Synchronoss Technologies v. Dropbox Inc

Filing 235

Order by Magistrate Judge Kandis A. Westmore granting 210 Defendant's Motion to Amend/Correct its Invalidity Contentions; Defendant is further allowed to serve its Amended Invalidity Contentions upon Plaintiff. (kawlc3, COURT STAFF) (Filed on 10/29/2018) Modified on 10/29/2018 (kawlc3, COURT STAFF).

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

SYNCHRONOSS TECHNOLOGIES, INC.,
Plaintiff,

8

ORDER GRANTING DROPBOX INC.'S
MOTION TO AMEND ITS INVALIDITY
CONTENTIONS

v.

9
10

DROPBOX INC., et al.,

Re: Dkt. No. 210

Defendants.

11

United States District Court
Northern District of California

Case No. 4:16-cv-00119-HSG (KAW)

12

On August 24, 2018, Defendant Dropbox, Inc. (“Defendant” or “Dropbox”) filed a Motion

13

to Amend Its Invalidity Contentions. (Def.’s Mot., Dkt. No. 210.) On September 7, 2018, Plaintiff

14

Synchronoss Technologies, Inc. (“Plaintiff” or “Synchronoss”) opposed. (Pl.’s Opp'n, Dkt. No.

15

221.) On September 14, 2018, Dropbox replied. (Def.’s Reply, Dkt. No. 222.)
The Court finds this matter suitable for resolution without hearing pursuant to Civil Local

16
17

Rule 7-1(b). Upon consideration of the parties' filings, and for the reasons set forth below, the

18

Court GRANTS Defendant Dropbox's Motion to Amend Its Invalidity Contentions.

19

I.

BACKGROUND

On April 7, 2016, Dropbox filed petitions to institute two Inter Partes Review ("IPR")

20
21

actions of claims 1-15 (IPR2016-00850) and claims 16-29 (IPR2016-00851) of U.S. Patent No.

22

6,671,757 (“the ’757 patent”).1 (Def.’s Mot. at 2; Dkt. No. 211-5, Ex. 5, at 2.) On October 7, 2016,

23

the Patent Trial and Appeal Board (“PTAB”) instituted review of claims 1-8, 10-13 and 15

24

(IPR2016-00850) and claims 16-20, 22-25, 27, and 29 (IPR2016-00851) of the ’757 patent.

25

(Def.’s Mot. at 2; Ex. 5 at 2.)

26
27
28

1

The '757 patent is one of three asserted patents in this case by Plaintiff Synchronoss against
Defendant Dropbox, and the other two asserted patents are: U.S. Patent Nos. 6,767,696 (“the ’696
patent”) and 7,587,446 (“the ’446 patent”). (Dkt. No. 211-1 at 2.)

1

On February 15, 2017, Synchronoss served its Infringement Contentions upon Dropbox.

2

(Dkt. No. 211-1, Ex.1.) In its Infringement Contentions, Synchronoss asserted claims 9, 14, 21,

3

26 and 28 of the ’757 patent, which do not overlap with the claims of the ’757 patent that the

4

PTAB instituted in IPR2016-00850. (Ex.1 at 2.) Dropbox indicates that Synchronoss was waiting

5

for the PTAB to "resolv[e] the patentability of these claims" before it asserted them in the present

6

suit. (Dkt. No. 182 at 1.) Synchronoss also initially asserted claims 1-2, 6-9, 10-15, 18-19 of the

7

’696 patent and claims 1, 3, 5, 6, 9, 10-14, 16-20 of the ’446 patent in its Infringement

8

Contentions. (Ex. 1 at 2.) Moreover, even though Synchronoss’ Infringement Contentions did not

9

list claims 1, 8, 16 and 24 of the ’757 patent as being infringed upon, those claims were still

10

charted in the claim charts attached to the Infringement Contentions. (Dkt. No. 195 at 2.)

United States District Court
Northern District of California

11

On June 9, 2017, Dropbox served its Invalidity Contentions upon Synchronoss. (Dkt. No.

