SIGHTSOUND TECHNOLOGIES LLC v. APPLE, INC.

Filing 160

ORDER overruling Plaintiff's Objections 150 to E-Discovery Special Master's R & R. Signed by Judge Donetta W. Ambrose on 1/17/13. (ask)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
SIGHTSOUND TECHNOLOGIES, LLC

)
) No. 11-1292
)

v.
APPLE INC.,

OPINION AND ORDER
SYNOPSIS
Before the Court are Plaintiff’s objections to the E-discovery Special Master’s (“EDSM”)
Report and Recommendation (“R & R”) filed on December 12, 2012, which declines to make a
ruling before Court action. Plaintiff seeks discovery relating to amended infringement
contentions, which Defendant resists; the issue before me is whether Plaintiff may pursue those
amended infringement contentions.
OPINION
I.

BACKGROUND
The Case Management Order entered in this matter required Plaintiff to disclose its

asserted claims and infringement contentions by May 14, 2012. Plaintiff did so, and the parties
proceeded on the schedule set for claims construction. On September 14, 2012, Plaintiff advised
Defendant that it intended to supplement its infringement contentions, and identified five new
patent claims that it intended to add. It noted that updated infringement contentions would be
forthcoming. Defendant told Plaintiff that it must first seek leave of court, because the
supplement would require construction of additional claim terms and would impact the Court’s
deadlines.

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On October 5, 2012, after the claim construction briefs were filed, without seeking leave
of Court, Plaintiff served amended infringement contentions, which added five new claims. At
that time, Defendant notified Plaintiff that the contentions would require the construction of
additional terms, and named three such terms – “coded,” telephoning,” and “electronically
coding.” Plaintiff opined that no additional terms required construction. The claim construction
process continued, through hearing, the claims construction Report and Recommendation, and
the filing of objections thereto, without either party addressing those terms with Special Master
Bradley or the Court. Each party blames the other for not acting on the new terms and
contentions at any point before the claims construction process concluded. Subsequently, at the
end of November, 2012, Plaintiff brought this issue to the attention of the EDSM, when
Defendant resisted discovery relating to the amended infringement contentions. The EDSM
declined to rule on whether Defendant must provide discovery, until this Court rules on the
propriety of the amended infringement allegations.
II.

PLAINTIFF’S AMENDMENT
Local Patent Rule (“LPR”) 3.2 governs the timing of disclosure of asserted claims and

infringement contentions. LPR 3.7 provides that amendments or modifications of infringement
contentions are “permissible, subject to other applicable rules of procedure and disclosure
requirements, if made in a timely fashion and asserted in good faith and without delay.” The
Rule does not address amendments to asserted claims, and clearly contemplates a scenario in
which the Court’s claims construction ruling supports an amendment to infringement
contentions, rather than asserted claims. As Defendant points out, an “applicable rule[] of
procedure” is Rule 16(b)(4), pursuant to which "[a] schedule may be modified only for good
cause and with the judge's consent." See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v.

