ImageSails, LLC v. North Sails Group LLC

[3] 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA [6] 7 IMAGESAILS, LLC, Case No. 24-cv-07155-NW (SVK) 8 Plaintiff, ORDER FINDING MOTION TO STRIKE NOT MOOT AND STRIKING 9 v. WITH LEAVE TO AMEND THE THIRD AMENDED INFRINGEMENT 10 NORTH SAILS GROUP LLC, CONTENTIONS 11 Defendant. Re: Dkt. Nos. 63, 81 [12] 13 Before the Court is Defendant North Sails Group LLC’s (“North Sails”) Motion to Strike 14 Plaintiff ImageSails, LLC’s (“ImageSails”) Infringement Contentions and Dismiss the case as a 15 sanction, referred to the undersigned on September 29, 2025. Dkt. 63 (“Motion to Strike”); Dkt. 16 67. On October 22, 2025, the Parties submitted a joint stipulation requesting that this Court accept 17 ImageSails’ fourth infringement claim chart (Dkt. 73-1) and the declaration of Daniel Gohstand, 18 ImageSails’ CEO, explaining the reason for the submission (Dkt. 73-2). Dkt. 73. The Court 19 granted the stipulation but directed the Parties to submit a joint statement as to whether the Motion 20 to Strike was moot, in whole or in part, based on the amended infringement contentions. Dkt. 79. 21 Having considered the Parties’ submissions, including the operative third amended infringement 22 contentions (Dkt. 80-1, “Third Amend. Inf. Cont.” or “Operative Contentions), the Court finds the 23 motion is not moot and GRANTS IN PART and DENIES IN PART the Motion to Strike. 24 I. BACKGROUND AND RULING ON MOOTNESS 25 On October 15, 2024, ImageSails filed this action against North Sails alleging 26 infringement of U.S. Patent No. 10,618,618 (the “‘618 Patent”). Dkt. 1. The ‘618 Patent relates 27 to “[a] process of printing an image or images on the sails of a watercraft … without altering or ] complaint on December 2, 2024. Dkt. 15 (“FAC”). The Honorable Noél Wise denied North 2 Sails’ motion to dismiss, motion for sanctions and motion for attorneys’ fees on May 30, 2025, 3 (Dkt. 55), after which Defendant answered the complaint on June 13, 2025, (Dkt. 58 (“Answer”)). 4 A. Initial Infringement Contentions 5 Thereafter, on July 14, 2025, ImageSails served its initial infringement contentions. Dkts. 6 || 65 Dkt. 63-2 (‘Initial Infringement Contentions”). The Initial Infringement Contentions 7 || consisted of a basic claim chart, with no cover pleading, mapping screenshots from North Sails’ 8 || website onto the 13 elements of claim 1 of the ‘618 Patent. See Initial Inf. Cont. For example, 9 || next to the claim preamble, “A method for printing high-resolution images to wind-catching 10 || fabrics without compromising the performance of the wind-catching fabrics,” ImageSails charted 11 the below image: q a } ethilipl oO hs Fem er niet note cnr ent MP □□ □□ “ - > 16 ey / — Z 18 i Pe . tit "SG 2 ee eres 19 || FM SS 20 Production Options 21 Initial Inf. Cont. at 6. 22 B. First Amended Infringement Contentions and the Motion to Strike 23 North Sails sent ImageSails a letter on July 16, 2025 asserting certain deficiencies. Dkt. 63 24 || at 6; Dkt. 63-3. ImageSails then provided a set of amended infringement contentions on August 25 1, 2025. Dkt. 65 at 5; Dkts. 63-4—5 (the amended claim chart and cover page, respectively) 26 || (together, “First Amend. Inf. Cont.”). These amended contentions included a cover page, (Dkt. 27 || 63-4), certain information about the ‘618 Patent’s file history and a revised claim chart, (Dkt. 63-5 28 (“First Amend. Claim Chart”). The amendments to the claim chart consisted of adding over 100 1 pages of screenshots of North Sails’ sails to the mapping for the preamble element. Compare First 2 Amend. Claim Chart at 5-193 with Initial Inf. Cont. at 4-7. The other claim elements, which 3 previously stated that “Discovery will be needed to confirm that North Sails practices this 4 element,” remained essentially1 unchanged. 5 North Sails moved to strike the initial and first amended contentions on August 28, 2025, 6 arguing that they should be dismissed without leave to amend, that the case should thus be 7 dismissed and that North Sails should be awarded attorneys’ fees. Dkt. 63 at 7. 8 C. The Opposition, Second Amended Infringement Contentions and Reply 9 At the same time as filing its opposition, on September 11, 2025 ImageSails again served a 10 revised set of infringement contentions. Dkt. 65 at 5; Dkt. 65-3 (“Second Amended Infringement 11 Contentions”). These contentions include a similar cover page with an additional allegation of 12 willful infringement. Second Amend. Inf. Cont. at 3. They also include a revised claim chart, 13 which increases the number of screenshots of sails adds the following statement to each: 14 This [or these] image[(s)] indicates that a method for printing highresolution images to wind catching fabrics without compromising the 15 performance of the wind-catching fabrics was utilized. In the alternative, an equivalent method was utilized because there are high 16 resolution images on a sail (which is a wind-catching fabric), and the performance has not been compromised because there is a man sailing 17 on the boat. 18 Second Amend. Inf. Cont. at 236-484 (all mapping to the preamble element). Similar screenshots 19 and statements are added to the subsequent elements. Id. at 484-3522 (the “identifying,” 20 “selecting,” “using image editing software,” “exporting a two-dimensional copy,” “importing a 21 three-dimensional image file,” etc., elements). 