Case 2:16-cv-08033-AB-FFM Document 438 Filed 10/31/19 Page 1 of 5 Page ID #:15627
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`NOMADIX, INC.,
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`Plaintiff,
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`v.
`GUEST-TEK INTERACTIVE
`ENTERTAINMENT LTD.,
`Defendant.
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`Case No. CV 16-8033 AB (FFMx)
`REPORT AND RECOMMENDATION
`OF UNITED STATES MAGISTRATE
`JUDGE RE MOTION TO STRIKE
`FILED BY DEFENDANT
`
`This Report and Recommendation is submitted to the Honorable André J. Birotte,
`Jr., United States District Judge, pursuant to the provisions of 28 U.S.C. § 636 and
`General Order 194 of the United States District Court for the Central District of
`California.
`On September 27, 2019, defendant Guest-Tek (“Defendant”) filed a motion to
`strike the Second Supplemental Responses of plaintiff, Nomadix, Inc., to Interrogatory
`Nos. 2 and 3. (Dkt. 423.) Defendant set a hearing on the motion for October 22, 2019.
`After reviewing the documents filed in connection with the motion, and entertaining the
`argument of counsel, the Court recommends that Defendant’s motion be GRANTED.
`On June 11, 2019, Defendant filed an ex parte application for an order precluding
`Plaintiff from asserting additional patent claims identified in Plaintiff’s May 31, 2019
`amended interrogatory responses. (Dkt. 348.) Although the discovery cutoff date was
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`GUEST TEK EXHIBIT 1030
`Guest Tek v. Nomadix, IPR2019-01191
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`Case 2:16-cv-08033-AB-FFM Document 438 Filed 10/31/19 Page 2 of 5 Page ID #:15628
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`three months off, Defendant argued that the cutoff dates for claim construction
`submissions impliedly required the parties to identify all their patent contentions prior
`to those cutoff dates. Judge Birotte denied the application. In doing so, Judge Birotte
`did not specifically address the relationship among the discovery cutoff, the cutoff for
`submitting claim construction terms, and the last day to submit amended interrogatory
`answers disclosing additional patent claims. Rather, Judge Birotte noted that the
`additional claim contentions were “dependent claims with minimal additional, new
`potential claim terms that would require construction.” (Dkt. 351 at 2.) He added that
`he was not otherwise persuaded that Defendant had suffered any prejudice. (Id.)
`However, Judge Birotte also observed that “there must be some reasonable cut-off for
`each party to disclose its positions relating to patent infringement and invalidity in this
`case.” (Dkt. 351.) Accordingly, Judge Birotte amended the Scheduling Order to add,
`among other dates, a date for Plaintiff’s Final Amended Interrogatory Response
`Regarding its Infringement Contentions. Judge Birotte selected the extant discovery
`cutoff date as the last date for such amended interrogatory responses: August 30, 2019.
`Judge Birotte also stated, however, that “[a]lthough these final deadlines are
`added, if a party receiving final contention interrogatories believes that amendments
`were made without good cause, it may timely move the Court to strike them. Good
`cause in this context may include, for instance, that such amendments were made due to
`(i) a claim construction by the Court different from that proposed by the party seeking
`amendment, or (ii) recent discovery of nonpublic information that was not discovered,
`despite diligent efforts, before earlier service of contention interrogatories.” (Id. at 3.)
`Plaintiff served supplemental interrogatory answers that contained additional
`infringement contentions on August 30, 2019. Defendant has now moved to strike these
`additional contentions, claiming that Plaintiff does not have good cause for asserting
`these contentions at this time.
`In making a recommendation on Defendant’s instant motion, the Court makes the
`following observations regarding its understanding of Judge Birotte’s intent in
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`Case 2:16-cv-08033-AB-FFM Document 438 Filed 10/31/19 Page 3 of 5 Page ID #:15629
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`extending the deadline for interrogatory responses to questions seeking patent
`contentions and in setting up a good cause standard that must be met for any additional
`interrogatory responses to questions seeking patent contentions:
`First, it is clear that Judge Birotte considered interrogatory responses regarding
`patent contentions to be different from ordinary discovery responses. Although Plaintiff
`had served its additional responses regarding patent contentions several months in
`advance of the discovery cutoff, the discovery cutoff played no role in Judge Birotte’s
`analysis of Defendant’s application to strike the additional responses. Second, in
`providing a final cutoff date for patent contentions, Judge Birotte made it clear that he
`was not opening up additional time to assert any new contentions, but only those
`contentions that the party could show good cause for not having submitted earlier.
`Third, the good cause standard that Judge Birotte was imposing was focused on the
`ability of the party asserting contentions to have made the assertions earlier, not on any
`prejudice (or lack thereof) to the party receiving the additional contentions.
`With these observations in mind, the Court concludes that Plaintiff has failed to
`demonstrate good cause for failing to assert the August 30 contentions earlier. Plaintiff
`devotes most of its argument to the contention that Defendant knew that Plaintiff was
`seeking royalties on the HEP and RendezView instrumentalities and that Plaintiff had
`provided extensive discovery relating to these claim. Therefore, according to Plaintiff,
`Defendant was not prejudiced by the “late”1 disclosure of additional contentions.
`Indeed, the Court finds Defendant’s contention that is has been prejudiced to be less
`than persuasive. Regardless, the most significant factor, according to the Court’s
`understanding of Judge Birotte’s order, is not prejudice to Defendant but due diligence
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` 1 The Court uses “late” in the sense that the responses were not provided before
`Judge Birotte set a specific deadline for asserting contentions if the contending party
`had good cause for not making the contentions earlier. Hence, the responses are
`considered “late” because they only can be made upon a showing of good cause as
`opposed to a “timely” response for which good cause is not required.
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`Case 2:16-cv-08033-AB-FFM Document 438 Filed 10/31/19 Page 4 of 5 Page ID #:15630
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`by Plaintiff. Plaintiff barely addresses diligence at all. At the hearing, Plaintiff stated
`that it was busy dealing with claim construction and therefore had not provided the
`contentions earlier. The Court finds that Plaintiff has failed to demonstrate due
`diligence and, therefore, has failed to make a showing of good cause.
`Under the Court’s understanding of Judge Birotte’s order, the August 30
`supplemental interrogatory contentions should be stricken. The Court has not been
`tasked with addressing, and does not address, the significance of striking the
`supplemental interrogatory answers to Plaintiff’s ability to pursue any cause of action
`alleged in the operative complaint as otherwise expounded through discovery in this
`action.
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`RECOMMENDATION
`Accordingly, IT THEREFORE IS RECOMMENDED that the District Court issue
`an order approving and adopting this Report and Recommendation and striking
`Plaintiff’s Second Supplemental Responses to Interrogatory Nos. 2 and 3.
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`DATED: October 31, 2019
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` _____________________________
` FREDERICK F. MUMM
` United States Magistrate Judge
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`Case 2:16-cv-08033-AB-FFM Document 438 Filed 10/31/19 Page 5 of 5 Page ID #:15631
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`NOTICE
`Reports and Recommendations are not appealable to the Court of Appeals, but are
`subject to the right of any party to timely file Objections as provided in the Local Rules
`Governing the Duties of the Magistrate Judges, and review by the District Judge whose
`initials appear in the docket number. No Notice of Appeal pursuant to the Federal Rules
`of Appellate Procedure should be filed until entry of the Judgment of the District Court.
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`DATED: October 31, 2019
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` /S/ FREDERICK F. MUMM
` FREDERICK F. MUMM
`United States Magistrate Judge
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