CG Technology Development, LLC et al v. 888 Holdings PLC

Filing 121

ORDER denying ECF No. 110 Motion to Reconsider. Signed by Judge Robert C. Jones on 11/20/2017. (Copies have been distributed pursuant to the NEF - KR)

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1 2 3 4 5 6 7 8 9 10 11 UNITED STATES DISTRICT COURT DISTRICT OF NEVADA ______________________________________ ) CG TECHNOLOGY DEVELOPMENT, LLC ) ) et al., ) ) Plaintiffs, ) ) vs. ) ) 888 HOLDINGS PLC, ) ) Defendant. ) 2:16-cv-00856-RCJ-VCF ORDER 12 13 These three consolidated cases arise out of the alleged infringement of several patents 14 relating to online sports gambling. The Court has transferred four other previously consolidated 15 cases to various other districts for improper venue under 28 U.S.C. § 1406 and TC Heartland 16 LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017). 17 Because discovery remains open, Plaintiffs may amend their initial infringement 18 contentions without prior leave, but only with good cause. L.R. 16.1-12. Defendants may 19 challenge such an amendment via a motion to strike. Bravo Co. USA, Inc. v. Badger Ordnance 20 LLC, No. 2:14-cv-387, 2016 WL 6518436, at *2 (D. Nev. Nov. 2, 2016) (Foley, Mag. J.). Non- 21 exhaustive examples of good cause supporting amendment of infringement contentions include 22 an adverse claim construction or recent discovery of material prior art or nonpublic information 23 about the accused product despite earlier diligent searches. L.R. 16.1-12. 24 1 of 3 1 Plaintiffs filed their initial infringement contentions on January 5, 2017. Defendants filed 2 their initial non-infringement, invalidity, and unenforceability contentions on March 21 and 3 April 4, 2017. Plaintiffs later served Defendants with amended infringement contentions, adding 4 claims 26, 30, and 33 of the ‘818 Patent; claims 1, 6, 7, 8, and 9 of the ‘058 Patent; and 5 additional theories of infringement. Defendants asked the Magistrate Judge to strike the 6 amended infringement contentions because Plaintiffs had not shown good cause. The new 7 contentions were based mainly on the same evidence (and completely on evidence previously 8 available through normal diligence). Defendants also argued that they would be prejudiced if the 9 amendments were permitted to stand, because they had instituted inter-partes review (“IPR”) 10 proceedings at the Patent Trial and Appeal Board (“PTAB”) against the claims identified in 11 Plaintiffs’ initial infringement contentions, and Plaintiffs’ addition of claims via amendment to 12 the infringement contentions after the statutory bar had passed for Defendants to attack the new 13 claims via IPR at the PTAB was an improper ambush tactic to avoid the possibility of having to 14 defend those claims at the PTAB (which is more defendant-friendly than the district courts 15 because the standard used for claim construction at the PTAB is more likely to result in claims 16 being struck down as anticipated or obvious). Plaintiffs argued in opposition that they simply 17 wanted to correct Defendants’ alleged misapprehension of the meanings of various claim terms. 18 The Magistrate Judge struck the amended infringement contentions. Plaintiffs have 19 asked the Court to overrule the Magistrate Judge under Rule 72(a). The Court denies the motion. 20 The Magistrate Judge made no error of law in ruling that the proper method to resolve 21 disagreements in claim interpretation is through Markman proceedings. Moreover, in addition to 22 requiring good cause to add infringement contentions without adding patent claims, a party may 23 not add new patent claims to a case, i.e., new causes of action for infringement, except via 24 amendment. See, e.g., Sage Electrochromics, Inc. v. View, Inc., No. 12-cv-6441, 2014 WL 2 of 3 1 1379282, at *2 (N.D. Cal. Apr. 8, 2014) (noting that the only question was whether an 2 infringement plaintiff seeking to add new claims of infringement must satisfy only Rule 15 or 3 also the local patent rules); see also Straight Path IP Grp. v. Apple Inc., No. C16-3582, 2017 4 WL 3967864, at *5 (N.D. Cal. Sept. 9, 2017) (limiting leave to amend infringement contentions 5 to the scope of existing claims in the complaint). In other words, when a plaintiff seeks to 6 introduce new patent claims into an infringement action, amendment of the relevant pleading 7 under the standards of Rule 15 is required, regardless of whether good cause is also required 8 under any local patent rules. Plaintiffs here used their as-of-right amendment under Rule 15 long 9 before serving the amended infringement contentions, and they did not move to amend the 10 Complaint to add the patent claims at issue. For this additional reason, the Magistrate Judge was 11 correct to strike the amended infringement contentions. CONCLUSION 12 13 IT IS HEREBY ORDERED that the Motion to Reconsider (ECF No. 110) is DENIED. 14 IT IS SO ORDERED. 15 20th day of November, 2017. Dated this 12th day of October, 2017. 16 17 _____________________________________ ROBERT C. JONES United States District Judge 18 19 20 21 22 23 24 3 of 3

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