Case 5:18-md-02834-BLF Document 481 Filed 08/07/19 Page 1 of 13
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`IN RE: PERSONALWEB
`TECHNOLOGIES, LLC, ET AL. PATENT
`LITIGATION
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`Case No. 18-md-02834-BLF (SVK)
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`ORDER DENYING PLAINTIFFS’
`MOTION TO AMEND
`INFRINGEMENT CONTENTIONS
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`Re: Dkt. Nos. 448, 452; 456
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`I.
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`INTRODUCTION
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`Before the Court is PersonalWeb Technologies, LLC and Level 3 Communications, LLC’s
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`(collectively “PersonalWeb”) motion to amend their infringement contentions. ECF 448. In the
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`underlying multidistrict litigation, PersonalWeb alleges that Amazon.com, Inc. and Amazon Web
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`Services, Inc. (collectively “Amazon”), along with dozens of their customers including Twitch
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`Interactive, Inc. (“Twitch”), infringe several of PersonalWeb’s patents based on Amazon’s cloud-
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`computing services.1
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`While PersonalWeb alleges infringement of several patents, PersonalWeb’s motion to
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`amend its infringement contentions arises out of Amazon and Twitch’s proposed construction of
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`claim terms in three of those patents: U.S. Patent Nos. 7,802,310 (the “’310 patent”), 7,945,544
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`(the “’544 patent”) and 8,099,420 (the “’420 patent”) (collectively “patents-at-issue”). ECF 448 at
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`1–3. In briefing this motion, the Parties group the proposed amendments into two groups. First,
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`1 The Parties agreed to designate PersonalWeb’s case against Twitch as a representative customer
`case that involved all four categories of infringement identified by PersonalWeb. ECF 313.
`PersonalWeb served its infringement contentions on Twitch on December 22, 2018. Ex. 7,
`ECF 452-8. As a result, Twitch’s schedule for its Patent Local Rule 4-1 and Rule 4-2 claim
`construction exchanges trailed Amazon’s schedule. However, Amazon and Twitch filed a joint
`responsive claim construction brief on April 22, 2019. ECF 412.
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`Case 5:18-md-02834-BLF Document 481 Filed 08/07/19 Page 2 of 13
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`PersonalWeb seeks leave to amend its infringement contentions based on Amazon and Twitch’s
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`proposed construction of (1) “unauthorized or unlicensed” in claim 20 of the ’310 patent as “not
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`compliant with a valid license” and (2) “authorization” in claims 25 and 166 of the ’420 patent as
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`“a valid license.” Id. at 1. The Court addresses these claim terms collectively as the
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`“unauthorized/authorized” terms. Second, PersonalWeb seeks to amend its infringement
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`contentions based on Amazon’s proposal to limit the terms “being based on a first function of the
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`contents of the specific part” in claim 46 of ’544 patent and “part value” in claims 46 and 52 of the
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`’544 patent to a computation based only on the data in the data item. Id. at 3. The Court
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`addresses this second set of claim terms as the “part/part value” terms.
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`The following table summarizes the claim terms at issue and Amazon and Twitch’s
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`proposed constructions:
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`Claim Term Group
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`Claim Term
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`Amazon and Twitch’s Proposed
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`Unauthorized/Authorized
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`Part/Part Value
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`Construction
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`“unauthorized or unlicensed”
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`“not compliant with a valid
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`in claim 20 of the ’310 patent
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`license” (ECF 412 at 3)
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`“authorization” in claims 25
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`“a valid license” (ECF 412 at 3)
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`and 166 of the ’420 patent
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`“being based on a first function
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`“being based on a computation
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`of the contents of the specific
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`where the input is all of the data in
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`part” in claim 46 of ’544 patent
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`the specific part” (ECF 412 at 18)
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`“part value” in claims 46 and
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`“a value created by a computation
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`52 of the ’544 patent
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`on the sequence of bits that makes
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`up the part” (ECF 412 at 18)
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`For the reasons set forth below, the Court DENIES PersonalWeb’s motion to amend its
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`infringement contentions.
