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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 21-CV-812 TWR (JLB)
`
`ORDER GRANTING PLAINTIFF’S
`MOTION TO STRIKE
`DEFENDANT’S AMENDED
`INVALIDITY CONTENTIONS
`
`(ECF No. 205)
`
`TACTION TECHNLOGY, INC.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Defendant.
`
`
`Presently before the Court is the Motion to Strike (“Mot.,” ECF No. 205) portions
`
`of the amended invalidity contentions that Defendant Apple Inc. (“Apple”) served on
`November 18, 2022, filed by Plaintiff Taction Technology, Inc. (“Taction”), as well as
`Apple’s Response in Opposition to (“Opp’n,” ECF No. 230 (public), 235 (sealed)) and
`Taction’s Reply in Support of (“Reply,” ECF No. 248) the Motion. The Court held a
`hearing on April 13, 2023. (See ECF No. 261.) For the reasons discussed below, the Court
`GRANTS Taction’s Motion.
`
`BACKGROUND
`
`The Asserted Patents
`I.
`Taction is the owner and assignee of U.S. Patent No. 10,659,885 (“the ’885 Patent”)
`
`and U.S. Patent No. 10,820,117 (“the ’117 Patent”) (collectively, “the asserted patents”).
`(See ECF No. 1, (“Compl.”) ¶¶ 68, 72); see also U.S. Patent No. 10,659,885, at [73] (issued
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`May 19, 2020); U.S. Patent No. 10,820,117, at [73] (issued Oct. 27, 2020). The ’885 Patent
`is entitled “Systems and Methods for Generating Damped Electromagnetically Actuated
`Planar Motion for Audio-Frequency Vibrations” and was issued on May 19, 2020. ’885
`Patent at [45], [54]. The ’117 Patent is entitled the same and was issued on October 27,
`2020. ’117 Patent at [45], [54]. The ’885 Patent and the ’117 Patent share a common
`specification, and both patents claim priority to provisional application No. 62/054,712
`filed on September 24, 2014. ’885 Patent at [60]; ’117 Patent at [60].
`
`The invention described in the ’885 Patent and the ’117 Patent “relates to tactile
`transducers that produce bass frequency vibrations for perception by touch.” ’885 Patent
`col. 1 ll. 20–21.1 The specification of the asserted patents explains:
`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
`the skin. This sensation is familiar to anyone who has “felt the beat” of strong
`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
`reproduction of it is possible only when mechanical vibration of the skin
`accompanies the acoustic waves transmitted through the air to the ear drum.
`Id. at col. 1 ll. 25–33.
`The specification then details the problems with the prior art audio-frequency tactile
`transducers, which utilized “axial shakers,” “un-damped eccentric rotating motors
`(‘ERMs’),” and “un-damped linear resonant actuators (‘LRAs’).” See id. at col. 1 l. 34–
`col. 2 l. 46. With respect to the ERMs and LRAs, the specification explains that a lack
`mechanical damping is “problematic.” See id. at col 2 ll. 1–2 (“The problem of uneven
`frequency response is typically made worse by a lack of mechanical damping.”), col. 2 ll.
`11–13 (“Another approach in the prior art, also problematic, is the use of un-damped
`eccentric rotating motors (‘ERMs’) and un-damped linear resonant actuators (‘LRAs’).”).
`/ / /
`
`
`
`1 Because the ’885 Patent and the ’117 Patent share a common specification, the Court will cite to only
`the ’885 Patent’s specification for ease of reference.
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`The asserted patents aim to overcome the problems of the prior art by disclosing “a
`thin, flat vibration module with a movable member that is electromagnetically actuated to
`produce motion in-plane.” See id. at col. 3 ll. 51–53; see also id. at col. 2 ll. 47–49. “[T]he
`module may consist of a mass and thin magnets, polarized through their thickness, where
`the mass and magnets are movably suspended inside a housing.” Id. at col. 3 ll. 63–66.
`Further, the suspension may include flexures or a ferrofluid layer. Id. at col. 3 ll. 66–67.
