1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 TACTION TECHNLOGY, INC., Case No.: 21-CV-812 TWR (JLB)
12 Plaintiff, ORDER GRANTING PLAINTIFF’S 13 v. MOTION TO STRIKE DEFENDANT’S AMENDED 14 APPLE INC., INVALIDITY CONTENTIONS 15 Defendant. (ECF No. 205) 16
17 Presently before the Court is the Motion to Strike (“Mot.,” ECF No. 205) portions 18 of the amended invalidity contentions that Defendant Apple Inc. (“Apple”) served on 19 November 18, 2022, filed by Plaintiff Taction Technology, Inc. (“Taction”), as well as 20 Apple’s Response in Opposition to (“Opp’n,” ECF No. 230 (public), 235 (sealed)) and 21 Taction’s Reply in Support of (“Reply,” ECF No. 248) the Motion. The Court held a 22 hearing on April 13, 2023. (See ECF No. 261.) For the reasons discussed below, the Court 23 GRANTS Taction’s Motion. 24 BACKGROUND 25 I. The Asserted Patents 26 Taction is the owner and assignee of U.S. Patent No. 10,659,885 (“the ’885 Patent”) 27 and U.S. Patent No. 10,820,117 (“the ’117 Patent”) (collectively, “the asserted patents”). 28 (See ECF No. 1, (“Compl.”) ¶¶ 68, 72); see also U.S. Patent No. 10,659,885, at [73] (issued 1 May 19, 2020); U.S. Patent No. 10,820,117, at [73] (issued Oct. 27, 2020). The ’885 Patent 2 is entitled “Systems and Methods for Generating Damped Electromagnetically Actuated 3 Planar Motion for Audio-Frequency Vibrations” and was issued on May 19, 2020. ’885 4 Patent at [45], [54]. The ’117 Patent is entitled the same and was issued on October 27, 5 2020. ’117 Patent at [45], [54]. The ’885 Patent and the ’117 Patent share a common 6 specification, and both patents claim priority to provisional application No. 62/054,712 7 filed on September 24, 2014. ’885 Patent at [60]; ’117 Patent at [60]. 8 The invention described in the ’885 Patent and the ’117 Patent “relates to tactile 9 transducers that produce bass frequency vibrations for perception by touch.” ’885 Patent 10 col. 1 ll. 20–21.1 The specification of the asserted patents explains: 11 Below about 200 Hz, the lower the frequency of sound, the more it is perceived not only by vibration of the ear drum but also by touch receptors in 12 the skin. This sensation is familiar to anyone who has “felt the beat” of strong 13 dance music in the chest, or through the seat of a chair, or has simply rested a hand on a piano. The natural stimulus is both auditory and tactile, and a true 14 reproduction of it is possible only when mechanical vibration of the skin 15 accompanies the acoustic waves transmitted through the air to the ear drum. 16 Id. at col. 1 ll. 25–33. 17 The specification then details the problems with the prior art audio-frequency tactile 18 transducers, which utilized “axial shakers,” “un-damped eccentric rotating motors 19 (‘ERMs’),” and “un-damped linear resonant actuators (‘LRAs’).” See id. at col. 1 l. 34– 20 col. 2 l. 46. With respect to the ERMs and LRAs, the specification explains that a lack 21 mechanical damping is “problematic.” See id. at col 2 ll. 1–2 (“The problem of uneven 22 frequency response is typically made worse by a lack of mechanical damping.”), col. 2 ll. 23 11–13 (“Another approach in the prior art, also problematic, is the use of un-damped 24 eccentric rotating motors (‘ERMs’) and un-damped linear resonant actuators (‘LRAs’).”). 25 / / / 26
27 1 Because the ’885 Patent and the ’117 Patent share a common specification, the Court will cite to only 28 1 The asserted patents aim to overcome the problems of the prior art by disclosing “a 2 thin, flat vibration module with a movable member that is electromagnetically actuated to 3 produce motion in-plane.” See id. at col. 3 ll. 51–53; see also id. at col. 2 ll. 47–49. “[T]he 4 module may consist of a mass and thin magnets, polarized through their thickness, where 5 the mass and magnets are movably suspended inside a housing.” Id. at col. 3 ll. 63–66. 6 Further, the suspension may include flexures or a ferrofluid layer. Id. at col. 3 ll. 66–67. 7 In addition, “the vibration of the moving portion may be damped” using the layer of 8 ferrofluid. Id. at col. 4 ll. 6–8. 9 Independent claim 1 of the ’885 Patent recites: 10 1. An apparatus for imparting motion to the skin of a user, the apparatus 11 comprising:
12 a housing; 13 a plurality of coils capable of carrying electrical current; 14
15 a plurality of magnets arranged in operative proximity to the plurality of coils;
16 a moving portion comprising an inertial mass and the plurality of magnets; 17 a suspension comprising a plurality of flexures that guides the moving portion 18 in a planar motion with respect to the housing and the plurality of conductive 19 coils;
20 wherein movement of the moving portion is damped by a ferrofluid in 21 physical contact with at least the moving portion; and
22 wherein the ferrofluid reduces at least a mechanical resonance within the 23 frequency range of 40-200 Hz in response to electrical signals applied to the plurality of conductive coils. 24
