Contour IP Holding, LLC v. GoPro, Inc.

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 CONTOUR IP HOLDING, LLC, Case No. 3:17-cv-04738-WHO

8 Plaintiff, ORDER ON MOTION TO STRIKE, 9 v. MOTION FOR JUDGMENT ON THE PLEADINGS, AND CLAIM 10 GOPRO, INC., CONSTRUCTION 11 Defendant. Re: Dkt. No. 535

12 CONTOUR IP HOLDING, LLC, Case No. 3:21-cv-02143-WHO

13 Plaintiff, 14 v. Re: Dkt. No. 20 15 GOPRO, INC., 16 Defendant. 17

18 Plaintiff and counter-defendant Contour IP Holdings, LLC (“Contour”) sued defendant and 19 counter-claimant GoPro, Inc. (“GoPro”) for patent infringement, alleging that several of GoPro’s 20 products infringe patents that concern point-of-view digital video cameras. Since then, Contour 21 filed a follow-on suit that asserts the same patents against newer GoPro products. Three matters 22 are before me: Contour’s motion to strike GoPro’s inequitable conduct affirmative defense in the 23 second suit, GoPro’s motion for judgment on the pleadings that the subject matter is unpatentable, 24 and the construction of two claim terms. The motion to strike is granted, but GoPro may move for 25 leave to amend in response to specific pleading deficiencies. The motion for judgment on the 26 pleadings is denied without prejudice to GoPro raising the matter on an evidentiary record at 27 summary judgment. My construction of the disputed terms is the final section of this Order. 1 Separately, the parties should from now on adhere to the previous order consolidating the 2 cases, which provided that “the lowest numbered case shall be treated as the docket.” Dkt. No. 3 532. They should submit all filings on that consolidated docket for simplicity. 4 BACKGROUND 5 Contour originally filed this suit in 2017. Dkt. No. 1.1 It has an involved history that will 6 not be repeated here. The present motions stem from a second case that Contour filed in 2021 that 7 asserted the same claims of the same patents against more recent GoPro products. See 2143 Dkt. 8 No. 1 (“Compl.”). I consolidated the cases. Dkt. No. 532. 9 The technology is discussed as it becomes relevant to the analysis below. As a general 10 matter, the patents concern point-of-view digital video cameras. In the second suit, Contour 11 asserts claim 11 of U.S. Patent No. 8,890,954 (“the ’954 Patent”) and claim 3 of U.S. Patent No. 12 8,896,694 (“the ’694 Patent”). See Compl. ¶¶ 78–123. 13 Claim 11 of the ‘954 patent is as follows:

14 11. A portable, point of view digital video camera, comprising:

15 a lens;

16 an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene; 17 a wireless connection protocol device configured to send real time image content 18 by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing 19 an application; and

20 a camera processor configured to:

21 receive the video image data directly or indirectly from the image sensor,

22 generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality 23 than the first image data stream,

24 cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a 25 display of the personal portable computing device, wherein the personal 26 portable computing device generates the control signals for the video 27 camera, and wherein the control signals comprise at least one of a frame 1 alignment, multi-camera synchronization, remote file access, and a 2 resolution setting, and at least one of a lighting setting, a color setting, and an audio setting, 3 receive the control signals from the personal portable computing device, 4 and

