`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Plaintiff,
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`_______________________________________
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`PHILIPS NORTH AMERICA LLC,
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`)
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`Defendant.
`_______________________________________)
`
`
`v.
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`FITBIT LLC,
`
`
`Civil Action No.
`19-11586-FDS
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`
`
`SAYLOR, C.J.
`
`MEMORANDUM AND ORDER ON
`PLAINTIFF’S MOTION FOR LEAVE TO
`AMEND INFRINGEMENT CONTENTIONS
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`This is an action for patent infringement. Plaintiff Philips North America LLC has sued
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`defendant Fitbit LLC, asserting claims under 35 U.S.C. § 271 for infringement of three patents of
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`which Philips is the owner and assignee. The patents at issue concern technology related to
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`connected-health products, such as wearable fitness trackers.
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`Philips has filed a motion seeking leave of the Court to serve supplemental infringement
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`contentions to cover four new Fitbit products: the Charge 4, Versa 3, Inspire 2, and Sense.
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`These products were first made available to the public in 2020.
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`For the following reasons, that motion will be denied.
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`I.
`
`Background
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`A.
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`Factual Background
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`Philips North America LLC is a Delaware limited liability company based in
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`Massachusetts. (Second Am. Compl. ¶ 12). It develops, among other things, connected-health
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 2 of 14
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`technologies and related products, such as wearable fitness trackers that monitor and analyze
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`personal health and fitness information. (Id. ¶¶ 2, 4-7, 12, 24-25). Its patent portfolio includes
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`more than 60,000 patents. (Id. ¶ 8). It licenses its patented technologies to companies in the
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`connected-health field. (Id. ¶¶ 6, 8).
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`Fitbit LLC is a Delaware limited liability company based in Massachusetts. (Id. ¶ 13;
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`Mot. to Reflect Name Change). It develops, manufactures, and sells connected-health products.
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`(Second Am. Compl. ¶¶ 13, 29-30).
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`The second amended complaint alleges that Fitbit infringes three patents owned by
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`Philips: U.S. Patent No. 6,013,007 (“the ’007 patent”), U.S. Patent No. 7,088,233 (“the ’233
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`patent”), and U.S. Patent No. 8,277,377 (“the ’377 patent”).1 The patents concern technology
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`related to connected-health products, including GPS/audio athletic training, security mechanisms
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`for transmitting personal data, wearable-technology products, and handling interrupted
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`connections. (Id. ¶¶ 9, 12, 37).
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`The patent at issue for the present motion is the ’377 patent, which is titled “Method and
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`Apparatus for Monitoring Exercise with Wireless Internet Connectivity.” (’377 patent at Title).
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`It concerns the “monitoring of living subjects.” (Id. col. 1 ll. 35-36). More particularly, it
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`concerns “health-monitoring of persons where measured or input health data is communicated by
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`a wireless device to and from a software application running on an internet-connected server and
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`where the same may be studied and processed by the software application, a health professional,
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`or the subject.” (Id. col. 1 ll. 36-41).
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`1 The original complaint alleged that Fitbit infringes a fourth patent: U.S. Patent No. 6,976,958 (“the ’958
`patent”). Philips has since withdrawn its allegations of infringement of that patent. The Court’s claim construction
`order rendered invalid all asserted claims of the ’007 patent. Additionally, the parties stipulated on October 20,
`2021, that proceedings related to the ’233 patent would be stayed pending any PTAB appeal. Therefore, only the
`’377 patent is currently at issue.
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`
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`2
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 3 of 14
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`The patent provides for a “method and apparatus . . . for wireless monitoring of exercise,
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`fitness, or nutrition by connecting a web-enabled wireless phone to a device which provides
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`exercise-related information, including physiological data and data indicating an amount of
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`exercise performed.” (Id. at Abstract). It further provides that “[a]n application for receiving the
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`exercise-related information and providing a user interface may be downloaded to the web-
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`enabled wireless phone from an internet server” and that “[t]he exercise-related information may
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`be transmitted to an internet server, and the server may calculate and return a response.” (Id.).
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`The patent identifies two “complementary” systems that embody the invention. (Id. col.
