Universal Connectivity Technologies Inc. v. HP Inc.

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 UNIVERSAL CONNECTIVITY Case No. 24-cv-04097-NW (SVK) TECHNOLOGIES INC., 8 Plaintiff, ORDER GRANTING PLAINTIFF’S 9 MOTION FOR LEAVE TO AMEND ITS v. INFRINGEMENT CONTENTIONS; 10 DIRECTING BRIEFING RE HP INC., DEFENDANT’S MOTION TO STRIKE; 11 DEFERRING PLAINTIFF’S MOTION Defendant. TO COMPEL AMENDED INVALIDITY 12 CONTENTIONS 13 Re: Dkt. Nos. 101, 102

14 Before the Court are Plaintiff Universal Connectivity Technologies, Inc.’s (“UCT”) and 15 Defendant HP Inc.’s (“HP”) discovery disputes relating to their patent infringement and invalidity 16 contentions. The primary dispute is UCT’s Motion for Leave to Amend its Infringement 17 Contentions. Dkt. 101 (the “Motion”).1 HP opposes the Motion. Dkts. 109-110. During briefing 18 on the Motion, the Parties also submitted a joint letter setting forth two related discovery disputes: HP’s motion to strike the infringement contentions as deficient and UCT’s motion to compel HP 19 to narrow its invalidity contentions. Dkt. 102 (the “Joint Letter”). The Parties sought permission 20 from the Honorable Yvonne Gonzalez Rogers to fully brief the disputes. Id. After reassignment 21 to the Honorable Noël Wise, Judge Wise referred these disputes to the undersigned. Dkt. 118. 22 The Court has determined that the Motion and the requests for further briefing are suitable for 23 24 1 The Motion contains limited redactions based upon Plaintiff’s request to seal certain of the 25 underlying infringement charts connected with this Motion. See Dkts. 101, 114 (Plaintiff’s Admin. Motions to File Under Seal). Apart from noting, as Plaintiff represents and as Defendant 26 does not challenge, that “the amendments do not change UCT’s infringement theory [and] do not add any new products or claims,” (Dkt. 101 at 2, 12), the Court’s rationale in resolving the instant 27 disputes does not rely on the information sought to be sealed. The Court accordingly 1 resolution without oral argument. Civil L.R. 7-1(b). Having considered the Parties’ briefs, the 2 relevant law and the record in this action, the Court GRANTS UCT’s Motion. Additionally, the request for further briefing on HP’s motion to strike is GRANTED to the extent set forth below 3 while the request for further briefing on UCT’s motion to compel is DEFERRED. 4 5 I. BACKGROUND UCT filed this patent action in the Western District of Texas on September 28, 2023, 6 accusing certain “HP laptops, desktops, monitors, and docking stations” of infringing eight patents 7 based on those products’ compliance with various USB, DisplayPort, PCIe power, and data 8 transfer standards. Dkt. 101 at 2; see, generally, Dkt. 1. 9 UCT served its initial infringement contentions on March 26 and served its first amended 10 contentions, reducing the number of asserted claims to 70, on May 24, 2024. Dkt. 101 at 2. On 11 July 8, 2024, the Western District of Texas transferred venue to this District, (Dkt. 52), and on 12 October 21, 2024, UCT served updated infringement contentions based on this District’s Patent 13 Local Rules (Dkt. 101 at 3). On November 27, 2024, HP informed UCT of perceived deficiencies 14 in its contentions and the Parties met and conferred regarding these deficiencies on December 10. 15 Dkt. 101 at 3. UCT proposed amended contentions on December 20, 2024. Id. HP rejected the 16 amended contentions, asserting that they remained deficient, on January 30, 2025. After further 17 meet-and-confer efforts, UCT filed this Motion on February 12, 2025. 18 19 II. LEGAL STANDARD A party may amend its infringement contentions “only by order of the court upon a timely 20 showing of good cause.” Patent L.R. 3-6. “[A]s a general rule, mistakes or omissions are not by 21 themselves good cause.” Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS 22 (JSC), 2016 WL 2855260, at *3 (N.D. Cal. May 13, 2016) (internal citation and quotation 23 omitted). 