Corus Realty Holdings, Inc v. Zillow Group, Inc et al

Filing 114

ORDER granting Defendants' 58 Motion to Exclude Untimely Infringement Theories. Signed by Judge James L. Robart.(MW)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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CORUS REALTY HOLDINGS,
INC.,

ORDER GRANTING
DEFENDANTS’ MOTION TO
EXCLUDE UNTIMELY
INFRINGEMENT THEORIES

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Plaintiff,
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CASE NO. C18-0847JLR

v.
ZILLOW GROUP, INC., et al.,

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Defendants.

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I.

INTRODUCTION

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Before the court is Defendants Zillow Group, Inc., Zillow, Inc., and Trulia, LLC’s
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(collectively, “Zillow”) motion to exclude testimony or opinions pertaining to theories of
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patent infringement that were introduced for the first time in the opening expert report of
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Dr. David Martin. (See MTE (Dkt. # 58).) Plaintiff Corus Realty Holdings, Inc.
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(“Corus”) opposes Zillow’s motion. (See Resp. (Dkt. # 79).) The court has considered
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Zillow’s motion, the parties’ submissions filed in support of and in opposition to the
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ORDER - 1

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motion, the relevant portions of the record, and the applicable law. Being filly advised, 1

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the court GRANTS Zillow’s motion and EXCLUDES the testimony and opinions at issue.

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II.
A.

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BACKGROUND

Overview of the Case Schedule
This is a patent infringement case. (See generally Compl. (Dkt. # 1).) Corus

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timely served its infringement contentions on December 7, 2018. (See Stark Decl. (Dkt.

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## 59 (redacted), 60 (sealed)) ¶ 6, Ex. 4 (attaching a copy of Corus’s Preliminary

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Infringement Contentions with Exhibits 1-5 (hereinafter cited as “PIC”)); see also Sched.

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Order (Dkt. # 22) at 1 (setting a December 7, 2018, deadline for Corus’s infringement

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contentions).) Zillow timely served its noninfringement and invalidity contentions on

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December 28, 2018. (See Stark Decl. ¶ 7, Ex. 5 (attaching a copy of Zillow’s Preliminary

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Noninfringement and Invalidity Contentions with Exhibit A (hereinafter cited as “PNIC”);

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see also Sched. Order at 1 (setting a December 28, 2018, deadline for Zillow’s

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noninfringement contentions).) Neither party has moved to amend their contentions

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statements. (See generally Dkt.)

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The parties exchanged lists of proposed claim terms for construction in January

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2019, and then preliminary proposed constructions and extrinsic evidence on February 15,

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2019. (See 1st Am. Sched. Order (Dkt. # 34).) Zillow served Corus with an expert

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Neither party asked for oral argument on Zillow’s motion (see MTE; Resp.), and the
court does not consider oral argument to be helpful to its disposition of the motion, see Local
Rules W.D. Wash. LCR 7(b)(4).

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claim construction report on February 22, 2019, and Corus served Zillow with a rebuttal

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report on March 22, 2019. (Id.) On April 2, 2019, the parties submitted a Joint Claim

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Chart on Prehearing Statement for claim construction; on April 26, 2019, they filed their

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opening briefs; and on June 14, 2019, the court held a Markman 2 claims construction

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hearing. (Id.) On July 2, 2019, the court issued its claim construction order. (See CC

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Order (Dkt. # 51).)

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The parties exchanged opening expert reports on August 30, 2019, and rebuttal

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expert reports on September 27, 2019. (See 2d Am. Sched. Order (Dkt. # 50) at 2; see

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also Stark Decl. ¶¶ 8-13, Exs. 6-11 (attaching appendices to Dr. Martin’s opening expert

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report).) The discovery deadline expired on October 11, 2019. (2d Am. Sched. Order at

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2.) The deadline for dispositive motions and motions challenging expert witness

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testimony expired on November 12, 2019. (Id.) The parties timely filed cross motions for

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summary judgment and motions to exclude various expert witnesses. (See Plf. MPSJ

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(Dkt. # 65); Def. MSJ (Dkt. # 68); Plf. MTE (Dkt .# 69); Def. MTE1 (Dkt. # 72); Def.

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MTE2 (Dkt. # 74).) The court has not yet ruled on these motions. (See generally Dkt.)

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The court scheduled the pretrial conference on February 18, 2020, and set trial to

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commence on March 2, 2020. (Sched. Order at 1-2.)

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B.

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Production of Zillow’s Source Code
On August 26, 2018, Corus served document requests on Zillow that included

requests for source code of the accused products. (See Parnell Decl. (Dkt. # 79-1) ¶ 3, Ex.

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See Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996) (“[F]or judges,
not juries, are the better suited to find the acquired meaning of patent terms.”).

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3 (attaching a copy of Corus’s First Set of Requests for Production (“RFPs”) to Zillow).)

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Zillow initially objected to the production of its source code. (See id. ¶ 4, Ex. 4 (attaching

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Zillow’s responses to Corus’s RFPs).) Nevertheless, on November 16, 2018, Zillow’s

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counsel informed Corus that Zillow’s source code was available for inspection. (Stark

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Decl. ¶ 1, Ex. 1.)