5 adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable 6 computing device. 7 2143 Dkt. No. 1-1 (“‘954 Patent”) cl. 11. Claim 3 of the ‘694 patent recites a “point of view 8 digital camera system.” 2143 Dkt. No. 1-2 cl. 3 (emphasis added). But, as explained below, claim 9 11 is largely representative of both for present purposes; when there are meaningful differences, 10 they are discussed. 11 In the initial case, I conducted claim construction in July 2018. See Order Regarding 12 Claim Construction (“Const. Order”) [Dkt. No. 251]. Based on those constructions, I granted 13 partial summary judgment to Contour that GoPro’s products infringed claim 11. See Order on 14 Motion for Partial Summary Judgment (“SJ Order”) [Dkt. No. 445]. The case was set to proceed 15 to trial but was stalled multiple times due to the COVID-19 pandemic. In March 2021, I denied 16 Contour’s motion for an accounting or ongoing royalty to add the new products to the suit, which 17 led to it filing the second suit. Dkt. No. 524. 18 LEGAL STANDARD 19 I. MOTION TO STRIKE 20 A. Generally 21 Federal Rule of Civil Procedure (“FRCP”) 12(f) allows the Court to “strike from a 22 pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” 23 “The function of a 12(f) motion to strike is to avoid the expenditure of time and money that must 24 arise from litigating spurious issues by dispensing with those issues prior to trial.” Whittlestone, 25 Inc. v. Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010) (citation and alteration omitted). 26 Motions to strike “are generally disfavored [by courts] because the motions may be used as 27 delaying tactics and because of the strong policy favoring resolution on the merits.” Barnes v. 1 (citation omitted). Such motions should only be granted if “the matter has no logical connection 2 to the controversy at issue and may prejudice one or more of the parties to the suit.” New York 3 City Employees’ Ret. Sys. v. Berry, 667 F. Supp. 2d 1121, 1128 (N.D. Cal. 2009). “Where the 4 moving party cannot adequately demonstrate such prejudice, courts frequently deny motions to 5 strike even though the offending matter literally was within one or more of the categories set forth 6 in Rule 12(f).” Id. (citation and quotation marks omitted). 7 In resolving a motion to strike, the pleadings must be viewed in the light most favorable to 8 the nonmoving party. Platte Anchor Bolt, Inc. v. IHI, Inc., 352 F. Supp. 2d 1048, 1057 (N.D. Cal. 9 2004). “Ultimately, whether to grant a motion to strike lies within the sound discretion of the 10 district court.” Cruz v. Bank of New York Mellon, No. 12-CV-00846-LHK, 2012 WL 2838957, at 11 *2 (N.D. Cal. July 10, 2012) (citing Whittlestone, 618 F.3d at 973). 12 B. Failure to State an Affirmative Defense 13 i. Generally 14 Under FRCP 12(b)(6), a district court must dismiss a complaint if it fails to state a claim 15 upon which relief can be granted. To survive a Rule 12(b)(6) motion to dismiss, the plaintiff must 16 allege “enough facts to state a claim to relief that is plausible on its face.” See Bell Atl. Corp. v. 17 Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff pleads facts 18 that “allow the court to draw the reasonable inference that the defendant is liable for the 19 misconduct alleged.” See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There 20 must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts 21 do not require “heightened fact pleading of specifics,” a plaintiff must allege facts sufficient to 22 “raise a right to relief above the speculative level.” See Twombly, 550 U.S. at 555, 570. 23 In deciding whether the plaintiff has stated a claim upon which relief can be granted, the 24 Court accepts the plaintiff’s allegations as true and draws all reasonable inferences in favor of the 25 plaintiff. See Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court 26 is not required to accept as true “allegations that are merely conclusory, unwarranted deductions of 27 fact, or unreasonable inferences.” See In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 1 If the court dismisses the complaint, it “should grant leave to amend even if no request to 2 amend the pleading was made, unless it determines that the pleading could not possibly be cured 3 by the allegation of other facts.” See Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). In 4 making this determination, the court should consider factors such as “the presence or absence of 5 undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies by previous 6 amendments, undue prejudice to the opposing party and futility of the proposed amendment.” See 7 Moore v. Kayport Package Express, 885 F.2d 531, 538 (9th Cir. 1989). 8 ii. Rule 9(b) 9 FRCP 9(b) imposes a heightened pleading standard when a claim alleges fraud or mistake. 10 Federal Circuit law governs “whether inequitable conduct has been pleaded with particularity 11 under Rule 9(b).” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). 12 Under FRCP 9(b), to state a claim for fraud, a party must plead with “particularity the 13 circumstances constituting the fraud.” “[T]he ‘circumstances’ in Rule 9(b) must be . . . pleaded in 14 detail—this means the who, what, when, where, and how of the alleged fraud.” Exergen, 575 F.3d 15 at 1327 (some internal quotation marks and alteration omitted). However, “[m]alice, intent, 16 knowledge, and other conditions of mind of a person may be averred generally,” Fed. R. Civ. P. 17 9(b), including knowledge of the withheld information and specific intent to deceive, Exergen, 575 18 F.3d at 1327. 19 II. MOTION FOR JUDGMENT ON THE PLEADINGS 20 FRCP 12(c) provides that, “[a]fter the pleadings are closed—but early enough not to delay 21 trial—a party may move for judgment on the pleadings.” A motion for judgment on the pleadings 22 can “raise the defense of failure to state a claim.” McGlinchy v. Shell Chem. Co., 845 F.2d 802, 23 810 (9th Cir. 1988). When that is so, the court employs “same test as a motion under Rule 24 12(b)(6),” which is stated above. Id. 25 III. CLAIM CONSTRUCTION 26 Claim construction is a matter of law. See Markman v. Westview Instruments, Inc., 517 27 U.S. 370, 372 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 1 90 F.3d at 1582. When determining the proper construction of a claim, a court begins with the 2 intrinsic evidence of record, consisting of the claim language, the patent specification, and, if in 3 evidence, the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005); 4 see also Vitronics, 90 F.3d at 1582. “A claim term used in multiple claims should be construed 5 consistently . . . .” Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 6 1365, 1371 (Fed. Cir. 2002). 7 “The appropriate starting point [] is always with the language of the asserted claim itself.” 