25 ’885 Patent col. 14 ll. 48–65. 26 / / / 27 / / / 28 / / / 1 Independent claim 1 of the ’117 Patent recites: 2 1. An apparatus comprising:
3 a housing; 4 a plurality of conductive coils capable of carrying electrical current; 5
6 a plurality of magnets arranged in operative proximity to the plurality of conductive coils; 7
8 a moving portion comprising an inertial mass and the plurality of magnets;
9 a suspension comprising a plurality of flexures that guides the moving portion 10 in a planar motion with respect to the housing and the plurality of conductive coils; 11
12 wherein vibration of the apparatus imparts vibrations to a user’s skin;
13 wherein vibration of the apparatus is damped by a viscous ferrofluid in 14 physical contact with at least the moving portion;
15 wherein the viscous ferrofluid reduces at least a resonance within a frequency 16 range of 40-200 Hz in response to signals applied to the plurality of conductive coils; 17
18 wherein said moving portion includes at least a pocket that provides space for at least a magnet; 19
20 wherein each of said plurality of flexures is more resistant to motion transverse to a plane of the moving portion than it is to linear motion in the 21 plane of the moving portion; and 22 wherein said housing is generally cuboid in shape. 23
24 ’117 Patent col. 14 l. 47–col. 15 l. 5. 25 II. Procedural History 26 On April 26, 2021, Taction filed a complaint against Apple, alleging infringement 27 of the asserted patents. (See generally ECF No. 1 (“Compl.”).) Specifically, Taction 28 alleges that Apple has directly infringed and induced or contributed to the infringement of 1 the asserted patents by making, using, selling, and offering for sale Apple products, 2 including the iPhone and Apple Watch, that implement haptics technology, (see id. ¶¶ 77, 3 80), which refers to the science of enabling interaction with technology through the sense 4 of touch, such as, for example, through the use of vibrations. (See ECF No. 73 at 1.) 5 On July 8, 2021, Apple answered the complaint and filed counterclaims against 6 Taction. (See generally ECF No. 17.) Magistrate Judge Jill L. Burkhardt issued a Case 7 Management Order on August 10, 2021, (see generally ECF No. 34), setting a Claims 8 Construction and Tutorial Hearing before the Honorable Gonzalo P. Curiel for 9 February 18, 2022. (See id. ¶ 12.) 10 On October 21, 2022, after this action was transferred to the undersigned, (see ECF 11 No. 48), Apple filed before the Patent Trial and Appeal Board (“PTAB”) four petitions for 12 inter partes review (“IPR”), challenging the validity of all of the asserted claims of the 13 asserted patents. (See ECF No. 53-1 (“Kete Decl.”) Exs. 1–4.) On January 26, 2022, the 14 Court stayed the action, including further claims construction briefing, pending the PTAB’s 15 decision on whether to institute the IPRs. (See ECF No. 76 at 6.) The PTAB issued 16 decisions denying institution of IPR for all four IPR proceedings related to the asserted 17 patents on April 18, 2022. (See generally ECF No. 97.) 18 On June 2, 2022, the Court lifted the stay and reset the Claim Construction and 19 Tutorial Hearing for August 18, 2022, (see generally ECF No. 98), which the Court 20 subsequently continued to September 15, 2022. (See ECF No. 119.) After issuing a 21 tentative ruling, (see ECF No. 122), the Court held the Markman hearing on September 15, 22 2022. (See ECF No. 126.) The Court’s Claim Construction Order followed on 23 September 28, 2022. (See generally ECF No. 141.) 24 On November 18, 2022, Apple served Taction with Apple’s “Post Claim 25 Construction Amended Invalidity Contentions” (the “Amended Invalidity Contentions”). 26 (See ECF No. 230-1 (“Sproul Decl.”) ¶ 14; ECF No. 235-4 (“Ex. 11”).) Taction first 27 challenged Apple’s Amended Invalidity Contentions on December 29, 2022, and the 28 Parties met and conferred on January 12, 2023. (See Sproul Decl. ¶ 14.) The Parties lodged 1 a Joint Discovery Statement with Judge Burkhardt on January 31, 2022. (See id.) On 2 February 7, 2023, Judge Burkhardt issued a Minute Order indicating that the Parties 3 “dispute is more properly raised as a noticed motion before the District Judge.” (See ECF 4 No. 176.) Taction filed the instant Motion on February 21, 2023. (See generally ECF No. 5 205.) 6 LEGAL STANDARDS 7 “The Court’s Patent Local Rules are designed to require parties to crystallize their 8 theories of the case early in the litigation and to adhere to those theories once they have 9 been disclosed.” CliniComp Int’l, Inc. v. Cerner Corp., No. 17CV02479GPCDEB, 2022 10 WL 16985003, at *12 (S.D. Cal. Nov. 15, 2022) (quoting Wi-LAN Inc. v. LG Elecs., Inc., 11 No. 18-CV-01577-H-BGS, 2019 WL 5790999, at *2 (S.D. Cal. Sept. 18, 2019)); see also 12 AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d 1323, 1331 (Fed. Cir. 2014); O2 Micro Int’l Ltd. 13 v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006). “The Local 14 Rules are also designed to provide structure to discovery and to enable the parties to move 15 efficiently toward claim construction and the eventual resolution of their dispute.” Bell 16 Semiconductor, LLC v. NXP USA, Inc., No. 22-CV-00594-H-KSC, 2023 WL 2342037, at 17 *2 (S.D. Cal. Feb. 27, 2023) (quoting Pelican Int’l, Inc. v. Hobie Cat Co., No. 3:20-CV- 18 02390-RSH-MSB, 2023 WL 2127995, at *2 (S.D. Cal. Feb. 10, 2023)). 