Case 3:22-cv-01832-WHO Document 121 Filed 08/30/23 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`R.N NEHUSHTAN TRUST LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`Case No. 22-cv-01832-WHO
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`ORDER GRANTING MOTION FOR
`LEAVE TO SERVE THIRD AMENDED
`INFRINGEMENT CONTENTIONS
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`Re: Dkt. Nos. 110, 111, 114, 118
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`Plaintiff R.N Nehushtan Trust Ltd. (“RNN Trust”) has moved to amend its infringement
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`contentions for the third time, based on information that it represents it gleaned after reviewing
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`defendant Apple Inc. (“Apple”)’s source code, receiving documents that helped it better
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`understand the source code, and conducting technical depositions. Mot. [Dkt. No. 111] 2:3-17.
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`The motion is GRANTED.1
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`Patent Local Rule 3-6 allows for the amendment of infringement contentions by court
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`order “upon a timely showing of good cause.” “Non-exhaustive examples of circumstances that
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`may, absent undue prejudice to the non-moving party, support a finding of good cause” include
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`“[r]ecent discovery of nonpublic information about the accused instrumentality which was not
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`discovered, despite diligent efforts, before the service of the infringement contentions.” Patent
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`L.R. 3-6.
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`“The good cause inquiry is two-fold: (1) whether the moving party was diligent in
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`amending its contentions; and (2) whether the non-moving party would suffer prejudice if the
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`1 I granted the parties’ stipulation to an expedited briefing schedule so that this motion could be
`decided before the September 1, 2023, deadline for expert disclosures. See Dkt. Nos. 95, 113. No
`hearing was set, and this motion is suitable for disposition without oral argument pursuant to Civil
`Local Rule 7-1(b).
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-01832-WHO Document 121 Filed 08/30/23 Page 2 of 5
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`motion to amend were granted.” Synchronoss Techs., Inc. v. Dropbox Inc., No. 16-CV-00119-
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`HSG, 2018 WL 5619743, at *3 (N.D. Cal. Oct. 29, 2018) (citation omitted). “Diligence is the
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`critical issue in the good cause determination” and consists of two subparts: “(1) diligence in
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`discovering the basis for amendment; and (2) diligence in seeking amendment once the basis for
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`amendment has been discovered.” Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-
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`00876-RS, 2016 WL 2855260, at *3 (N.D. Cal. May 13, 2016) (citations and quotations omitted).
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`The moving party bears the burden of establishing diligence, but the court has discretion to grant
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`leave to amend “even in the absence of diligence so long as there is no prejudice to the opposing
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`party.” Id. (citations omitted). Prejudice can be shown when there will be disruptions to the case
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`schedule or other court orders, or when a party changes its infringement theories or requires its
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`opposition to prepare additional defenses. See Synchronoss Techs., 2018 WL 5619743, at *5; see
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`also Apple Inc. v. Samsung Elecs. Co., Ltd., No. CV-12-00630-LHK, 2012 WL 5632618, at *3
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`(N.D. Cal. Nov. 15, 2012).
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`There are two sets of proposed amendments at issue. The first, and easiest to address, are
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`those that Apple does not contest. These amendments largely add support (i.e., citations to
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`deposition transcripts, source code, and technical documents) or further clarify RNN Trust’s
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`existing infringement contentions. See, e.g., Mot., Ex. 19 at 2, 35, 146. The uncontested
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`amendments are highlighted in green in Exhibits 19-24. See Mot. at 10:20-21, Exs. 19-24; see
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`also Oppo. at 6:24-7:24. RNN Trust’s request to make these amendments is GRANTED.
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`What remains are proposed amendments that fall generally into the following categories:
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`(1) those articulating a theory of literal infringement regarding Claim 5 of U.S. Patent No.
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`9,642,002 (“the ’002 Patent”); and (2) those accusing the devices of infringing by way of: (a)
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`determining how much memory is available on a device for a software update; (b) collecting a
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`certain type of analytics; and (c) automatically updating apps on the device. See, e.g., Mot., Ex.
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`19 at 2, 35-36, 147, 166; Ex. 22 at 1, 38-39, 155.2
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`2 The proposed amendments in Exhibit 19 are representative of those in Exhibits 20 and 21. See
`generally Mot., Exs. 19-21. These amendments relate to claim language in the ’002 Patent and cut
`across each of the three categories of accused devices: iPhones, iPads, and Apple Watches. See id.
`The proposed amendments in Exhibit 22 are representative of those in Exhibits 23 and 24, which
`2
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-01832-WHO Document 121 Filed 08/30/23 Page 3 of 5
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`RNN Trust contends that it did not discover the need to “further refine its infringement
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`theories” until it received nonpublic information from Apple: the source code, the technical
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`documents, and the technical depositions. Mot. at 2:3-17. At a high level, Apple argues that: (1)
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`RNN Trust was not diligent in discovering the basis for the proposed amendments, nor in seeking
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`them; and (2) the proposed amendments focus on different processes than those underlying RNN
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`Trust’s claims, necessitating the reopening of fact discovery that would prejudice Apple. See
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`Oppo. at 1:10-3:6.
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`RNN Trust was diligent in discovering the basis for its proposed amendments. Although
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`Apple made its source code available to RNN Trust in September 2022, a review of the docket
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`shows that RNN Trust told Apple that it would wait to inspect the source code until after claim
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`construction. See Oppo. at 11:16-19; see also Dkt. No. 61 at 5:9-13. This makes sense given the
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`inherent complexity and sensitivity of source code, the amount of code made available, and the
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`strict parameters for reviewing it. See Dkt. No. 53-1 at 2:9-3:19 (explaining modifications to
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`model protective order to protect the security of the source code at issue).