12

21-2, Ex. 2.) In its Invalidity Contentions, Dropbox listed that Synchronoss asserted claims 9, 14,

13

21, 26 and 28 of the ’757 patent but also lists that Synchronoss asserted claims 1, 3, 5, 6, 9, 14, 16

14

and 20 of the '696 patent and claims 1, 2, 6-15, 18 and 19 of the ’757 patent. (Dkt. No. 211-2,

15

Ex.2, at 1.) In its Invalidity Contentions, Dropbox also identified prior art that anticipated or

16

rendered obvious the asserted claims of the ’757, ’696 and ’446 patents, including the prior art

17

systems of Concurrent Versions System (“CVS”) and the Coda Distributed File System (“Coda”).

18

(Def.’s Mot. at 2; Ex. 2 at 10.) As to CVS, Dropbox included a claim chart “identifying

19

specifically where and how in [the system] each limitation of each asserted claim [of the ’757

20

patent] is found.” (Def.’s Mot. at 2) (citing Patent L.R. 3-3(c); Dkt. No. 211-3, Ex.3.) Dropbox

21

states that although it did not include a similar chart for the Coda system, it provided a claim chart

22

identifying disclosures of various limitations of the ’757 patent in the prior art publication of J.

23

Kistler & M. Satyanarayanan, “Disconnected Operation in the Coda File System,” ACM

24

TRANSACTIONS ON COMPUTER SYSTEMS, vol. 10, no. 1 (1992) (“Kistler”), which describes the

25

operation of the Coda system. (Def.’s Mot. at 2; Dkt. No. 211-4, Ex. 4.)

26

On October 5, 2017, the PTAB issued a Final Written Decision that held that the claims of

27

the ’757 patent that were at issue in IPR2016-00850 had “not been shown by a preponderance of

28

the evidence to be unpatentable. (Def.’s Mot. at 2-3; Ex. 5 at 24.)
2

1

In December of 2017, Dropbox filed a Notice of Appeal from the PTAB’s October 5, 2017

2

ruling to the U.S. Court of Appeals for the Federal Circuit. (Def.’s Mot. at 3.) On December 7,

3

2017, the Court issued its Claim Construction Order (Dkt. No. 168), which held that several of the

4

claim terms in the claims of the ’696 patent were indefinite under 35 U.S.C. § 112(6). (Dkt. No.

5

168 at 29-30.) Synchronoss then agreed to withdraw the ’696 patent. (Dkt. No, 170 at 12.)

6

On March 30, 2018, Synchronoss filed a motion to amend its Infringement Contentions,

7

which sought to add to the case claims 1, 8, 16 and 24 of the ’757 patent – previously only at issue

8

in IPR2016-00850 and IPR2016-00851. (Dkt. No. 178; Ex. 5 at 3.) In its April 4, 2018 response to

9

Synchronoss’ motion for leave to amend its Infringement Contentions, Dropbox opposed
Synchronoss’ request to add those claims of the ’757 patent, but did not oppose Synchronoss’

11

United States District Court
Northern District of California

10

request to supplement its Infringement Contentions with respect to claims it had originally

12

asserted in its February 15, 2017 Infringement Contention disclosures. (Dkt. No. 181 at 1.)

13

On June 7, 2018, after the parties fully briefed the issue, the Court held a hearing on

14

Synchronoss’ motion for leave to amend its Infringement Contentions. (Dkt. No. 192.) At the

15

hearing, counsel for Dropbox, Mr. Adam D. Harber of Williams & Connolly LLP, stated that as a

16

result of Synchronoss not asserting the aforementioned claims of the ’757 patent, Synchronoss

17

“created a situation where there was no overlap between what was happening in the IPR and what

18

was happening in the district court” and Dropbox relied on this lack of overlap when drafting its

19

Invalidity Contentions, specifically, that without any overlap between the two sets of claims in the

20

IPR and the district court, there was never any question as to the potential, albeit limited,

21

preclusive effect of the PTAB’s decision on invalidity defenses that Dropbox might have asserted

22

in this action. (Def.’s Mot. at 3; Dkt. No. 211-6, Ex. 6 at 10:19-11:7.)

23

On June 14, 2018, the Court granted Synchronoss’ motion for leave to amend. (Dkt. No.

24

195.) Afterwards, Synchronoss served its Supplemental Disclosure of Asserted Claims and

25

Infringement Contentions upon Dropbox. (Def.’s Mot. at 3.)