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`2 l. 64). The first embodiment may be employed “to manage the disease state or condition of a
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`patient” by “employ[ing] a health monitoring device.” (Id. col. 2 l. 67; id. col. 3 ll. 1-2). That
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`device would provide data by a wireless connection “for processing via the internet[,] including a
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`review by a physician or other health care professional if required.” (Id. col. 3 ll. 4-5). For
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`example, a diabetic could connect a blood-glucose monitor to a wireless web device, download
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`data to a diabetes-management company’s server, and receive guidance concerning his next
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`meal. (Id. col. 3 ll. 14-20).
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`The second embodiment enables implementation of a “health or lifestyle management
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`plan” by allowing “[v]arious health parameters, such as those relating to nutrition or exercise,
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`[to] be entered into a health monitoring device” and to be wirelessly communicated to a server.
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`(Id. col. 3 ll. 6-11). In this embodiment, the system “may be employed to monitor the
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`physiologic status of a healthy subject while eating, exercising, or performing other activities.”
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`(Id. col. 3 ll. 34-36). For example, an individual following an exercise program could attach a
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`wireless web device to an exercise machine, send data from that machine over the Internet to the
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`server of a health and fitness company, and receive personalized responses from that company.
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`3
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 4 of 14
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`(Id. col. 3 ll. 21-27).
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`B.
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`Procedural Background
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`On July 22, 2019, Philips filed this action against Fitbit. The second amended complaint
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`asserts three counts of patent infringement under 35 U.S.C. § 271, involving the ’007 patent
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`(Count 1); the ’233 patent (Count 2); and the ’377 patent (Count 3).
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`On July 22, 2021, the Court issued its Memorandum and Order on Claim Construction.
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`In that decision, it concluded, among other things, that a means-plus-function claim term in the
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`’007 patent—“means for computing athletic performance feedback data from the series of time-
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`stamped waypoints obtained by said GPS receiver”—is indefinite under 35 U.S.C. § 112 for lack
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`of corresponding structure for the claimed function. As to the ’377 patent, the Court held that
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`“indicating a physiologic status of a subject” does not require construction and should be given
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`its plain and ordinary meaning.
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`Fitbit moved to dismiss the complaint for failure to state a claim upon which relief can be
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`granted. On August 10, 2021, the Court denied the motion to dismiss. On August 24, 2021,
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`Fitbit filed its Answer and asserted six counterclaims, seeking declaratory judgments of
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`invalidity and non-infringement.
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`C.
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`Infringement Contentions
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`Philips served its initial infringement contentions on January 31, 2020. (Philips Mem. at
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`1). It later served supplemental disclosures on May 15, 2020, but no new contentions with
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`respect to any new products were added at that time. (Id.). Philips notified Fitbit in December
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`2020 that it intended to seek to add four products released that year to its infringement
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`contentions regarding the ’377 patent: the Charge 4, Versa 3, Inspire 2, and Sense. (Philips Ex.
`
`A). The release by Fitbit of the Charge 4 was first announced in March 2020. (Philips Ex. N at
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`1). The releases of the Versa 3, Inspire 2, and Sense were announced in August 2020. (Philips
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`4
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 5 of 14
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`Ex. O at 1).
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`According to Philips, it did not and could not have known about these new products until
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`Fitbit publicly announced their release. Philips and Fitbit made at least some attempt to
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`negotiate mutual contention amendments, although the parties dispute the scope and significance
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`of such negotiations. (Philips Mem. at 2; Fitbit Opp. at 7). Philips has now moved for leave of
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`the Court to serve supplemental infringement contentions for the ’377 patent to cover the four
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`new products.
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`II.
`
`Standard of Review
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`Local Rule 16.6 requires the patentee to disclose its infringement claims and theories,
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`including claim charts that identify “each accused product” and provide “an element-by-element
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`description of where and how each element of each asserted claim is found in each accused
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`product or method.” Local Rule 16.6(d)(1)(A). Those infringement contentions can be
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`“amended and supplemented only by leave of court upon a timely showing of good cause.”
