ClearPlay v. Dish Network LLC et al

Filing 288

MEMORANDUM DECISION AND ORDER denying without prejudice 99 Sealed Motion for Summary Judgment; denying without prejudice 147 Sealed Motion for Judgment on the Pleadings; granting 173 Motion to Amend Final Infringement Contentions. Plaintiff must serve its Amended Final Infringement Contentions on Defendants by no later than 4/1/19. Signed by Judge David Nuffer on 3/22/19 (alt)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
ClearPlay, Inc.,
Plaintiff,
v.
DISH Network LLC, DISH Network Corp.,
EchoStar Corp., and EchoStar Technologies
L.L.C.,
Defendants.

MEMORANDUM DECISION AND
ORDER
• Granting [173] Motion to Amend
Final Infringement Contentions; and
• Denying [99] Motion for Summary
Judgment and [147] Motion for
Judgment on the Pleadings
Case No. 2:14-cv-00191-DN-BCW
District Judge David Nuffer

Plaintiff ClearPlay, Inc. (“ClearPlay”) asserted patent infringement claims against
Defendants DISH Network L.L.C. (“DISH”) and EchoStar Technologies L.L.C. (“EchoStar”)
(collectively “Defendants”). 1 Defendants filed a motion for summary judgment 2 and a motion for
judgment on the pleadings. 3 ClearPlay subsequently filed a motion for leave to amend its Final
Infringement Contentions (“Motion to Amend”). 4 ClearPlay argues that the proposed
amendments will resolve the motion for summary judgment and the motion for judgment on the

1

Complaint for Patent Infringement (“Complaint”), docket no. 2, filed Mar. 13, 2014.

2

Defendant’s Motion for Summary Judgement of Non-Infringement (“Motion for Summary Judgement”), docket
no. 100, filed July 26, 2017 (Sealed Motion, docket no. 99, filed July 26, 2017).
3

Defendant’s Motion for Judgement on the Pleadings or, in the Alternative, for Summary Judgement of NonInfringement (“Motion for Judgement on the Pleadings”), docket no. 148, filed Sep. 26, 2017 (Sealed Motion,
docket no. 147, filed Sep. 26, 2017).
4

Plaintiff ClearPlay Inc.’s Motion to Amend Final Infringement Contentions and to Supplement Opposition to
Defendants’ Motions for Summary Judgement (“Motion to Amend”), docket no. 173, filed Dec. 21, 2017 (Sealed
Motion, docket no. 175, filed Dec. 21, 2017).

pleadings. 5 For the reasons discussed below, ClearPlay’s Motion to Amend is granted and
Defendants’ motions are denied without prejudice.
Contents
Background ..................................................................................................................................... 2
Discussion ....................................................................................................................................... 4
ClearPlay’s Motion to Amend ............................................................................................ 4
Good cause exists for ClearPlay to amend its Final Infringement Contentions and
Defendants will not suffer unfair prejudice. ............................................... 4
ClearPlay’s Motion to Amend was timely filed. .................................................... 6
Defendants’ Motion for Summary Judgment and Motion for Judgment on the Pleadings 6
Order….. ......................................................................................................................................... 7
BACKGROUND
ClearPlay is the owner of five patents, used in its products to allow users to filter thirdparty video content. 6 Defendants provide television services and related equipment, including the
Hopper whole-home HD DVR (“Hopper DVR”), which allows subscribers to automatically skip
over commercial breaks during playback of certain recorded content. 7 ClearPlay alleges that this
feature of the Hopper DVR (known as the “AutoHop”) infringes on its patents. The case was
stayed while the Patent Office, at the request of a third party, conducted an inter partes review
(“IPR”) of four of the five patents at issue. 8 As part of the IPR, ClearPlay asserted that its claims
were valid and distinguishable from the prior art because its patents include a “navigation object”
with three distinct elements: (1) a starting point; (2) a stopping point; and (3) a “filtering action”
to be taken between the starting and stopping points. 9 The Patent Office completed the IPR,

5

Motion to Amend at 24.

6

Complaint ¶¶ 14-15.

7

Motion for Summary Judgment at 1.

8

Defendants’ Motion for Stay Pending Inter Partes Review, docket no. 64, filed Oct. 24, 2014; Order Granting
Motion to Stay, docket no. 80, entered Feb. 11, 2015.
9
Motion for Summary Judgment at 3-4; ClearPlay, Inc’s Opposition to Defendants’ Motion for Summary Judgment
(“Opposition to Motion for Summary Judgment”) at 3, docket no. 136, filed Sept. 14, 2017 (Sealed Motion, docket
no. 133, filed Sept. 5, 2017).