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On November 26, 2018, Corus requested that Zillow install Windows software

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tools on a source code computer to aid Corus’s inspection. (Id. ¶ 4, Ex. 2.) Zillow

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provided a Windows-based review computer with the requested Windows tools. (See id.

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¶ 5, Ex. 3 (attaching a January 15, 2019, email from Corus’s counsel confirming that

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“[d]uring the last review, [Corus’s counsel] found that the review computer was set up

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with the requested tools and we thank you for that”).)

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Corus’s expert witness, Dr. David Martin, first inspected Zillow’s source code on

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December 4, 2018. (Id. ¶ 3.) Dr. Martin testifies that the source code that Zillow initially

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provided was incomplete because it lacked an accused product and key files and was

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disclosed in a manner that could not be efficiently reviewed. (See Martin Decl. (Dkt.

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# 80) ¶¶ 10-14.) Further, Zillow’s employees regularly wrote and preferred to review the

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code from Apple Mac computers. (See Parnell Decl. ¶ 30, Ex. 30 (“Yamanaka Dep.”) at

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91-92, 156:17-25, 204-05, 207-08; id. ¶ 32, Ex. 32 (“Perrin Dep.”) at 160:13-16, 188.) In

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addition, Dr. Martin attests that the files contained “dead code” that was not used, but that

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could not be confirmed absent depositions due to Zillow’s insistence that the code be

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neither compiled nor executed. (Martin Decl. ¶¶ 16-17.) All of these issues rendered

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difficult Dr. Martin’s code review. (Id. ¶ 18; Perrin Dep. at 150-53, 189-94.)

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On January 15, 2019, Corus requested that Zillow provide the source code for

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review on an Apple computer (in addition to the Windows-based computer), along with

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additional inspection software. (See id.; see also Parnell Decl. ¶ 9, Ex. 9.) Zillow

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complied with this request, but again required that Corus neither compile nor run the code.

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(See MTE at 3; see also Parnell Decl. ¶ 10, Ex. 10.)

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Dr. Martin subsequently inspected Zillow’s source code on at least 15 other

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occasions, including January 24-25, January 28-30, March 11-15, March 18-19, and

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August 26-28, 2019. (Stark Decl. ¶ 3.) On March 19, 2019, Dr. Martin identified and

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requested that Zillow print certain files comprising less than 0.07% of the provided code. 3

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(Martin Decl. ¶ 19.) Zillow initially objected to this request because it encompassed more

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pages than allowed in the parties’ stipulated protective order, which sets forth the rules on

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how Zillow produces code and limitations on the amount of code subsequently printed on

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paper. (See Stip. Prot. Order (Dkt. # 30) at 11-13; see also Parnell Decl. ¶ 11, Ex. 11.)

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After negotiations between the parties, and Corus’s agreement to reduce its request to only

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two files that exceeded the page limit, Zillow agreed to Corus’s narrowed code request

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and produced it on May 17, 2019. (See Parnell Decl. ¶¶ 12-20, Exs. 12-21.)

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Even with the files printed, Dr. Martin required depositions of Zillow’s technical

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witnesses to understand how the code operated when it ran. (Martin Decl. ¶ 20.) On May

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17, 2019—the same day that Zillow produced the printed code to Corus—Corus served

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Federal Rule of Civil Procedure 30(b)(6) deposition notices on Zillow seeking information

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Even with the files printed, Dr. Martin required depositions of Zillow’s technical
witnesses to understand how the code operated when it ran. (Martin Decl. ¶ 20.)

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on specific functions of the source code. (See Parnell Decl. ¶ 22, Ex. 22 at 9 (Topic 2).)

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After the parties agreed to extend the discovery deadline and the court so ordered, Zillow

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produced its Rule 30(b)(6) designees, and Corus conducted its depositions on July 19, 23,

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and August 8, 2019. (See Resp. (Dkt. # 79) at 4; see also 2d Am. Sched. Order.)

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Following the Rule 30(b)(6) depositions, Dr. Martin sought a final review of the

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code, which the parties scheduled during the week his expert report was due. (See Martin

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Decl. ¶¶ 21-23.) On August 30, 2019, less than six weeks before the discovery cutoff,

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Corus served Dr. Martin’s expert report on Zillow. (See Resp. at 5; see also 2d Am.

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Sched. Order.) Zillow engaged Dr. Benjamin B. Bederson as its expert, and Zillow served

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his rebuttal expert report in response to Dr. Martin’s report on September 27, 2019. (See

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Resp. at 5.)

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C.

Corus’s Infringement Contentions and Zillow’s Noninfringement and
Invalidity Contentions

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The asserted claims require property information to be stored in a “database” on the
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mobile device or phone. (See U.S. Patent No. 6,636,803 (Dkt. # 1-1) at claim 1 (limitation
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1c recites “wherein said property information is obtained from a remote data source and a
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database stored on said data-enabled mobile phone”); id. at claim 30 (limitation 30b
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recites “wherein said property information is obtained from a remote data source and
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stored in a database on the mobile computing device”); see also CC Order at 36
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(construing claim 14 limitation 14c to include a “device capable of storing property
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information in a database on the mobile computing device”).)
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ORDER - 6

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As noted above, Corus served its infringement contentions on December 7, 2018.