24 Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause 25 include: (a) A claim construction by the Court different from that 26 proposed by the party seeking amendment; (b) Recent discovery of material, prior art despite earlier diligent search; and (c) Recent discovery of nonpublic information about the Accused 27 Instrumentality which was not discovered, despite diligent efforts, 1 Patent L.R. 3-6. 2 “The good cause inquiry is two-fold: (1) whether the moving party was diligent in 3 amending its contentions; and (2) whether the non-moving party would suffer prejudice if the 4 motion to amend were granted.” Synchronoss Techs., Inc. v. Dropbox Inc., No. 16-CV-00119- 5 HSG, 2018 WL 5619743, at *3 (N.D. Cal. Oct. 29, 2018) (citation omitted). “If the moving party 6 was not diligent, the inquiry should end; … [but] if the court finds that the moving party has acted 7 with diligence, it must then determine whether the nonmoving party would suffer prejudice if the 8 motion to amend were granted.” Contour IP Holding, LLC v. GoPro Inc., No. 17-cv-04738- 9 WHO, 2020 WL 109063, at *3 (N.D. Cal. Jan. 9, 2020) (citing O2 Micro Intern. Ltd. v. 10 Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006)). 11 III. DISCUSSION 12 A. UCT Was Diligent in Seeking Leave to Amend 13 UCT as the moving party that bears the burden of demonstrating diligence. O2 Micro, 467 14 F.3d at 1366. UCT asserts that it was diligent in amending its infringement contentions, and HP 15 does not challenge diligence in its opposition. Dkt. 101 at 4-11; see, generally, Dkt. 109. The 16 Court agrees with UCT. The diligence inquiry consists of two sub-parts: “(1) whether [the 17 moving party] was diligent in discovering the basis for the proposed amendment, and (2) how 18 quickly it moved to amend the contentions …” thereafter. Viavi Sols. Inc., v. Platinum Optics 19 Tech., Inc., No. 20-cv-05501-EJD (SVK), Dkt. 185, at 6 (N.D. Cal. June 23, 2022). 20 As to the first factor, although in certain circumstances deficiencies brought to light by an 21 opposing party could weigh against a finding of diligence, (see Hewlett Packard Co. v. 22 Servicenow, Inc., No. 14-cv-00570-BLF (HRL), 2016 WL 692828, at *4 (N.D. Cal. Feb. 19, 23 2016)), that is not the case at hand. One reason is that Rule 3-6 expressly states that its “good 24 cause” examples are non-exhaustive. A second reason is that once HP raised asserted deficiencies 25 in its November 27, 2024 letter, UCT proceeded diligently in evaluating the potential deficiencies, 26 meeting and conferring with HP and proffering amendments in an attempt to remedy the 27 deficiencies. See Dkt. 101 at 3. 1 faith meet-and-confer efforts (which the Court will not penalize), UCT sought to amend its 2 contentions less than two months after serving its first infringement contentions in this District. 3 Dkt. 101 at 3. This is sufficiently diligent. See, e.g., The Regents of the University of Michigan v. 4 Leica Microsystems, Inc., No. 19-cv-07470-WHO, Dkt. 88 at 2-3 (N.D. Cal. Oct. 26, 2023) 5 (finding that three months pre-stay plus three months post-stay was “not excessive”). 6 Accordingly, UCT has shown diligence. 7 B. HP Will Not Be Prejudiced by the Amendment 8 “Prejudice can be shown when there will be disruptions to the case schedule or other court 9 orders, or when a party changes its infringement theories or requires its opposition to prepare 10 additional defenses.” R.N Nehushtan Tr. Ltd. v. Apple Inc., No. 22-cv-01832-WHO, 2023 WL 11 5663155, at *1 (N.D. Cal. Aug. 30, 2023). Here, HP argues that it is prejudiced because the initial 12 and, in HP’s view, ongoing, deficiencies in UCT’s “opaque infringement theories” “create 13 significant uncertainties regarding the scope of discovery and claim construction.” Dkt. 109 at 1, 14 4-5. HP argues, for example, that because UCT’s proposed amendments are deficient, “HP cannot 15 fully plan its defenses” and will be “forced to collect and respond to discovery” based on 16 purportedly deficient theories. Id. at 5. 