26

On June 15, 2018, Synchronoss filed a Motion to Terminate Appeal (filed in December of

27

2017) and Remand in light of SAS Institute v. Iancu for a ruling on all grounds raised in the

28

original petition before the PTAB. (Dkt. No. 211-7, Ex. 7.)
3

1

On July 23, 2018, the U.S. Court of Appeals for the Federal Circuit granted Synchronoss’

2

June 15, 2018 motion, remanding the matter to the PTAB to consider all of the challenged patent

3

claims and all challenged invalidity grounds. (Def.’s Mot. at 3; Dkt. No. 211-8, Ex. 8.)

4
5

II.

LEGAL STANDARD

“The Northern District of California has adopted local rules that require parties to state
early in the litigation and with specificity their contentions with respect to infringement and

7

invalidity.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1359 (Fed Cir.

8

2006). The patent local rules were “designed to require parties to crystallize their theories of the

9

case early in the litigation and to adhere to those theories once they have been disclosed.” DCG

10

Sys. v. Checkpoint Techs., LLC, No. C 11-03792 PSG, 2012 WL 1309161, at *2 (N.D. Cal. Apr.

11

United States District Court
Northern District of California

6

16, 2012) (quotations omitted); O2 Micro Int'l Ltd. 467 F.3d at 1366 n.12 (quoting Nova

12

Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006)).

13

Patent Local Rule 3-3 requires that each party opposing a claim of patent infringement

14

shall serve on all parties its Invalidity Contentions not later than 45 days after service upon it of

15

the disclosure of asserted claims and Infringement Contentions from a party claiming patent

16

infringement. Pursuant to that local rule, the Invalidity Contentions must contain (a) the identity of

17

each item of prior art that allegedly anticipates each asserted claim or renders it obvious; (b)

18

whether each item of prior art anticipates each asserted claim or renders it obvious, and if

19

obviousness is alleged, an explanation of why the prior art renders the asserted claim obvious,

20

including an identification of any combinations of prior art showing obviousness; (c) a chart

21

identifying specifically where and how in each alleged item of prior art each limitation of each

22

asserted claim is found, including for each limitation that such party contends is governed by 35

23

U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in each item of prior art that

24

performs the claimed function; and (d) any grounds of invalidity based on 35 U.S.C. § 101,

25

indefiniteness under 35 U.S.C. § 112(2) or enablement or written description under 35 U.S.C. §

26

112(1) of any of the asserted claims. Patent L.R. 3-3.

27
28

A party may also amend its Invalidity Contentions “only by order of the Court upon a
timely showing of good cause.” Patent L.R. 3-6. The good cause inquiry is two-fold: (1) whether
4

1

the moving party was diligent in amending its contentions; and (2) whether the non-moving party

2

would suffer prejudice if the motion to amend were granted. 24/7 Customer, Inc. v. Liveperson,

3

Inc., No. 3:15-cv-02897-JST (KAW), 2016 WL 6673983, at *2 (N.D. Cal. Nov. 14, 2016) (citing

4

Barco N.V. v. Tech. Properties Ltd., 2011 WL 3957390, at * 1 (N.D. Cal. Sept. 7, 2011)). The

5

moving party has the burden of demonstrating good cause. O2 Micro Int'l, 467 F.3d at 1366. Non-

6

exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party,

7

support a finding of good cause include: (1) an adverse claim construction; (2) recent discovery of

8

material prior art despite an earlier diligent search; and (3) recent discovery of nonpublic

9

information about the accused product that, despite diligent efforts, was not discovered before

10

service of the Infringement Contentions. Patent L.R. 3-6.

United States District Court
Northern District of California

11

In determining whether a motion for leave to amend invalidity contentions should be

12

granted, this Court has examined such factors as the relevance of newly-discovered prior art,

13

whether the request to amend is motivated by gamesmanship, and whether the opposing party will

14

be prejudiced by the amendment. MLC Intellectual Prop., LLC v. Micron Tech., Inc., No. 14-CV-

15

03657-SI, 2016 WL 3648594, at *2 (N.D. Cal. July 6, 2016) (citing Yodlee, Inc. v. CashEdge,

16

Inc., 2007 WL 1454259, *2-3 (N.D. Cal. May 17, 2007)).