`In addition, “the vibration of the moving portion may be damped” using the layer of
`ferrofluid. Id. at col. 4 ll. 6–8.
`
`Independent claim 1 of the ’885 Patent recites:
`
`1.
`
`
`An apparatus for imparting motion to the skin of a user, the apparatus
`comprising:
`
` housing;
`
` plurality of coils capable of carrying electrical current;
`
` plurality of magnets arranged in operative proximity to the plurality of coils;
`
` moving portion comprising an inertial mass and the plurality of magnets;
`
` suspension comprising a plurality of flexures that guides the moving portion
`in a planar motion with respect to the housing and the plurality of conductive
`coils;
`
`wherein movement of the moving portion is damped by a ferrofluid in
`physical contact with at least the moving portion; and
`
`wherein the ferrofluid reduces at least a mechanical resonance within the
`frequency range of 40-200 Hz in response to electrical signals applied to the
`plurality of conductive coils.
`
`’885 Patent col. 14 ll. 48–65.
`/ / /
`/ / /
`/ / /
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`Independent claim 1 of the ’117 Patent recites:
`1. An apparatus comprising:
`
` housing;
`
` plurality of conductive coils capable of carrying electrical current;
`
` moving portion comprising an inertial mass and the plurality of magnets;
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` a
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` a
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` plurality of magnets arranged in operative proximity to the plurality of
`conductive coils;
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` a
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` a
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` suspension comprising a plurality of flexures that guides the moving portion
`in a planar motion with respect to the housing and the plurality of conductive
`coils;
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`wherein vibration of the apparatus imparts vibrations to a user’s skin;
`
`wherein vibration of the apparatus is damped by a viscous ferrofluid in
`physical contact with at least the moving portion;
`
`wherein the viscous ferrofluid reduces at least a resonance within a frequency
`range of 40-200 Hz in response to signals applied to the plurality of
`conductive coils;
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`wherein said moving portion includes at least a pocket that provides space for
`at least a magnet;
`
`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
`plane of the moving portion; and
`
`wherein said housing is generally cuboid in shape.
`
`’117 Patent col. 14 l. 47–col. 15 l. 5.
`II.
`Procedural History
`
`On April 26, 2021, Taction filed a complaint against Apple, alleging infringement
`of the asserted patents. (See generally ECF No. 1 (“Compl.”).) Specifically, Taction
`alleges that Apple has directly infringed and induced or contributed to the infringement of
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`the asserted patents by making, using, selling, and offering for sale Apple products,
`including the iPhone and Apple Watch, that implement haptics technology, (see id. ¶¶ 77,
`80), which refers to the science of enabling interaction with technology through the sense
`of touch, such as, for example, through the use of vibrations. (See ECF No. 73 at 1.)
`On July 8, 2021, Apple answered the complaint and filed counterclaims against
`Taction. (See generally ECF No. 17.) Magistrate Judge Jill L. Burkhardt issued a Case
`Management Order on August 10, 2021, (see generally ECF No. 34), setting a Claims
`Construction and Tutorial Hearing before the Honorable Gonzalo P. Curiel for
`February 18, 2022. (See id. ¶ 12.)
`
`On October 21, 2022, after this action was transferred to the undersigned, (see ECF
`No. 48), Apple filed before the Patent Trial and Appeal Board (“PTAB”) four petitions for
`inter partes review (“IPR”), challenging the validity of all of the asserted claims of the
`asserted patents. (See ECF No. 53-1 (“Kete Decl.”) Exs. 1–4.) On January 26, 2022, the
`Court stayed the action, including further claims construction briefing, pending the PTAB’s
`decision on whether to institute the IPRs. (See ECF No. 76 at 6.) The PTAB issued
`decisions denying institution of IPR for all four IPR proceedings related to the asserted
`patents on April 18, 2022. (See generally ECF No. 97.)
`On June 2, 2022, the Court lifted the stay and reset the Claim Construction and
`Tutorial Hearing for August 18, 2022, (see generally ECF No. 98), which the Court
`subsequently continued to September 15, 2022. (See ECF No. 119.) After issuing a
`tentative ruling, (see ECF No. 122), the Court held the Markman hearing on September 15,
`2022. (See ECF No. 126.) The Court’s Claim Construction Order followed on
`September 28, 2022. (See generally ECF No. 141.)