17 The prejudice HP points to may well be a real consequence of deficient contentions. Of 18 course, by amending its contentions to add more detail, UCT takes steps to alleviate such 19 prejudice—not add to it. The Court agrees that “HP cannot be prejudiced by virtue of UCT’s 20 additional detail and evidence addressing the very deficiencies that HP identified in the first 21 place.” Dkt. 115 at 3. Accordingly, whatever prejudice HP would suffer from UCT’s original 22 contentions, such prejudice does not suggest that UCT’s motion to amend should be denied. 23 HP’s real complaint is that, for various reasons, UCT’s amendments remain deficient and 24 so should be denied as futile. See Dkt. 109 at 5-22. UCT responds that such arguments do not go 25 to the prejudice of the amendment but to the alleged prejudice of deficient contentions and argues 26 that “HP does not provide any support for its position that the sufficiency or ‘futility’ of the 27 amendments is relevant to the ‘good cause’ standard.” Dkt. 115 at 3-4. The Court agrees with 1 considered in assessing leave to amend under Rule 15(a), is part of this District’s “good cause” 2 inquiry for amending contentions. Dkt. 109 at 3 (citing Trans Video Elecs., Ltd. v. Sony Elecs., 3 Inc., 278 F.R.D. 505, 507 (N.D. Cal. 2011), aff’d, 475 F. App’x 334 (Fed. Cir. 2012) and Sage 4 Electrochromics, Inc. v. View, Inc., No. 12-cv-6441-JST, 2014 WL 1379282, at *1 (N.D. Cal. Apr. 5 8, 2014)); Fed. R. Civ. P. 15(a); Foman v. Davis, 371 U.S. 178, 182 (1962). As reasoned below, 6 these cases do not address the present dispute. 7 First, neither Trans Video nor Sage Electrochromics support the argument that the Rule 15 8 inquiry should apply to a motion for leave to amend patent contentions. Rather, they support the 9 position that Patent L.R. 3-6 and the “good cause” requirement may apply to a motion for leave to 10 amend a patent complaint (to add new patents and/or new patent claims). See Sage, 2014 WL 11 1379282, at *1; Trans Video, 278 F.R.D. at 506. As the court in Sage explained: 12 in permitting a party to amend the complaint to add a new infringement allegation, the court is effectively permitting the 13 amendment of the infringement contentions. It would be a strange result if a patent plaintiff were to be permitted to amend the complaint 14 to add a new patent infringement claim, and then denied the ability to amend the infringement contentions to reflect that change. 15 16 Sage, 2014 WL 1379282, at *2. This logic does not apply to the complementary situation here. 17 Moreover, neither court was confronted with opposing arguments, so, while including 18 some helpful discussion, neither court ultimately resolved the Rule 15 vs. Patent Local Rule 3-6 19 issue in reaching their conclusions. See Sage, 2014 WL 1379282, at *2 (explaining that “View 20 does not argue that the Patent L.R. 3–6 standard applies to this motion, and so the Court will not 21 apply it;” thus applying Rule 15); Trans Video, 278 F.R.D. at 507 (“Sony does not dispute that 22 both Rule 15 and Patent Local Rule 3-6 are applicable. Accordingly, the Court shall consider both 23 Rule 15 as well as Patent Local Rule 3-6 in determining whether to grant or deny Trans Video's 24 motion.”). Similarly, neither court engaged in a “futility” analysis, as HP urges this Court to do. 25 See, generally, Sage, 2014 WL 1379282, at *1; Trans Video, 278 F.R.D. 505. Finally, even in 26 Trans Video, where the court ultimately applied both Rule 15(a) and Patent Local Rule 3-6, the 27 court noted differences between the rules and conducted an alternative, not conjunctive, analysis. 1 made pursuant to Rule 15 or Patent Local Rule 3–6, lacks merit and is accordingly denied.”). 2 In sum, “futility” does not appear in the local rules. See Patent L.R. 3-6 (discussing the 3 need for a “timely showing of good cause” and “absent undue prejudice”). Nor has HP pointed to 4 any court that has examined “futility” in the context of motions to amend contentions. On this 5 record, the Court will not expand the “good cause” inquiry to include “futility” under Rule 15(a). 