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`Local Rule 16.6(d)(5). To determine whether good cause exists, the court should consider the
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`moving party’s diligence and any prejudice to the non-moving party. See O2 Micro Int’l. Ltd. v.
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`Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). “The burden is on the
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`movant to establish diligence rather than on the opposing party to establish a lack of diligence.”
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`Id.
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`In contrast to the “liberal policy for amending pleadings, the philosophy behind
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`amending claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’
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`approach to claim construction.” LG Elecs. Inc. v. Q-Lity Comput. Inc., 211 F.R.D. 360, 367
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`(N.D. Cal. 2002) (quoting Amtel Corp. v. Info. Storage Devices, Inc., 1998 WL 775115, at *2
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`(N.D. Cal. Nov. 5, 1998)). Mandating such disclosures is intended to “require parties to
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`crystallize their theories of the case early in the litigation and to adhere to those theories once
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`5
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 6 of 14
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`they have been disclosed.” O2 Micro Int’l Ltd., 467 F.3d at 1366 n.12 (quoting Nova Measuring
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`Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121, 1123 (N.D. Cal. 2006)). “If the
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`parties were not required to amend their contentions promptly after discovering new information,
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`the contentions requirement would be virtually meaningless as a mechanism for shaping the
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`conduct of discovery and trial preparation.” Id.
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`III. Analysis
`
`A.
`
`Good-Cause Standard
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`1.
`
`Diligence
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`The Court will first consider plaintiff’s diligence in seeking to amend its infringement
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`contentions.2 It is plaintiff’s burden to establish diligence as the moving party. See O2 Micro
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`Int’l Ltd., 467 F.3d at 1366. Although diligence is a fact-specific inquiry, court have tended to
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`rely substantially on the length of delay as the most important factor. Courts have typically
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`rejected a finding of diligence where new products were available for five months or more. See,
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`e.g., Abbott Diabetes Care Inc. v. Roche Diagnostics Corp., 2007 WL 2221029, at *1 (N.D. Cal.
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`July 30, 2007) (plaintiff not diligent after waiting five months); GoPro, Inc. v. 360Heros, Inc.,
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`2017 WL 1278756, at *2 (N.D. Cal. Apr. 6, 2017) (seven months); Angioscore, Inc. v. TriReme
`
`Med., Inc., 2015 WL 75187, at *5 (N.D. Cal. Jan. 6, 2015) (ten months); Thermapure, Inc. v.
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`Giertsen Co. of Illinois, 2012 WL 6196912, at *4 (N.D. Ill. Dec. 11, 2012) (eleven months);
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`Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 2014 WL 4773960, at *2 (N.D. Cal.
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`Sept. 19, 2014) (more than one year); Midwest Athletics & Sports All. LLC v. Xerox Corp., 2021
`
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`2 Some courts have separated the diligence inquiry into two parts, asking whether a party was (1) diligent in
`discovering the basis for the amendment and (2) diligent in seeking amendment once the information was
`discovered. See Positive Techs., Inc. v. Sony Elecs., Inc., 2013 WL 322556, at *2 (N.D. Cal. Jan. 28, 2013). Here,
`however, plaintiff does not dispute that the relevant time period began when defendant’s products were first
`available to the general public. (Philips Mem. at 4-5). Therefore, the Court will consider whether plaintiff was
`diligent in seeking amendment after defendant’s products were released in late March and August 2020.
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`6
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 7 of 14
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`WL 2906372, at *6 (W.D.N.Y. July 9, 2021) (twenty months).3
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`Where plaintiffs have filed amended contentions within a few months of a new product,
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`courts have reached varying conclusions. See Pavo Sols. LLC v. Kingston Tech. Co. Inc., 2018
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`WL 5099294, at *2 (C.D. Cal. July 18, 2018) (delay of two months leading to finding of lack of
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`diligence). But see Abiomed Inc. v. Maquet Cardiovascular LLC, 2020 WL 3868803, at *4-5 (D.
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`Mass. July 9, 2020) (finding of diligence despite three-month delay); Nuance Commc'ns, Inc. v.