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(See generally PIC.) Corus’s infringement allegations pertain in part to how the accused

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products satisfy the “database” limitations. (See generally id.) For example, the complete

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allegation against the Zillow mobile application for this limitation in claim 1 (limitation

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1c) is:

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ORDER - 7

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(PIC, Ex. 1 at 7-8 (limitation 1c); see also id., Ex. 1 at 29 (limitation 14c), 47-48

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(limitation 30b).)
The “database” allegations against the other accused products are similar. (See id.,

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Ex. 2 at 8-9 (charting limitation 1c against Trulia mobile application), 30 (charting

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limitation 14c against Trulia mobile application), 47-48 (charting limitation 30b against

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Trulia mobile application); see also id., Ex. 3 at 6 (charting limitation 14c against Zillow

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rental application), 27-28 (charting limitation 30b against Zillow rental application); see

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also id., Ex. 4 at 7-8 (charting limitation 14c against Trulia rental application), 29-30

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(charting limitation 30b against Trulia rental application); see also id., Ex. 5 at 7-8

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(charting limitation 1c against Hotpads application), 33 (charting limitation 14c against

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Hotpads application), 57-58 (charting limitation 30b against Hotpads application).)

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Corus’s infringement allegations do not include citations to any source code or

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software components or allegations of infringement based on the doctrine of equivalents.

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(See generally id.)

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In response to Corus’s infringement allegations, Zillow served its noninfringement

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and invalidity contentions on December 28, 2019. (See generally PNIC.) Zillow

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specifically noted that Corus “failed to cite or otherwise identify any code for the mobile

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applications that it alleges to infringe.” (Id. at 2.) Zillow also noted that Corus’s

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contentions “failed to identify what specifically it alleges constitutes the alleged

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‘database.’” (Id., Ex. A at 11, 18.) Finally, Zillow pointed out that Corus’s infringement

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contentions did not disclose any doctrine of equivalents theories. (Id. at 4 (“[Corus] has

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failed to disclose any theory of infringement based on the doctrine of equivalents;

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accordingly, [Zillow] ha[s] nothing to respond to.”).)

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D.

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Dr. Martin’s Expert Infringement Report
On August 30, 2019, Dr. Martin submitted his expert report regarding alleged

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infringement. (See Stark Decl. ¶¶ 8-16, Exs. 6-11.) Dr. Martin’s report discloses how

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each of the accused products allegedly meets the claim limitations that require storing a

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“database” of property information. (See id.) Dr. Martin asserts that the accused products

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meet the limitation by requiring a “required database” that he argues is apparent by the

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“behavior” of the accused products as a user browses properties in an area of interest.

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(See id. ¶ 8, Ex. 6 ¶ 53; id. ¶ 9, Ex. 7 ¶ 53; id. ¶ 10, Ex. 8 ¶ 53; id. ¶ 11, Ex. 9 ¶ 45; id.

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¶ 12, Ex. 10 ¶ 44; id. ¶ 13, Ex. 11 ¶ 35.)

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Dr. Martin then states that he has “additional” theories regarding how the accused

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products meet the database limitation. For example, with respect to Zillow, Dr. Martin

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states: “Although this ‘required’ database satisfies the ‘stored in a database on the mobile

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computing device’ limitation, I identified additional databases that also satisfy the

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limitation.” (See id. ¶ 8, Ex. 6 ¶ 54 (italics added); see also id. ¶ 9, Ex. 7 ¶ 54; id. ¶ 10,

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Ex. 8 ¶ 54; id. ¶ 11, Ex. 9 ¶ 46; id. ¶ 12, Ex. 10 ¶ 45; id. ¶ 13, Ex. 11 ¶ 36.)

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Indeed, Dr. Martin identifies five additional theories, other than the “required”

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database, for how each accused product meets the “database” limitation. For Zillow, Dr.

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Martin identifies: (1) “MapCardPager Adapter” (id. ¶ 9, Ex. 7 ¶¶ 62-65, 69, 132); (2)

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“Google Maps Marker” (id. ¶ 9, Ex. 7 ¶¶ 59, 66-70, 132); (3) “mMappableItemToMarker”

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(id. ¶ 9, Ex. 7 ¶¶ 71, 132); (4) “NSURLCache” (id. ¶ 8, Ex. 6 ¶¶ 54-55, 61, 64, 135); and

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(5) “MapKit Annotation” (id. ¶ 8, Ex. 6 ¶¶ 54, 56, 61, 65-71, 135). For Trulia, he

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identifies: (1) “MarkerMap” (id. 11, Ex. 9 ¶¶ 53-55, 63, 121); (2) “Google Maps Marker”

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(id. ¶ 11, Ex. 9 ¶¶ 50, 56-58, 121); (3) “NURSLCache” (id. ¶ 10, Ex. 8 ¶¶ 54-55, 62, 64,

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67, 141); (4) “MapKit Annotation” (id. ¶ 10, Ex. 8 ¶¶ 54, 56, 64, 68-73, 141); and (5)

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“Core Data” (id. ¶ 10, Ex. 8 ¶¶ 54, 57, 63, 74). Finally, for Hotpads, he identifies: (1)

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“MarkerHashMap” (id. ¶ 13, Ex. 11 ¶¶ 42-45, 105); (2) “Google Maps Marker” (id. ¶ 13,

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Ex. 11 ¶¶ 39, 45-48, 105); (3) “NSURLCashe” (id. ¶ 12, Ex. 10 ¶¶ 45-46, 51, 54, 120); (4)

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“MapKit Annotation” (id. ¶ 12, Ex. 10 ¶¶ 45, 47, 51, 55-60, 120); and (5)

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“ListingPreviewDictionary” (id. ¶ 12, Ex. 10 ¶¶ 45, 48, 56, 61, 120). None of these

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additional databases or theories are disclosed in Corus’s infringement contentions. (See

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generally PIC.) In fact, Corus admits that it “could not name the ultimate databases . . .