2

finding ClearPlay’s claims patentable and the stay was lifted on October 31, 2016. 10 On June 23,
2017, ClearPlay served its Final Infringement Contentions. 11
In their motion for summary judgment, Defendants argue that “the products accused in
ClearPlay’s infringement contentions lack a claim limitation present in every asserted claim—the
‘filtering action’ in the ‘navigation object.’” 12 Because ClearPlay has failed to identify anything
that could be called a “navigation object” with a “filtering action” in the AutoHop feature,
Defendants assert that they are entitled to summary judgment. 13 Defendants further argue that
dismissal of ClearPlay’s case is appropriate under Fed. R. Civ. P. 12(c) because ClearPlay has
not identified a structure corresponding to the claim term “filtering action” in either its
Complaint or Final Infringement Contentions. 14 ClearPlay opposes summary judgment and
judgment on the pleadings, arguing that material disputed facts remain and pointing to certain
computer codes (“The Tag” and “The Attribute”) in documents that it asserts Defendants failed
to produce in a timely manner. 15 Although neither “The Tag” nor “The Attribute” are specifically
identified in ClearPlay’s Complaint or Final Infringement Contentions, 16 ClearPlay asserts that it
sufficiently identified the structures supporting its infringement theory. 17 In its Motion to

10

Minute Entry for Proceedings Held Before Magistrate Judge Brooke Wells, docket no. 85, entered Oct. 31, 2016.

11

Motion for Judgment on the Pleadings at 2.

12

Motion for Summary Judgment at 1.

13

Motion for Summary Judgment at 9-10.

14

Motion for Judgment on the Pleadings at 2.

15

Opposition to Motion for Summary Judgment at 4, 13-18 (discussing “The Tag”) and 18-22 (discussing “The
Attribute”); ClearPlay, Inc.’s Opposition to Defendants’ Motion for Judgment on the Pleadings (“Opposition to
Motion for Judgment on the Pleadings”) at 15, 22, docket no. 164, filed Oct. 24, 2017 (Sealed Opposition, docket
no. 162, filed Oct. 23, 2017).
16

Motion for Judgment on the Pleadings at 3.

17

Opposition to Motion for Judgment on the Pleadings at 1-3.

3

Amend, ClearPlay seeks to clarify its original infringement theory with newly discovered
information and to conform its Final Infringement Contentions to the evidentiary record. 18
DISCUSSION
ClearPlay’s Motion to Amend
Pursuant to Local Patent Rule 3.4, a party may amend its Final Infringement Contentions
“upon a showing of good cause and absence of unfair prejudice to opposing parties, made no
later than fourteen (14) days of the discovery of the basis for the amendment.” 19
Good cause exists for ClearPlay to amend its Final Infringement Contentions and
Defendants will not suffer unfair prejudice.
ClearPlay has established good cause to amend its Final Infringement Contentions. Good
cause may arise in “the discovery of new facts, including new potentially infringing
instrumentalities[.]” 20 On September 7, 2017—after ClearPlay was required to produce its Final
Infringement Contentions—DISH produced a technical document that describes a manual mode
for the AutoHop feature. 21 The manual mode gives the user of the Hopper DVR the ability to
choose which commercials to skip, instead of skipping all of them. 22 DISH asserts that its
subscribers are unable to use the manual mode because that part of the project was never
completed. 23 On December 8, 2017, after reviewing DISH’s code with the help of the technical
document, ClearPlay’s expert identified a structure in the manual mode that he believes infringes
ClearPlay’s asserted patents by using a navigation object with a start position, a stop position,

18

Motion to Amend at 1-2.

19

UT R USDCT LPR 3.4.

20

Corel Software, LLC v. Microsoft Corporation, 2018 WL 5792323 *1, *2 (D. Utah 2018).

21

Motion to Amend at 12.

22

Motion to Amend at 19

23
Opposition to ClearPlay’s Motion to Amend Final Infringement Contentions and to Supplement Opposition to
Defendants Motion for Summary Judgment and Judgment on the Pleadings (“Opposition to Motion to Amend”) at
4-5, docket no. 199 (filed Jan. 17, 2018) (Sealed Opposition, docket no. 193, filed Jan. 16, 2018).

4

and a filtering action. 24 The expert’s discovery of the manual mode structure in DISH’s code has
unearthed new evidence relevant to the case and is sufficient to meet the good cause requirement.
DISH argues that ClearPlay was not diligent in searching the code base between
September 7th and December 8th. 25 However, any delay in discovering the new evidence is
justified. The newly discovered structure, which is the basis for the amendment, was buried in
DISH’s code base. 26 That code base comprises millions of lines of code. 27 ClearPlay’s experts
were not allowed to run the code or use debugging tools as they normally would, which
compounded the difficulty of review. 28 Instead, ClearPlay’s experts were required to review the
code by hand and at the escrow site where it is stored. 29 ClearPlay further asserts that its experts
had personal and professional reasons for their delay in reviewing the code. 30 Under the
circumstances, ClearPlay’s experts were sufficiently diligent in reviewing the code.
Furthermore, Defendants will not suffer unfair prejudice. “It is usually true that any
amendment of the Final [Infringement] Contentions would lead to additional work and expense
on the part of the non-moving party. ” 31 Thus, the inconvenience and expense by itself does not
generally arise to the level of undue prejudice. However, an amendment to final infringement
contentions may be prejudicial “if its timing prevents the defendant from pursuing a potentially
promising line of defense.” 32 That is not a problem here. While the parties have filed their claim

24

Declaration of Dr. Nick Feamster (“Feamster Declaration”) ¶ 19, docket no. 244-2, filed Feb. 8, 2018.