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`Abbyy Software House, 2012 WL 2427160, at *2 (N.D. Cal. June 26, 2012) (finding of diligence
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`despite delay of “few months”).4
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`Here, the proposed amendment is based entirely on new public information that was not
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`previously available to plaintiff. Information about the Charge 4 was first publicly available in
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`late March 2020. (Philips Ex. N at 1). The remaining three products were first unveiled at the
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`end of August 2020. (Philips Ex. O at 1). Plaintiff notified defendant in December 2020 that it
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`intended to amend its contentions, but it did not actually file this motion until March 31, 2021.
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`Thus, plaintiff waited approximately one year after the release of the Charge 4, and six months
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`after the release of the other products, to file its motion to amend. Given those delays, there is a
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`substantial question whether plaintiff acted diligently in seeking to amend its infringement
`
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`3 The parties compare and contrast three cases finding a lack of diligence, although none concern the
`release of new products. In Intellectual Ventures, LLC v. Lenovo Group, Ltd., et al., the court denied a motion to
`amend invalidity contentions because expert-report deadlines were imminent and the defendant failed to explain its
`delay. No. 16-cv-10860-PBS, slip op. at 2 (D. Mass. Aug. 15, 2019). In Acer Inc. v. Tech. Properties Ltd, the court
`found that the plaintiff was not diligent after it spent three months investigating infringement evidence once a stay
`was lifted. 2010 WL 3618687, at *4-5 (N.D. Cal. Sept. 10, 2010). And in Synopsys Inc. v. Atoptech Inc., the court
`rejected a finding of diligence because the plaintiff did not show how its proposed amendments were tied to newly
`discovered information from a source-code review. 2016 WL 4945489, at *4-5 (N.D. Cal. Sept. 16, 2016).
`
`4 Courts have reached differing results when motions to amend claim contentions have been delayed for
`reasons other than the addition of a new product. See O2 Micro Int’l. Ltd., 467 F.3d at 1366 (three-month delay
`leading to finding of lack of diligence). But see Radware Ltd. v. F5 Networks, Inc., 2014 WL 3728482, at *2 (N.D.
`Cal. July 28, 2014) (finding of diligence despite three-month delay); Vasudevan Software, Inc. v. Int'l Bus. Machs.
`Corp., 2011 WL 940263, at *3-4 (N.D. Cal. Feb. 18, 2011) (finding of diligence despite four-month delay).
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`7
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 8 of 14
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`contentions.
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`In defense of that delay, plaintiff contends that it did not file earlier because it was
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`attempting to negotiate with defendant for a stipulation. The record indicates that the parties
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`made at least some attempt to negotiate mutual contention amendments, although they dispute
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`the scope and significance of such negotiations. In any case, plaintiff’s assertion that its delay is
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`excused by its attempt to negotiate a stipulation with defendant is not persuasive. See O2 Micro
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`Int’l Ltd., 467 F.3d at 1367 (finding that “[t]he district court did not err in concluding that the
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`mere existence of good faith negotiations over a possible stipulation was insufficient to excuse
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`[plaintiff’s] delay”); Oracle Am., Inc. v. Google, Inc., 2011 WL 3443835, at *2 (N.D. Cal. Aug.
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`8, 2011) (reasoning that “[t]he failure of the parties to reach agreement regarding a stipulated
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`supplementation was foreseeable. If [defendant] was serious about amending its invalidity
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`contentions, it should not have gambled for months on the possibility that a stipulation might be
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`reached.”) (emphasis omitted).
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`It is also true that defendant had been on notice for some time that plaintiff would seek an
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`amendment. See Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., 2008 WL
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`624771, at *3 (N.D. Cal. Mar. 4, 2008) (concluding that plaintiff was diligent enough because,
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`while it did not file a motion to amend for several months, it notified defendant of the basis of
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`the amendment immediately by requesting discovery); IXYS Corp. v. Advanced Power Tech.,
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`Inc., 321 F. Supp. 2d 1133, 1152 n.19 (N.D. Cal. 2004) (“While [defendant’s] motion makes
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`clear that it has not complied fully with the letter of the local rules, the court finds that [plaintiff]
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`has long been on notice of these potential combination [sic].”) Arguably, plaintiff “notified”
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`defendant in December 2020 when it began trying to negotiate a stipulation, which could
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`mitigate the effect of the delay. Such a “notification” is, however, without legal effect. And the
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`8
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 9 of 14
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`fact remains that plaintiff did nothing for many months after that “notification.”