8 Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). “[T]he ordinary 9 and customary meaning of a claim term is the meaning that the term would have to a person of 10 ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date 11 of the patent application.” Phillips, 415 F.3d at 1312. “There are only two exceptions to this 12 general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when 13 the patentee disavows the full scope of a claim term either in the specification or during 14 prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 15 “Importantly, the person of ordinary skill in the art is deemed to read the claim term not 16 only in the context of the particular claim in which the disputed term appears, but in the context of 17 the entire patent, including the specification.” Phillips, 415 F.3d at 1313. “Claims speak to those 18 skilled in the art,” but “[w]hen the meaning of words in a claim is in dispute, the specification and 19 prosecution history can provide relevant information about the scope and meaning of the claim.” 20 Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (citations 21 omitted). “[T]he specification is always highly relevant to the claim construction analysis. 22 Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics, 23 90 F.3d at 1582. “However, claims are not to be interpreted by adding limitations appearing only 24 in the specification.” Id. “Thus, although the specifications may well indicate that certain 25 embodiments are preferred, particular embodiments appearing in a specification will not be read 26 into the claims when the claim language is broader than such embodiments.” Id. Conversely, 27 “where [] the claim language is unambiguous, [the Federal Circuit has] construed the claims to 1 16 (Fed. Cir. 2008). “[T]he description may act as a sort of dictionary, which explains the 2 invention and may define terms used in the claims,” and the “patentee is free to be his own 3 lexicographer,” but “any special definition given to a word must be clearly defined in the 4 specification.” Markman, 517 U.S. at 989–90. 5 On the other hand, it is a fundamental rule that “claims must be construed so as to be 6 consistent with the specification.” Phillips, 415 F.3d at 1316. “The construction that stays true to 7 the claim language and most naturally aligns with the patent’s description of the invention will be, 8 in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 9 1243, 1250 (Fed. Cir. 1998). 10 The court may consider the prosecution history of the patent, if in evidence. Markman, 52 11 F.3d at 980. The prosecution history may “inform the meaning of the claim language by 12 demonstrating how the inventor understood the invention and whether the inventor limited the 13 invention in the course of prosecution, making the claim scope narrower than it would otherwise 14 be.” Phillips, 415 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582–83); see also Chimie v. PPG 15 Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution 16 history in construing a claim is to exclude any interpretation that was disclaimed during 17 prosecution.”) (internal quotations omitted). 18 In most situations, analysis of this intrinsic evidence alone will resolve claim construction 19 disputes. Vitronics, 90 F.3d at 1583. However, “it is entirely appropriate . . . for a court to consult 20 trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent 21 file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in 22 the pertinent technical field.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 23 (Fed. Cir. 1999). Extrinsic evidence “consists of all evidence external to the patent and 24 prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” 25 Markman, 52 F.3d at 980. All extrinsic evidence should be evaluated in light of the intrinsic 26 evidence. Phillips, 415 F.3d at 1319. Courts should not rely on extrinsic evidence in claim 27 construction to contradict the meaning of claims discernible from examination of the claims, the 1 90 F.3d at 1583). While extrinsic evidence may guide the meaning of a claim term, such evidence 2 is less reliable than intrinsic evidence. Phillips, 415 F.3d at 1318–19. 3 DISCUSSION 4 I. MOTION TO STRIKE 5 Contour moves to strike GoPro’s twelfth affirmative defense of inequitable conduct.2 It 6 makes three arguments: (1) GoPro’s own pleading shows that the alleged inequitable conduct is 7 not cognizable; (2) GoPro fails to plead “the who” of the conduct with particularity; and (3) GoPro 8 fails to plead intent. I disagree with Contour on the first argument, but agree on the second (a 9 finding that moots the third argument). Its motion is GRANTED. Rather than going through a 10 new filing followed by another potential motion to dismiss, if GoPro wishes to amend the Answer, 11 it must file a motion seeking leave to amend within 21 days (and attach the amended Answer it 12 would file as an exhibit) with the briefing to focus on whether the defense is adequately pleaded. 13 The motion and opposition are limited to 15 pages, the reply to seven. 14 “Inequitable conduct is an equitable defense to patent infringement that, if proved, bars 15 enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 16 (Fed. Cir. 2011) (en banc). The defendant must show that “(1) an individual associated with the 17 filing and prosecution of a patent application made an affirmative misrepresentation of a material 18 fact, failed to disclose material information, or submitted false material information; and (2) the 19 individual did so with a specific intent to deceive the [Patent and Trademark Office (“PTO”)].” 20 Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 n.3 (Fed. Cir. 2009). Inequitable 21 conduct must be pleaded with particularity under Rule 9(b). Id. at 1326–27. 22 A. The Ambarella Chips 23 The inequitable conduct that GoPro identifies is, at its core, that: a third-party company, 24 Ambarella, Inc., invented the processor that permitted Contour’s technology to perform the “dual- 25 streaming” feature; Ambarella provided that processor to Contour; Contour used the processor in 26 2 Contour’s motion also moved to dismiss a counterclaim it believed was premised in part on 27 inequitable conduct. GoPro’s Opposition represents that none of its counterclaims are predicated 1 securing its patent; and Contour failed to disclose to the PTO that it used the processor. See 2 Answer [2143 Dkt. No. 19] ¶¶ 138–44. Contour moves to strike because, it argues, GoPro’s own 3 pleading shows that the Ambarella chips were publicly available prior art. See Motion to Strike 4 and Dismiss (“Strike Mot.”) [Dkt. No. 20] 8. As a matter of law, says Contour, someone is not an 5 inventor for patent purposes if they merely contribute prior art. Id. The net result, in its view, is 6 that GoPro’s own pleading shows Contour’s omission of the information cannot have been 7 inequitable. 