`On November 18, 2022, Apple served Taction with Apple’s “Post Claim
`Construction Amended Invalidity Contentions” (the “Amended Invalidity Contentions”).
`(See ECF No. 230-1 (“Sproul Decl.”) ¶ 14; ECF No. 235-4 (“Ex. 11”).) Taction first
`challenged Apple’s Amended Invalidity Contentions on December 29, 2022, and the
`Parties met and conferred on January 12, 2023. (See Sproul Decl. ¶ 14.) The Parties lodged
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`a Joint Discovery Statement with Judge Burkhardt on January 31, 2022. (See id.) On
`February 7, 2023, Judge Burkhardt issued a Minute Order indicating that the Parties
`“dispute is more properly raised as a noticed motion before the District Judge.” (See ECF
`No. 176.) Taction filed the instant Motion on February 21, 2023. (See generally ECF No.
`205.)
`
`LEGAL STANDARDS
`“The Court’s Patent Local Rules are designed to require parties to crystallize their
`
`theories of the case early in the litigation and to adhere to those theories once they have
`been disclosed.” CliniComp Int’l, Inc. v. Cerner Corp., No. 17CV02479GPCDEB, 2022
`WL 16985003, at *12 (S.D. Cal. Nov. 15, 2022) (quoting Wi-LAN Inc. v. LG Elecs., Inc.,
`No. 18-CV-01577-H-BGS, 2019 WL 5790999, at *2 (S.D. Cal. Sept. 18, 2019)); see also
`AntiCancer, Inc. v. Pfizer, Inc., 769 F.3d 1323, 1331 (Fed. Cir. 2014); O2 Micro Int’l Ltd.
`v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 n.12 (Fed. Cir. 2006). “The Local
`Rules are also designed to provide structure to discovery and to enable the parties to move
`efficiently toward claim construction and the eventual resolution of their dispute.” Bell
`Semiconductor, LLC v. NXP USA, Inc., No. 22-CV-00594-H-KSC, 2023 WL 2342037, at
`*2 (S.D. Cal. Feb. 27, 2023) (quoting Pelican Int’l, Inc. v. Hobie Cat Co., No. 3:20-CV-
`02390-RSH-MSB, 2023 WL 2127995, at *2 (S.D. Cal. Feb. 10, 2023)).
`
`The Patent Local Rules accomplish this “by requiring both the plaintiff and
`the defendant in patent cases to provide early notice of their infringement and
`invalidity contentions, and to proceed with diligence in amending those
`contentions when new information comes to light in the course of discovery.
`The rules thus seek to balance the right to develop new information in
`discovery with the need for certainty as to the legal theories.”
`
`Echologics, LLC v. Orbis Intelligent Sys., Inc., No. 21-CV-01147-RBM-AHG, 2022 WL
`17724142, at *7 (S.D. Cal. Dec. 15, 2022) (quoting O2 Micro, 467 F.3d at 1365–66).
`Under Patent Local Rule 3.3, an accused infringer must serve on all parties its
`“Invalidity Contentions,” which must disclose specific information regarding the accused
`infringer’s theories of invalidity in the case. See id. (citing S.D. Cal. Patent L.R. 3.3); see
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`also Pelican, 2023 WL 2127995, at *3. “In a lawsuit for patent infringement in the
`Southern District of California, an accused infringer is limited to the invalidity theories and
`prior art references it sets forth in its invalidity contentions.” Echologics, 2022 WL
`17724142, at *7; accord Pelican, 2023 WL 2127995, at *3. Any invalidity theories not
`properly disclosed pursuant to the Court’s Patent Local Rules “‘are barred from
`presentation at trial (whether through expert opinion testimony or otherwise).’” See Bell
`Semiconductor, 2023 WL 2342037, at *3 (quoting Pelican, 2023 WL 2127995, at *3); see
`also In re PersonalWeb Techs., LLC Pat. Litig., No. 18-MD-02834-BLF-SVK, 2019 WL
`11201545, at *3 (N.D. Cal. Aug. 7, 2019) (“The contentions are not a mere formality but
`rather a requirement ‘to eliminate the gamesmanship of hints in favor of open disclosure.’”