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`Finally, plaintiff alleges that it “believed that the most efficient approach to amending the
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`contentions would be to seek a single amendment that would cover all the new products released
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`during the course of the discovery.” (Philips Mem. at 4). The Court does not find that argument
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`persuasive. See MediaTek, Inc. v. Freescale Semiconductor, Inc., 2013 WL 2403644, at *6
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`(N.D. Cal. May 31, 2013) (“[Plaintiff’s] excuse that judicial economy would not have been
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`served by serial motions to amend its Infringement Contentions is unavailing. The Patent Local
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`Rules and implementing caselaw do not limit the number of motions to amend and do not advise
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`parties to delay bringing such motions until they are certain their proposed contentions are in
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`final form.”).
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`Under the circumstances, the Court concludes that plaintiff has not met its burden of
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`demonstrating diligence, given the substantial delay between the time it became aware of the
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`alleged infringing behavior and the filing of the motion to amend infringement contentions.
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`2.
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`Prejudice
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`Although that finding is likely dispositive, the Court will nonetheless consider whether
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`the proposed amendments would be unduly prejudicial to defendant.5 One critical inquiry is
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`whether adding four new products would unfairly broaden the scope of the case. Some district
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`courts have found that a party may move to add a new or updated product without prejudicing
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`the non-moving party if that addition would not substantially change the asserted infringement
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`theory. See, e.g., Abiomed, 2020 WL 3868803, at *4-5 (noting that new theories of infringement
`
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`5 Some courts have concluded that even without a finding of diligence, the court has discretion to grant
`leave to amend if there is no prejudice. See Apple Inc. v. Samsung Elecs. Co., 2012 WL 5632618, at *5 (N.D. Cal.
`Nov. 15, 2012) (stating that “even if the movant was arguably not diligent, the court may still grant leave to amend.
`Courts have allowed amendments when the movant made an honest mistake, the request to amend did not appear to
`be motivated by gamesmanship, or where there was still ample time left in discovery”).
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`9
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 10 of 14
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`are critical to determination of prejudice for new products); Bd. of Trustees v. Roche Molecular
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`Sys., 2008 U.S. Dist. LEXIS 16556, at *11-14 (N.D. Cal. Mar. 3, 2008) (permitting “late-stage
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`amendment” of infringement contentions to add newly released product because parties and
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`court had already discussed infringing technology during claim construction, minimizing
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`prejudice to nonmoving party); Zest IP Holdings, LLC v. Implant Direct MFG, LLC, 2013 U.S.
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`Dist. LEXIS 53664, at *11-12 (S.D. Cal. Apr. 15, 2013) (granting motion to amend infringement
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`contentions to add updated version of accused product, where plaintiff argued that same patent
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`claims and infringement theories applied); Digital Reg of Texas, LLC v. Adobe Sys., 2014 U.S.
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`Dist. LEXIS 58113, at *11-13 (N.D. Cal. Apr. 24, 2014) (permitting addition of new version of
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`software because changes did not “fundamentally alter the theory of infringement”).
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`Conversely, courts generally disfavor amendments that add new theories of infringement,
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`particularly late in the litigation and near or after the close of discovery, as unduly prejudicial.
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`See, e.g., Fast Felt Corp. v. Owens Corning Roofing & Asphalt, LLC, 2017 U.S. Dist. LEXIS
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`212728, at *2-3 (N.D. Ohio July 26, 2017) (granting motion to strike infringement contentions
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`that introduced entirely new infringement theories and would disrupt case schedule); Adobe Sys.
