expert discovery

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have already closed. See Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS
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(JSC), 2016 WL 7386136, at *5 (N.D. Cal. Dec. 21, 2016) (“[Defendant] would be prejudiced

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here because it identified the claim terms that it wanted the district court to construe in reliance on

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the theories of infringement in [plaintiff’s] contentions. If [plaintiff] had set forth different

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infringement theories (as it seeks to now), [defendant] may very well have selected different terms

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for construction.”).

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Because DSS fails to show diligence in discovering the basis for the amendment and

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allowing amendment would prejudice Apple, the Court DENIES DSS’s motion to amend

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infringement contentions to add

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contentions.

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B.

United States District Court
Northern District of California

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Cross-Motion to Strike Infringement Expert Report

Apple argues that the Joint Expert Report of Scott A. Denning and Randal H. Direen relies
entirely on new theories of infringement: (1) operating products
discussed above and (2) operating products in Bluetooth Sniff

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Mode. Opp./XMot. at 21; see also Dkt. No. 219-22 (Ex. P). Because the Court finds that DSS

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failed to show diligence in moving to amend its infringement contentions, the Court agrees that

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the expert report impermissibly relies upon

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theory. The Court must then determine whether Bluetooth Sniff Mode is a new theory of
infringement. For the reasons below, the Court finds that it is a new theory.
The parties first recognized the dispute regarding Sniff Mode based on DSS’s April 2019

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response to Apple’s interrogatories. The interrogatory asked DSS to “[d]escribe in detail, on an

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element-by-element basis in the form of a claim chart, any product that DSS contends practices the

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patents-in-suit or infringes the patents-in-suit.” Dkt. No. 188-1 at 5, 8–13, 17. DSS’s third

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amended response to the interrogatory included a claim chart that Apple argues presented “new

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theories of infringement,” although DSS maintains the theories were covered in its Amended

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PICs. After initially raising this contention with Magistrate Judge Beeler (who is handling

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discovery disputes, see Dkt. No. 193), the parties indicated they would file this merits dispute with

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the Court. Thereafter, DSS filed its motion to amend infringement contentions and Apple filed its

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cross-motion to strike expert report alleging that DSS’s reliance on products operating in
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Bluetooth Sniff Mode represents a new infringement theory. See Mot. at 6, Opp./XMot. at 21.
DSS’s Amended PICs specifically allege that the accused Apple products “that make use

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of versions of the Bluetooth standards between versions 2.1 . . . and 4.0 for wireless

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communications between a device and its peripherals” infringe the ’290 patent. Dkt. No. 215-18

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(Mot. Ex. 17, Ex. C). As already noted, Bluetooth Sniff Subrating Mode became an optional

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feature beginning with v2.1, and prior versions used only Bluetooth Sniff Mode. DSS’s response

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to Apple’s interrogatory on April 11, 2019, included a claim chart that was different from the

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Amended PICs. See Dkt. No. 214-11 (Mot. Ex. 25) at 8–13. The claim chart specifically used

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Bluetooth v.1.0 as an example of the contentions, whereas DSS’s Amended PICs exclusively used
Bluetooth v.2.1 and 4.0 as examples. Compare id. with Dkt. No. 215-18 (Mot. Ex. 17) at Ex. B:

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79–80, Ex. C: 137–38. At issue here is whether the interrogatory claim chart was substantively

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different than the Amended PICs such that DSS presented a new infringement theory.

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Apple first argues that the Amended PICs identified only products with Bluetooth v.2.1 or

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later, which is precisely when Bluetooth Sniff Subrating Mode became available, as allegedly

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infringing the patent. Opp./XMot. at 8. DSS argues that this distinction is without merit because

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even v2.1 uses Bluetooth Sniff Mode in its operations, and that it made this clear in its Amended

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PICs. Mot. at 15–16. The technology supports DSS’s argument since “a device cannot enter into

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Sniff Subrating mode without entering into Sniff Mode first.” Id. at 15 (citing Dkt. No. 213-7

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(Mot. Ex. 3) at 346–49). When operating in Bluetooth Sniff Subrating Mode, a device cycles

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between Subrating and Sniff mode “after transmitting a packet requirement acknowledgment until

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the baseband acknowledgment is received.” Dkt. No. 213-7 (Mot. Ex. 3) at 348. Referring to

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v2.1, then, does not exclusively signify operating in Bluetooth Sniff Subrating Mode.