`(quoting Largan Precision Co. v. Genius Elec. Optical Co., No. 13-CV-02502-JD, 2014
`WL 6882275, at *4 (N.D. Cal. Dec. 5, 2014))).
`“The Court’s Patent Local Rules do not allow amendments to contentions as a matter
`of course when new information is revealed in discovery.” Echologics, 2022 WL
`17724142, at *7 (quoting Zest IP Holdings, LLC v. Implant Direct MFG, LLC, No. 10-CV-
`0541-GPC-WVG, 2014 WL 358430, at *3 (S.D. Cal. Jan. 31, 2014)). “Rather, a party
`seeking to amend its infringement or invalidity contentions must satisfy the relevant
`provisions set forth in Patent Local Rule 3.6.” Id.; accord Pelican, 2023 WL 2127995, at
`*3. “In contrast to the more liberal policy for amending pleadings, the philosophy behind
`amending contentions under the Patent Local Rules is decidedly conservative, and
`designed to prevent the shifting sands approach to claim construction.” Echologics, 2022
`WL 17724142, at *7 (quoting Regents of Univ. of Cal. v. Affymetrix, Inc., No. 17-CV-
`01394-H-NLS, 2018 WL 4053318, at *2 (S.D. Cal. Aug. 24, 2018)); accord Genentech,
`Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed. Cir. 2002).
`Patent Local Rule 3.6(b) governs amendments to invalidity contentions:
`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
`construction discovery. Thereafter, absent undue prejudice to the opposing
`party, a party opposing infringement may only amend its validity contentions:
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`If a party claiming patent infringement has served “Amended
`1.
`Infringement Contentions,” and the party opposing a claim of patent
`infringement believes in good faith that the Amended Infringement
`Contentions so require;
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`If, not later than fifty (50) days after service of the Court’s Claim
`2.
`Construction Ruling, the party opposing infringement believes in good faith
`that amendment is necessitated by a claim construction that differs from that
`proposed by such party; or
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`3. Upon a timely motion showing good cause.
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`S.D. Cal. Patent L.R. 3.6(b). Additionally, Patent Local Rule 3.6 states: “This rule does
`not relieve any party from its obligations under Fed. R. Civ. P 26 to timely supplement
`disclosures and discovery responses.” S.D. Cal. Patent L.R. 3.6.
`“‘A district court has wide discretion in enforcing the Patent Local Rules.’” Pelican,
`2023 WL 2127995, at *4 (quoting CliniComp, 2022 WL 16985003, at *12); see
`Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed. Cir. 2016)
`(reviewing “a district court’s application of its local rules for abuse of discretion”). The
`Federal Circuit will “affirm decisions in which [a] district court enforced its own local
`rules, unless it is ‘clearly unreasonable, arbitrary, or fanciful; based on erroneous
`conclusions of law; clearly erroneous; or unsupported by any evidence.’” Howmedica
`Osteonics, 822 F.3d at 1324; see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314, 1321 (Fed. Cir. 2016) (“‘[T]his court defers to the district court when
`interpreting and enforcing local rules so as not to frustrate local attempts to manage patent
`cases according to prescribed guidelines.’”).
`ANALYSIS
`Every asserted claim in this action contains a “ferrofluid” claim limitation. (See ECF
`No. 234-9, Ex. I at p. 481 (listing the asserted claims).) Independent claim 1 of the ’885
`Patent contains the following limitation: “wherein movement of the moving portion is
`damped by a ferrofluid in physical contact with at least the moving portion.” ’885 Patent
`col. 14 ll. 59–61. And independent claim 1 of the ’117 Patent similarly contains the
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`following limitation: “wherein vibration of the apparatus is damped by a viscous ferrofluid
`in physical contact with at least the moving portion.” ’117 Patent col. 14 ll. 60–62.