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`v. Wowza Media Sys., 2014 U.S. Dist. LEXIS 23153, at *52-53 n.7 (N.D. Cal. Feb. 22, 2014)
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`(striking supplementation that introduced new infringement theories because “prejudice is
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`inherent in the assertion of a new theory after discovery is closed”); Symantec Corp. v. Acronis,
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`Inc., 2013 U.S. Dist. LEXIS 29931, at *5 (N.D. Cal. Mar. 5, 2013) (denying motion to add new
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`product because it would “substantially expand the scope” of case).
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`Here, the parties dispute whether new infringement theories are being raised. Plaintiff
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`alleges that it is “simply contending that these pre-existing features now infringe as incorporated
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`into Fitbit’s new products.” (Philips Reply at 4). In contrast, defendant asserts that the new
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 11 of 14
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`contentions accuse additional features that were not identified in the earlier contentions.
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`Defendant contends that plaintiff is seeking to introduce a new theory “that determining heart
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`rate zones ‘personalized’ to a user meets the ‘receiving a calculated response’ limitation of the
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`’377 Patent.” (Fitbit Sur-Reply at 6).
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`
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`Central to that dispute are the Charge 3 and (proposed) Charge 4 infringement claim
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`charts for Claim 1(h) of the ’377 patent.6 Claim 1(h) provides for “a method for interactive
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`exercise monitoring, the method comprising the steps of receiving a calculated response from the
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`server, the response associated with a calculation performed by the server based on the exercise-
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`related information.” (Philips Ex. H at 20; Ex. I at 21). The Charge 3 and Charge 4 claim charts
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`provide as follows with respect to Claim 1(h):
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`The method of the Accused Product involves receiving a variety of different
`calculated responses from the server (such as cardio fitness score, heart rate
`zones, and resting heart rate), the responses associated with a calculation
`performed by the server based on the exercise-related information.
`
`
`(Id.).
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`However, defendant highlights two additions to the Charge 4 claim chart for Claim 1(h).
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`The first concerns viewing a “cardio fitness score.” (Philips Ex. I at 21). The second describes
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`heart rate zones “personalized to you.” (Id. at 22). The latter further provides:
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`Your heart rate zones are personalized based on your resting heart rate and age.
`As your cardiovascular fitness changes, your personalized heart rate zones will
`adapt with you. Check out your unique beats per minute (bpm) targets for fat
`burn, cardio, and peak heart rate zones in the Fitbit app. . . . The three target heart
`rate zones are fat burn, cardio, and peak, which are now all personalized to your
`cardiovascular fitness and age in your Fitbit app.
`
`
`
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`6 The same dispute about personalized heart rate zones is also featured in the new contentions for the Versa
`3, Inspire 2, and Sense. (Philips Ex. R at 20; Ex. S at 21; Ex. T at 21). The Court will not reiterate this debate,
`except to say that any prejudice resulting from the theories asserted with respect to the Charge 4 would also be
`present for the three other products.
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`11
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 12 of 14
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`(Id.). From those statements, defendant infers that plaintiff is asserting a new theory that
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`determining “personalized heart rate zones” meets the ’377 patent limitation.
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`It is somewhat unclear if those differences mean that the new claims assert an entirely
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`new infringement theory that would prejudice defendant. The Charge 3 claim chart also refers to
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`personalized features, stating things like, “your estimate of 41-45 is between fair and average for
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`men your age.” (Compare Philips Ex. H at 21 with Ex. I at 22) (emphasis added). But it is
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`certainly true that there is not a perfect alignment between the Charge 3 and Charge 4
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`infringement contentions, and therefore that at least some differences seem to exist. And
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`regardless, at a minimum, some litigation, and possibly some additional discovery, will be
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`required to resolve the issue.
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`
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`In any event, if there are no new infringement theories, defendant further contends that
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`the addition of four new products would require substantial additional discovery. It contends
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`that fact discovery, now closed, was extended three times, and that the issues at this stage should
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`be narrowing, not expanding. See, e.g., CyWee Grp. Ltd v. Apple Inc., 2016 WL 7230865, at *3
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`(N.D. Cal. Dec. 14, 2016) (denying motion to amend to include new products and emphasizing
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`that only two weeks remained in discovery). Plaintiff responds that any impact on discovery
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`would be minimal because discovery has already been taken on the accused features. But even if
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`that were true, this amendment would certainly require discovery on the issue of damages, which
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`is surely not trivial.
