PersonalWeb Technologies LLC et al v. Rackspace US, Inc. et al

Filing 125

Order by Magistrate Judge Howard R. Lloyd granting in part 122 Motion for Leave to Amend Infringement Contentions. (hrllc1S, COURT STAFF) (Filed on 6/28/2016)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

PERSONALWEB TECHNOLOGIES, LLC
AND LEVEL 3 COMMUNICATIONS, LLC,

8
9
10

United States District Court
Northern District of California

11

Plaintiffs,
v.
GITHUB, INC.,

Case No. 5:16-cv-01267-EJD (HRL)
ORDER GRANTING IN PART
PLAINTIFF’S MOTION FOR LEAVE
TO AMEND INFRINGEMENT
CONTENTIONS
Re: Dkt. No. 122

Defendant.

12

PersonalWeb Technologies, LLC (“PersonalWeb”) and Level 3 Communications, LLC

13

(“Level 3”) (collectively “Plaintiffs”) sued GitHub, Inc. for patent infringement in the U.S.

14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

District Court for the Eastern District of Texas. Dkt. No. 24. Plaintiffs sued IBM in a separate
action in the same district. PersonalWeb Technologies, LLC v. IBM, No. 6:12-CV-661-LED (E.D.
Tex. 2012). Plaintiffs served infringement contentions in December 2013. Dkt. No. 85-9 at 7.
The court stayed both cases for fourteen months pending completion of related inter partes
proceedings before the USPTO. Dkt. Nos. 62, 72. Judge Rodney Gilstrap lifted the stay and
consolidated the GitHub and IBM cases for pretrial purposes. Dkt. No. 80.
In February 2016, Judge Gilstrap issued an Order of Conditional Transfer to the Northern
District for both GitHub and IBM effective “immediately upon entry of [his] Markman opinion.”
Dkt. 89 at 6. Judge Gilstrap issued his claim construction order on March 11. Dkt. No. 93. The
case appeared on the Northern District docket on March 15, Dkt. No. 97, and was eventually
reassigned to Judge Davila on April 1, Dkt. No. 113. On May 31, PersonalWeb moved this court
to amend its infringement contentions. Dkt. No. 122. The court vacates the hearing set for this
motion and now grants the motion in part for the reasons discussed below.

Legal Standard

1
2

A party may amend its infringement contentions “only by order of the Court upon a timely
showing of good cause.”

4

infringement contentions exists when the moving party shows (1) that it was diligent in amending

5

its contentions; and (2) that the nonmoving party will not suffer undue prejudice if the motion is

6

granted.” Angioscore, Inc. v. TriReme Med., Inc., No. 12-cv-03393-YGR, 2015 WL 75187, at *4

7

(N.D. Cal. Jan. 6, 2015) (citing O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,

8

1366 (Fed. Cir. 2006)). One of the enumerated bases supporting a finding good cause is “[a]

9

claim construction by the Court different from that proposed by the party seeking amendment.”

10

Patent L.R. 3-6.

“Good cause for granting a motion to amend

3

Patent L.R. 3-6(a).

United States District Court
Northern District of California

11

But a court’s differing claim construction “in and of itself does not constitute good cause,”

12

and the moving party must still establish its diligence. Verinata Health, Inc. v. Sequenom, Inc.,

13

No. 12-cv-00865-SI, 2014 WL 789197, at *2 (N.D. Cal. Feb. 26, 2014). The Local Rules

14

previously required parties to move to amend infringement contentions “not later than 30 days

15

after service by the Court of its Claim Construction Ruling.” See LG Elecs. Inc. v. Q-Lity

16

Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002). The rules now require only that the motion

17

be “timely,” Patent L.R. 3-6, but some Northern District courts continue to treat 30 days as a

18

noteworthy threshold, see Tech. Properties Ltd. LLC v. Canon Inc., No. 14-3643-CW, 2016 WL

19

1360756, at *3 (N.D. Cal. Apr. 6, 2016). “However, even if the movant was arguably not diligent,

20

the court retains discretion to grant leave to amend.” Linex Techs., Inc. v. Hewlett–Packard Co.,

21

No. C13–159 CW, 2013 WL 5955548, at *1 (N.D. Cal. Nov. 6, 2013); see also Apple Inc. v.