`In its initial invalidity contentions, Apple identified its iPhone 6 and iPhone 6 Plus
`products as prior art references and asserted that each of those two references in
`combination with other references render obvious claims 1 through 17 of the ’117 Patent
`and claims 1 through 20 of the ’885 Patent.2 (See ECF No. 234-1 (“Ex. A”) at p. 2; ECF
`No. 234-2 (“Ex. B”) at p. 56; ECF No. 234-3 (“Ex. C”) at p. 105; ECF No. 234-4 (“Ex.
`D”) at p. 174.) On November 18, 2022, Apple served Taction with its Amended Invalidity
`Contentions, (see Sproul Decl. ¶ 14), in which Apple—for the first time—asserted that the
`iPhone 6 and iPhone 6 Plus prior art references anticipate the asserted claims of the ’885
`Patent and the ’117 Patent.3 (See ECF No. 234-5 (“Ex. E”) at p. 247; ECF No. 234-6 (“Ex.
`F”) at p. 315; ECF No. 234-7 (“Ex. G”) at p. 377; ECF No. 234-8 (“Ex. H”) at p. 429.)
`And Apple for the first time asserted that the iPhone 6 and iPhone 6 Plus prior art references
`satisfy the ferrofluid claim limitations at issue. (Compare Ex. E at pp. 281–87; Ex. F at
`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
`p. 66; Ex. C at pp. 125–26; Ex. D at pp. 193–94.)
`Through its Motion, Taction argues that these amendments to Apple’s Amended
`Invalidity Contentions violated Patent Local Rule 3.6 and therefore seeks to strike claim
`charts regarding the iPhone 6 and iPhone 6 Plus references and to preclude Apple from
`
`
`2 To prove that a patent claim is invalid as obvious under 35 U.S.C. § 103, an accused infringer must show
`“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
`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,
`406 (2007). “Obviousness can be proven by combining existing prior art references, while anticipation
`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).
`
` To prove that a patent claim is invalid as anticipated under 35 U.S.C. § 102, an accused infringer must
`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
`also K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1377 (Fed. Cir. 2012).
`
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`contending “that the iPhone 6 or iPhone 6 Plus anticipate the asserted claims or otherwise
`meet the ferrofluid limitations.” (See ECF No. 205-1 (“Mem.”) at 1–2, 5–12.4) In
`response, Apple argues that Taction’s challenge to its amended invalidity contentions
`should be rejected for three reasons. (See Opp’n at 8.) First, Apple argues that Taction
`waived its ability to challenge Apple’s November 18, 2023 Amended Invalidity
`Contentions by failing to raise the issue in a timely manner. (See id. at 8–10.) Second,
`Apple contends that it merely supplemented its invalidity contentions as permitted by
`Patent Local Rule 3.6. (See id. at 10–11.) Third and finally, Apple argues that “good
`cause” exists under Patent Local Rule 3.6(b)(3) for it to amend its invalidity contentions.
`(See id.at 12–25.) The Court addresses each of Apple’s three arguments in turn below.
`I.
`Timeliness of Taction’s Challenge
`
`Apple argues that Taction waived any challenge to the Amended Invalidity
`Contentions by failing timely to raise its challenge to the Court. (See Opp’n at 8–10.) On
`September 23, 2022, Judge Burkhardt issued an Amended Case Management Order that
`provided:
`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
`discovery disputes must be raised within 30 calendar days of the service
`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
`after counsel (and any unrepresented parties) have met and conferred to
`resolve the dispute. See J. Burkhardt Civ. Chambers R. § V.
`(See ECF No. 140 at 2 ¶ 2 (emphasis in original).) Judge Burkhardt’s Civil Chambers
`Rules also require that “[c]ounsel shall commence the meet and confer process within 14
`calendar days of the event giving rise to the dispute.” J. Burkhardt Civ. Chambers R.
`§ V.A (emphasis in original). According to Apple, Taction failed to comply with Judge
`Burkhardt’s timeline to raise its present challenge to the Amended Invalidity Contentions.
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`
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`4 A sealed version of Taction’s memorandum of points and authorities in support of its Motion also appears
`at ECF No. 234.