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`Case 5:18-md-02834-BLF Document 481 Filed 08/07/19 Page 3 of 13
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`II.
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`PREVIOUS LITIGATION
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`The patents-at-issue have been the subject of extensive litigation. ECF 456 at 1. Two
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`events in that litigation history play a role in the Parties’ current dispute. First, and most
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`significantly, on March 11, 2016, the Honorable Rodney Gilstrap issued a claim construction
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`order that adopts the claim constructions that Amazon and Twitch now advocate for in this case.
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`PersonalWeb Techs., LLC v. IBM, No. 6:12-cv-661, Dkt. 103 (E.D. Tex. Mar. 11, 2016) (“Gilstrap
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`Order”). This order arose in a suit brought by PersonalWeb asserting the patents-at-issue here
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`against IBM and GitHub, Inc. in the United States District Court for the Eastern District of Texas.
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`Judge Gilstrap construed “unauthorized” as “not compliant with a valid license” and
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`“authorization” as “a valid license.” Id. at 25–28. Further, Judge Gilstrap construed “given
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`function of the data [in the data item / data file]” as “computation where the input is all of the data
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`in the [data file / data item], and only the data in the [data file / data item]” and “applying a
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`function to the contents of the corresponding file” as “performing a computation where the input is
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`all of the data in the file, and only the data in the file.” Id. at 15–21 (emphasis added).
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`The second event, which also arises out of a suit brought by PersonalWeb in the Eastern
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`District of Texas, is notable because Amazon was a party and argued for a similar construction of
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`similar claim terms to those at issue here. In 2011, PersonalWeb sued Amazon, and several other
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`companies, for patent infringement. The Honorable Leonard Davis issued a claim construction
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`order in August 2013. PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-00658, Dkt.
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`140 (E.D. Tex. Aug. 5, 2013) (“Davis Order”), ECF 406-7. While the Davis Order does not
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`construe the terms currently at issue in the present action, it does construe two terms similar to the
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`unauthorized/authorized terms at issue here. Those similar claim terms are “licensed” and
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`“unlicensed” in U.S. Patent No. 6,928,442 (the “’442 patent”). Id. at 24–26. Amazon and the
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`other defendants proposed construing those terms as “having a license to content stored within a
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`requested file”—a similar construction to the one Amazon and Twitch now propose for the
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`unauthorized/authorized terms. Id. at 24 (internal quotation marks omitted). Judge Davis ultimately
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`rejected Amazon’s construction, concluding that the terms “require no further construction.” Id. at
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`24–26 (internal quotation marks omitted).
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`Case 5:18-md-02834-BLF Document 481 Filed 08/07/19 Page 4 of 13
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`III.
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`PROCEDURAL HISTORY
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`On October 29, 2018, over two years after the Gilstrap Order, PersonalWeb served its
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`infringement contentions on Amazon. Ex. 1, ECF 448-2. PersonalWeb served its infringement
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`connections on Twitch two months later, on December 22, 2018. Ex. 7, ECF 452-8.
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`A. The Unauthorized/Authorized Claim Terms
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`Amazon and Twitch argue that at the September 2018 preliminary case management
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`conference, they “made clear that they would seek the same constructions” in this case as Judge
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`Gilstrap ordered in 2016. ECF 452 at 3. On January 7, 2019, Amazon served its Patent Local
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`Rule 4-1 disclosure of proposed terms for construction, which identified “unauthorized” and
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`“authorization” as previously construed terms. Ex. 4, ECF 452-5 at 3. Three weeks later, on
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`January 28, 2019, Amazon’s preliminary proposed construction disclosures under Patent Local
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`Rule 4-2 proposed constructions of “unauthorized” as “not compliant with a valid license” and
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`“authorization” as “a valid license.” Ex. 5, ECF 452-6 at 17; see also p. 2, infra. In support of
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`these constructions, Amazon cited the Gilstrap order. Ex. 5, ECF 452-6 at 12–13; see also p. 2,
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`infra. Amazon proposed the same construction for the related claim terms, “unauthorized or
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`unlicensed.” Ex. 5, ECF 452-6 at 13.