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that resulted in infringement” at the time it served its infringement contentions and before

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it completed its source code review. (Resp. at 5.)

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Dr. Martin’s report also identifies source code for the first time that allegedly

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supports these new theories. For example, Dr. Martin’s report relies on source code for

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the accused Zillow products. (See, e.g., Stark Decl. ¶ 9, Ex. 7 ¶¶ 35-36, 41-42, 59-71,

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75-76 80-81, 88-92, 96-97, 109, 125, 155; id. ¶ 8, Ex. 6 ¶¶ 35-36, 41-42, 61-71, 75-76,

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81-82, 92-93, 97-98, 111-12, 127, 158, 172.) Further, Dr. Martin’s report relies on source

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code for the accused Trulia products. (See, e.g., id. ¶ 7, Ex. 9 ¶¶ 33-34, 39-40, 50-58,

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62-63, 67-68, 79-80, 84-85, 98, 114, 144; id. ¶ 10, Ex. 8 ¶¶ 34-35, 40-41, 64-67, 78-79,

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84-85, 98-99, 103-14, 117-18, 14, 164, 179.) In addition, Dr. Martin’s report relies on

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source code for the accused Hotpads products. (See, e.g., id. ¶ 13, Ex. 11 ¶¶ 24-25, 30-31,

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39-48, 52-53, 57-58, 64-65, 69-70, 82, 98; id. ¶ 12, Ex. 10 ¶¶ 26-27, 32-33, 51-61, 65-66,

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78-79, 83-84, 96-97, 113, 152.) Yet, Corus’s infringement contentions do not identify any

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source code. (See generally PIC.) Indeed, Corus admits that it “could not . . . pinpoint the

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exact code that resulted from infringement” at the time it served its infringement

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contentions and before it completed its source code review. (Resp. at 5.)

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Finally, Dr. Martin’s expert report also includes opinions that the accused Trulia

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products infringe under the doctrine of equivalents. (See Stark Decl. ¶ 11, Ex. 9 ¶¶ 69-73;

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id. ¶ 10, Ex. 8 ¶¶ 86-90.) Corus’s infringement contentions do not contain any claims

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under the doctrine of equivalents. (See generally PIC.)

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On September 13, 2019, Zillow’s counsel sent a letter to Corus’s counsel objecting
to the new infringement theories and asking Corus not to pursue them. (See Stark Decl.

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¶ 14, Ex. 12.) Corus responded on September 20, 2019, declining Zillow’s request. (Id.

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¶ 15, Ex. 13.)

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III.

ANALYSIS 4

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The Local Patent Rules require the plaintiff’s infringement contentions to include a

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chart “identifying specifically where each element of each Asserted Claim is found within

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each Accused Device.” See Local Patent Rule 120(c). The Rules also require the

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plaintiff’s infringement contentions to state “[w]hether each element of each asserted

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claim is claimed to be literally present and/or present under the doctrine of equivalents in

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the Accused Device.” See Local Patent Rule 120(e). These requirements serve a notice

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function. 5 See Phigenix, Inc. v. Genentech, Inc., 783 F. App’x 1014, 1018 (Fed. Cir.

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2019). Indeed, they “bolster discovery” under the Federal Rules because they “‘allow the

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defendant to pin down the plaintiff’s theories of liability . . . thus confining discovery and

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trial preparation to information that is pertinent to the theories of the case.’” Id. (quoting

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O2 Micro Int’l Ltd., 467 F.3d at 1365).

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Corus argues that Zillow’s motion is an out-of-time discovery motion. (See Resp. at
16-17.) The court disagrees. Zillow’s motion does not seek to compel discovery but rather
challenges expert testimony. (See generally MTE.) As such, Zillow’s motion was timely filed.
(See 2d Am. Sched. Order at 2 (setting the deadline for “challenging expert witness testimony”
on November 12, 2019).)
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A district court has wide discretion in enforcing the Patent Local Rules. See SanDisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005) (“The district court’s
application of the local rules are within its sound discretion[.]”); see also O2 Micro Int’l Ltd. v.
Monolithic Power Systems, Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006) (“Decisions enforcing
local rules in patent cases will be affirmed unless clearly unreasonable, arbitrary, or fanciful;
based on erroneous conclusions of law; clearly erroneous; or unsupported by any evidence.”).

