OpenDNS, Inc. v. Paxfire, Inc.
Filing
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ORDER by Magistrate Judge Howard R. Lloyd denying Plaintiff's 56 Motion to Strike and granting Defendant's 63 Motion for Leave to File Amended Infringement Contentions. (hrllc1, COURT STAFF) (Filed on 6/3/2013)
*E-FILED: June 3, 2013*
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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For the Northern District of California
NOT FOR CITATION
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United States District Court
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SAN JOSE DIVISION
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OPENDNS, INC.,
Plaintiff,
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v.
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SELECT NOTIFICATIONS MEDIA, LLC,
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Defendant.
____________________________________/
No. C11-05101 EJD (HRL)
ORDER DENYING PLAINTIFF’S
MOTION TO STRIKE AND
GRANTING DEFENDANT’S MOTION
FOR LEAVE TO FILE AMENDED
INFRINGEMENT CONTENTIONS
(Dkts. 56, 63)
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Plaintiff OpenDNS, Inc. (“OpenDNS”) initiated this patent suit by seeking a declaration of
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non-infringement against Paxfire, Inc., the original owner of U.S. Patent No. 7,631,101 (“the ’101
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Patent”). Paxfire, Inc. then assigned the ’101 Patent to defendant Select Notifications Media, LLC
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(“SNM”) and the Court granted SNM’s motion to substitute itself as a party for Paxfire, Inc. SNM
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has counterclaimed, accusing OpenDNS of infringing the ’101 Patent. The motions before the
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Court concern SNM’s patent infringement counterclaim. OpenDNS moves to strike what OpenDNS
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refers to as “amended infringement contentions” served by SNM. SNM opposes the motion, and
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refers to the subject contentions as “corrected infringement contentions.” In the event the Court
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determines that serving the “corrected infringement contentions” required leave of Court, SNM
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moves for leave to file amended infringement contentions. On April 9, 2013, the parties appeared
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for hearing. Having reviewed the papers and considered the arguments of counsel, the court
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DENIES OpenDNS’s motion and GRANTS SNM’s motion.
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BACKROUND
The ’101 Patent relates to the Domain Name System (“DNS”) for Internet addressing. The
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’101 Patent claims a system that redirects requests for domain names that cannot be resolved by the
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DNS. The ’101 Patent has two independent claims, Method Claim 1 and System Claim 8. The
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claims relate to redirection of Internet traffic, and describe, inter alia, different treatment of requests
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associated with hypertext transfer protocol (“HTTP”) and requests that are not associated with
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HTTP. Both claims require determining if a request for the IP address associated with a domain
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name is associated with HTTP, and then taking different actions, depending on the result. Both
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claims include the limitation: “if the request is not associated with HTTP, forwarding to the Internet
For the Northern District of California
United States District Court
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user an error response for the request” (“Error Response Limitation”). SNM claims infringement
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because OpenDNS’s system treats HTTP requests differently from non-HTTP requests.
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SNM served its Preliminary Infringement Contentions (“PICs”) on September 4, 2012. The
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PICs included screen shots, but – oops – the screen shots for the Error Response Limitation that
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supposedly illustrate a non-HTTP request actually show an HTTP request. Both parties agree that
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this is an obvious mistake. The text of the PIC was correct, the screenshots were wrong. According
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to a declaration submitted by the attorney who compiled the PICs, the mistake resulted from a
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mislabeled file. (Rafferty Decl., Dkt. 64, ¶ ¶ 4-6.) The attorney relied on the label of the file, as
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opposed to its content, because he was not familiar with the packet tracing software that generated
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the screenshots. (Id.) This attorney left the law firm that represents SNM the day after the PICs
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were served on OpenDNS, and did not look at the charts again or inform anyone of the mistake.
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About six hours after the error was called to SNM’s attention (by Open DNS’s January 4,
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2013 mediation brief), SNM served “corrected PICs,” which included new screen shots and a
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specific reference to the new screen shots in the accompanying text. The “corrected PICs” were
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served about two months before the opening claim construction briefing and about 5 months before
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the close of fact discovery (the close of fact discovery has since been extended an additional month,
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to July 12, 2013). About five weeks later, Open DNS moved to strike the “corrected PICs,”
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asserting that the “corrected PICs” amounted to a substantive change in theory. SNM opposes the
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motion, arguing that the “corrected PICs” simply resolved a clerical error. As a precaution, SNM
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moves for leave to amend its PICs. SNM’s motion has a proposed amendment that tinkers with the
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earlier “corrected” text that accompanies the new screen shots. The adjusted language describes the
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new screen shots more accurately than the corrected text did.
LEGAL STANDARDS
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order of the Court upon a timely showing of good cause.” Pat L.R. 3-6. The text of the local rule
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provides a non-exhaustive list of circumstances which, absent prejudice to the non-moving party,
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may support a finding of good cause: “(a) a claim construction by the Court different from that
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proposed by the party seeking amendment; (b) recent discovery of material, prior art despite earlier
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For the Northern District of California
Patent Local Rule 3-6 allows the parties to amend their infringement contentions only “by
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United States District Court
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diligent search; and (c) recent discovery of nonpublic information about the Accused Instrumentality
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which was not discovered, despite diligent efforts, before the service of the Infringement
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Contentions.” Id.
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The local rules of the Northern District of California require parties to define their theories
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of infringement early on in the course of litigation. O2 Micro Int'l Ltd. v. Monolithic Power Sys.,
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Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006). By requiring the non-moving party to show good cause,
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Local Rule 3-6 serves to balance the parties’ rights to develop new information in discovery along
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with the need for certainty in legal theories at the start of the case. Id. at 1366.