19 The Patent Local Rules accomplish this “by requiring both the plaintiff and 20 the defendant in patent cases to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those 21 contentions when new information comes to light in the course of discovery. 22 The rules thus seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories.” 23
24 Echologics, LLC v. Orbis Intelligent Sys., Inc., No. 21-CV-01147-RBM-AHG, 2022 WL 25 17724142, at *7 (S.D. Cal. Dec. 15, 2022) (quoting O2 Micro, 467 F.3d at 1365–66). 26 Under Patent Local Rule 3.3, an accused infringer must serve on all parties its 27 “Invalidity Contentions,” which must disclose specific information regarding the accused 28 infringer’s theories of invalidity in the case. See id. (citing S.D. Cal. Patent L.R. 3.3); see 1 also Pelican, 2023 WL 2127995, at *3. “In a lawsuit for patent infringement in the 2 Southern District of California, an accused infringer is limited to the invalidity theories and 3 prior art references it sets forth in its invalidity contentions.” Echologics, 2022 WL 4 17724142, at *7; accord Pelican, 2023 WL 2127995, at *3. Any invalidity theories not 5 properly disclosed pursuant to the Court’s Patent Local Rules “‘are barred from 6 presentation at trial (whether through expert opinion testimony or otherwise).’” See Bell 7 Semiconductor, 2023 WL 2342037, at *3 (quoting Pelican, 2023 WL 2127995, at *3); see 8 also In re PersonalWeb Techs., LLC Pat. Litig., No. 18-MD-02834-BLF-SVK, 2019 WL 9 11201545, at *3 (N.D. Cal. Aug. 7, 2019) (“The contentions are not a mere formality but 10 rather a requirement ‘to eliminate the gamesmanship of hints in favor of open disclosure.’” 11 (quoting Largan Precision Co. v. Genius Elec. Optical Co., No. 13-CV-02502-JD, 2014 12 WL 6882275, at *4 (N.D. Cal. Dec. 5, 2014))). 13 “The Court’s Patent Local Rules do not allow amendments to contentions as a matter 14 of course when new information is revealed in discovery.” Echologics, 2022 WL 15 17724142, at *7 (quoting Zest IP Holdings, LLC v. Implant Direct MFG, LLC, No. 10-CV- 16 0541-GPC-WVG, 2014 WL 358430, at *3 (S.D. Cal. Jan. 31, 2014)). “Rather, a party 17 seeking to amend its infringement or invalidity contentions must satisfy the relevant 18 provisions set forth in Patent Local Rule 3.6.” Id.; accord Pelican, 2023 WL 2127995, at 19 *3. “In contrast to the more liberal policy for amending pleadings, the philosophy behind 20 amending contentions under the Patent Local Rules is decidedly conservative, and 21 designed to prevent the shifting sands approach to claim construction.” Echologics, 2022 22 WL 17724142, at *7 (quoting Regents of Univ. of Cal. v. Affymetrix, Inc., No. 17-CV- 23 01394-H-NLS, 2018 WL 4053318, at *2 (S.D. Cal. Aug. 24, 2018)); accord Genentech, 24 Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed. Cir. 2002). 25 Patent Local Rule 3.6(b) governs amendments to invalidity contentions: 26 As a matter of right, a party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” no later than the completion of claim 27 construction discovery. Thereafter, absent undue prejudice to the opposing 28 party, a party opposing infringement may only amend its validity contentions: 1 1. If a party claiming patent infringement has served “Amended Infringement Contentions,” and the party opposing a claim of patent 2 infringement believes in good faith that the Amended Infringement 3 Contentions so require;
4 2. If, not later than fifty (50) days after service of the Court’s Claim 5 Construction Ruling, the party opposing infringement believes in good faith that amendment is necessitated by a claim construction that differs from that 6 proposed by such party; or 7 3. Upon a timely motion showing good cause. 8