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`On March 12, 2019, the Parties filed their joint claim construction and prehearing
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`statement in which Amazon and Twitch repeated their proposal to construe the terms
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`unauthorized/authorized in claim 20 of the ’310 patent as “not compliant with a valid license” and
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`“authorization” in claims 25 and 166 of the ’420 patent as “a valid license.” ECF 380 at 8–15.
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`Based on Amazon and Twitch’s proposed construction of the unauthorized/authorized claim
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`terms, one month after receiving the proposed constructions, PersonalWeb sent Amazon proposed
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`amended infringement contentions on April 18, 2019. ECF 448 at 1. PersonalWeb characterizes
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`its proposed amendments as “modest additions to address the possibility the terms ‘unauthorized’
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`and ‘authorization’ were interpreted by the Court as requested by Amazon as well as some minor
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`typographical errors.” Id. PersonalWeb informed Twitch that it intended to make similar
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`amendments to its infringement contentions for Twitch, and on May 8, 2019, PersonalWeb
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`provided Twitch with its proposed amendments. Id. at 2.
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`B. The Part/Part Value Claim Terms
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`The chronology in this case for the part/part value claim terms is similar. Amazon’s
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`January 28, 2019 preliminary proposed constructions construe “being based on a first function of
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`the contents of the specific part” as “being based on a computation where the input is the [sic] all
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`of the data in the specific part.” Ex. 5, ECF 452-6 at 14; see also p. 2, infra. Amazon proposes
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`construing “part value” as “a value created by a computation on the sequence of bits that makes up
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`the part.” Ex. 5, ECF 452-6 at 16; see also p. 2, infra. In support of the first proposed
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`construction, Amazon cites both the Gilstrap and Davis Orders. Ex. 5, ECF 452-6 at 14.
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`In the Parties’ March 12 joint claim construction statement, Amazon and Twitch jointly
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`propose the same constructions for the part/part value claim terms as set forth in Amazon’s
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`January 28 disclosure. ECF 380 at 84–87, 91, 96–97. In its motion to amend, PersonalWeb notes
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`the absence of the word “only” in Amazon’s proposed constructions and argues that “[n]either of
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`these proposed constructions indicated that these computations [are] limited to those only based on
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`the content of the data or sequence of bits.” ECF 448 at 2 (emphasis in original). Amazon and
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`Twitch maintain that their proposed constructions necessarily limit computations to the data.
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`ECF 452 at 9, n.6.
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`On April 22, 2019, Amazon and Twitch filed a joint responsive claim construction brief.
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`ECF 412. PersonalWeb argues that the joint claim construction brief is the first place that
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`Amazon and Twitch argue that their part/part value “claim constructions mean[] that the
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`computation is based only on the contents or sequence of bits of a part.” ECF 448 at 2 (emphasis
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`in original). On May 8, 2019, PersonalWeb sent Twitch proposed amended infringement contentions,
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`which respond to the alleged new claim constructions in Amazon and Twitch’s responsive claim
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`construction brief. Id. A week later, on May 14, 2019, Amazon and Twitch refused to agree to
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`PersonalWeb’s proposed amendments. During the Parties’ May 24, 2019 Markman hearing, the
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`Honorable Beth Labson Freeman prompted Amazon and Twitch for further clarification regarding
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`their construction. ECF 446 at 95:2–16. Amazon and Twitch responded that their proposed
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`constructions for the terms “being based on a first function of the contents of the specific part” in claim
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`46 of ’544 patent and “part value” in claims 46 and 52 of the ’544 patent were limited to a computation
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`based “only” on the data in the data item. Id. Two and a half weeks after the Markman hearing, on
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`June 11, 2019, PersonalWeb filed this motion to amend its infringement contentions.
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`IV.
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`LEGAL BACKGROUND
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`Pursuant to the Northern District of California’s Patent Local Rules, parties exchange
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`infringement and invalidity contentions early in a case. See Patent Local R. 3. The contentions
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`are not a mere formality but rather a requirement “to eliminate the gamesmanship of hints in favor
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`of open disclosure.” Largan Precision Co, Ltd. v. Genius Elec. Optical Co., No. 13-cv-02502-JD,
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`2014 WL 6882275, at *4 (N.D. Cal. Dec. 5, 2014). They also “seek to balance the right to
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`develop new information in discovery with the need for certainty as to the legal theories” and to
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`address the difficulty of “allowing the parties to discover their opponent’s theories of liability . . .