17

III.

DISCUSSION

18

Defendant Dropbox argues that it should be allowed to amend its Invalidity Contentions

19

mainly because: (A) Dropbox has been diligent in seeking leave to amend, (B) Synchronoss will

20

not be prejudiced by the amendments and even if the Court were to conclude that Dropbox was

21

not diligent in seeking amendment, (C) the Court should use its discretion to grant Dropbox’s

22

leave to amend. (Def.’s Mot. at 5-8.) Synchronoss opposes all three reasons. (Pl.’s Opp’n at 4-9.)

23

A. Dropbox’s Diligence in Seeking Leave to Amend

24

The moving party bears the burden of first establishing diligence. O2 Micro, 467 F.3d at

25

1355; Radware Ltd. v. F5 Networks, Inc., No. 13-02021-RMW, 2014 WL 3728482, at *1 (N.D.

26

Cal. July 28, 2014) (“The burden is on the movant to establish diligence rather than on the

27

opposing party to establish lack of diligence.”). Diligence consists of two steps: “(1) diligence in

28

discovering the basis for amendment; and (2) diligence in seeking amendment once the basis for
5

1

amendment has been discovered.” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 236 F. Supp.

2

3d 1110, 1113 (N.D. Cal. 2017) (quoting Monolithic Power Sys., Inc. v. Silergy Corp., No. 14-

3

1745-VC (KAW), 2015 WL 5440674, at *2 (N.D. Cal. Sept. 15, 2015)). “In considering the

4

party's diligence, the critical question is whether the party could have discovered the new

5

information earlier had it acted with the requisite diligence.” Radware, 2014 WL 3728482, at *1.

6

Dropbox asserts here that it has been diligent in both “discovering the basis for” and

7

“seeking” amendment because once it became apparent that Synchronoss was intending to not

8

only add new claims that had been addressed in the IPR, but also to seek PTAB consideration of

9

additional claims and grounds, Dropbox diligently set about identifying the relevant source code
sections for the two prior art systems of CVS and Coda that it previously had identified and

11

United States District Court
Northern District of California

10

disclosed as systems on which it was relying in its initial Invalidity Contentions. (Def.’s Mot. at 5-

12

6.) Dropbox also states that it has worked diligently with its experts, since the Court’s June 14,

13

2018 grant of Synchronoss’ motion to leave to amend its Infringement Contentions, to identify

14

specific portions of the source code for both the CVS and Coda systems that practiced various

15

limitations of ’757 patent claims, and has diligently set about identifying these source code

16

sections before any depositions have taken place and before expert discovery has even begun.

17

(Def.’s Mot. at 6.) Dropbox concludes that invalidity defenses based on prior art systems discussed

18

in the Invalidity Contentions are not subject to estoppel, and these defenses are particularly

19

relevant now since Synchronoss is seeking to assert estoppel as to all claims in the matter. (Id.)

20

In response, Synchronoss argues that no such excuse exists for Dropbox’s delay in

21

“discovering the basis for” and “seeking” amendment because Dropbox relied on documents

22

describing Coda and CVS in its IPR petitions filed over two years ago. (Pl.’s Opp’n at 4.)

23

Synchronoss further contends that because the source code was available online including when

24

Dropbox served its Rule 3-3 Invalidity Contention disclosures on June 9, 2017, Dropbox could

25

have easily included the information in its original Rule 3-3 Invalidity Contention disclosures but

26

failed to do so. (Id. at 4-5.) Synchronoss also asserts that Dropbox’s argument that it could not

27

begin supplementing its Invalidity Contentions until it became apparent that Synchronoss was

28

intending to add new claims and seek PTAB consideration of additional claims and grounds is
6

1

baseless because Synchronoss charted the claims in its original Infringement Contentions served

2

on February 15, 2017, so Dropbox was on notice at least as early as then. Synchronoss also points

3

out Dropbox does not explain why it is seeking amendment of its Invalidity Contentions more than

4

a year after serving their original ones, and does not allege that the code was difficult to find, when

5

Synchronoss’ expert declared that versions of Coda and CVS were “easily obtainable.” (Id. at 5.)