9 S.D. Cal. Patent L.R. 3.6(b). Additionally, Patent Local Rule 3.6 states: “This rule does 10 not relieve any party from its obligations under Fed. R. Civ. P 26 to timely supplement 11 disclosures and discovery responses.” S.D. Cal. Patent L.R. 3.6. 12 “‘A district court has wide discretion in enforcing the Patent Local Rules.’” Pelican, 13 2023 WL 2127995, at *4 (quoting CliniComp, 2022 WL 16985003, at *12); see 14 Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed. Cir. 2016) 15 (reviewing “a district court’s application of its local rules for abuse of discretion”). The 16 Federal Circuit will “affirm decisions in which [a] district court enforced its own local 17 rules, unless it is ‘clearly unreasonable, arbitrary, or fanciful; based on erroneous 18 conclusions of law; clearly erroneous; or unsupported by any evidence.’” Howmedica 19 Osteonics, 822 F.3d at 1324; see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 20 811 F.3d 1314, 1321 (Fed. Cir. 2016) (“‘[T]his court defers to the district court when 21 interpreting and enforcing local rules so as not to frustrate local attempts to manage patent 22 cases according to prescribed guidelines.’”). 23 ANALYSIS 24 Every asserted claim in this action contains a “ferrofluid” claim limitation. (See ECF 25 No. 234-9, Ex. I at p. 481 (listing the asserted claims).) Independent claim 1 of the ’885 26 Patent contains the following limitation: “wherein movement of the moving portion is 27 damped by a ferrofluid in physical contact with at least the moving portion.” ’885 Patent 28 col. 14 ll. 59–61. And independent claim 1 of the ’117 Patent similarly contains the 1 following limitation: “wherein vibration of the apparatus is damped by a viscous ferrofluid 2 in physical contact with at least the moving portion.” ’117 Patent col. 14 ll. 60–62. 3 In its initial invalidity contentions, Apple identified its iPhone 6 and iPhone 6 Plus 4 products as prior art references and asserted that each of those two references in 5 combination with other references render obvious claims 1 through 17 of the ’117 Patent 6 and claims 1 through 20 of the ’885 Patent.2 (See ECF No. 234-1 (“Ex. A”) at p. 2; ECF 7 No. 234-2 (“Ex. B”) at p. 56; ECF No. 234-3 (“Ex. C”) at p. 105; ECF No. 234-4 (“Ex. 8 D”) at p. 174.) On November 18, 2022, Apple served Taction with its Amended Invalidity 9 Contentions, (see Sproul Decl. ¶ 14), in which Apple—for the first time—asserted that the 10 iPhone 6 and iPhone 6 Plus prior art references anticipate the asserted claims of the ’885 11 Patent and the ’117 Patent.3 (See ECF No. 234-5 (“Ex. E”) at p. 247; ECF No. 234-6 (“Ex. 12 F”) at p. 315; ECF No. 234-7 (“Ex. G”) at p. 377; ECF No. 234-8 (“Ex. H”) at p. 429.) 13 And Apple for the first time asserted that the iPhone 6 and iPhone 6 Plus prior art references 14 satisfy the ferrofluid claim limitations at issue. (Compare Ex. E at pp. 281–87; Ex. F at 15 pp. 344–51; Ex. G. at pp. 397–402; Ex. H at pp. 449–54, with Ex. A at pp. 15–16; Ex. B at 16 p. 66; Ex. C at pp. 125–26; Ex. D at pp. 193–94.) 17 Through its Motion, Taction argues that these amendments to Apple’s Amended 18 Invalidity Contentions violated Patent Local Rule 3.6 and therefore seeks to strike claim 19 charts regarding the iPhone 6 and iPhone 6 Plus references and to preclude Apple from 20 21 2 To prove that a patent claim is invalid as obvious under 35 U.S.C. § 103, an accused infringer must show 22 “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary 23 skill in the art to which said subject matter pertains.” TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1357 (Fed. Cir. 2019) (quoting 35 U.S.C. § 103(a)); accord KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 24 406 (2007). “Obviousness can be proven by combining existing prior art references, while anticipation 25 requires all elements of a claim to be disclosed within a single reference.” Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). 26 3 To prove that a patent claim is invalid as anticipated under 35 U.S.C. § 102, an accused infringer must 27 show that “a single prior art reference disclose[s] each and every limitation of the claimed invention, either explicitly or inherently.” See SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019); see 28 1 contending “that the iPhone 6 or iPhone 6 Plus anticipate the asserted claims or otherwise 2 meet the ferrofluid limitations.” (See ECF No. 205-1 (“Mem.”) at 1–2, 5–12.4) In 3 response, Apple argues that Taction’s challenge to its amended invalidity contentions 4 should be rejected for three reasons. (See Opp’n at 8.) First, Apple argues that Taction 5 waived its ability to challenge Apple’s November 18, 2023 Amended Invalidity 6 Contentions by failing to raise the issue in a timely manner. (See id. at 8–10.) Second, 7 Apple contends that it merely supplemented its invalidity contentions as permitted by 8 Patent Local Rule 3.6. (See id. at 10–11.) Third and finally, Apple argues that “good 9 cause” exists under Patent Local Rule 3.6(b)(3) for it to amend its invalidity contentions. 10 (See id.at 12–25.) The Court addresses each of Apple’s three arguments in turn below. 