8 Contour’s argument lacks merit. GoPro does not only allege that the inequitable conduct 9 was an incorrect identification of inventorship. It is true, as Contour argues, that “[a] contribution 10 of information in the prior art cannot give rise to joint inventorship because it is not a contribution 11 to conception.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1362 (Fed. Cir. 2004). But the 12 inequitable conduct defense here is materially different than a pure incorrect-inventorship claim. 13 GoPro’s allegation is that Contour was required to inform the PTO of the alleged use of and 14 reliance on the Ambarella chips, not just that it was required to name other inventors. Answer ¶ 15 146. Contour did so, on GoPro’s account, “to overcome prior art rejections.” Id. ¶ 145. The 16 materiality of that disclosure may ultimately be impacted—maybe even determined—by whether 17 it was publicly available. But the mere fact that Ambarella’s engineers could not have been (on 18 Contour’s account) named inventors does not necessarily mean that Contour did not have a duty to 19 disclose its use of Ambarella’s chips. That is a factual issue that will be sorted out on an 20 evidentiary record. Contour’s only case, in contrast, involved an inequitable conduct claim that 21 turned entirely on the identity of the correct inventors. See Crocs, Inc. v. Effervescent, Inc., 248 F. 22 Supp. 3d 1040, 1050–52 (D. Colo. 2017). (That decision addressed other inequitable conduct 23 theories but found the omitted information not material; that is not the portion Contour relies on.) 24 B. The “Who” 25 As noted, Rule 9(b) requires that the answer “identify the specific who, what, when, where, 26 and how of the material misrepresentation or omission committed before the PTO.” Exergen, 575 27 F.3d at 1328. Contour argues that GoPro has not identified the “who.” See Strike Mot. 9–10. 1 allegation on this front identifies “Contour and/or the named inventors on the Asserted Patents, or 2 persons acting at their direction on or their behalf, including prosecution counsel and others.” 3 Answer ¶ 139. That is insufficient under Federal Circuit precedent, which requires identification 4 of the “specific individuals” who committed the alleged misconduct, not just formulations like 5 “[patentee], its agents and/or attorneys.” Exergen, 575 F.3d at 1329 (some internal quotation 6 marks omitted); see, e.g., BlackBerry Ltd. v. Typo Prod. LLC, No. 14-CV-00023-WHO, 2014 WL 7 1867009, at *1–*2 (N.D. Cal. May 8, 2014) (finding allegation that “Griffin, Holmes, Lazaridis, 8 Little, Major and/or Kelly withheld” information insufficient). The remainder of this part of the 9 Answer is also peppered with allegations that just argue that “Contour” or “the applicant” 10 generally “failed to disclose” information, see, e.g., Answer ¶ 146, which is similarly deficient. 11 Exergen, 575 F.3d at 1329. 12 None of GoPro’s other allegations save this vague pleading. In its Opposition, GoPro 13 identifies the “who” it apparently intended: one of the named inventors, Laura O’Donnell. See 14 Opposition to the Strike Mot. (“Strike Oppo.”) [Dkt. No. 21] 8–9. The Answer itself does not 15 single out O’Donnell in this way; she is referenced a few times, but they tend to be grouped along 16 with other similar allegations about other inventors or Contour more generally. See, e.g., Answer 17 ¶¶ 140, 143. If O’Donnell is GoPro’s “who,” then its pleading is deficient. The only two 18 allegations about her are: (1) she admitted she received “public and proprietary information from 19 Ambarella” about the A5 and other processors, id. ¶ 142, and (2) Contour submitted a declaration 20 from her “in which she attested that she and the other identified inventors are the sole joint 21 inventors of the invention,” id. ¶ 143. If this is intended to be an inequitable conduct charge 22 against O’Donnell alone, it fails to spell out the “what, when, where, why, and how” of the 23 information she allegedly withheld. Instead, it discusses vague information that was withheld by 24 its ever-changing roster of allegedly inequitable actors. 25 GoPro muddies the waters further by saying that it has adequately identified O’Donnell 26 “for example” and it has pleaded the actions of specific people “including” O’Donnell. Strike 27 Oppo. 8–9. Yet its brief only ever identifies a case against her, not anyone else. And, to top it off, 1 whose malfeasance might also have constituted inequitable conduct, such as the other inventors, 2 prosecution counsel, and the patentee’s agents (such as Jason Green, a former Contour employee 3 who participated in the PTO interview) does not render the pleading deficient . . . .” Id. 9.3 4 Wrong. GoPro must plead all of the inequitable conduct with particularity, and for every person. 5 Even if it had made out a full case against O’Donnell, it cannot then (as it appears to imply) 6 bootstrap any number of other people in with allegations that would be insufficient on their own. 7 In short, GoPro’s pleading is inadequate. If it amends the defense, it must make clear 8 precisely the “who” it is charging with inequitable conduct. It must do so for every person so 9 accused. For each, it must lay out the other elements required by Rule 9(b). It cannot hide behind 10 “for examples” and “includings.” And all of this must be clear from the face of the Answer, with 11 no strategic ambiguity so it can fill in the blanks later.4 12 II. MOTION FOR JUDGMENT ON THE PLEADINGS 13 GoPro moves for judgment on the pleadings because it contends that the asserted claims 14 cover patent-ineligible subject matter. See Motion for Judgment on the Pleadings (“MJP”) [Dkt. 15 No. 535]. For the reasons that follow, its motion is DENIED without prejudice to raising it again 16 at summary judgment based on a factual record. 17 35 U.S.C. § 101 restricts the scope of patentable subject matter to “any new and useful 18 process, machine, manufacture, or composition of matter, or any new and useful improvement 19 thereof.” But “laws of nature, natural phenomena, and abstract ideas are not patent-eligible 20 because they represent the basic tools of scientific and technological work.” Visual Memory LLC 21 v. NVIDIA Corp., 867 F.3d 1253, 1257 (Fed. Cir. 2017) (internal quotation marks and citation 22 omitted). In Alice Corporation Pty. v. CLS Bank International, 573 U.S. 208 (2014), and Mayo 23 Collaborative Servs. v. Prometheus Lab’ys, Inc., 566 U.S. 66 (2012), the Supreme Court clarified 24 the two-step framework for determining whether patents claim this type of ineligible subject 25