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`(See Opp’n at 8–10.) Specifically, although the Amended Invalidity Contentions were
`served on November 18, 2022, (1) Taction did not raise any issue with the contentions to
`Apple until December 29, 2022; (2) the Parties did not meet and confer on the issue until
`January 12, 2023; and (3) Taction did not raise its challenge to the Court until January 31,
`2023, when the parties filed a joint discovery statement with the Judge Burkhardt. (See id.
`at 9; see also Sproul Decl. ¶ 14; ECF No. 235-1 (“Ex. 5”).)
`In response, Taction asserts that Apple’s argument fails because Judge Burkhardt
`rejected it when she concluded that the present issue should be raised as a noticed motion
`before the district judge. (See Reply at 1–2.) Although the Court disagrees with Taction
`that Judge Burkhardt concluded its challenge was timely, the Court agrees that Apple’s
`reliance on paragraph 2 of Judge Burkhardt’s September 23, 2022 Amended Case
`Management Order is misplaced. By its plain terms, the provision applies only to
`“[d]iscovery disputes.” (See ECF No. 140 at 2 ¶ 2.) A challenge to the disclosures in
`another party’s infringement or invalidity contentions, however, is not a “discovery
`dispute.” While discovery disputes in this District are generally referred to the magistrate
`judges, motions to strike infringement and/or invalidity contentions are heard by the district
`court judges. See, e.g., Evolusion Concepts, Inc. v. Cross Eng’g, LLC, No. 18-CV-0871
`DMS (MSB), 2019 WL 13149923, at *1 (S.D. Cal. Apr. 8, 2019); Apple Inc. v. Wi-LAN,
`Inc., No. 14CV2235 DMS (BLM), 2018 WL 9538772, at *1 (S.D. Cal. Mar. 2, 2018); In
`re Qualcomm Litig., No. 17-CV-00108-GPC-MDD, 2018 WL 1406944, at *1 (S.D. Cal.
`Mar. 21, 2018); Multimedia Pat. Tr. v. Apple Inc., No. 10-CV-2618-H KSC, 2012 WL
`4547449, at *1 (S.D. Cal. Sept. 28, 2012). Further, the deadline in paragraph 2 of the
`Court’s scheduling order is only triggered by the service of “an objection, answer, or
`response.” (See ECF No. 140 at 2 ¶ 2.) Amended invalidity contentions are not an
`objection, answer, or response to a discovery request. The Court therefore rejects Apple’s
`argument that Taction waived its ability to challenge the November 18, 2023 Amended
`/ / /
`/ / /
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`Invalidity Contentions by failing to comply with the deadline in the Court’s scheduling
`order.5
`II.
`Supplementation Under Patent Local Rule 3.6
`
`Apple next contends that Taction’s motion should be denied because Apple merely
`“supplemented” its invalidity contentions as permitted by Patent Local Rule 3.6. (See
`Opp’n at 10–11.) Specifically, Apple relies on the following sentence from Patent Local
`Rule 3.6: “This rule does not relieve any party from its obligations under Fed. R. Civ. P
`26 to timely supplement disclosures and discovery responses.” See S.D. Cal. Patent L.R.
`3.6. Apple argues that this sentence “allow[s] for supplementation of invalidity
`contentions, and indeed require[s] it, upon the discovery of new facts. (See Opp’n at 10.)
`Taction responds that Apple’s supplementation argument relies on a strained reading of
`Patent Local Rule 3.6 and should be rejected. (See Reply at 2–3.) The Court agrees with
`Taction.
`In the sentence on which Apple relies, Patent Local Rule 3.6 refers to Federal Rule
`of Civil Procedure 26’s supplementation requirements, which provide:
`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
`supplement or correct its disclosure or response:
`
`(A)
`
`in a timely manner if the party learns that in some material respect the
`disclosure or response is incomplete or incorrect, and if the additional
`or corrective information has not otherwise been made known to the
`other parties during the discovery process or in writing; or
`
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`(B) as ordered by the court.
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`/ / /
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`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
`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
`that Taction’s delay was not unreasonable and that the procedural equities ultimately favor Taction.