11 I. Timeliness of Taction’s Challenge 12 Apple argues that Taction waived any challenge to the Amended Invalidity 13 Contentions by failing timely to raise its challenge to the Court. (See Opp’n at 8–10.) On 14 September 23, 2022, Judge Burkhardt issued an Amended Case Management Order that 15 provided: 16 Discovery disputes must be brought to the Court’s attention in the time and manner required by § V of Judge Burkhardt’s Civil Chambers Rules. All 17 discovery disputes must be raised within 30 calendar days of the service 18 of an objection, answer, or response that becomes the subject of dispute, or the passage of a discovery due date without response or production, and only 19 after counsel (and any unrepresented parties) have met and conferred to 20 resolve the dispute. See J. Burkhardt Civ. Chambers R. § V. 21 (See ECF No. 140 at 2 ¶ 2 (emphasis in original).) Judge Burkhardt’s Civil Chambers 22 Rules also require that “[c]ounsel shall commence the meet and confer process within 14 23 calendar days of the event giving rise to the dispute.” J. Burkhardt Civ. Chambers R. 24 § V.A (emphasis in original). According to Apple, Taction failed to comply with Judge 25 Burkhardt’s timeline to raise its present challenge to the Amended Invalidity Contentions. 26
27 4 A sealed version of Taction’s memorandum of points and authorities in support of its Motion also appears 28 1 (See Opp’n at 8–10.) Specifically, although the Amended Invalidity Contentions were 2 served on November 18, 2022, (1) Taction did not raise any issue with the contentions to 3 Apple until December 29, 2022; (2) the Parties did not meet and confer on the issue until 4 January 12, 2023; and (3) Taction did not raise its challenge to the Court until January 31, 5 2023, when the parties filed a joint discovery statement with the Judge Burkhardt. (See id. 6 at 9; see also Sproul Decl. ¶ 14; ECF No. 235-1 (“Ex. 5”).) 7 In response, Taction asserts that Apple’s argument fails because Judge Burkhardt 8 rejected it when she concluded that the present issue should be raised as a noticed motion 9 before the district judge. (See Reply at 1–2.) Although the Court disagrees with Taction 10 that Judge Burkhardt concluded its challenge was timely, the Court agrees that Apple’s 11 reliance on paragraph 2 of Judge Burkhardt’s September 23, 2022 Amended Case 12 Management Order is misplaced. By its plain terms, the provision applies only to 13 “[d]iscovery disputes.” (See ECF No. 140 at 2 ¶ 2.) A challenge to the disclosures in 14 another party’s infringement or invalidity contentions, however, is not a “discovery 15 dispute.” While discovery disputes in this District are generally referred to the magistrate 16 judges, motions to strike infringement and/or invalidity contentions are heard by the district 17 court judges. See, e.g., Evolusion Concepts, Inc. v. Cross Eng’g, LLC, No. 18-CV-0871 18 DMS (MSB), 2019 WL 13149923, at *1 (S.D. Cal. Apr. 8, 2019); Apple Inc. v. Wi-LAN, 19 Inc., No. 14CV2235 DMS (BLM), 2018 WL 9538772, at *1 (S.D. Cal. Mar. 2, 2018); In 20 re Qualcomm Litig., No. 17-CV-00108-GPC-MDD, 2018 WL 1406944, at *1 (S.D. Cal. 21 Mar. 21, 2018); Multimedia Pat. Tr. v. Apple Inc., No. 10-CV-2618-H KSC, 2012 WL 22 4547449, at *1 (S.D. Cal. Sept. 28, 2012). Further, the deadline in paragraph 2 of the 23 Court’s scheduling order is only triggered by the service of “an objection, answer, or 24 response.” (See ECF No. 140 at 2 ¶ 2.) Amended invalidity contentions are not an 25 objection, answer, or response to a discovery request. The Court therefore rejects Apple’s 26 argument that Taction waived its ability to challenge the November 18, 2023 Amended 27 / / / 28 / / / 1 Invalidity Contentions by failing to comply with the deadline in the Court’s scheduling 2 order.5 3 II. Supplementation Under Patent Local Rule 3.6 4 Apple next contends that Taction’s motion should be denied because Apple merely 5 “supplemented” its invalidity contentions as permitted by Patent Local Rule 3.6. (See 6 Opp’n at 10–11.) Specifically, Apple relies on the following sentence from Patent Local 7 Rule 3.6: “This rule does not relieve any party from its obligations under Fed. R. Civ. P 8 26 to timely supplement disclosures and discovery responses.” See S.D. Cal. Patent L.R. 9 3.6. Apple argues that this sentence “allow[s] for supplementation of invalidity 10 contentions, and indeed require[s] it, upon the discovery of new facts. (See Opp’n at 10.) 11 Taction responds that Apple’s supplementation argument relies on a strained reading of 12 Patent Local Rule 3.6 and should be rejected. (See Reply at 2–3.) The Court agrees with 13 Taction. 14 In the sentence on which Apple relies, Patent Local Rule 3.6 refers to Federal Rule 15 of Civil Procedure 26’s supplementation requirements, which provide: 16 A party who has made a disclosure under Rule 26(a)—or who has responded to an interrogatory, request for production, or request for admission—must 17 supplement or correct its disclosure or response: 18 (A) in a timely manner if the party learns that in some material respect the 19 disclosure or response is incomplete or incorrect, and if the additional 20 or corrective information has not otherwise been made known to the other parties during the discovery process or in writing; or 21
22 (B) as ordered by the court.