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A party may amend its contentions upon a timely showing of good cause. Local

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Patent Rule 124. In cases involving software allegations, the party asserting infringement

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has an obligation to “promptly and appropriately” amend its contentions to identify

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pinpoint citations to source code after it has had the opportunity to review the code. REC

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Software USA, Inc. v. Bamboo Sols. Corp., No. C11-0554JLR, 2012 WL 3545056, at *3

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(W.D. Wash. Aug. 16, 2012) (“[A]lthough a plaintiff need not initially provide such

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specific pinpoint citations in its infringement contentions, once it has had sufficient time

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to review the accused source code, the plaintiff is under an obligation to promptly and

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appropriately amend its infringement contentions.”); see also Treehouse Avatar LLC v.

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Valve Corp., No. C17-1860-RAJ, 2019 WL 917403, at *3 (W.D. Wash. Feb. 25, 2019)

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(“[T]he Court finds that because this case involves a patent applied to computer software,

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and [the plaintiff] has had access to that software’s source code for nearly a year, the REC

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Software approach should apply.”).

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An expert report may not advance a new or alternate theory of infringement that

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was not disclosed in the party’s contentions. Adobe Sys. Inc. v. Wowza Media Sys., No.

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11-CV-02243-JST, 2014 WL 709865, at *13 (N.D. Cal. Feb. 23, 2014); KlausTech, Inc. v.

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Google LLC, No. 10CV05899JSWDMR, 2018 WL 5109383, at *3 (N.D. Cal. Sept. 14,

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2018) (“[E]xpert reports cannot go beyond the bounds of the disclosed infringement

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theories and introduce new theories not disclosed in the contentions.”). 6 Specifically,

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“[i]n

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Courts in the Western District of Washington look to Northern District of California
decisions for guidance due to the similarity between the districts’ patent rules. See REC

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the context of patent infringement cases involving software, an expert cannot theorize that

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certain functions satisfy a claim limitation, unless those functions were previously

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identified in the party’s infringement contentions.” Adobe Sys. Inc., 2014 WL 709865, at

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*13.

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A.

Dr. Martin’s Report Advances New Infringement Theories

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Courts strike infringement theories contained in expert reports that the plaintiff did

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not disclose in its infringement contentions. See id. at *14-15 (granting a motion to strike

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an infringement theory disclosed for the first time in an expert report and stating that, to

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the extent the plaintiff’s contentions on the infringement theory at issue were ambiguous,

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“[t]his ambiguity must be construed against [the plaintiff] in light of the purpose of the

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patent local rules, which is to establish the universe of infringement theories that will be

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litigated in any given case”); ASUS Computer Int’l v. Round Rock Research, LLC, No.

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12-CV-02099 JST (NC), 2014 WL 1463609, at *4 (N.D. Cal. Apr. 11, 2014) (granting a

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motion to strike portions of an expert report that described a previously undisclosed

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infringement theory, stating that the plaintiff “cannot clarify its theory at this late stage of

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the litigation through an expert report”); see also Thought, Inc. v. Oracle Corp., No.

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12-CV-05601-WHO, 2016 WL 3230696, at *7 (N.D. Cal. June 13, 2016), aff’d, 698 F.

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App’x 1028 (Fed. Cir. 2017); KlausTech, 2018 WL 5109383, at *6. Here, Dr. Martin’s

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expert report advances new theories of infringement that were not disclosed in Corus’s

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Software USA, 2012 WL 3545056, at *2; see also Treehouse Avatar, LLC, 2019 WL 917403, at
*2 n.1 (noting that the Local Patent Rules of the Northern District of California “serve as a
model for this District”).

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contentions, including: (1) five additional new theories of “databases” for each accused

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product; (2) recitation to and reliance upon source code for each accused product; and (3)

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doctrine of equivalents theories against Trulia products. See supra § II. The court will

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address each in turn.

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1. Five New Database Theories for Each Accused Device

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First, with respect to the five new theories regarding infringement of the “database”

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limitations, Local Patent Rule 120(c) requires Corus to “identify[] specifically where each

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element of each Asserted Claim is found within each Accused Device.” See Local Patent

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Rule 120(c). Yet, Dr. Martin introduced five “additional” theories per accused device for

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how each product allegedly meets the “database” limitations, see supra § II, none of

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which are identified in Corus’s infringement contentions (see generally PIC). Indeed, the

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terms “MarkerHashMap,” “Google Maps Marker,” “NSURLCache,” “MapKit

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Annotation,” “ListingPreviewDictionary,” “Core Data,” “MapCardPagerAdapter,” and

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“mMappableItemToMarker” never appear in Corus’s infringement contentions. (See

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generally id.) Further, the contentions do not identify any specific software components

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and do not include any description of Dr. Martin’s additional “database” theories. (See

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generally id.) Instead, Corus’s contentions generally allege that the accused products

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store property information, such as location, market price, and market status, on an

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unidentified database. (See PIC, Ex. 1 at 7-8 (limitation 1c); see also id., Ex. 1 at 29

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(limitation 14c), 47-48 (limitation 30b).)