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`This is not a case where “fact discovery [will] continue[] for six months after the
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`amendment” or where “the non-moving party did not claim that it would be prejudiced by the
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`amendment or that it would need additional discovery.” Id., at *3; see also Rembrandt Patent
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`Innovations, LLC v. Apple Inc., 2015 WL 8607390, at *3 (N.D. Cal. Dec. 13, 2015) (stating that
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`12
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 13 of 14
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`“[t]here must be some reasonable cut-off date after which [patent holder] cannot further expand
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`the case simply because [accused infringer]’s product cycle has outpaced the resolution of this
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`case.”); Richtek Tech. Corp. v. uPi Semiconductor Corp., 2016 WL 1718135, at *3 (N.D. Cal.
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`Apr. 29, 2016) (stating that “it is time for the case to narrow, not expand[,]” and denying leave to
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`amend to include new products). Instead, fact discovery will have to be reopened, if for no other
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`reason than (1) to address damages claims and (2) possibly to examine whether there are
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`differences in the claims.
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`In short, defendant would likely be prejudiced, at least to some extent, if plaintiff were
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`permitted to amend its infringement contentions.
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`B. Merits of ’377 Patent
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`Finally, defendant contends that plaintiff’s proposed amendments would be futile because
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`the ’377 patent expired on January 18, 2020, before any of the newly-accused Fitbit products
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`were released. (Fitbit Opp. at 9). According to defendant, the earliest application in the ’377
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`patent’s priority chain is the ’486 application filed on December 17, 1999. (Id. at 10). The next
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`application in this chain is the ‘191 patent, filed on December 15, 2000. (Id.). Defendant alleges
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`that the ’191 patent operated as a conversion of the ’486 application, meaning that the requisite
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`20-year term began on December 17, 1999, not December 15, 2000. (Id.). Plaintiff’s position is
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`that the ’191 patent was not a conversion, and in any event, that is not a proper basis to oppose
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`amending infringement contentions. (Philips Mem. at 5-6).
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`Other courts have concluded that “the good cause requirement does not require the court
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`to analyze the strength of plaintiff's infringement contentions.” Bd. of Trs. of Leland Stanford
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`Junior Univ., 2008 WL 624771, at *4; see also General Atomics v. Axis-Shield ASA, 2006 WL
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`2329464, at *2 (N.D. Cal. Aug. 9, 2006) (rejecting argument that motion to amend should be
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`denied because new theory of infringement was “futile” and concluding that such issues “are best
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`Case 1:19-cv-11586-FDS Document 254 Filed 11/19/21 Page 14 of 14
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`addressed on summary judgment”); Motion Games, LLC v. Nintendo Co., 2015 WL 1774448, at
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`*3 (E.D. Tex. Apr. 16, 2015) (deeming defendants’ futility argument “misplaced” because
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`“infringement contentions are not intended to be a forum for adjudicating the merits of the
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`plaintiff’s contentions”).
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`Defendant does not cite any law that directs the Court to consider its substantive
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`argument about expiration; it only offers conclusory statements like “there is no reason to defer
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`addressing the expiration date dispute because it is ripe for resolution.” (Fitbit Sur-Reply at 10).
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`The Court does not deem it appropriate at this juncture to examine the merits of plaintiff’s
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`infringement contentions, including whether the ’377 patent expired prior to the launch of
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`defendant’s new products.
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`IV. Conclusion
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`In summary, plaintiff did not exercise reasonable diligence in waiting six (and in the case
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`of Charge 4, twelve) months before attempting to amend its infringement contentions. It also
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`appears that defendant would be prejudiced by the amendment, because new infringement
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`theories may be introduced into the case and, even if not, fact discovery would have to be
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`reopened.
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`Accordingly, and for the foregoing reasons, plaintiff’s motion for leave to amend
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`infringement contentions is DENIED.
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`So Ordered.
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`Dated: November 19, 2021
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`/s/ F. Dennis Saylor IV
`F. Dennis Saylor IV
`Chief Judge, United States District Court
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