23 / / / 24
25 26 5 To be clear, although the Court ultimately concludes that Apple’s timeliness argument is without merit, the Court does not condone Taction’s delay in raising the issue. Even in the absence of a firm deadline to 27 file this Motion, an attorney should have taken the time to review the Amended Invalidity Contentions soon after they were served on Taction. For the reasons discussed below, however, the Court concludes 28 1 Fed. R. Civ. P. 26(e)(1). By its plain terms, Rule 26(e)(1)’s supplementation requirements 2 only apply to Rule 26(a) disclosures,6 responses to interrogatories, responses to requests 3 for production, and responses to requests for admissions. An accused infringer’s invalidity 4 contentions do not qualify as any of the documents specified by Rule 26(e)(1). As such, 5 Patent Local Rule 3.6 and Rule 26(e)(1) do not provide any basis for the “supplementation” 6 of infringement contentions.7 Cf. Bell Semiconductor, 2023 WL 2342037, at *6 7 (explaining to patentee that any “‘supplementation’” of its infringement contentions 8 constitutes “amendments” to those contentions). Indeed, courts in this District have 9 expressly held that “[t]he Court’s Patent Local Rules do not allow amendments to 10 contentions as a matter of course when new information is revealed in discovery.” See 11 Echologics, 2022 WL 17724142, at *7 (internal quotation marks omitted) (quoting Zest IP 12 Holdings, 2014 WL 358430, at *3); accord Pelican, 2023 WL 2127995, at *3. “Rather, a 13 party seeking to amend its infringement or invalidity contentions must satisfy the relevant 14 provisions set forth in Patent Local Rule 3.6,” which for infringement contentions are the 15 provisions in Rule 3.6(a) and for invalidity contentions are the provisions in Rule 3.6(b). 16 See Echologics, 2022 WL 17724142, at *7; accord Pelican, 2023 WL 2127995, at *3. 17 Moreover, the Court rejects Apple’s assertion that its Amended Invalidity 18 Contentions have not “meaningfully changed.” Contrary to Apple’s assertions, it did not 19 merely amend its infringement contentions to disclose “a single fact.” (See Opp’n at 20 10–11, 20.) Rather, Apple made substantive amendments to its invalidity contentions that 21 represent new invalidity theories. That the changes at issue are substantive amendments 22 and new invalidity theories can be seen from an examination of the provisions in Patent 23 Local Rules 3.3(b) and (c), which contain disclosure requirements for an accused 24 25 6 Rule 26(a) disclosures are initial disclosures, expert disclosures, and pretrial disclosures. See Fed. R. 26 Civ. P. 26(a).
27 7 Taction persuasively argues that the more sensible reading on the last sentence of Patent Local Rule 3.6 is that it merely reminds parties that the passing of the deadlines set forth in Rule 3.6 does not permit a 28 1 infringer’s invalidity contentions. Patent Local Rule 3.3(b), for example, requires the 2 disclosure of “[w]hether each item of prior art anticipates each asserted claim or renders it 3 obvious.” S.D. Cal. Patent L.R. 3.3(b). In the Amended Invalidity Contentions, Apple for 4 the first time asserted that the two prior art references at issue anticipate the asserted claims 5 of the asserted patents. (See Ex. E at p. 247; Ex. F at p. 315; Ex. G. at p. 377; Ex. H at 6 429.) As such, those changes are substantive amendments to Apple’s Rule 3.3(b) 7 disclosures and are new invalidity theories even if the prior art references had been 8 previously disclosed as obviousness references in earlier contentions. See, e.g., Polaris 9 PowerLED Techs., LLC v. VIZIO, Inc., No. SACV181571JVSDFMX, 2020 WL 4258663, 10 at *4 (C.D. Cal. May 14, 2020) (striking expert opinion for disclosing new theory of 11 invalidity where expert attempted to use prior art as an anticipatory reference when the 12 prior art had only been previously disclosed as an obviousness reference in the invalidity 13 contentions). 14 Similarly, Patent Local Rule 3.3(c) requires: “A chart identifying where specifically 15 in each alleged item of prior art each element of each asserted claim is found.” See S.D. 16 Cal. Patent L.R. 3.3(c). In the Amended Invalidity Contentions, Apple for the first time 17 asserted that the two prior art references at issue satisfy the ferrofluid limitations in the 18 asserted claims. (See Ex. E at pp. 281–87; Ex. F at pp. 344–51; Ex. G. at pp. 397–402; Ex. 19 H at pp. 449–54.) As such, those changes are substantive amendments to Apple’s Rule 20 3.3(c) disclosures and are new invalidity theories even if the prior art references had been 21 previously disclosed as satisfying other limitations.8 See, e.g., Asia Vital Components Co. 22 23 24 8 The Court notes that district courts interpret changes to infringement contentions in a similar way. A 25 change to even just one claim limitation to identify a different element of an accused product is considered a new theory of infringement. See, e.g., Echologics, LLC v. Orbis Intelligent Sys., Inc., No. 