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`through traditional discovery mechanisms such as contention interrogatories.” O2 Micro Int’l Ltd.
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`v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365–66 (Fed. Cir. 2006).
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`Infringement contentions in particular serve the purpose of “alert[ing] the alleged infringer
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`which . . . theories the patentee believes its pre-filing investigation supports.” Apple Inc. v.
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`Samsung Elecs. Co., No. 12-CV-0630-LHK (PSG), 2013 WL 3246094, at *3 (N.D. Cal. June 26,
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`2013). To further this purpose, a parties’ contentions “should proffer all of the theories of
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`infringement that they in good faith believe they can assert.” Id. Through this process the Patent
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`Local Rules create a mechanism to narrow and focus disputes as the case progresses.
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`Accordingly, “[a]s with other forms of pleadings, the infringement contentions should become
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`more specific and fine-tuned as the case progresses, not more sprawling and encompassing.” Id.
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`The “rules were designed to avoid the shifting of infringement and invalidity theories that
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`had come to be a feature in too many cases before their adoption.” Id. at 1. As a result,
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`amendment of infringement contentions or invalidity contentions may be made only by order of
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`the Court upon a timely showing of good cause. “[A]s a general rule, mistakes or omissions are
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`not by themselves good cause.” Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-
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`00876-RS (JSC), 2016 WL 2855260, at *3 (N.D. Cal. May 13, 2016) (citation and internal
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`quotation marks omitted). Non-exhaustive examples of circumstances that may, absent undue
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`prejudice to the non-moving party, support a finding of good cause include:
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`(a) A claim construction by the Court different from that proposed by
`the party seeking amendment;
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`(b) Recent discovery of material, prior art despite earlier diligent
`search; and
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`(c) Recent discovery of nonpublic information about the Accused
`Instrumentality which was not discovered, despite diligent efforts,
`before the service of the Infringement Contentions.
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`Patent Local R. 3–6.
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`Whether a party has been diligent requires a two-step inquiry: “(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.” Positive Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226-SI,
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`2013 WL 322556, at *2 (N.D. Cal. Jan. 28, 2013). “In considering the party’s diligence, the
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`critical question is whether the party could have discovered the new information earlier had it
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`acted with the requisite diligence.” Radware Ltd. v. F5 Networks, Inc., No. C-13-02021-RMW,
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`2014 WL 3728482, at *1 (N.D. Cal. 2014). If the Court determines that the moving party was not
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`diligent, the inquiry may end there. See Acer, Inc. v. Tech. Properties Ltd., No. 5:08-CV-00877-
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`JF (HRL), 2010 WL 3618687, at *5 (N.D. Cal. Sept. 10, 2010). However, the Court retains
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`discretion to grant leave to amend even in the absence of diligence so long as there is no prejudice
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`to the opposing party. See, e.g., U.S. Ethernet Innovations, LLC v. Acer, Inc., No. 10–cv–3724-
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`CW, 2013 WL 5609325, at *3 (N.D. Cal. Oct. 11, 2013).
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`V.
