Case 3:16-cv-06180-WHA Document 158 Filed 07/10/17 Page 1 of 3
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`The Honorable William Alsup
`United States District Court Judge
`450 Golden Gate Avenue
`San Francisco, CA 94102
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`July 10, 2017
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`Re: Comcast Cable Communications, LLC v. OpenTV, Inc. and
`Nagravision SA, Case No. 3:16-cv-06180-WHA
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`Dear Judge Alsup:
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`In accordance with the Court’s précis requirement for motions (see Dkt. 145 at 12),
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`OpenTV, Inc. and Nagravision SA (collectively, “OpenTV”) respectfully request permission to
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`file a motion to amend its infringement contentions to identify one new product, the XG1v4 set-
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`top box, which was first sold by Comcast in May 2017. This new product came on the market
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`after OpenTV served its original infringement contentions, on March 17, 2017. OpenTV further
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`requests permission to move to supplement its counterclaims to account for this new product.
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`Patent Local Rule 3-6 permits amendment of infringement contentions by order of the
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`Court “upon a timely showing of good cause.” OpenTV has good cause to amend its
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`infringement contentions. First, good cause exists because OpenTV was diligent “in discovering
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`the basis for amendment,” and “in seeking amendment once the basis for amendment has been
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`discovered.” See Positive Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226 SI, 2013 WL 322556,
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`at *2 (N.D. Cal. Jan. 28, 2013). Upon learning of the newly-released product in May 2017,
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`OpenTV has been diligently—but unsuccessfully—attempting to resolve this matter by
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`agreement with Comcast: on May 31, OpenTV requested information from Comcast regarding
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`
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`The Honorable William Alsup
`United States District Court Judge
`450 Golden Gate Avenue
`San Francisco, CA 94102
`
`
`
`
`
`
`
`
`
`
`
`July 10, 2017
`
`Re: Comcast Cable Communications, LLC v. OpenTV, Inc. and
`Nagravision SA, Case No. 3:16-cv-06180-WHA
`
`Dear Judge Alsup:
`
`In accordance with the Court’s précis requirement for motions (see Dkt. 145 at 12),
`
`OpenTV, Inc. and Nagravision SA (collectively, “OpenTV”) respectfully request permission to
`
`file a motion to amend its infringement contentions to identify one new product, the XG1v4 set-
`
`top box, which was first sold by Comcast in May 2017. This new product came on the market
`
`after OpenTV served its original infringement contentions, on March 17, 2017. OpenTV further
`
`requests permission to move to supplement its counterclaims to account for this new product.
`
`Patent Local Rule 3-6 permits amendment of infringement contentions by order of the
`
`Court “upon a timely showing of good cause.” OpenTV has good cause to amend its
`
`infringement contentions. First, good cause exists because OpenTV was diligent “in discovering
`
`the basis for amendment,” and “in seeking amendment once the basis for amendment has been
`
`discovered.” See Positive Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226 SI, 2013 WL 322556,
`
`at *2 (N.D. Cal. Jan. 28, 2013). Upon learning of the newly-released product in May 2017,
`
`OpenTV has been diligently—but unsuccessfully—attempting to resolve this matter by
`
`agreement with Comcast: on May 31, OpenTV requested information from Comcast regarding
`
`
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`Case 3:16-cv-06180-WHA Document 158 Filed 07/10/17 Page 2 of 3
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`Judge Alsup
`July 10, 2017
`Page 2
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`the XG1v4. On June 3, Comcast refused to provide discovery regarding the XG1v4 because it
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`was not specifically accused of infringement. On June 8, OpenTV responded by noting that its
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`infringement contentions specifically accuse “XG1 models.” OpenTV also noted that the
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`recently-launched XG1v4 product was not “known” at the time OpenTV served its contentions.
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`See PLR 3-1(b) (“Each product . . . shall be identified by name or model number, if known.”
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`(emphasis added)). On June 9, Comcast declined to make the XG1v4 available for inspection
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`because OpenTV had not moved to amend its infringement contentions. Therefore, on the same
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`day, OpenTV asked Comcast whether Comcast would oppose a motion to amend. On June 19,
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`OpenTV again asked Comcast whether it would agree to amendment. On June 21, Comcast
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`stated that it would oppose adding the XG1v4 to this case. Comcast defended its position in part
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`by reference to the Court’s June 19 order (Dkt. 145). But that order addresses OpenTV’s charting
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`of representative accused products. Id. at 6-7. The order does not prevent OpenTV from
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`diligently seeking to accuse a new product that post-dates the contentions.
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`Second, permitting amendment here will promote judicial efficiency and conserve
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`judicial resources. This Court will adjudicate OpenTV’s claims that certain of Comcast’s X1-
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`enabled set-top boxes infringe certain claims of the ’595 and ’586 patents. Based on publicly-
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`available information describing the XG1v4’s new features, it appears that the XG1v4 is not
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`materially different from the XG1v3-series set-top boxes currently charted in OpenTV’s
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`infringement contentions. Because the same infringement theories appear to apply to the newly-
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`released XG1v4 product, it would be most efficient for this Court to address the XG1v3 and
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`XG1v4 products in the same proceeding. Otherwise, OpenTV would need to file a new lawsuit
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`Case 3:16-cv-06180-WHA Document 158 Filed 07/10/17 Page 3 of 3
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`Judge Alsup
`July 10, 2017
`Page 3
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`involving the same patents and a materially similar accused instrumentality.
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`Third, good cause exists because Comcast will not be prejudiced by adding the XG1v4 to
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`this litigation. Given that fact discovery has already closed with respect to claim 1 of the ’595
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`Patent because of the pilot proceedings, OpenTV does not seek to amend its infringement
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`contentions for that claim. Adding a single, derivative product to the remaining litigation will not
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`meaningfully affect the complexity of the case. As explained above, the XG1v4 appears to differ
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`immaterially from the XG1v3. Therefore, OpenTV believes that the same infringement theories
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`will apply to both the XG1v3 and XG1v4. Furthermore, the parties will have sufficient time to
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`take discovery regarding this single, new product because fact discovery does not close until
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`December 15, which is more than five months away. Compare Rembrandt Patent Innovations
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`LLC v. Apple Inc., Case No. 3:14-cv-5094-WHA (N.D. Cal. Dec. 13, 2015), 2015 WL 8607390
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`(rejecting third attempt at amending contentions, to add four new products). Trial is not set to
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`begin until May 7, 2018.
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`OpenTV also respectfully requests permission to move to supplement its counterclaims
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`accordingly pursuant to FED. R. CIV. P. 15(d). OpenTV intends to supplement its counterclaims
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`for the sole purpose of incorporating amended contentions that include the XG1v4 product.
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`OpenTV’s motion would be argued by an attorney with fewer than 4 years of experience.
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`Respectfully submitted,
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`/s/ Michael K. Plimack
`Counsel for Defendants and
`Counterclaim Plaintiffs
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