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Apple next argues that the Amended PICs relied on particular functionality available only

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after v2.1, which DSS now has abandoned in its new theory. Opp./XMot. at 9–14. Apple points

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to DSS’s claim element 1.4 where the Amended PICs referred to “commands and synchronizing

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information to establish Sniff mode operation, e.g. LMP_sniff_req commend and the

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synchronizing parameters therein,” Dkt. No. 215-18 (Mot. Ex. 17) at Ex. C 139. In DSS’s

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supplemental interrogatory response, it referred to Bluetooth Frequency Hop Synchronization
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(“FHS”) packets as the form of “synchronization information” sent to the peripheral devices. Dkt.

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No. 214-11 (Mot. Ex. 25) at 10. DSS points to language referencing a frequency hop pattern in

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the Amended PICs; however, as Apple notes, this appears in claim element 1.5, not 1.4.

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Opp./XMot. at 10. Still, DSS does not appear to actually allege new functionality for claim

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element 1.4. DSS provided information as to how the synchronization information is sent (via

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FHS), rather than changing its claim that the computer sends commands and synchronization

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information. Specifically, Apple fails to explain whether the information is sent through a

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different mechanism in v.2.1 and above such that this functionality makes a new infringement

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theory.
Apple next points to changes between claim element 1.8 and DSS’s supplemental

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United States District Court
Northern District of California

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interrogatory response, arguing that DSS previously noted a claim limitation specifying the “code

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sequence” (which determines when a computer communicates with the peripheral devices) of

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“sniff subrating commands and contents thereof.” Opp./XMot. at 10. DSS responds that the

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Amended PICs only used this as an example. The entire contention reads:

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Bluetooth-compliant systems include server and peripheral
transmitters being energized in low duty cycle RF bursts at intervals
determined by a code sequence (e.g. the sniff subrating commands
and contents thereof, etc.) which is timed in relation to the
synchronizing information.

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Dkt. No. 215-18 (Ex. 17) at 143–44. Reading this contention in isolation, it is not clear that DSS

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intended to limit claim element 1.8 to a sniff subrating code sequence. However, it is in this

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vagueness that DSS has a problem. What is clear when reading through the Amended PICs is that

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it is unclear whether DSS’s contentions refer to both Sniff Mode and Sniff Subrating Mode as

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infringing modes or to just Sniff Subrating Mode. Bluetooth Sniff Mode is the underlying

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technology, so it is certainly mentioned throughout the Amended PICs, but there are no specific

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limitations that refer to Sniff Mode.3 Without any specific limitations referring to Sniff Mode, the

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Somewhat curiously, DSS seeks to amend its infringement contention to include Sniff Mode
limitations. See Dkt. No. 214-15 (Chart 1). Had Sniff Mode been originally included in the
Amended PICs, that amendment would not be necessary.
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Court cannot construe the contentions as covering both modes. By way of example, in claim 4,

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DSS again contends that Apple’s products use Sniff Mode, but then states:

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For example. Bluetooth’s v2.1 Sniff mode are [sic] operable such that
the server microcomputer unit transmits RF synchronizing beacons
(e.g. transmissions at sniff subrate anchor points, etc.) at times within
each of a predetermined sequence of frames which times vary in
accordance with a code unique to the particular server microcomputer
unit (e.g. per the max_sniff_subrate parameter in the master the
LMP_sniff_subrating_req, etc.)

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Id. at 149. Similar to claim element 1.8 to which Apple points above, DSS uses “e.g.” here to

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indicate that it is an example, while again only mentioning sniff subrating operations. The

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limitations consistently reference Bluetooth Sniff Subrating Mode functionality. Because “[t]he
purpose of Patent Local Rule 3–1 . . . is in fact to be nit-picky, to require a plaintiff to crystalize its

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theory of the case and patent claims,” the Court concludes that the Amended PICs did not put

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Apple on notice of the theory that the accused products operating in both Bluetooth Sniff Mode

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and Bluetooth Sniff Subrating Mode infringed the ’290 patent. See InterTrust Tech. Corp. v.

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Microsoft Corp., 2003 WL 23120174, at *3 (N.D. Cal. Dec. 1, 2003); see also DCG Sys. v.