21-CV-01147- 26 RBM-AHG, 2023 WL 2756492, at *9 (S.D. Cal. Mar. 27, 2023) (granting motion to strike expert report that identified a different component in the accused product as satisfying the relevant claim limitation than 27 was disclosed in the infringement contentions); Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999- BLF, 2015 WL 3640694, at *3–4 (N.D. Cal. June 11, 2015) (same); MediaTek Inc. v. Freescale 28 1 v. Asetek Danmark A/S, No. 16-CV-07160-JST, 2018 WL 4945316, at *5 (N.D. Cal. 2 Oct. 11, 2018) (striking expert opinions that the “prior art teaches additional limitations not 3 identified in the invalidity contentions” on the grounds that those opinions represent “new 4 invalidity theories that were not properly disclosed”); Largan, 2014 WL 6882275, at *5 5 (same); Verinata Health, Inc. v. Sequenom, Inc., No. C 12-00865 SI, 2014 WL 4100638, 6 at *7–8 (N.D. Cal. Aug. 20, 2014) (same).9 7 Because the changes at issue are substantive amendments to Apple’s invalidity 8 disclosures under Patent Local Rule 3.3(b) and 3.3(c), for those amendments to have been 9 proper, Apple needed to satisfy one of the provisions set forth in Patent Local Rule 3.6(b). 10
11 9 At the hearing, Apple argued that district courts allow modifications to previously charted prior art, citing 12 to Kilopass Technology Inc. v. Sidense Corporation, No. C 10-02066 SI, 2012 WL 1901198, at *2–3 13 (N.D. Cal. May 24, 2012); Oracle America, Inc. v. Google Inc., No. C 10-03561 WHA, 2011 WL 3443835, at *5 (N.D. Cal. Aug. 8, 2011); and Chemfree Corp. v. J. Walter, Inc., No. CIV. 1:04-CV- 14 3711JTC, 2008 WL 4845129, at *4 (N.D. Ga. Aug. 27, 2008). Not only is this argument untimely, see, e.g., ABS Glob., Inc. v. Cytonome/ST, LLC, 984 F.3d 1017, 1027 (Fed. Cir. 2021) (finding argument 15 waived because it was “raised for the first time during oral argument”); CliniComp, 2022 WL 16985003, at *21 (same), but the Court does not find Apple’s reliance on these three cases persuasive as none of the 16 cases appear to deal with a situation—like here—where although the accused infringer previously charted 17 the reference, the accused infringer is now attempting to assert for the first time that the reference satisfies a new limitation. 18 In Oracle, for example, the accused infringer previously disclosed the references at issue as anticipatory 19 references and was seeking to amend its charts to now disclose obviousness combinations based on those references. See 2011 WL 3443835, at *5. Because the references at issue were previously disclosed and 20 charted as anticipatory references, the accused infringer had already asserted that the references met each 21 and every limitation at issue, meaning there were no new limitation disclosures at issue with respect to those amendments. In Chemfree, the accused infringers sought to add more detail to previously charted 22 references. See 2008 WL 4845129, at *4 (“[T]he new claim charts appear to be more detailed than the claim charts included in Defendants’ previous invalidity contentions.”). There is no indication that these 23 additional details included asserting that the references satisfied new limitations. Finally, in Kilopass, the accused infringer sought to amend its contentions to assert new obviousness combinations. See 2012 WL 24 1901198, at *2–3. There is no indication that those new combinations included asserting that the 25 references at issue satisfied new limitations. As such, Kilopass, Oracle, and Chemfree are all distinguishable from the present case. 26 By contrast, the Court found three cases in which an accused infringer attempted to assert that a previously 27 disclosed prior art reference satisfied a new claim limitation. In each case, the district court struck the new invalidity theory. See, e.g., Asia Vital, 2018 WL 4945316, at *5; Largan, 2014 WL 6882275, at *5; 28 1 See Pelican, 2023 WL 2127995, at *3; Echologics, 2022 WL 17724142, at *7; Zest IP 2 Holdings, 2014 WL 358430, at *3. 3 III. Good Cause Under Patent Local Rule 3.6(b)(3) 4 Finally, Apple argues that there exists good cause to amend its Amended Invalidity 5 Contentions under Patent Local Rule 3.6(b)(3). (See Opp’n at 12–25.) By its plain terms, 6 however, Patent Local Rule 3.6(b)(3) only permits amendment of an accused infringer’s 7 invalidity contentions “upon a timely motion showing good cause.” See S.D. Cal. Patent 8 L.R. 3.6(b)(3) (emphasis added). A request for leave to amend in an opposition brief to a 9 motion to strike that is filed four months after the amended contentions at issue were 10 already served is neither “timely” nor a “motion.” See Fed. R. Civ. P. 7(b)(1) (“A request 11 for a court order must be made by motion.”). As such, Apple cannot rely on Patent Local 12 Rule 3.6(b)(3) to justify the amendments at issue. 