26 3 This affirmative defense—in fact, the entire Answer—does not ever name Green in the allegations, further illustrating GoPro’s problems. 27 1 matter. Because “[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of 2 nature, natural phenomena, or abstract ideas[,] . . . an invention is not rendered ineligible for patent 3 simply because it involves an abstract concept.” Alice, 573 U.S. at 217 (internal quotation marks, 4 alteration, and citation omitted). Certain “applications” of those concepts can be made “to a new 5 and useful end” and be patentable. Id. (internal quotation marks and citations omitted). Patent 6 eligibility under Section 101 is a question of law and can be determined on a Rule 12(b)(6) motion 7 (and therefore the functional equivalent of this type of Rule 12(c) motion). Genetic Techs. Ltd. v. 8 Merial L.L.C., 818 F.3d 1369, 1373 (Fed. Cir. 2016). 9 At the first step of the Alice/Mayo framework, courts must “determine whether the claims 10 at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218. Accordingly, the court 11 must “articulate with specificity what the claims are directed to and ask whether the claims are 12 directed to an improvement to . . . functionality versus being directed to an abstract idea.” Visual 13 Memory, 867 F.3d at 1258 (internal quotation marks and citations omitted). The Federal Circuit 14 has instructed that this inquiry asks “what the patent asserts to be the focus of the claimed advance 15 over the prior art.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020) (internal 16 quotation marks and citations omitted). The court must “focus on the language of the Asserted 17 Claims themselves . . . considered in light of the specification” and avoid “overgeneralizing” those 18 claims or stating them at too “high [a] level of abstraction.” Id. (internal quotation marks and 19 citations omitted). 20 At the second step, the court must “consider the elements of each claim both individually 21 and as an ordered combination to determine whether the additional elements transform the nature 22 of the claim into a patent-eligible application.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 23 1334 (Fed. Cir. 2016) (internal quotation marks and citations). The court must “search for an 24 inventive concept—i.e., an element or combination of elements that is sufficient to ensure that the 25 patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” 26 Alice, 134 S. Ct. at 2355 (internal quotation marks and citations omitted). But this allegedly 27 inventive concept “cannot simply be an instruction to implement or apply the abstract idea on a 1 Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). 2 Generally, this innovation “must involve more than performance of well-understood, 3 routine, [and] conventional activities previously known to the industry.” Content Extraction & 4 Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). “[T]he 5 mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a 6 patent-eligible invention.” Id. at 1348. However, “an inventive concept can be found in the non- 7 conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d 8 at 1350. 9 Though GoPro makes several related arguments, it most heavily relies on the Federal 10 Circuit’s recent decision in Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021). See, e.g., MJP 11–12; 11 Reply ISO MJP (“MJP Reply”) [Dkt. No. 543] 5–7. That case came from a motion to dismiss. 12 There, the representative claim recited “[a]n improved digital camera.” Id. at 1042. That 13 invention comprised, among other things, two image sensors and lenses that would each produce 14 an image. See id. One of the image sensors was “sensitive to a full region of visible color 15 spectrum.” Id. The two images would be digitized and stored. Id. Most crucially, the images 16 would be processed to produce a “resultant” image in which the first (without the full spectrum) 17 enhanced the second (with the full spectrum). Id. 18 The Federal Circuit affirmed the district court’s finding that the claim was directed to an 19 abstract idea. It first explained that the “idea and practice of using multiple pictures to enhance 20 each other has been known by photographers for over a century.” Id. at 1043. The claim only 21 recited “[c]onventional camera components” to create the enhanced image: the sensors, lenses, 22 converting circuitry, memory, and processor. Id. Each of those components, the court said, 23 “perform only their basic function” and were “set forth at a high degree of generality.” Id. 24 Indeed, the specification discussed a need for a “generic solution” to produce high resolution 25 images. Id. (internal quotation marks omitted). And this claim was “simply a generic 26 environment in which to carry out the abstract idea” of using one image to enhance another. Id. 27 In making its determination, the court rejected the argument that the claim covered a “specific 1 abstract idea itself—to take one image and ‘enhance’ it with another.” Id. at 1044. The majority 2 also rejected the argument, advanced by the dissent, that the claim covered a particular 3 configuration of physical devices (like lenses and sensors) and so was not abstract. See id. at 1044 4 & n.2; see also id. at 1046 (Newman, J., dissenting) (“The invention . . . is a digital camera having 5 two lenses mounted in front of separate image sensors, with analog to digital conversion circuitry, 6 a memory that stores the images, and a digital processor that enhances the images. This camera is 7 a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract 8 idea.’”). 9 Unlike Yu or other cases that GoPro cites, I cannot find in its favor based only on the 10 pleadings. If an abstract idea is applied in a non-generic environment and embodied a functional 11 improvement, it succeeds at step one. Alice, 573 U.S. at 217. If the claim elements in ordered 12 combination transform the nature of the claim into one that is not abstract, it succeeds at step two. 13 Enfish, 822 F.3d at 1334. As the Federal Circuit has explained, though these analyses are distinct, 14 they have overlap. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 15 2016). Here, for the reasons that follow, Contour’s well-pleaded allegations (which must be taken 16 as true at this stage) prevent a finding in GoPro’s favor on both steps for the same fundamental 17 reason. 18 Claim 115 recites a “point of view digital video camera.” As an initial matter, under well- 19 settled law, that the claim recites a mechanical device is not determinative of whether it is in fact 20 directed to an abstract idea. Yu, 1 F.4th at 1044 & n.2. Just as the “digital camera” in Yu could 21 still be in truth directed at patenting an abstract idea, so can the “digital video camera” here. 22 Contour pleads that, at the time the patent issued, point-of-view video cameras faced a 23 concrete functional problem: users could not readily see and control the video while using the 24 cameras for their intended purpose (e.g., attached to the body during movement). Compl. ¶¶ 12, 25 14. So, Contour pleads, it came up with an innovative solution: the camera would stream a low 26 5 Both parties agree that claim 11 of the ‘954 patent is representative for purposes of the Section 27 101 analysis. See MJP 3; Dkt. No. 539 at 11 n.7. Consequently, I discuss only that claim in the 1 quality video to a smartphone so that the user could watch what was being recorded removed from 2 the camera; it would store a high quality video that would be the one ultimately used; and it would 3 receive specified control signals from the smartphone so that users could control the image 4 removed from the camera. Id. This is also reflected in the patents. See generally, e.g., ‘954 5 Patent. 6 All this removes the case from the orbit of Yu and related cases as a matter of pleading. In 7 Yu, the district court made an explicit and uncontested finding that enhancing one image with 8 another was well-known to photographers for a century. Yu, 1 F.4th at 1043. Similarly, in another 9 of GoPro’s leading cases, the district court made an explicit and uncontested finding that putting 10 together multiple images to form a panoramic one is something that the visual cortex did since the 11 “dawn of humanity.” FullView, Inc. v. Polycom, Inc., 485 F. Supp. 3d 1156, 1163 (N.D. Cal. 12 2020). GoPro offers no basis to make a similar finding here and Contour’s pleading forecloses it. 13 Accordingly, I cannot find that this all took place in only a generic environment at step one or was 14 uninventive at step two. Cf. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) 15 (explaining that concepts may only be found unpatentable as a matter of law when “there is no 16 genuine issue of material fact regarding whether the claim element or claimed combination is 17 well-understood, routine, conventional to a skilled artisan in the relevant field”). 18 GoPro’s remaining arguments may succeed on an evidentiary record, but they do not 19 today. Many depend on material from outside the pleadings—in particular, the briefs and expert 20 reports filed in this litigation. See, e.g., MJP 7. At this posture, I may only look at the pleadings, 21 things incorporated into the pleadings, and matters subject to judicial notice. See, e.g., Brown v. 22 Elec. Arts, Inc., 724 F.3d 1235, 1247–48 (9th Cir. 2013).6 To get around this, GoPro says that I 23 can take judicial notice of all of these litigation matters. MJP Reply 3–4. But that does not mean I 24 can take judicial notice of the truth of any statement in them. Similarly, GoPro says that the law 25 of the case enables me to rely on, for instance, what was found at summary judgment. Id. That is 26 not fully accurate. That doctrine prevents, in the main, a court from redeciding issues. Ingle v. 27 1 Circuit City, 408 F.3d 592, 595 (9th Cir. 2005). But GoPro has presented no authority for the 2 view that it displaces normal standards governing different types of motions. If GoPro’s argument 3 were accepted, any motion for judgment on the pleadings that took place after summary judgment 4 could rely on anything found as an evidentiary matter at summary judgment. In effect, it would 5 allow a second bite at that apple. 6 Equally as fundamentally, I am required to credit any well-pleaded allegation that does not 7 contradict a matter subject to judicial notice. See Usher, 828 F.2d at 561. (And again, GoPro’s 8 argument that it can slap the label “judicial notice” on extra-pleadings positions is incorrect.) 9 While I agree with GoPro that it may be appropriate to take judicial notice of Contour’s own 10 positions with respect to the claims (as opposed to other evidence), the only such position that 11 would make a difference is the argument that Contour has admitted the Ambarella chips 12 (discussed above) are prior art. MJP 11–12. Yet even that is not sufficient on this record because 13 “the mere fact that something is disclosed in a piece of prior art . . . does not mean it was well- 14 understood, routine, and conventional.” Berkheimer, 881 F.3d at 1369. Soon the parties will have 15 the opportunity to present evidence about whether the Ambarella chips so qualify. 16 GoPro is not foreclosed from raising this argument again at summary judgment. Then, the 17 evidence can test Contour’s allegations of inventiveness and the parties can offer concrete 18 evidence about the state of the ideas at play at the time of invention. 19 III. CLAIM CONSTRUCTION 20 Claim construction has already been conducted in this case. See generally Construction 21 Order. Here, because the new complaint was filed, the parties seek construction of two terms, one 22 that was not previously construed, one that was. 23 A. Control Signals 24 Claim 11 of the ‘954 recites “[a] portable, point of view digital video camera, comprising” 25 among other things, “a camera processor.” It says that the camera processor is “configured to,” 26 among other things,