22

Samsung Electronics Co., No. CV 12-00630 LHK, 2012 WL 5632618 (N.D. Cal. Nov. 15, 2012).

23

Discussion

24

Judge Gilstrap’s claim construction was different from that proposed by Plaintiffs. Dkt.

25

No. 93. Plaintiffs argued that the court should give the disputed terms “licensed,” “unlicensed,”

26

“authorized,” “unauthorized,” and “authorization” their plain and ordinary meaning. Dkt. No. 85

27

at 7, 9. The court instead provided a specific construction for each term. Dkt. No. 93 at 25, 28.

28

This discrepancy supports a finding of good cause. Patent L.R. 3-6(a).
2

1

Plaintiffs must also show that they were diligent in moving the court. Verinata Health,

2

2014 WL 789197, at *2. Judge Gilstrap issued his claim construction opinion on March 11. Dkt.

3

No. 93. The Judicial Office assigned the case to Judge Davila on April 1. Dkt. No. 113.

4

Plaintiffs moved the court to amend their infringement contentions on May 31, approximately two

5

months after the case was docketed with Judge Davila and two and a half months after Judge

6

Gilstrap issued his claim construction opinion. Dkt. Nos. 93, 122. Given the recent transfer of

7

this case to the Northern District and the fact that its initial case management conference is still

8

over one month away, Dkt. No. 117, the court is satisfied that Plaintiffs have acted diligently. See

9

Radware Ltd. v. F5 Networks, Inc., No. 13-cv-02021-RMW, 2014 WL 3728482, at *2 (N.D. Cal.

10

2014) (finding diligence despite a three month delay).

United States District Court
Northern District of California

11

A court may deny a party’s motion to amend infringement contentions if granting it would

12

cause “undue prejudice to the non-moving party.” Patent L.R. 3-6. Plaintiffs represent that

13

“GitHub does not oppose [their] motion as to these amendments,” Dkt. No. 122 at 7. See also

14

Dkt. No. 124 at 2. Defendant filed a response and attached “the specific amendments proposed by

15

PersonalWeb and agreed to by GitHub,” Dkt. No. 123 at 2. Plaintiffs’ proposed amendment

16

covers claims based on U.S. Patent Nos. 6,928,442 and 8,099,420 but not U.S. Patent No.

17

6,415,280. Dkt. Nos. 123-2, 123-3. Plaintiffs’ reply acknowledges Defendant’s effort to “clarify

18

the scope of the agreed-upon amendment.” Dkt. No. 124 at 2. The reply does not dispute the

19

scope of that agreement.

20

The court is satisfied that granting Plaintiffs’ motion to make the “agreed-upon

21

amendment,” Dkt. 123 at 2, will not cause undue prejudice to Defendant, as Defendant has

22

reviewed and agreed to it. If Plaintiffs wish to make any amendment to their infringement

23

contentions other than that which Defendant agreed to, see Dkt. Nos. 123-2, 123-3, they must file

24

a separate motion seeking leave to do so.

25

Conclusion

26

Plaintiffs moved the court to amend their infringement contentions. The Patent Local Rules

27

require a party to show good cause and establish diligence before the court will grant a motion to

28

amend. The court is satisfied that Plaintiffs have met the requirements of Patent Local Rule 3-6
3

1

with regard to the amendment both parties agreed to, Dkt. Nos. 123-2, 123-3, and grants their

2

motion to make this specific amendment.

3
4

IT IS SO ORDERED.
Dated: 6/28/16

5
6
HOWARD R. LLOYD
United States Magistrate Judge

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
4