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Corus argues that Dr. Martin’s use of the word “additional” in connection with the
five database theories he identifies in his report does not indicate that he is identifying

ORDER - 15

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new theories of infringement. (Resp. at 6.) The court disagrees. As noted above,

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specifically with respect to Zillow, Dr. Martin states: “Although this ‘required’ database

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satisfies the ‘stored in a database on the mobile computing device’ limitation, I identified

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additional databases that also satisfy the limitation.” (See Stark Decl. ¶ 8, Ex. 6 ¶ 54

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(italics added); see also id. ¶ 9, Ex. 7 ¶ 54; id. ¶ 10, Ex. 8 ¶ 54; id. ¶ 11, Ex. 9 ¶ 46; id.

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¶ 12, Ex. 10 ¶ 45; id. ¶ 13, Ex. 11 ¶ 36.) The term “additional”—as used by Dr. Martin—

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connotes something new that was not included before.

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Corus also argues that the databases and source code sections identified in Dr.

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Martin’s report are not new infringement theories, but rather “additional items of proof for

10

the previously identified theory.” (Resp. at 5-7.) This argument does not survive scrutiny.

11

Local Patent Rule 120(c) requires contentions to identify “specifically where each element

12

of each Asserted Claim is found,” and mere implication is insufficient to meet this

13

requirement. See, e.g., Thought, Inc., 2016 WL 32230696, at *6-8 (striking expert report

14

that relied on implicitly, not expressly, disclosed theories, and stating: “[T]his Court’s

15

infringement contention disclosure requirements avoid implicit infringement theories by

16

requiring express ones.”); KlausTech, Inc., 2018 WL 5109383, at *4 (“Implicit disclosures

17

are contrary to the purpose of the local patent rules, which require parties to disclose the

18

basis for their contentions in order to make them explicit and streamline patent litigation.”)

19

(quotation marks and citations omitted).

20

Further, the cases upon which Corus relies are distinguishable on this point. In

21

Oracle, the plaintiff’s contentions named the “specific functions” accused of infringement.

22

See Oracle Am., Inc. v. Google, Inc., No. C 10-03561 WHA, 2011 WL 4479305, at *3

ORDER - 16

1

(N.D. Cal. Sept. 26, 2011) (“The [accused] function dvmDexSetResolvedMethod . . . was

2

identified at least twice in the relevant portion of Oracle’s infringement contentions.”).

3

Here, Corus’s contentions do not identify the data structure that Dr. Martin relies on for

4

his alternative theories. (See generally PIC.) Indeed, the Oracle court excluded the expert

5

from testifying that a “TreeMap” structure satisfied the claim when the contentions did not

6

reference a “TreeMap” structure. See id. at *4-5. Like in Oracle, Corus’s contentions do

7

not identify any of the five alternative data structures (per product) that Dr. Martin

8

describes in his report. Indeed, Corus concedes that its contentions do not identify these

9

structures, but merely disclose that property information, such as location, price, and

10

status, “would be stored in a database.” (Resp. at 5-6.)

11

2. Citations to and Reliance upon Source Code

12

Corus did not refer to any source code in its infringement contentions. (See

13

generally PIC.) Corus conducted some review of the source code prior to serving its

14

infringement contentions and reviewed Zillow’s source code many times through the

15

course of discovery. See supra § II.B. Dr. Martin’s report contains myriad citations to

16

source code that allegedly support the additional database theories of infringement and

17

others. See supra § II.D. Yet, Corus never sought to amend its contentions to add its

18

code-based allegations. (See generally Dkt.) Despite Corus’s protestations to the contrary

19

(see Resp. at 7-8), Corus was required to amend its contentions to include pinpoint

20

citations to the source code upon which it relied, see REC Software, 2012 WL 3545056, at

21

*3 (noting that the plaintiff is under an obligation to “promptly and appropriately” amend

22

its infringement contentions with pinpoint code citations). Further, Zillow notified Corus

ORDER - 17

1

on December 28, 2018, when Zillow served its noninfringement and invalidity

2

contentions, that Corus’s infringement contentions lacked citations to source code. (PNIC

3

at 2.) Thus, once Corus identified the source code, it was obligated to amend its

4

contentions to include those pinpoint citations. See Finjan, Inc. v. Blue Coat Sys., Inc.,

5

No. 13-CV-03999-BLF, 2015 WL 3640694, at *5 (N.D. Cal. June 11, 2015) (stating that

6

“[h]ad [the d]efendant communicated to [the p]laintiff its belief that [the p]laintiff’s

7

doctrine of equivalents disclosures were so deficient as to be no disclosure at all,

8

[thep]laintiff would be on notice of the deficiency and would fail to supplement at its own

9

risk.”).

10

3. Doctrine of Equivalents

11

As noted above, Local Patent Rule 120(e) requires a plaintiff’s infringement

12

contentions to state “[w]hether each element of each asserted claim is claimed to be

13

literally present and/or present under the doctrine of equivalents in the Accused Device.”

14

Local Patent Rule 120(e). Corus’s infringement contentions do not contain any claims

15

under the doctrine of equivalents. (See generally PIC.) Yet, Dr. Martin’s report includes

16

opinions that the accused Trulia products infringe under the doctrine of equivalents. (See

17

Stark Decl. ¶ 11, Ex. 9 ¶¶ 69-73; id. ¶ 10, Ex. 8 ¶¶ 86-90.) Corus’s only response is to

18

state—without record citation—that “its contentions properly reserved the right to identify

19

doctrine of equivalents infringement should a jury find that the accused element does not

20

literally infringe.” (Resp. at 8-9.) This type of “boilerplate reservation,” however, even

21

assuming Corus asserted it in its contentions, is inadequate under the Local Patent Rules.