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Checkpoint Techs., LLC, 2012 WL 1309161, at *2 (N.D. Cal. Apr. 16, 2012) (Patent Local Rules

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do not “require the disclosure of specific evidence nor do they require a plaintiff to prove its

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infringement case,” but “a patentee must nevertheless disclose what in each accused

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instrumentality it contends practices each and every limitation of each asserted claim to the extent

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appropriate information is reasonably available to it.”). Although to operate in Bluetooth Sniff

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Subrating Mode, products necessarily must operate in Sniff Mode, this fact alone, without any

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clear contentions or limitation, is insufficient to put Apple on notice that Sniff Mode is an

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infringing mode.4
Because the Court finds that DSS’s expert report relies entirely on two new infringement

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theories (operating in

and in Bluetooth

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27
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DSS also fails to show good cause to amend its infringement contentions to include Bluetooth
Sniff Mode as an infringing mode. Given that Bluetooth Sniff Mode was a baseline operating
feature for all Bluetooth products, DSS was aware of the possibility of infringement from the
beginning of the case and still failed to include this infringement theory in its Amended PICs.
Allowing such an amendment at this late stage also would prejudice Apple, given that it never had
the opportunity to pursue invalidity defenses or conduct factual discovery regarding this theory.
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Sniff Mode), the Court GRANTS Apple’s cross-motion to strike DSS’s expert report.

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IV.

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MOTIONS TO SEAL
Courts generally apply a “compelling reasons” standard when considering motions to seal

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documents. Pintos v. Pac. Creditors Ass’n, 605 F.3d 665, 678 (9th Cir. 2010) (quoting Kamakana

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v. City & Cty. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006)). “This standard derives from the

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common law right ‘to inspect and copy public records and documents, including judicial records

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and documents.’” Id. (quoting Kamakana, 447 F.3d at 1178). “[A] strong presumption in favor of

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access is the starting point.” Kamakana, 447 F.3d at 1178 (quotations omitted). To overcome this

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strong presumption, the party seeking to seal a judicial record attached to a dispositive motion
must “articulate compelling reasons supported by specific factual findings that outweigh the

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United States District Court
Northern District of California

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general history of access and the public policies favoring disclosure, such as the public interest in

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understanding the judicial process” and “significant public events.” Id. at 1178–79 (quotations

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omitted).

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Records attached to nondispositive motions must meet the lower “good cause” standard of

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Rule 26(c) of the Federal Rules of Civil Procedure, as such records “are often unrelated, or only

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tangentially related, to the underlying cause of action.” Id. at 1179–80 (quotation omitted). This

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requires a “particularized showing” that “specific prejudice or harm will result” if the information

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is disclosed. Phillips ex rel. Estates of Byrd v. Gen. Motors Corp., 307 F.3d 1206, 1210–11 (9th

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Cir. 2002); see also Fed. R. Civ. P. 26(c). “Broad allegations of harm, unsubstantiated by specific

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examples of articulated reasoning” will not suffice. Beckman Indus., Inc. v. Int’l Ins. Co., 966

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F.2d 470, 476 (9th Cir. 1992) (quotation omitted).

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Because the parties move to file documents related to nondispositive motions, the Court
will apply the lower good cause standard.
The parties have provided good cause for sealing portions of the various documents listed

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below because they contain confidential business and proprietary information relating to the

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operations of Defendant. See Apple Inc. v. Samsung Elecs. Co., Ltd., No. 11-CV-01846-LHK,

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2012 WL 6115623 (N.D. Cal. Dec. 10, 2012); see also Agency Solutions.Com, LLC v. TriZetto

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Group, Inc., 819 F. Supp. 2d 1001, 1017 (E.D. Cal. 2011); Linex Techs., Inc. v. Hewlett-Packard
14

1

V.

CONCLUSION

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Because DSS fails to show diligence in seeking amendment, and amendment would

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prejudice Apple at this late stage, the Court DENIES DSS’s motion to amend infringement

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contentions. The Court also GRANTS Apple’s cross-motion to strike DSS’s infringement expert

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report because it relies on two new theories of infringement.

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The Court further GRANTS IN PART and DENIES IN PART Dkt. Nos. 213, 219, 231, 233,

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and 246. Because of the volume of documents, the Court will allow fourteen days (14) from the

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date of this order for the parties to file the unredacted versions of the materials or file renewed

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motions to seal according to the requirements discussed above. If the parties wish to file renewed
motions to seal, the parties are directed to meet and confer before the submissions, coordinate

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United States District Court
Northern District of California

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redactions, and submit joint motions for any given filing the parties wish to keep partially

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redacted, which include all corresponding Civil Local Rule 79-5 declarations as attachments.

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Pursuant to Civil Local Rule 79-5(f)(1), documents filed under seal as to which the administrative

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motions are granted will remain under seal.

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Finally, the Court sets a further case management conference for January 21, 2020 at 2:00

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p.m. The parties should be prepared to discuss the consequences of this order and next steps for

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this case.

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IT IS SO ORDERED.
DATED: 1/14/2020

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HAYWOOD S. GILLIAM, JR.
United States District Judge

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