27 cause the wireless connection protocol device to send the first image data stream directly to signals for the video camera, and wherein the control signals comprise at least one of a 1 frame alignment, multi-camera synchronization, remote file access, and a resolution 2 setting, and at least one of a lighting setting, a color setting, and an audio setting.” ‘954 Patent cl. 11 (emphasis added). Claim 3 of the ‘694 patent also includes identical language 3 about personal portable computing devices. The parties’ dispute is over the emphasized “wherein” 4 clause: 5

Contour’s Proposal GoPro’s Proposal Claim Construction 6 The scope of the claim is Limiting; plain and ordinary The claim is limited to a point 7 limited to a point of view meaning. of video digital video camera digital video camera. The (or camera system). The clause 8 “wherein” clause is part of at issue helps define the defining the control signals control signals that the 9 that the camera processor is processor is configured to 10 configured to receive. receive. The dispute, in other words, is about whether, to infringe, an accused technology needs to 11 include a personal portable computing device (e.g., a smartphone) or whether the reference to such 12 a device is only to define the control signals, but it itself is not claimed. For the reasons that 13 follow, I agree with Contour. 14 I start with the plain language and structure of the claims. Vitronics, 90 F.3d at 1582. By 15 their plain language, the claims are directed toward a video camera (or camera system in claim 3), 16 not toward a video camera plus a personal portable computing device. That video camera then 17 includes the remaining aspects of the claim as indicated by the use of the common transitional 18 phrase, “[a] portable point of view digital video camera, comprising” everything that follows. 19 ‘954 Patent cl. 11 (emphasis added); see CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 20 (Fed. Cir. 2007) (“In the patent claim context the term ‘comprising’ is well understood to mean 21 ‘including but not limited to.’”). One of the things that the video camera is comprised of is “a 22 camera processor.” And the personal portable device clause at issue here is contemplated in a 23 clause subordinate to that camera processor clause. The claim states that the camera processor is 24 “configured to” do a series of things (like receive video image data). In turn, one thing in the list 25 that the camera processor is configured to do is to “cause the wireless connection protocol device 26 to send the first image data stream directly to the personal portable computing device for display 27 1 follows and modifies that clause. The plain and ordinary meaning, in context, is that the camera 2 processor sends the stream to the personal portable computing device and receives control signals 3 from it. Accordingly, as a matter of ordinary meaning, basic grammar, and the claim’s structure, 4 Contour’s interpretation is correct. 5 Other clues bolster this conclusion. The claimed video camera comprises four elements: a 6 lens, image sensor, wireless connection protocol device, and camera processor. Every part of the 7 claim is directed toward one of those. The remaining parts of the “camera processor” element 8 here likewise are all directed at the camera processor. Aside from the clause in dispute, the claim 9 says that the camera processor is “configured” to (1) receive the video image data, (2) generate a 10 first image and second image stream, (3) receive control signals from the personal portable 11 computing device, and (4) adjust one or more setting of the camera. It would be unnatural and 12 illogical if the fifth requirement—of which this clause is a part—departed so starkly from the 13 others and was directed at claiming an entirely different device. ‘954 Patent cl. 11. Still more, if 14 the patent did intend to claim a personal portable computing device, it is difficult to think of a 15 more oblique way of doing so. On GoPro’s account, Contour would have squirreled away its only 16 claim of the device at the bottom layer of a Russian-nesting-doll-style element group that is 17 facially addressed to entirely different devices.7 18 GoPro’s counterarguments are unconvincing. As an initial matter, while GoPro pays lip 19 service to plain meaning and claim structure, it quickly leaves them behind to highlight other 20 considerations. See Responsive Claim Construction Brief (“Resp. Br.”) [Dkt. No. 545] 3–6. Its 21 only real attempt to show that the plain language supports it is the argument that “wherein” 22 clauses are binding and this claim construction, apparently, would render it not binding. Resp. Br. 23 3–5. That does not change the analysis. No one disputes that the clause is just as binding as any. 24 The question here is what that (binding) clause means: does it claim the separate device or 25 describe what the camera processor is configured to do? 26 Turning to GoPro’s primary arguments, it first points to a figure from the specification that 27 1 depicts cameras and a smartphone. Id. 5–6. As explained, the specification does include this and 2 a few other similar references. But that does not offer GoPro any help because it would be 3 virtually impossible to helpfully describe the video camera without referencing how it interacts 4 with the personal portable computing device, which is all the specification shows. That the 5 specification does so is no surprise and certainly does not show that Contour claimed smartphones 6 despite the plain meaning and clear structure of the claims. 7 Next, GoPro argues that the prosecution history supports it. Id. 6–7. In essence, it argues 8 that after a version of the claim was rejected, Contour added the wherein clause at issue to get 9 around prior art. Id. The evidence it proffers, however, does not support that assertion. Although 10 the rejected version of the claims did not include the clause, there are a number of changes from 11 the rejected to the accepted claims, including the specificity added by describing what the camera 12 processor is configured to do. See Dkt. No. 545-3. GoPro offers nothing more than the two 13 different versions. If there is some evidence that the PTO believed Contour was claiming a 14 personal portable computing device and that somehow saved its patent, GoPro has not presented 15 it. 16 GoPro asserts that Contour’s litigating positions also show that its interpretation is correct. 17 Resp. Br. 7–9. I have, however, found that the patent itself unambiguously settles the issue of its 18 meaning, so examining the extrinsic evidence is not warranted. Pitney Bowes, 182 F.3d at 1309. 19 Nonetheless, to ensure that Contour has not spoken out of both sides of its mouth, I analyze this 20 argument. GoPro is incorrect. The “litigating positions” it speaks of are actually a few snippets in 21 reports from Contour’s expert. In the first, Contour’s expert was opining about whether GoPro 22 conceived of the “control signals” term and whether it infringed. As part of that analysis, she 23 stated that “[s]pecifically, each of the asserted claims requires that the personal device generate 24 controls signals, including at least one control signals in each of two groups: (1) frame alignment, 25 multi-camera synchronization, remote file access, or resolution; and (2) lighting, color, or audio 26 settings. [GoPro’s expert] never identifies any evidence that GoPro conceived of sending these 27 specific control signals, and thus has failed to show conception of these limitations.” Dkt. No. 1 that GoPro reduced to practice sending these specific control signals.” Id. ¶ 203. 2 In the context that GoPro tries to remove it from, these cherry-picked lines of expert 3 testimony in one rebuttal report do not transform the claim into something it is not. These 4 statements are at least as consistent with Contour’s interpretation as GoPro’s. Contour’s expert 5 never opined that a personal portable computing device was required to infringe. All she 6 discussed was the signals generated, sent, and received—which are geared toward the camera 7 processor. 