6

In conclusion, Synchronoss avers that Dropbox wants “two bites at the apple” because Dropbox

7

“lost the IPR proceedings,” and now “wants to skirt the invalidity litigation at the Patent Office

8

and assert here a late public-use defense that it chose not to include in its original invalidity

9

contentions.” (Id.)

10

In reply, Dropbox states that it unquestionably could have asserted prior art invalidity

United States District Court
Northern District of California

11

defenses based on printed publications that were at issue in the IPRs until June 28, 2018, as the

12

case was limited then to claims that had not been instituted for review by the PTAB. (Def.’s Reply

13

at 3.) Yet, as soon as the Court issued its June 14, 2018 order allowing Synchronoss to amend its

14

Infringement Contentions and to expand its asserted claims to overlap with those in the IPR,

15

Dropbox worked diligently with its experts to supplement its Invalidity Contentions as to the Coda

16

and CVS prior art systems it had previously disclosed. (Id.) Dropbox further mentions it moved to

17

amend its Invalidity Contentions within roughly two months from the date of the Court’s June 14,

18

2018 order and within a month of the Federal Circuit’s July 23, 2018 order remanding to the

19

PTAB for further proceedings, whereas Synchronoss waited almost six months to amend its

20

infringement contentions after the PTAB’s Final Written Decision, which was the purported basis

21

for Synchronoss’ amendment to its Infringement Contentions. (Id.) In addition, Dropbox mentions

22

that Synchronoss’ charting of parent claims to asserted dependent claims and failure to assert

23

those charted parent claims informed Dropbox that those charted claims were not at issue. (Id. at

24

4.) Finally, Dropbox mentions its one-year delay in amending its Invalidity Contentions

25

previously seemed acceptable to Synchronoss and that Dropbox is not adding any new prior art to

26

its Invalidity Contentions that it had not previously disclosed, e.g., merely expanding on its

27

previous disclosures as to CVS and Code so as to fit the case to circumstances that Synchronoss

28

has recently brought about.
7

1

On balance, the Court finds that Dropbox acted diligently in both “discovering the basis

2

for” and “seeking” amendment of its Invalidity Contentions. The trigger for amending Dropbox’s

3

Invalidity Contentions is undoubtedly the Court’s June 14, 2018 order granting Synchronoss’

4

motion to amend its Infringement Contentions to add newly asserted claims, e.g. Claims 1, 8, 16

5

and 24 of the ’757 patent. Synchronoss’ Amended Infringement Contentions were served upon

6

Dropbox on June 28, 2018. Dropbox then filed its motion to amend its Invalidity Contentions on

7

August 24, 2018, less than two months after being served with Synchronoss’ Amended

8

Infringement Contentions. This shows diligence on Dropbox’s part.

9
10

B. The Prejudice to Synchronoss
“If the court finds that the moving party has acted with diligence, it must then determine

United States District Court
Northern District of California

11

whether the nonmoving party would suffer prejudice if the motion to amend were granted.” Apple

12

Inc. v. Samsung Elecs. Co. Ltd, No. 12-0630-LHK (PSG), 2013 WL 3246094, at *1 (N.D. Cal.

13

June 26, 2013) (internal quotation marks omitted). “Prejudice is typically found when amending

14

contentions stand to disrupt the case schedule or other court orders.” Verinata Health, 236 F.

15

Supp. 3d at 1113 (quoting Karl Storz Endoscopy–Am. v. Stryker Corp., No. 14-0876-RS (JSC),

16

2016 WL 7386136 at *3 (N.D. Cal. Dec. 21, 2016)).

17

Dropbox asserts that Synchronoss will not suffer any prejudice if Dropbox is granted leave

18

to amend its Invalidity Contentions because: (i) Synchronoss has been on notice of both prior art

19

systems of CVS and Coda, as well as the possibility that Dropbox would assert one or both as part

20

of an invalidity defense, at least since June 9, 2017, when Dropbox served its original Invalidity

21

Contentions; (ii) Dropbox’s June 9, 2017 Invalidity Contentions carefully charted the

22

documentation associated with the CVS and Coda systems, and Synchronoss argued in its motion

23

to amend its Infringement Contentions that charting was reason enough to find “no prejudice”;

24

(iii) discovery in the case is still ongoing, and (iv) because Dropbox is producing all relevant