25

Opposition to Motion to Amend at 12-13.

26

Reply Memo at 2.

27

Id.

28

Declaration of Giulio Amodeo (“Amodeo Declaration”) ¶ 6, docket no. 244-3, filed Feb. 8, 2018.

29

Id.

30

Id. at ¶ 7.

31

Corel Software at *3.

32

Minter v. Prime Equip. Co., 451 F.3d 1196, 1209 (10th Cir. 2006).

5

construction briefs, claim construction is not complete. Moreover, ClearPlay has not changed its
basic theory of infringement—that the accused DISH devices contain all of the elements of its
asserted patents. As a result, allowing the amendment would not subject DISH to undue
prejudice.
ClearPlay’s Motion to Amend was timely filed.
A motion to amend Final Infringement Contentions must be filed within fourteen (14)
days of the discovery of the basis for the amendment. 33 On December 8, 2017, ClearPlay’s
expert informed it of the manual mode discovered in DISH’s code base. 34 Thirteen days later, on
December 21, 2017, ClearPlay filed its motion to amend its Final Infringement Contentions. 35
Because ClearPlay filed its motion within fourteen days of the “discovery of the basis for the
amendment,” ClearPlay meets the timeliness requirement. Therefore, ClearPlay is entitled to
amend its Final Infringement Contentions as requested, with one exception. ClearPlay’s
proposed amendments include a change to the prior art dates of the asserted patents. ClearPlay
has not provided any reason for this amendment and the newly discovered evidence did not
relate to the prior art dates. Therefore, the prior art dates shall remain the same.
Defendants’ Motion for Summary Judgment and Motion for Judgment on the Pleadings
In their Motion for Summary Judgement 36 and Motion for Judgement on the Pleadings, 37
Defendants argue that ClearPlay’s Final Infringement Contentions do not point to a specific
filtering action, as required by the asserted patent claims. 38 However, as part of its amended

33

UT R USDCT LPR 3.4

34

Feamster Declaration at ¶ 19.

35

Motion to Amend, docket no. 173 (Sealed Motion, docket no. 175).

36

Motion for Summary Judgement, docket no. 100 (Sealed Motion, docket no. 99).

37

Motion for Judgement on the Pleadings, docket no. 148 (Sealed Motion, docket no. 147).

38

Motion for Summary Judgment at 1; Motion for Judgment on the Pleadings at 2.

6

Final Infringement Contentions, ClearPlay will identify the specific filtering action in the
accused devices. 39 Defendants’ argument that infringement cannot be based upon implicit
filtering may have merit. 40 However, the amended Final Infringement Contentions render
Defendants’ motions moot. As a result, it is appropriate to deny the Motion for Summary
Judgement and the Motion for Judgement on the Pleadings without prejudice. Whether
Defendants devices contain a start time, a stop time and a filtering action (as patented by
ClearPlay) is disputed by the parties and appears to be a factual dispute best suited for trial.
However, Defendants may renew their request for summary judgment based upon ClearPlay’s
amended Final Infringement Contentions.
ORDER
IT IS HEREBY ORDERED that the Motion to Amend 41 is GRANTED. Plaintiff is
granted leave to amend its Final Infringement Contentions, with exception to the changes to the
prior art date of the ClearPlay asserted patents. Plaintiff must serve its Amended Final
Infringement Contentions on Defendants by no later than April 1, 2019.
IT IS FURTHER ORDERED that the Defendants’ Motion for Summary Judgment 42 and
Motion for Judgment on the Pleadings 43 are DENIED without prejudice.
IT IS FURTHER ORDERED that the parties shall submit a Joint Status Report by no
later than April 15, 2019. The parties should state how they would like to proceed to
expeditiously resolve this matter, including proposed dates for the following, if necessary:
(1)

Completion of any additional discovery;

39

Motion to Amend at 24.

40

Motion for Summary Judgment at 10, 21-23.

41

Docket no. 173 (Sealed Motion, docket no. 175).

42

Docket no. 100 (Sealed Motion, docket no. 99).

43

Docket no. 148 (Sealed Motion, docket no. 147).

7

(2)

Filing of any dispositive motions based upon the Amended Final Infringement
Contentions;

(3)

Filing of amended or supplemental claim construction briefing; and

(4)

Claim construction hearing.

Dated March 22, 2019.
BY THE COURT:
____________________________
David Nuffer
United States District Judge

8