8 GoPro also relies on her infringement analysis, but that is even less helpful to it. All that 9 she said there was that “the accused products allow the user to control various settings of the 10 camera through the GoPro app,” that her exemplary citations of accused products included “apps,” 11 and that she was “able to control settings of the camera from the phone.” Id. ¶¶ 453–54. Under 12 the claim construction I adopt, analyzing those settings makes sense because the processor must be 13 configured to control them. That does not mean that the device itself is claimed. Indeed, that 14 GoPro cannot point to a clearer statement from Contour’s infringement analysis tends to indicate 15 Contour never adopted this position. 16 GoPro also relies on several Federal Circuit cases that, in its view, compel reading the 17 claim as it urges. Its leading case is Bicon, Inc. v. Straumann Co., 441 F.3d 945 (Fed. Cir. 2006). 18 See, e.g., Resp. Br. 9–10. The patent in Bicon claimed a plastic cuff used in dental implants. 19 Bicon, 441 F.3d at 947–51. As here, the parties disputed whether that claim also covered another 20 apparatus—an “abutment”—that was referenced in the claim but did not appear in the preamble. 21 Id. at 950. The Federal Circuit held that the abutment was indeed claimed. Id. at 951–52. 22 That claim is different from this one in the crucial ways that drove the Federal Circuit’s 23 decision. That court explained that there were two broad reasons that it found the abutment to be 24 claimed: “the full text of the claim, read in the context of the entire patent” and “problems 25 presented by [the other] proposed construction.” Id. at 952. The claim recited “[a]n emergence 26 cuff member for use in preserving the interdental papilla during the procedure of placing an 27 abutment on a root member implanted in the alveolar bone of a patient in which [a] the abutment 1 structured quite differently from this one. There are other differences that mattered to the court. 2 The claim “include[d] a detailed description of the abutment’s physical characteristics and 3 define[d] the emergence cuff in a way that depends on those physical characteristics.” Id. at 950. 4 That definition is like the definition by reference here: in Bicon, if the claim did not include the 5 abutment, one definition would have “no meaning” and two limitations would be “meaningless.” 6 Id. at 950–51. Here, there is no part of the claim that loses meaning if the personal portable 7 computing device is not claimed. 8 Finally, GoPro tosses in several citations to its expert report that, according to it, illustrate 9 that a POSITA would understand the claim to require the device itself. To the extent it relies on 10 this evidence, I reject it. Under settled Federal Circuit law, extrinsic evidence cannot be used to 11 contradict the plain meaning of a term. 12 B. Generate 13 The parties’ other dispute is over the “generate” term. As noted, I already construed this 14 term to mean “record in parallel from the video image data a first image data stream and a second 15 image data stream, wherein the second image data stream is a higher quality than the first image 16 data stream” or “record in parallel first video image content and second video image content 17 corresponding to the video image data representing the scene, wherein the second video image 18 content is a higher quality than the first video image content,” depending on the precise claim. 19 Const. Order 9–13. 20 GoPro now seeks what it labels a “clarification” of the construction. It describes that 21 clarification as: “the Court’s construction . . . permits any level of processing or altering prior to 22 recording, and permits one image data stream/video image content to be generated from the 23 other.” Resp. Br. 12. This argument comes not from any claim construction but from summary 24 judgment. There, I found that GoPro’s product infringed claim 11 as a matter of law. That 25 dispute “c[ame] down to the ‘generate’ term.” SJ Order. Among other things, GoPro’s expert 26 argued that alterations during processing “means that a POSITA would no longer consider [the 27 stream] to be from the video image data’” as the construction required. Id. 7. I held that “Claim 1 data’ indicates nothing about processing or alteration. Id. 8. Yet, GoPro’s expert’s opinion 2 “impliedly adds a processing- and alteration-related requirement.” Id.; see also id. 10. 3 The construction will not be altered. I recognize that courts may, in their discretion, revisit 4 claim constructions, Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1361 (Fed. 5 Cir. 2002), and a genuine dispute between the parties over the meaning of a construction can be 6 one ground for reexamination, Wi-Lan USA, Inc. v. Apple Inc., No. 13CV0798, 2014 WL 7 12789112, at *1 (S.D. Cal. Apr. 11, 2014). But there is no good reason to do so here and various 8 considerations lean against it. 9 This claim and others were already the subject of an intensive claim construction process. 10 Contour suggested the plain and ordinary meaning of the generate terms. Many of GoPro’s 11 proposals, in contrast, contained the “in parallel” language. I adopted at least that portion of its 12 proposal. See Const. Order 9–13. Then, with claim construction settled, the parties carried out 13 discovery, summary judgment briefing, and trial preparation in reliance on it. At summary 14 judgment, I did what all infringement analyses require: determine whether the claim as construed 15 reads on the accused product. I did not change the construction (nor do I understand GoPro to 16 argue that I did, otherwise it would not really be a “clarification”). To the contrary, I rejected 17 GoPro’s attempt to effectively change the construction. See, e.g., SJ Order 10 (“GoPro did not 18 request that any processing-related requirements be included in the construction of the generate 19 term. Such a question of scope was proper for resolution at the claim construction stage and is 20 improper now.”). The claim construction speaks for itself. The summary judgment order speaks 21 for itself. There is no convincing reason to rewrite the claim construction just because it was 22 applied in a particular way at summary judgment. 23 Several considerations affirmatively counsel against altering the construction. While a 24 genuine dispute about the meaning of a construction might suggest that clarification is warranted, I 25 do not think it would be a productive development in patent litigation if claim constructions were 26 routinely rewritten in light of their specific application at summary judgment. At best, it would 27 invite a second round of claim construction via “clarification” after many summary judgment 1 undesirable consequences. For one, application of a claim term at summary judgment may require 2 a detailed and nuanced analysis. Attempting to capture each application of the term in a distilled, 3 || curt construction has potential to invite mischief. For another, if the claim meaning is unsettled— 4 || even in an attempt to align it with what happened at summary judgment—it may invite arguments 5 about how binding rulings on summary judgment really are in light of the changed construction. 6 || In this situation, I believe the better course is simply for GoPro and Contour to make their 7 substantive arguments (e.g., at the next round of summary judgment) relying both on the claim 8 construction and the more robust discussion that occurred at summary judgment, both of which are 9 || binding. 10 CONCLUSION 11 The motion to strike GoPro’s twelfth affirmative defense is GRANTED; GoPro may move 12 || for leave to amend within 21 days on the terms stated in this Order. The motion for judgment on 5 13 the pleadings is DENIED. The claims are construed as described above. IT IS SO ORDERED. 3 15 Dated: September 13, 2021

8 William H. Orrick United States District Judge 19 20 21 22 23 24 25 26 27 28