25

documents with its Amended Invalidity Contentions, including the source code for Coda,

26

Synchronoss will have sufficient time to notice depositions to the extent it finds them necessary to

27

address Dropbox’s Amended Invalidity Contentions, which is unlikely because Synchronoss has

28

so far not noticed any depositions for the original Invalidity Contentions. (Def.’s Mot. at 7-8.)
8

1

In response, Synchronoss alleges that it would “suffer significant harm given that it would
be forced to analyze hundreds of files and tens-of-thousands of lines of source code at the end of

3

fact discovery and just weeks away from initial expert disclosures” and having to respond to

4

Dropbox’s Invalidity Contentions again in an amended form (having already responded to

5

Dropbox’s originally filed Invalidity Contentions on August 3, 2018) during the close of discovery

6

in the middle of depositions “is overwhelming and an undue burden to Synchronoss.” (Pl.’s

7

Opp’n at 6.) Synchronoss also complains of never previously seeing this code, experiencing

8

difficulty in deciphering it, and having to undergo “months and hundreds of hours of expert and

9

attorney time to review, parse and analyze” the code as well as Dropbox’s Amended Invalidity

10

Contentions. (Id. at 7.) Moreover, Synchronoss states that it will be forced to take discovery on

11

United States District Court
Northern District of California

2

any new “theories” disclosed in Dropbox’s Amended Invalidity Contentions past the fact

12

discovery deadline, and points to how it “sought repeatedly to avoid the prejudicial situation that

13

Dropbox now seeks to create.” (Id.)

14

In reply, Dropbox avers that Synchronoss is “vastly exaggerating” both the scope of the

15

amendments and the additional work it will have to perform if Dropbox is granted leave to amend.

16

(Def.’s Reply at 5.) Dropbox also indicates that Synchronoss has been on notice of the Coda and

17

CVS prior art systems for over a year, an argument against prejudice incurring to another party

18

that Synchronoss itself raised in its motion to amend its Infringement Contentions earlier. (Id.)

19

Dropbox also argues that it is difficult to understand why the mere addition of publicly available

20

source code to Invalidity Contentions about systems that have always been in Dropbox’s

21

Invalidity Contentions suddenly requires Synchronoss to “take discovery” that it has never

22

previously sought because nothing in Dropbox’s amendments would cause a change in the expert

23

discovery strategy employed by Synchronoss to address Dropbox’s invalidity theories. (Id. at 5-6.)

24

Dropbox further notes that Synchronoss’ motion to amend its Infringement Contentions set into

25

motion this current delayed timeline of events, that Synchronoss’ responsive expert reports on

26

invalidity are not due until December 21, 2018, and that Synchronoss’ lack of sufficient time to

27

prepare its response to Dropbox’s amendments are highly exaggerated, especially given the

28

limited nature of the amendment itself, e.g. simply adding support to arguments and prior art
9

1

systems that Synchronoss and its experts would have had to address anyway. (Id. at 6.) Finally,

2

Dropbox argues that while forcing a non-moving party to “expend resources,” “analyze hundreds

3

of files and tens-of-thousands of lines of source code at the end of fact discovery” and “re-

4

formulate” its defenses may in a few situations constitute “some prejudice,” those burdens in and

5

of themselves are not sufficient to find “substantial and undue prejudice” to deny an amendment.

6

(Id. at 6-7) (citing Nexus Display Techs., LLC v. LG Elecs., Inc., No. CV-14-05964-JVS-DFM-X,

7

2016 WL 6916827, at *4 (C.D. Cal. July 8, 2016)).

8

Upon consideration of the parties’ arguments, the Court finds that Synchronoss does not
suffer sufficient prejudice so as to deny Dropbox’s motion for leave to amend its Invalidity

10

Contentions. As an initial matter, Dropbox’s amendments do not appear to disrupt the case

11

United States District Court
Northern District of California

9

schedule or other court orders, and are therefore not prejudicial to Synchronoss, as far as the

12

timing of the case goes. Verinata Health, 236 F. Supp. 3d at 1113. Moreover, Synchronoss has

13

been put on notice of the CVS and Coda prior art systems at least as early as June 9, 2017, when

14

Dropbox served its original Invalidity Contentions. Thus, the Court finds the arguments raised by

15

Synchronoss of having to conduct additional burdensome expert discovery or notice last-minute

16

depositions to adjust its arguments to potential “new” invalidity theories as largely unavailing. The

17

Court also notes that although fact discovery may have closed, Synchronoss’ responsive invalidity

18

expert reports are not due until December 21, 2018. Dropbox’s amendments to the Invalidity

19

Contentions are also limited in that they only add support and source code documentation to the

20

prior art systems of CVS and Coda that Synchronoss would have to address in any regard.

