Cellspin Soft, Inc. v. Fitbit LLC

• Court: District Court, N.D. California
• Decided: July 17, 2020
• Docket: 4:17-cv-05928
• Status: Unknown

Opinion

1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 OAKLAND DIVISION 4 CELLSPIN SOFT, INC., 5 ORDER DENYING DEFENDANTS’ MOTION TO Plaintiff, STRIKE OR TO COMPEL AMENDMENT OF 6 CELLSPIN’S INVENTIVENESS CONTENTIONS v. 7 FITBIT, INC., Case No. 17-cv-05928-YGR 8 Defendant. Dkt. No. 140 9 v. 10 Case No. 17-cv-05929-YGR MOOV, INC., 11 Dkt. No. 123 Defendant. 12 v. 13 Case No. 17-cv-05930-YGR ADIDAS AMERICA, INC., 14 Dkt. Nos. 97, 98 Defendant. 15 v. 16 Case No. 17-cv-05931-YGR NIKE, INC., 17 Dkt. No. 121 Defendant. 18 v. 19

Case No. 17-cv-05932-YGR 20 UNDER ARMOUR, INC., Dkt. No. 101 Defendant. 21

v. 22

Case No. 17-cv-05933-YGR 23 FOSSIL GROUP, INC., ET AL., Dkt. No. 43, 69 Defendants. 24

v. 25 Case No. 17-cv-05934-YGR 26 GARMIN INTERNATIONAL, INC., ET AL., Dkt. No. 117

27 Defendants. v. 1 Case No. 17-cv-05936-YGR NIKON AMERICAS, INC., ET AL., 2 Dkt. No. 119 Defendants. 3 4 5 Defendants in the above-captioned patent infringement cases move to strike or, alternatively, to 6 compel plaintiff’s inventiveness contentions.1 Defendants object to five aspects of plaintiff’s inventiveness 7 contentions served on June 19, 2020: plaintiff “buries” the contentions in 1,400 pages of charts; the 8 contentions cite inadmissible evidence as support; plaintiff reserves the right to rely on additional documents 9 in rebuttal; plaintiff reserves the right to rely on inventor and expert testimony; and the contentions fail to tie 10 the inventive concepts to the language of specific limitations. 11 Defendants largely misunderstand the nature of contentions. Contentions do not require a party to 12 prove its case with admissible evidence. See AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d 1323, 1331 (Fed. Cir. 13 2014) (analyzing this district’s local rules). Nor do they require premature expert discovery. See Amgen 14 Inc. v. Sandoz Inc., No. 14-cv-04741-RS (MEJ), 2017 WL 1352052, at *2 (N.D. Cal. Apr. 13, 2017). 15 Instead, the purpose of contentions is to “require parties to crystallize their theories of the case early in the 16 litigation and to adhere to those theories once they have been disclosed.” Shared Memory Graphics LLC v. 17 Apple, Inc., 812 F. Supp. 2d 1022, 1024 (N.D. Cal. 2010) (citation omitted). As such, contentions require 18 parties to disclose theories and facts—not all evidence to support those theories and facts. See Asia Vital 19 Comopnents Co., Ltd. v. Asetek Danmark A/S, 77 F. Supp. 3d 990, 1003-04 (N.D. Cal. 2019); Finjan, Inc. v. 20 Symantec Corp., No. 14-cv-02998-HSG (JSC), 2018 WL 620169, at *2 (N.D. Cal. Jan. 30, 2018). The 21 Court’s scheduling order recognizes this distinction by requiring plaintiff to serve its “full and final 22 contentions” (along with “factual and legal bas[e]s” that support those contentions), and to separately 23 produce all evidence upon which plaintiff may rely in support of its contention. (Dkt. No. 113.) 24 25

26 1 The Court has previously found the asserted patents invalid under 35 U.S.C. § 101. Following 27 reversal by the Federal Circuit based on plaintiff’s alle gations of an “inventive concept” under the second step of Alice, the Court required plaintiff to produce inventiveness contentions disclosing and supporting 1 Plaintiff, on the other hand, adopts the opposite extreme and argues that it is not bound by its 2 contentions at all because defendants have the burden to prove invalidity. That, too, misunderstands the 3 nature of contentions. “The ultimate burden of invalidity . . . does not dictate the scope of discovery.” SPH 4 Am., LLC v. Res. in Mot., Ltd., 13cv2320 CAB (KSC), 2016 WL 6305414, at *2 (S.D. Cal. Aug. 16, 2016) 5 (citing Fed. R. Civ. P. 26(b)(1)). The Federal Rules of Civil Procedure do not require the party who carries 6 the burden on an issue to make a prima facie case before it is entitled to discover rebuttal information. Id.; 7 see Amgen, 2017 WL 1352052, at *2 (granting motion to compel validity contentions); Finjan, Inc. v. ESET, 8 LLC, 17CV183 CAB (BGS), 2018 WL 4772124, at *5 (S.D. Cal. Oct. 3, 2018) (same); Implicit Networks, 9 Inc. v. Juniper Networks, Inc., 3:10-cv-4234, Dkt. No. 92 at 2 (N.D. Cal. June 6, 2012) (explaining that 10 validity contentions are based on information equally available to both parties). 11 Here, plaintiff has the better knowledge of the alleged inventive concept of the patents. Moreover, 12 the Court has already found—and has had its decision affirmed by the Federal Circuit—that the asserted 13 patents are directed to patent ineligible idea and that the specification provides scant support for an inventive 14 concept. The case therefore hinges on plaintiff’s allegations of an inventive concept beyond the already- 15 determined patent ineligible idea. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1307, 1316-19 (Fed. Cir. 16 2019). Under these circumstances, it is entirely appropriate to require plaintiff to produce inventiveness 17 contentions to prevent a “shifting sands” approach to ligation where defendants prove that a certain 18 implementation was conventional only to have plaintiff assert a wholly new inventive concept. See O2 19 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006). Accordingly, plaintiff 20 will be restricted to arguing the alleged inventive concepts disclosed in its contentions and any new theories 21 will be struck pursuant to Federal Rule of Civil Procedure 26. 22 The Court has reviewed plaintiff’s cover pleading and chart attached to defendants’ motion and 23 cannot conclude that plaintiff violated the Court’s scheduling order. The cover pleading identifies fourteen 24 alleged inventive concepts and the chart states an inventive concept tied to the limitation at hand. (See Dkt. 25 No. 117-5 at 38.) To the extent that defendants contend that other inventive concepts are not tied to specific 26 limitations, the parties are ORDERED to meet and confer to discuss any alleged inventive concept for which 27 the underlying limitation or limitations are unclear. Th e Court DENIES defendants’ motion. 1 In light of the timing of this Order, the parties shall advise the Court whether any adjustment of the 2 || scheduling order is necessary. 3 4 This Order terminates docket number 117 in case number 4:17-cv-5934. 5 6 IT Is SO ORDERED. 7 || Dated: July 17, 2020

7 YVONNE GONZALEZ ROGERS 9 UNITED STATES DISTRICT COURT JUDGE 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28