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`DISCUSSION
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`A. Diligence
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`The Parties’ arguments primarily focus on whether PersonalWeb satisfies the diligence
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`requirement. See ECF 452 at 7–10; ECF 456 at 1–5. PersonalWeb contends that the diligence clock
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`starts in the spring of 2019 for both the unauthorized/authorized and part/part value sets of claim
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`terms. ECF 448 at 4–5. For the unauthorized/authorized claim terms, PersonalWeb points to March
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`12, 2019, when Amazon and Twitch disclosed their proposed constructions in the Parties’ joint claim
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`construction statement. Id. at 1. For the part/part value claim terms, PersonalWeb argues that it did
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`not learn of Amazon and Twitch’s “only” limitation in their proposed construction until Amazon and
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`Twitch’s joint responsive claim construction brief filed on April 22, 2019. Id. at 2. Based on this
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`timeline, PersonalWeb characterizes its proposed amendments as a diligent attempt to seek leave to
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`amend its infringement contentions because of “[a] claim construction by the Court different from
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`that proposed by the party seeking amendment” pursuant to Patent Local Rule 3-6(a). Id. at 4.2
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`Amazon and Twitch3 challenge PersonalWeb’s diligence and argue for a far earlier start
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`for PersonalWeb’s diligence clock. ECF 452 at 2–4. Specifically, Amazon and Twitch contend
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`that PersonalWeb had notice of the constructions that Amazon and Twitch advocate for as early as
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`the March 2016 Gilstrap Order, over two years prior to PersonalWeb’s drafting of its original
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`infringement contentions in this case. Id. at 8–9. According to Amazon and Twitch, PersonalWeb
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`seeks to amend its infringement contentions “based on arguments PersonalWeb had been aware of
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`for years,” and as a result, PersonalWeb cannot demonstrate the requisite diligence. Id. at 6.
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`1. Amendments based on differing claim constructions require diligence.
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`Patent Local Rule 3-6(a) lists a claim construction order that differs from the construction
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`proposed by the moving party as an example of a circumstance that “may” support a finding of
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`good cause. In line with this non-absolutist language, courts recognize that “a differing claim
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`construction ‘in and of itself does not constitute good cause’ to amend; ‘the moving party must
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`still establish its diligence.’” Via Techs., Inc. v. ASUS Computer Int’l, No. 14-cv-03586-BLF
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`(HRL), 2017 WL 396172, at *2 (N.D. Cal. Jan. 30, 2017) (quoting Tech. Props. Ltd. LLC v.
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`Canon Inc., No. 14-cv-03643-CW (DMR), 2016 WL 1360756, at *3 (N.D. Cal. Apr. 6, 2016)).
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`Courts in this District take different approaches in determining when to calculate diligence based
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`on differing claim constructions. While some courts calculate the date from when the opposing
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`party discloses the proposed constructions, other courts look to when a court issues its claim
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`construction order. See Tech. Properties, 2016 WL 1360756, at *4 (discussing the approaches in
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`this District). Despite this lack of “a uniform rule, review of all of the cases reveals that,
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`regardless of the rule applied, diligence determinations are necessarily fact intensive inquiries and
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`must be determined based on the individual facts of each case.” Word to Info Inc. v. Facebook
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`2 Although the claim construction order in this case has not issued as of the date of this order, it
`appears that PersonalWeb cites to Patent Local Rule 3-6(a) in anticipation of how the claims may
`be construed. ECF 448 at 4–5.
`3 Amazon and Twitch filed a joint opposition to PersonalWeb’s motion. ECF 452.
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`Inc., No. 15-CV-03485-WHO, 2016 WL 6276956, at *4 (N.D. Cal. Oct. 27, 2016), aff’d, 700 F.
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`App’x 1007 (Fed. Cir. 2017). With this background in mind, the Court examines the particular
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`facts of this case to determine “the relevant time from which to measure diligence” based on
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`“when diligent preparations could begin.” Via Techs., 2017 WL 396172, at *3 (citation omitted).
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`2. PersonalWeb fails to demonstrate sufficient diligence in light of the
`Gilstrap and Davis Orders.
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`In this case, the litigation history of the patents-at-issue informs whether PersonalWeb has
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`acted with sufficient diligence. Judge Gilstrap’s March 2016 order provided notice to
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`PersonsalWeb of the constructions for both the unauthorized/authorized and the part/part value
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`terms for which Amazon and Twitch now advocate. As the plaintiff asserting patent infringement
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`claims, PersonalWeb had a responsibility to consider previous orders construing the patents-at-
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`issue when crafting its infringement contentions in this case. That responsibility is heightened for
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`orders, such as the Gilstrap Order, which construe claim terms that are consistently disputed in the
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`patents’ litigation history. Indeed, the Patent Local Rules require a plaintiff to assert all of the
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`infringement theories that it can assert in good-faith based on its pre-filing investigation. Apple,
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`2013 WL 3246094, at *3. PersonalWeb knew of the Gilstrap constructions of both the
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`unauthorized/authorized and part/part value claim terms when it crafted its infringement
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`contentions. PersonalWeb chose to draft infringement contentions that did not take into
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`consideration previous constructions of the terms at issue here. PersonalWeb’s desire to now
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`reform that choice does not constitute good cause.4 See Sunpower Corp. Sys. v. Sunlink Corp.,
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`No. C-08-2807 SBA (EMC), 2009 WL 1657987, at *1 (N.D. Cal. June 12, 2009) (finding that a
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`differing claim construction does not provide good cause where “[t]he risk of the construction
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`rendered by the presiding judge was well known and anticipated by [the moving party]”).