21

Finally, the Court finds unpersuasive Synchronoss’ complaints involving the burden of

22

analyzing just around 200 pages of difficult-to-understand source code, primarily because experts

23

proficient in understanding and parsing such code are hired to perform this task, and for prejudice

24

under Patent Local Rule 3-6, “the issue is not whether the defendant would be required to engage

25

in additional work in response to [new amendments]…[but] what incremental prejudice results

26

from the delay in asserting those [amendments] (e.g., inability to complete discovery because of

27

approaching trial date).” Trans Video Elecs., Ltd. v. Sony Elecs., 278 F.R.D. 505, 509 n.2 (N.D.

28

Cal. 2011).
10

C. The Court’s Discretion in Granting Leave to Amend

2

“It is generally permissible for a party to amend its invalidity contentions in response to the

3

patentee amending its infringement contentions.” Advanced Micro Devices, Inc. v. LG Elecs., Inc.,

4

No. 14-CV-01012-SI, 2017 WL 2774339, at *6 (N.D. Cal. June 26, 2017) (quoting Verinata

5

Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12-05501 SI, 2014 WL 1648175, at *2 (N.D. Cal.

6

Apr. 23, 2014)); accord DCG Sys., 2012 WL 1309161, at *2-3. Moreover, the Court “retains

7

discretion to grant leave to amend even in the absence of diligence so long as there is no prejudice

8

to the opposing party.” Karl Storz, 2016 WL 7386136, at *3 (citing Apple Inc. v. Samsung Elecs.

9

Co., No. CV 12-00630 LHK, 2012 WL 5632618, at *5-6 (N.D. Cal. Nov. 15, 2012); U.S. Ethernet

10

Innovations, LLC v. Acer, Inc., No. 10-cv-3724 CW, 2013 WL 5609325, at *3 (N.D. Cal. Oct. 11,

11

United States District Court
Northern District of California

1

2013)). “Courts have allowed amendments when the movant made an honest mistake, the request

12

to amend did not appear to be motivated by gamesmanship, or where there was still ample time

13

left in discovery.” Apple, 2012 WL 5632618, at *5.

14

Here, Dropbox argues that principles of fairness dictate that Dropbox should be permitted

15

to amend its invalidity contentions because its amendments are clearly not “motivated by

16

gamesmanship,” and allowing the amendments would not prejudice Synchronoss. (Def.’s Mot. at

17

8.) In response, Synchronoss accuses Dropbox as engaging in gamesmanship. (Pl.’s Opp’n at 7.)

18

In reply, Dropbox argues that if the Court were to deny its motion to amend its Invalidity

19

Contentions, Synchronoss would be effectively permitted to unfairly game the Local Rules.

20

(Def.’s Reply at 7.)

21

The Court finds, in its discretion, that Dropbox should be permitted to amend its Invalidity

22

Contentions for at least the equitable reason that Synchronoss has been permitted to amend its

23

Infringement Contentions. Also, the Court finds that Dropbox did not engage in any

24

gamesmanship or any other behavior that would unduly prejudice Synchronoss. Ample time also

25

remains in discovery for Synchronoss to respond to and address Dropbox’s Amended Invalidity

26

Contentions, as the rebuttal or responsive expert reports on invalidity – where Synchronoss would

27

be able to address the materials that Dropbox is seeking leave to add to its originally filed

28

Invalidity Contentions – are not due until December 21, 2018.
11

IV.

1

CONCLUSION

In light of the foregoing, the Court GRANTS Defendant Dropbox’s Motion to Amend its
2
Invalidity Contentions.
3
IT IS SO ORDERED.
4
Dated: October 29, 2018
5

__________________________________
KANDIS A. WESTMORE
United States Magistrate 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
12