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`Fed. R. Civ. P. 26(e)(1). By its plain terms, Rule 26(e)(1)’s supplementation requirements
`only apply to Rule 26(a) disclosures,6 responses to interrogatories, responses to requests
`for production, and responses to requests for admissions. An accused infringer’s invalidity
`contentions do not qualify as any of the documents specified by Rule 26(e)(1). As such,
`Patent Local Rule 3.6 and Rule 26(e)(1) do not provide any basis for the “supplementation”
`of infringement contentions.7 Cf. Bell Semiconductor, 2023 WL 2342037, at *6
`(explaining to patentee that any “‘supplementation’” of its infringement contentions
`constitutes “amendments” to those contentions). Indeed, courts in this District have
`expressly held that “[t]he Court’s Patent Local Rules do not allow amendments to
`contentions as a matter of course when new information is revealed in discovery.” See
`Echologics, 2022 WL 17724142, at *7 (internal quotation marks omitted) (quoting Zest IP
`Holdings, 2014 WL 358430, at *3); accord Pelican, 2023 WL 2127995, at *3. “Rather, a
`party seeking to amend its infringement or invalidity contentions must satisfy the relevant
`provisions set forth in Patent Local Rule 3.6,” which for infringement contentions are the
`provisions in Rule 3.6(a) and for invalidity contentions are the provisions in Rule 3.6(b).
`See Echologics, 2022 WL 17724142, at *7; accord Pelican, 2023 WL 2127995, at *3.
`Moreover, the Court rejects Apple’s assertion that its Amended Invalidity
`Contentions have not “meaningfully changed.” Contrary to Apple’s assertions, it did not
`merely amend its infringement contentions to disclose “a single fact.” (See Opp’n at
`10–11, 20.) Rather, Apple made substantive amendments to its invalidity contentions that
`represent new invalidity theories. That the changes at issue are substantive amendments
`and new invalidity theories can be seen from an examination of the provisions in Patent
`Local Rules 3.3(b) and (c), which contain disclosure requirements for an accused
`
`
`6 Rule 26(a) disclosures are initial disclosures, expert disclosures, and pretrial disclosures. See Fed. R.
`Civ. P. 26(a).
`
` 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
`party to ignore its duties to supplement under Rule 26. (See Reply at 3.)
`
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`infringer’s invalidity contentions. Patent Local Rule 3.3(b), for example, requires the
`disclosure of “[w]hether each item of prior art anticipates each asserted claim or renders it
`obvious.” S.D. Cal. Patent L.R. 3.3(b). In the Amended Invalidity Contentions, Apple for
`the first time asserted that the two prior art references at issue anticipate the asserted claims
`of the asserted patents. (See Ex. E at p. 247; Ex. F at p. 315; Ex. G. at p. 377; Ex. H at
`429.) As such, those changes are substantive amendments to Apple’s Rule 3.3(b)
`disclosures and are new invalidity theories even if the prior art references had been
`previously disclosed as obviousness references in earlier contentions. See, e.g., Polaris
`PowerLED Techs., LLC v. VIZIO, Inc., No. SACV181571JVSDFMX, 2020 WL 4258663,
`at *4 (C.D. Cal. May 14, 2020) (striking expert opinion for disclosing new theory of
`invalidity where expert attempted to use prior art as an anticipatory reference when the
`prior art had only been previously disclosed as an obviousness reference in the invalidity
`contentions).
`
`Similarly, Patent Local Rule 3.3(c) requires: “A chart identifying where specifically
`in each alleged item of prior art each element of each asserted claim is found.” See S.D.
`Cal. Patent L.R. 3.3(c). In the Amended Invalidity Contentions, Apple for the first time
`asserted that the two prior art references at issue satisfy the ferrofluid limitations in the
`asserted claims. (See Ex. E at pp. 281–87; Ex. F at pp. 344–51; Ex. G. at pp. 397–402; Ex.
`H at pp. 449–54.) As such, those changes are substantive amendments to Apple’s Rule
`3.3(c) disclosures and are new invalidity theories even if the prior art references had been
`previously disclosed as