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`4 Personal Web’s argument that the Gilstrap Order should not be considered because in that case
`the proposed constructions of the part/part value terms contained the word “only,” in contrast to
`Amazon’s proposed constructions in this case, fails to appreciate the Gilstrap Order’s significance.
`See Section V(A)(3), infra. The Gilstrap Order provided PersonalWeb notice of the very claim
`constructions on which PersonalWeb now bases its proposed infringement contention
`amendments. PersonalWeb should have anticipated these claim constructions when preparing its
`original infringement contentions, months before Amazon served its disclosures.
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`PersonalWeb points to the significate amount of prior litigation involving the patents-at-
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`issue and argues that expecting it to anticipate which order, from dozens of proceedings, Amazon
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`and Twitch would rely upon places unreasonable expectations on PersonalWeb. ECF 456 at 1.
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`While the amount of prior litigation does place a higher pre-suit investigation burden on
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`PersonalWeb, as a participant in that litigation, PersonalWeb cannot plead ignorance of it. Nor is
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`it unreasonable to require PersonalWeb to consider the litigation history of its patents when
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`crafting its infringement contentions in the present action. The Patent Local Rules make no
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`exceptions for complex or frequently litigated patents, and to allow PersonalWeb to employ a
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`wait-and-see approach to its infringement contentions runs counter to the Patent Local Rules’
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`purpose of “prevent[ing] the ‘shifting sands’ approach to claim construction.” LG Elecs. Inc. v. Q-
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`Lity Computer Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (citation and internal quotation marks
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`omitted). PersonalWeb cannot disguise a prior claim construction order on the patents-at-issue as
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`a differing claim construction in this action sufficient to support good cause to amend its
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`infringement contentions. To do so would expand the example of a differing claim construction in
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`Patent Local Rule 3-6(a) beyond its intended purpose, suffocating the diligence requirement at the
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`heart of the contentions amendment process.
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`At the July 24, 2019 hearing, PersonalWeb argued that the August 2013 Davis Order finds
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`that the claim terms “authorized” or “licensed” have their plain and ordinary meaning, which
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`demonstrates that the claim terms at issue in this case have received conflicting interpretations.
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`ECF 476 at 9:20–10:7. PersonalWeb argued that the existence of conflicting orders, along with
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`the extensive litigation history of the patents-at-issue, counters Amazon and Twitch’s assertion
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`that one of those previous orders (the Gilstrap Order) put PersonalWeb on notice of their proposed
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`claim constructions. Id. The Davis Order rebuts this argument. While the Davis Order does not
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`construe the specific claim terms at issue in this motion, the Davis Order does construe the terms
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`“licensed” and “unlicensed” in the’442 patent, which are similar to the unauthorized/authorized
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`claim terms at issue here. In declining to order further construction of “licensed” and
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`“unlicensed,” Judge Davis explicitly rejected Amazon and the other defendants’ proposed
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`construction of “having a license to content stored within a requested file.” Davis Order at 24 (internal
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`quotation marks omitted); see also PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-
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`00658, Dkt. 127 at 35–37 (E.D. Tex. June 24, 2013) (Defendants’ responsive claim construction
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`brief in which Amazon proposes a construction of “having a license to content stored within a
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`requested file”). The Davis Order thus shows that Amazon previously argued for a similar
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`construction of similar claim terms to unauthorized/authorized. Amazon’s proposed construction for
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`these similar claim terms remains consistent across both of PersonalWeb’s suits with Amazon.