22

See Finjan, 2015 WL 3640694, at *5 (stating “that a plaintiff asserting the doctrine of

ORDER - 18

1

equivalents must provide a ‘limitation-by-limitation analysis, not a boilerplate

2

reservation’”) (quoting Rambus Inc. v. Hynix Semiconductor Inc., No. C-0500334 RMW,

3

2008 WL 5411564, at *3 (N.D. Cal. Dec. 29, 2008)); see also Local Patent Rules 120(e).

4

Further, the authority Corus cites supports Zillow’s position. Specifically, the

5

Finjan court noted that the doctrine of equivalents “is not designed to give a patentee a

6

second shot at proving infringement ‘[t]o the extent that any limitation is found to be not

7

literally present.’” 2015 WL 3640694, at 5 (quoting Rambus, 2008 WL 5411564, at *3).

8

Further, the court “decline[d] to go so far as to say that [the defendant] should have filed a

9

motion to compel amendment to [the plaintiff’s] inadequate disclosures,” but still required

10

“some notice of the deficiencies.” Id. Because—unlike here—the defendant in Finjan

11

failed to provide any notice to the plaintiff prior to filing its motion to strike, and

12

because—unlike here—the plaintiff’s notice of the doctrine of equivalents was not absent

13

but only deficient, the Finjan court declined to strike the plaintiff’s doctrine of equivalents

14

theories. Id. at *5-6. Nevertheless, the court noted that “[h]ad [the defendant]

15

communicated to [the plaintiff] its belief that [the plaintiff’s] doctrine of equivalents

16

disclosures were so deficient as to be no disclosure at all, [the plaintiff] would be on

17

notice of the deficiency and would fail to supplement at its own risk.” Id. at *5. Here, as

18

noted above, Zillow specifically told Corus that Corus’s infringement contentions did not

19

disclose any doctrine of equivalents theories. (See PNIC at 4.)

20

B.

21
22

Good Cause
Corus argues that, even if Dr. Martin’s expert report disclosed new theories of

infringement not included in Corus’s contentions, the court should not strike portions of

ORDER - 19

1

Dr. Martin’s report if Corus demonstrates good cause to amend its contentions, which

2

involves both diligence on the part of the moving party and a lack of prejudice to the

3

non-moving party. (See Resp. at 9-15); see also REC Software, 2012 WL 3545056, at *6

4

(“If the theory contained in the expert report does advance a new or revised theory, the

5

court will then determine if good cause exists to amend.”) (citing Acer, Inc. v. Tech.

6

Props. Ltd., Nos. 5:08-cv-00877 JF/HRL, 5:08-cv-00882 JF/HRL, 5:08-cv-05398

7

JF/HRL, 2010 WL 3618687, *3 (N.D. Cal. Sept. 10, 2010) (stating that the “good

8

cause . . . inquiry . . . considers first whether the moving party was diligent in amending its

9

contentions and then whether the non-moving party would suffer prejudice if the motion

10
11

to amend were granted”)).
First, Corus argues that the court should not strike portions of Dr. Martin’s expert

12

report because Corus was diligent in reviewing Zillow’s source code despite (1)

13

difficulties in obtaining the code in a usable format, (2) disputes concerning missing code

14

and source code printouts, and (3) difficulties scheduling depositions and obtaining

15

necessary information from Zillow’s technical deponents. (See Resp. at 2-5, 9-10.)

16

Corus, however, misses the point. None of these difficulties in reviewing Zillow’s code,

17

even if credited to Corus, excuse Corus’s failure to ever seek amendment of its

18

infringement contentions—either while Dr. Martin was preparing his report or after Corus

19

served it. By including additional theories and source code citations in Dr. Martin’s

20

expert report, Corus, in effect, attempted to amend its prior disclosures without formally

21

asking to do so. This was not an effort in diligence but rather in subversion of the Local

22

Patent Rules. If Corus had moved to amend its contentions—even at the time that it

ORDER - 20

1

served Dr. Martin’s report—the court may have been able to amend the discovery

2

schedule in a manner that would have had the least impact on the parties, the progress of

3

this litigation, and the court’s calendar. By failing to timely move for amendment of its

4

contentions, Corus robbed the court of any opportunity to timely adjust the discovery

5

schedule in this way. Thus, the court concludes that Corus fails to demonstrate diligence

6

in seeking to amend its infringement contentions. See, e.g., Hemopet v. Hill’s Pet

7

Nutrition, Inc., No. SACV121908JLSJPRX, 2014 WL 12603093, at *3 (C.D. Cal. Sept. 3,

8

2014) (concluding similarly that the plaintiff’s attempt “to add infringement contentions,

9

without permission or any explanation, by means of [an] expert report” fails to

10
11

demonstrate diligence in seeking to amend infringement contentions).
Further, to the extent that Corus fails to demonstrate diligence, the court need not

12

consider whether Corus’s untimely disclosure prejudiced Zillow. See id. at *3 n.3

13

(stating, in the context of a motion to strike portions of an expert’s report for failure to

14

assert the doctrine of equivalents and additional claims in its infringement contentions,

15

that “the ‘good cause’ analysis ends with a determination that [the plaintiff] was not

16

diligent”); Takeda Pharm. Co., 2015 WL 1227817, at *6 (“Because . . . the record reflects

17

that [the defendant] was not diligent in seeking to include the missing theories in its

18

invalidity contentions, the Court agrees that [the plaintiff] need not show prejudice.”).