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Matsushita Elec. Indus. Co., No. 4-1436, 2012 U.S. Dist. LEXIS 40103, at **14-16 (D. Del.
Mar. 26, 2012).
Our local patent rules are "designed to advance the litigation in a timely and
efficient manner and make it less expensive." … Amendment under Local Patent
Rule 3.7 is committed to the Court's discretion. … the Rules "aim to prevent the
vexatious shuffling of positions that could occur if the parties are permitted to freely
modify their infringement contentions at any point in the action.
Carnegie Mellon Univ. v. Marvell Tech. Group, No. 9-290, 2012 U.S. Dist. LEXIS 120559, at
**19-21 (W. D. Pa. Aug. 24, 2012).
In other words, local patent rules “seek to advance the orderly progression of patent
litigation by requiring the parties ‘to crystallize their theories of the case early in the litigation
and to adhere to those theories once they have been disclosed.’" Copper Innovations Group,
LLC v. Nintendo Co., No. 7-1752, 2012 U.S. Dist. LEXIS 24512 (W.D. Pa. Feb. 27, 2012). A
movant’s “right to amend in good faith is far outweighed by its (and the court’s) countervailing
duty to avoid prejudicing [non]movant] through eleventh hour alterations.” King Pharms., Inc.
v. Sandoz, Inc., No. 8-5974, 2010 U.S. Dist. LEXIS 50163, at *13 (D.N.J. May 19, 2010)
(quoting CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 203 (N.D. Cal. 2009)).1
In this case, it is apparent that Plaintiff’s amendment was not limited to infringement
contentions, as provided for in LPR 3.7, but included new asserted claims as well; thus, the
liberal standard of that Rule does not offer safe harbor. Instead, Plaintiff asserted five claims
long after May 14, 2012, when asserted claims were required to be served, and did so without
leave of court. Plaintiff points to no rule or ruling that justifies such action under these
circumstances. Thus, whether new case law constituted “good cause” for the amendment was
not, and is not now, placed before the Court. I need not now opine as to whether and when
applicable procedural rules require leave of court for amended infringement contentions, or what
1

Our local patent rule regarding amendments differs from those in the District of New Jersey and the Northern
District of California – the latter rules require “good cause” for an amendment. Nonetheless, courts within this
judicial district cite to guiding principles underlying the rules in those districts. See, e.g., Best Med. Int’l. 2011 U.S.

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constitutes sufficient justification therefor. It is apparent, in any case, that an early motion by
either party would have precluded the extant predicament.2
Moreover, this is not a mere technicality. As the R & R suggests, discovery will impose
additional burdens on Defendant. As the R & R also suggests, this case has progressed to a
relatively late stage. Markman proceedings have concluded, the Claims Construction Special
Master has filed his Report and Recommendation, and the parties have filed Objections thereto.
This Court has already embarked on its process of review. According to Plaintiff, the Court may
construe additional terms on summary judgment, or the parties might be able to stipulate as to
those terms. Defendant asserts, however, that the parties’ meet and confer sessions suggest that
they would not, in fact, be able to reach agreement on the terms’ constructions. Further, I affirm
my preference for Special Master Bradley’s involvement in claims construction matters in this
case. Overall, there is no question that the subject amendments would add both expense and
time to the proceedings.
Certainly, I have no reason to doubt that Plaintiff amended its contentions, in good faith,
in fairly immediate response to Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.
3d 1301 (Fed. Cir. 2012), which overruled prior precedent to permit a multi-entity theory of
indirect liability. Defendant, however, argues that Plaintiff’s initial contentions contain method
claims based on multi-entity conduct, and that Plaintiff could have asserted the amendments at
an earlier date.

In either case, it is incomprehensible that both parties were aware of a live

controversy surrounding claims construction and Plaintiff’s amended document, which arose
soon before the claims construction hearing, and both failed to timely bring it to the attention of
the Court or the Claims Construction Special Master.

2

Several cases in this district imply that leave of court prior to amendment is the preferable course. E.g., Best Med.
Int'l, Inc. v. Accuray, Inc., No. 10-1043, 2011 U.S. Dist. LEXIS 93607, at *11 n. 7 (W.D. Pa. Aug, 19, 2011).

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CONCLUSION
I have examined the parties’ submissions. Under all of the circumstances, the purposes
and philosophies underlying the local patent rules would be undermined if Plaintiff were
permitted to proceed with the amended infringement contentions. Moreover, LPR 3.7, on which
Plaintiff relies to support its amendment’s permissibility, is inapplicable to amended asserted
claims. An appropriate Order follows.

ORDER OF COURT
AND NOW, this 17th of January, 2013, it is hereby ORDERED, ADJUDGED, and
DECREED that Plaintiffs’ Objections [Docket No. 150] are overruled. Plaintiff may not proceed
with its amended infringement contentions.
BY THE COURT:
/s/Donetta W. Ambrose
Donetta W. Ambrose
Senior Judge, U.S. District Court

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