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`Amazon’s consistency, combined with the Gilstrap Order’s adoption of the construction that Amazon
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`advocated for in the Davis case, provided PersonalWeb ample notice of Amazon and Twitch’s
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`proposed constructions of the patents-at-issue.
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`Ultimately, PersonalWeb does not identify any information that it has obtained since it
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`served its infringement contentions in this case that provides a basis for the new infringement
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`theories it seeks to assert. PersonalWeb’s concern regarding a potential adverse claim
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`construction order does not excuse its decision exclude theories it was previously aware of in it is
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`original infringement contentions. The Patent Local Rules contemplate a process where “the
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`infringement contentions should become more specific and fine-tuned as the case progresses, not
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`more sprawling and encompassing.” Apple, 2013 WL 3246094, at *3. Allowing PersonalWeb to
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`now add infringement theories of which it was previously aware, should have anticipated and
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`could have asserted in good faith prior to filing its infringement contentions would allow the
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`infringement contentions to become “a running dialogue between the parties.” Id. The Patent
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`Local Rules preclude such an outcome.
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`3. PersonalWeb’s arguments regarding Amazon’s January 2019
`disclosures fail to address the notice provided by the Gilstrap Order.
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`PersonalWeb contends that Amazon’s January 28, 2019 Patent Local Rule 4-2 disclosures
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`do not specify that Amazon’s proposed construction for the part/part value claim terms are limited
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`to computations based “only” on the data in the data item. ECF 456 at 4. Amazon and Twitch
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`argue that the “only” limitation is clear from the context of its proposed claim constructions,
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`including Amazon’s citation to the Gilstrap Order. ECF 452 at 8–9, n.6. The Court does not need
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`to resolve this dispute. As discussed above, Judge Gilstrap’s order—not Amazon’s disclosures—
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`Case 5:18-md-02834-BLF Document 481 Filed 08/07/19 Page 12 of 13
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`
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`provided PersonalWeb notice of the very claim constructions that it now claims justify
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`amendments to its infringement contentions. Prior to serving its infringement contentions, with
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`the Gilstrap Order in hand, PersonalWeb should have anticipated the constructions for the part/part
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`value claim terms for which Amazon and Twitch now argue.
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`PersonalWeb’s argument that it first learned of Amazon and Twitch’s part/part value
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`construction in Amazon and Twitch’s responsive claim construction brief is not convincing.
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`PersonalWeb’s claim construction brief in reply merely argues its proposed construction of the
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`part/part value claim terms. ECF 420 at 15. Notably, PersonalWeb does not argue that Amazon
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`and Twitch failed to previously disclose the proposed “only” limitation to the part/part value claim
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`terms or that this construction came as a surprise. Id. Accordingly, Amazon’s perhaps inartful
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`articulation of its proposed constructions for the part/part value claim terms does not excuse
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`PersonalWeb’s failure to include theories in its infringement contentions or provide PersonalWeb
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`a second opportunity to assert theories for which it previously had a good-faith basis for asserting.
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`B. Prejudice
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`In addition to diligence, the Court must “consider prejudice to the non-moving party.”
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`U.S. Ethernet Innovations, 2013 WL 5609325, at *2. If the Court determines that the moving
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`party was not diligent, the Court does not need to reach the issue of prejudice. See Acer, 2010 WL
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`3618687, at *5. The Court, however, may still grant leave to amend even in the absence of
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`diligence if there is no prejudice to the opposing party. See, e.g., U.S. Ethernet Innovations, 2013
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`WL 5609325, at *3. Here, the Court concludes that PersonalWeb fails to show the requisite
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`diligence to establish good cause for its proposed infringement contention amendments. While the
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`Court declines to reach the issue of prejudice, the Court notes that less than two weeks remain
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`before the close of fact discovery. ECF 374. The Parties have also already completed claim
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`construction briefing, and Judge Freeman held the Markman hearing on May 24, 2019. These
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`factors weigh against granting PersonalWeb leave to amend its infringement contentions at this
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`late date.
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