19

Nevertheless, Zillow demonstrates that it is prejudiced here. One of the purposes

20

of the Local Patent Rules is to “require early crystallization of infringement theories.” See

21

KlausTech, Inc., 2018 WL 5109383, at *6. Here, the parties exchanged expert witness

22

reports on August 30, 2019. (See 2d Am. Sched. Order at 2.) Thus, Corus withheld the

ORDER - 21

1

full scope of its infringement theories throughout most of the discovery period. Indeed,

2

although discovery did not close until October 11, 2019 (see id.), Corus deprived Zillow

3

of any realistic ability to conduct discovery on Corus’s new theories. Zillow needed time

4

to analyze Dr. Martin’s report and the new theories of infringement and myriad source

5

code citations contained in it. Zillow also needed time to formulate the discovery it

6

needed on these new theories and then to serve written discovery requests. To compel

7

responses to those requests, Zillow would have needed to serve those requests on Corus at

8

least 30 days prior to the discovery cutoff. See Fed. R. Civ. P. 33(b)(2) (permitting the

9

responding party 30 days to serve its answers and objections to interrogatories); Fed. R.

10

Civ. P. 34(b)(2)(A) (permitting the responding party 30 days to respond in writing to

11

requests for production); Fed. R. Civ. P. 36(a)(3) (permitting the responding party 30 days

12

to answer or object). Thus, Zillow would have had to serve written discovery on Corus by

13

September 11, 2019—a mere 12 days after Zillow received Dr. Martin’s report. And this

14

does not even account for any further discovery via depositions or third-party discovery

15

that Zillow may have needed as result of the late disclosures in Dr. Martin’s report—all of

16

which Zillow would have also needed to serve, schedule, and complete before October 11,

17

2019.

18

Indeed, by the time Corus fully disclosed its infringement theories, the parties were

19

appropriately engaged in expert discovery and the formulation of any rebuttal expert

20

reports, which were due on September 27, 2019. (See 2d Am. Sched. Order at 2.) But

21

Zillow’s experts were deprived of knowing the full extent of Corus’s theories at the time

22

they wrote their initial reports and, as a practical matter, were deprived of any discovery

ORDER - 22

1

concerning those new theories in drafting their rebuttal expert reports. If the court allows

2

Corus to engage in this type of litigation practice by withholding its infringement theories

3

until the last possible moment in the discovery period, the court will simply encourage

4

parties to engage in more delay. Ultimately, this behavior contravenes the spirit of the

5

Local Patent Rules, which are designed to provide for the early elucidation of

6

infringement theories, and the court will not encourage it. See KlausTech, Inc., 2018 WL

7

5109383, at *8 (finding prejudice was inherent in infringement theories disclosed in an

8

expert report even though expert discovery remained open).

9

Further, Corus’s late disclosures in Dr. Martin’s August 30, 2019, expert report

10

came nearly two months after the court issued its July 2, 2019, claim construction order.

11

(See CC Order.) Zillow contends that because Corus did not identify any of the accused

12

data structures prior to and during claim construction, Zillow was unable to properly

13

evaluate the parties’ dispute regarding the “database” term or to conduct discovery on that

14

issue. (MTE at 14-16; Reply at 6.) Corus responds that accusations against an accused

15

product are irrelevant to claim construction (Resp. at 13), but the court is not convinced

16

that this general rule dispels any prejudice to Zillow. Knowledge of the accused product

17

can provide “meaningful context” for claim construction and is needed to identify

18

disputes. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322,

19

1326 (Fed. Cir. 2006) (“While a trial court should certainly not prejudge the ultimate

20

infringement analysis by construing claims with an aim to include or exclude an accused

21

product or process, knowledge of that product or process provides meaningful context for

22

the first step of the infringement analysis, claim construction.”); see also In re ICON

ORDER - 23

1

Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]n infringement or

2

invalidity analysis provides the context for claim construction.”); Pall Corp. v. Hemasure

3

Inc., 181 F.3d 1305, 1308 (Fed.Cir.1999) (“Although the construction of the claim is

4

independent of the device charged with infringement, it is convenient for the court to

5

concentrate on those aspects of the claim whose relation to the accused device is in

6

dispute.”). Thus, the court concludes that Zillow has demonstrated prejudice as a result of

7

Corus’s late disclosure of additional infringement theories in Dr. Martin’s expert report.

8

IV.

CONCLUSION

9

Based on the foregoing analysis, the court GRANTS Zillow’s motion to exclude

10

testimony or opinions pertaining to theories of patent infringement that were introduced

11

for the first time in the opening expert report of Dr. Martin (Dkt. # 58).

12

Dated this 29th day of January, 2020.

13
14

A

15

JAMES L. ROBART
United States District Judge

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ORDER - 24