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`RNN Trust sent its expert to review the source code on May 15, 2023, about six weeks
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`after my claim construction order issued. See Dkt. No. 85; see also Mot. at 5:5-6. RNN Trust
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`continued to act diligently in the weeks and months that followed. Two days after its expert began
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`reviewing the source code, RNN Trust demanded from Apple “technical reference manuals” and
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`other documents “describing the structure, function and operation of the produced source code
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`components.” Mot. at 5:9-14 (citing Ex. 4). Thus began a back-and-forth between the parties over
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`the sought-after documents, which included a meet-and-confer and representations from Apple
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`relate to the second patent at issue, U.S. Patent No. 9,635,544, and the three types of devices. See
`generally id., Exs. 22-24.
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`The parties have filed three motions to redact portions of the briefing and exhibits, and to seal
`certain exhibits. Dkt. Nos. 110, 114, 118. The motions are GRANTED. The parties’ requests are
`narrowly tailored, and compelling reasons exist for redacting and sealing these materials, which
`contain sensitive, confidential technical information about trade secrets. See Wisk Aero LLC v.
`Archer Aviation Inc., No. 21-CV-02450-WHO, 2022 WL 5007912, at *6 (N.D. Cal. Oct. 4, 2022)
`(citing In re Midland Nat’l Life Ins. Co. Annuity Sales Pracs. Litig., 686 F.3d 1115, 1119 (9th Cir.
`2021)). To the extent that I reference any of that material in this Order, I have described it at a
`high level to avoid any disclosure.
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`Northern District of California
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`United States District Court
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`Case 3:22-cv-01832-WHO Document 121 Filed 08/30/23 Page 4 of 5
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`that there were no such records. See id. at 5:14-6:8 (citing Exs. 5-9). Although Apple produced
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`three such documents among others on July 7, 2023, RNN Trust did not learn about their
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`significance until the July 18 deposition of Erik Phillips, an Apple software engineer. See id. at
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`6:9-7:2.
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`Apple’s argument that the basis for at least some of the proposed amendments could have
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`been discovered earlier is unpersuasive. See Oppo. at 11:16-19, 12:17-13:4. Although publicly
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`available sources and certain aspects of the source code may have provided some information at a
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`high level, Apple overlooks details that, as alleged, were provided by RNN Trust’s better
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`understanding of the source code, which did not occur until after the technical documents were
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`provided and the depositions occurred. It also appears that this RNN Trust might have discovered
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`this information sooner had Apple conducted discovery differently.
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`RNN Trust was also diligent in seeking amendment. It filed this motion less than a month
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`after the depositions took place and it realized the significance of the three documents in
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`understanding Apple’s source code. See Dkt. No. 111. A month-long delay does not represent a
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`lack of due diligence, particularly when part of that time was spent seeking additional documents,
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`and meeting and conferring with Apple regarding the proposed amendments. See Mot. at 1:9-11,
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`8:3-22; see also Wisk, 2022 WL 5007912, at *4 (“The two-month delay between discovering the
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`basis and filing this motion was reasonable, especially in light of Wisk notifying Archer before
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`filing.”).
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`Turning to prejudice, Apple argues that allowing the contested amendments would
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`“necessitate reopening fact discovery”—which closed on August 2, 2023—“to allow Apple to
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`develop defenses to the newly accused processes” by finding and disclosing new witnesses with
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`sufficient knowledge to testify about these processes, producing relevant documents, and
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`supplementing its interrogatory processes. Oppo. at 13:14-15:17; see also Dkt. No. 102.
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`According to Apple, “[t]he delay and expense of reopening discovery is yet another form of
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`prejudice that Apple should not suffer.” Oppo. at 15:15-16.
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`Although prejudice may be shown when there will be disruptions to the case schedule,
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`reopening discovery and shifting these deadlines would affect both parties equally. See
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`Case 3:22-cv-01832-WHO Document 121 Filed 08/30/23 Page 5 of 5
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`Synchronoss Techs., 2018 WL 5619743, at *5. Apple would have additional discovery to
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`complete, but so would RNN Trust. If anything, the workload would be less for Apple in that it
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`already has an internal understanding of the processes at issue, which RNN Trust does not.
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`RNN Trust has also plausibly tied its proposed amendments to its existing infringement
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`theories, at least in a manner that suffices at this point. It is not unusual for a patentee to refine its
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`infringement theories after gaining access to nonpublic information such as source code. See
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`Wisk, 2022 WL 5007912, at *3 (“[I]t is unrealistic that a patentee would have a precise sense of its
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`infringement theory at the outset, particularly where the patentee may not have been able to get
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`access to the necessary information because it is hidden from view (for example, source code).”)
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`(citation and quotations omitted). RNN Trust’s proposed amendments seek to refine its
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`infringement theories based on the new information it gleaned about certain processes. Apple may
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`ultimately be able to show that these processes are not related to or otherwise do not infringe upon
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`the patented technology at issue. But that is an evidence-based question that will be answered
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`later.
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`In sum, RNN Trust has shown good cause to amend its infringement contentions. Its
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`motion is GRANTED. A Case Management Conference is scheduled for September 19, 2023, at
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`2:00 p.m. to discuss any resulting impacts to the case schedule. A Joint Case Management
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`Statement is due by September 12, 2023.
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`IT IS SO ORDERED.
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`Dated: August 30, 2023
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`William H. Orrick
`United States District Judge
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