13 At the hearing, Apple argued that it should be permitted to amend its invalidity 14 contentions through its Opposition, citing—concededly for the first time—to Slot Speaker 15 Technologies, Inc. v. Apple, Inc., No. 13-CV-01161-HSG(DMR), 2017 WL 235049, at *8 16 (N.D. Cal. Jan. 19, 2017), and 0912139 B.C. Ltd. v. Rampion USA Inc., No. C18-1464JLR, 17 2019 WL 3082290, at *8 (W.D. Wash. July 15, 2019). The Court agrees with Taction that 18 it was improper for Apple to raise this argument for the first time at the hearing, and, 19 therefore, the argument is untimely and waived. See, e.g., ABS Glob., Inc., 984 F.3d at 20 1027; CliniComp, 2022 WL 16985003, at *21. In any event, those two cases are of no help 21 to Apple here. Slot Speaker is a decision from the Northern District of California, and 22 0912139 B.C. is a decision from the Western District of Washington. The Patent Local 23 Rules for the Northern District of California and the Western District of Washington only 24 require an “order of the Court upon a timely showing of good cause” for a party to be able 25 to amend its invalidity contentions. See N.D. Cal. Patent L.R. 3-6; W.D. Wash. Patent L.R. 26 124. By contrast, Southern District of California Patent Local Rule 3.6(b)(3) specifically 27 and expressly requires “a timely motion showing good cause.” See S.D. Cal. Pat. L.R. 28 / / / 1 3.6(b)(3) (emphasis added). Because Apple never filed a “timely motion,” Patent Local 2 Rule 3.6(b)(3) is inapplicable. 3 The Court also finds persuasive Taction’s argument that it would be unwise to permit 4 parties to violate the Patent Local Rules and then later seek retroactive permission to amend 5 because such a procedure would make civil litigation entirely unwieldly for both parties 6 and the judiciary and incentivize untimely disclosures. (See Reply at 5.) The Court agrees 7 that an “amend first, ask for permission later” policy would contravene and undermine the 8 policies underlying the Court’s Patent Local Rules, which “are designed to require parties 9 to crystallize their theories of the case early in the litigation and to adhere to those theories 10 once they have been disclosed.” See CliniComp, 2022 WL 16985003, at *12 (S.D. Cal. 11 Nov. 15, 2022). In any event, allowing a party to request amendment retroactively is 12 clearly not permitted under the plain language of Patent Local Rule 3.6(b)(3), which 13 requires the filing of “a timely motion.” 14 In sum, the amendments at issue in Apple’s Amended Invalidity Contentions violate 15 the Court’s Patent Local Rules, specifically Patent Local Rule 3.6(b). As such, the proper 16 remedy is to strike those portions of the contentions and preclude Apple from asserting at 17 trial that the iPhone 6 or the iPhone 6s satisfies the ferrofluid limitations in the asserted 18 claims and preclude Apple from asserting that the iPhone 6 or the iPhone 6s anticipates the 19 asserted claims. Although Apple argued at the hearing that it would be an “extraordinary 20 remedy” for the Court to strike the fact that the iPhone 6 has ferrofluid from the case, (see 21 also, e.g., ECF No. 235 at 1, 11), the Court is not striking a “fact.” Rather, the Court is 22 striking untimely invalidity theories that were improperly disclosed in violation of the 23 Court’s Patent Local Rules. Consistent with the holdings of many district courts, any 24 invalidity theories that are not properly disclosed pursuant to the Court’s Patent Local 25 Rules “are barred from presentation at trial (whether through expert opinion testimony or 26 otherwise).” See Bell Semiconductor, 2023 WL 2342037, at *3; accord Pelican, 2023 WL 27 2127995, at *3; Simpson Strong-Tie Co., Inc. v. Oz-Post Int’l, LLC, 411 F. Supp. 3d 975, 28 981 (N.D. Cal. 2019); Huawei Techs., Co, Ltd v. Samsung Elecs. Co., 340 F. Supp. 3d 934, 1 || 946 (N.D. Cal. 2018); Verinata, 2014 WL 4100638, at *3. Indeed, the Federal Circuit has 2 ||explained: “Because patent local rules are essentially a series of case management orders, 3 || a district court may impose any just sanction for the failure to obey them, including refusing 4 ||to allow the disobedient party to support or oppose designated claims or defenses, or 5 || prohibiting that party from introducing designated matters in evidence.” Phigenix, Inc. v. 6 || Genentech, Inc., 783 F. App’x 1014, 1016 (Fed. Cir. 2019) (internal quotation marks 7 || omitted) (affirming district court’s striking of infringement theory from expert report for 8 || failure to comply with the patent local rules (quoting O2 Micro, 467 F.3d at 1363)). As 9 || such, preclusion of these improperly disclosed invalidity theories from presentation at trial 10 |/is the proper remedy here. 11 CONCLUSION 12 For the reasons above, the Court GRANTS Taction’s Motion to Strike Apple’s 13 || Amended Invalidity Contentions (ECF No. 205) and PRECLUDES Apple from asserting 14 |/at trial that the iPhone 6 or the iPhone 6 Plus (1) satisfies the ferrofluid limitations in the 15 || asserted claims, and (2) anticipates the asserted claims. 16 IT IS SO ORDERED. 17 Dated: April 17, 2023 18 [ odd (2 re 19 Honorable Todd W. Robinson United States District Judge 20 21 22 23 24 25 26 27 28