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The good cause inquiry considers first whether “the party seeking leave to amend acted with
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diligence in promptly moving to amend when new evidence [was] revealed.” O2 Micro, 467 F.3d at
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1363. The core is the moving party’s diligence in investigating the claim and seeking to amend.
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Acer, Inc. v. Tech. Properties Ltd., Case No. 5:08-CV-00877 JF/HRL, 2010 WL 3618687 (N.D. Cal.
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Sept. 10, 2010). This prevents parties from employing a “shifting sands” approach to claim
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construction. See LG Electronics Inc. v. Q-Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. CA
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2002). In considering the party’s diligence, the critical question is whether the party “could have
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discovered [the new information] earlier had it acted with the requisite diligence.” Google, Inc. v.
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Netlist, Inc., Case No. 08-4144 SBA, 2010 WL 1838693, at *2 (N.D. Cal. May 5, 2010). The burden
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is on the moving party to show diligence. O2 Micro, 467 F.3d at 1355. The court then considers
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whether there would be undue prejudice to the non-moving party. Board of Trs. Of Leland Stanford
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Junior Univ. v. Roche Molecular Sys., 2008 WL 624771, at *2 (N.D. Cal. 2008). If the court finds
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that the moving party was not diligent in amending its infringement contentions, there is no need to
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consider the question of prejudice to the non-moving party, although a court in its discretion may
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elect to do so. See O2 Micro, 467 F.3d at 1368 (affirming the district court’s decision refusing leave
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to amend upon finding the moving party was not diligent, without considering the question of
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prejudice to the non-moving party). Nevertheless, even if the movant was arguably not diligent, the
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court may still grant leave to amend. Leland Stanford Junior Univ., 2008 WL 624771, at *3.
DISCUSSION
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For the Northern District of California
United States District Court
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Mistakes or omissions are not by themselves good cause. See, e.g., Berger v. Rossignol Ski
Co., Inc., C 05-02523 CRB, 2006 WL 1095914, at *4 (N.D. Cal. Apr. 25, 2006) aff'd, 214 F. App'x
981 (Fed. Cir. 2007). However, considering SNM corrected its mistake hours after OpenDNS
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brought the mistake to light, it appears that SNM acted diligently as soon as it discovered the
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mistake. Courts have allowed amendments when the movant made an honest mistake, the request to
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amend did not appear to be motivated by gamesmanship, or where there was still ample time left in
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discovery. See, e.g., Yodlee, Inc. v. CashEdge, Inc., Case No. 05-01550 SI, 2007 WL 1454259, at
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*2 (N.D. Cal. May 17, 2007); Apple, Inc. v. Samsung Elecs. Co. Ltd., 2012 WL 5632618 at *5 (N.D.
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Cal. Nov. 15, 2012).
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Here, it appears that SNM’s inclusion of incorrect screen shots was due to an honest mistake.
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Common sense suggests that SNM had originally intended to show a non HTTP request for the
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claim limitation describing the response to a non-HTTP request – otherwise its infringement theory
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makes no sense. At the hearing, counsel for Open DNS admitted the obviousness of the mistake and
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conceded that, were the original PICs to stand, the parties would probably stipulate to
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noninfringement. SNM does not appear to be changing its theory of infringement, but only seeking
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to correct a surface-level mistake. Precluding SNM from correcting what appears to be an
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administrative mistake would be an unnecessarily harsh result. See Apple, Inc. v. Samsung Elecs.
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Co. Ltd., 2012 WL 5632618 at *5 (granting leave to amend error omitting entire sets of contentions
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relating to certain products, noting that “[t]he omission, though careless, does not appear to be
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motivated by gamesmanship. Precluding [plaintiff] from bringing these claims because of an
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administrative mistake would be an unnecessarily harsh result.”); see also Leland Stanford Junior
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Univ., 2008 WL 624771, at *3 (elevating substance over form and allowing amendment despite
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arguable lack of diligence). Because the “amendment” does not appear to change the infringement
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theory and, in any event, Open DNS received notice of the proposed amendment months before the
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close of discovery, leave to amend should not prejudice OpenDNS.
For the Northern District of California
United States District Court
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CONCLUSION
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For the reasons set forth above, the Court DENIES OpenDNS’s motion to strike amended
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infringement contentions and GRANTS SNM’s motion for leave to amend infringement
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contentions. SNM shall file its amended infringement contentions forthwith.
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IT IS SO ORDERED.
Dated: June 3, 2013
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HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE
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C11-05101 HRL Order will be electronically mailed to:
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Bryan A. Kohm bkohm@fenwick.com, anolen@fenwick.com
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Erin Anne Simon esimon@fenwick.com, rpelayo@fenwick.com
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Jennifer Hayes jenhayes@nixonpeabody.com, hbuckley@nixonpeabody.com,
prwilson@nixonpeabody.com, sf.managing.clerk@nixonpeabody.com,
wanthony@nixonpeabody.com
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Jia-geng Lu jlu@farneydaniels.com
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Jonathan Daniel Baker jbaker@farneydaniels.com, FDLitSupport@farneydaniels.com,
MGoss@farneydaniels.com
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Michael John Sacksteder msacksteder@fenwick.com, gdunlap@fenwick.com, jphan@fenwick.com
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Robert Edward Krebs rkrebs@nixonpeabody.com, sf.managing.clerk@nixonpeabody.com
For the Northern District of California
United States District Court
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Ronald Frank Lopez rflopez@nixonpeabody.com, kkappler@nixonpeabody.com,
sf.managing.clerk@nixonpeabody.com
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Steven R. Daniels SDaniels@farneydaniels.com
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Steven Robert Daniels sdaniels@farneydaniels.com, FDLitSupport@farneydaniels.com,
jlu@farneydaniels.com, lsun@farneydaniels.com, mjacob@farneydaniels.com
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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.
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