6 Independent of HP’s prejudice arguments, this Court notes that allowing UCT to amend at 7 this juncture will not disrupt the case schedule or other court orders. See R.N Nehushtan Tr. Ltd., 8 2023 WL 5663155, at *1 (N.D. Cal. Aug. 30, 2023). Fact discovery does not close until 9 November 14, 2025 (see Dkt. 93 at 2), and Judge Wise recently continued claim construction 10 deadlines and set the claim construction hearing for September 3, 2025, (Dkt. 123). Moreover, 11 while the proposed amended contentions add additional detail to UCT’s infringement theories, the 12 “theories have not changed [and] the Amended Contentions do not add new products or claims.” 13 See Dkt. 101 at 2, 12. While HP argues, as part of its futility argument, that the detail remains 14 insufficient, it does not assert that the theories have changed or that new products or claims have 15 been added. See, generally, Dkt. 109. 16 Accordingly, HP has not shown that it will be prejudiced by UCT’s amendments. 17 Because the Court has found that UCT was diligent and HP will not be prejudiced by the 18 amendment, it GRANTS UCT’s motion for leave to amend. UCT shall serve its amended 19 infringement contentions no later than June 3, 2025. 20 IV. THE COURT WILL PROCEED SEQUENTIALLY THROUGH THE MOTION TO STRIKE AND MOTION TO COMPEL INVALIDITY CONTENTIONS. 21 A. The Court Will Permit Abbreviated Briefing on the Motion to Strike 22 In granting UCT’s motion to amend its infringement contentions, the Court relies (in 23 addition to its diligence finding) upon the fact that HP has not shown that “futility” is a proper 24 consideration under this District’s Patent Local Rules. See, supra, § III.B. Accordingly, the Court 25 does not pass upon the merits of HP’s futility arguments, which boil down to various reasons why, 26 in HP’s view, the amended infringement contentions remain deficient. See, generally, Dkt. 109. 27 In the related discovery dispute letter, HP seeks leave to brief a motion to strike UCT’s original ] and amended infringement contentions based on a number of perceived deficiencies. Dkt. 102. 2 Because this Court has granted UCT leave to amend its infringement contentions, it will 3 DENY the motion to strike the original contentions as moot. However, the Court will allow 4 || abbreviated briefing as to HP’s motion to strike the amended infringement contentions. No later 5 || than 14 days after UCT serves its amended infringement contentions, HP shall file a 6 || supplemental brief, not to exceed 10 pages, setting forth its arguments as to why UCT’s amended 7 || infringement contentions should be stricken, either in whole or in part. UCT shall file a response, 8 || not to exceed 10 pages, no later than 14 days following HP’s supplemental brief. HP may then 9 || file a reply, not to exceed 5 pages, no later than 7 days following UCT’s response. The Court 10 || will set a hearing as needed. 11 B. The Court Defers the Motion to Compel Amended Invalidity Contentions 12 In the related discovery dispute letter, UCT also requests the opportunity to brief a motion 13. || to compel HP to amend its invalidity contentions, which UCT asserts are not compliant with this 14 || District’s local rules for various reasons. See Dkt. 102 at 3-4. HP disputes these assertions and 3 15 also argues that “it should not have to narrow the scope of its invalidity contentions without the a 16 || benefit of infringement contentions compliant with P.L.R. 3-1.” /d. at 3. 2 17 Without resolving the merits of the Parties’ dispute, the Court is persuaded that the dispute Z 18 over invalidity contentions is premature in light of the impending motion to strike. Accordingly, 19 || the Court will DEFER UCT’s request to fully brief its motion to compel until the court resolves 20 || the pending motion to strike. Within 10 days of such resolution, the Parties are ordered to meet 21 and confer regarding whether and to what extent HP will agree to amend its invalidity 22 || contentions. If the Parties cannot reach agreement as to the amended contentions, then within an 23 additional 3 days, the Parties are to submit a joint proposed briefing schedule. 24 SO ORDERED. 25 || Dated: May 29, 2025 26 Suse Vel SUSAN VAN KEULEN 27 United States Magistrate Judge 28