22 In its reply, North Sails added a request to strike these second amended infringement 23 contentions both as substantively deficient and because Plaintiff failed to show good cause under 24 the Patent Local Rules. See Dkt. 66 at 5-6. [25] 1 For other claim elements, ImageSails initially either charted a subset of the images included for [26] the preamble or explained why it could draw an inference of infringement based on the end result. E.g., Initial Inf. Cont. at 8-9. In its First Amended Infringement Contentions, this approach was [27] effectively unchanged as ImageSails incorporated, “[u]pon information and belief, all screenshots 1 D. The Operative Third Amended Contentions 2 On October 22, 2025, the Parties submitted a stipulation requesting that this Court accept 3 ImageSails’ fourth infringement claim chart (Dkt. 73-1), i.e., third amended infringement 4 contentions, as well as the declaration of Daniel Gohstand, ImageSails’ CEO, explaining the 5 reason for the submission (Dkt. 73-2). Dkt. 73. The Court granted the stipulation but directed the 6 Parties to submit a joint statement as to whether the Motion to Strike was moot, in whole or in 7 part, based on the many-times-over2 amended infringement contentions. Dkt. 79. 8 The operative, third amended contentions have the same one-page cover pleading as the 9 second amended contentions but remove the thousands of pages of screenshots. Compare Second 10 Amend. Inf. Cont. at 236-484 (preamble) and 484-3522 (other claim elements) with Third Amend. 11 Inf. Cont. at 235-43 (preamble) and 244-48 (other claim elements). In their place, the third 12 amended contentions return to the basic screenshots for the preamble as included in the initial 13 infringement contentions and proffer reasons why, in ImageSails’ view, evidence is likely to show 14 infringement of other claim elements. Compare Initial Inf. Cont. at 4-7 with Third Amend. Cont. 15 at 240-43 (preamble); Compare Initial Inf. Cont. at 8-11 with Third Amend. Cont. at 240-43 16 (preamble) at 244-48 (other claim elements). 17 On November 19, 2025, the Parties submitted the statement setting forth their respective 18 positions as to mootness. Dkt. 81. 19 E. In Light of the Record in this Action and for Judicial Efficiency, the Court Finds that the Motion to Strike is Not Moot [20] 21 For its part, ImageSails contends that the motion is moot or, in the alternative, that it 22 should be treated as a motion to compel further supplementation (and requests leave to further 23 amend its contentions as necessary). Dkt. 81 at 2-4. Meanwhile, North Sails contends that, aside 24 from background facts about the non-operative contentions, the arguments remain broadly [26] 2 The Court also admonished ImageSails that it must comply with the Patent Local Rules, [27] including Patent L.R. 3-6, which permit amendment of contentions “only by order of the Court upon a timely showing of good cause.” As evident by ImageSails repeated amendment without 1 applicable. Id. at 4-6 (arguing that Section I, “Introduction” remains thematically applicable; 2 Section II “Background Facts” is not strictly applicable “but the issues discussed [therein] 3 remain;” Section III “Argument” remains fully applicable as to subsection A, “remains in 4 concept” as to subsection B, and remains fully applicable as to subsections C-G because 5 “[n]othing has been done to correct these deficiencies.”). 6 The Court determines that the Motion is not moot for two reasons. First, the particular 7 record of amendment in this action supports this outcome. The third amended infringement 8 contentions—while certainly a massive change from the second amended infringement 9 contentions—are highly similar to ImageSails’ initial infringement contentions. Thus, the Court 10 agrees with North Sails that many, if not all, of the arguments made in its Motion are applicable 11 with equal force to the third amended infringement contentions (which the Court now refers to as 12 the “Operative Contentions”). Second, judicial economy supports reaching the merits of the issues 13 raised by North Sails; if the Court denied the motion as moot, North Sails could file substantially 14 the same motion (and ImageSails substantially the same opposition), and the Court would turn to 15 this issue down the road, leading to inefficiencies and delay for the Parties and the Court.3 16 II. LEGAL STANDARD 17 A. Patent Local Rule 3.1 – Infringement Contentions 18 “This District’s Patent Local Rules aim to make the parties more efficient, to streamline 19 the litigation process, and to articulate with specificity the claims and theory of a plaintiff’s 20 infringement claims.” Unicorn Energy AG v. Tesla Inc., No. 21-cv-07476-BLF (SVK), 2023 WL 21 4670294, at *1 (N.D. Cal. July 19, 2023) (quotation marks and citations omitted). Under Patent 22 Local Rule 3-1, the party alleging patent infringement must serve infringement contentions. 23 Patent L.R. 3-1. Among other things, the contentions must identify each claim of a patent that is 24 allegedly infringed and, for each asserted claim, “each accused apparatus, product, device, [25] 3 This outcome is also implicitly recognized by ImageSails’ request, in the alternative, that the [26] Court treat the motion to strike as a motion to compel amendment. See Dkt. 81 at 4. Such motions are two sides of the same coin and, “[w]here appropriate, the Court will treat a motion to [27] strike as a motion to compel amendment.” Finjan, Inc. v. Proofpoint, Inc., No. 13-CV-058081 process, method, act, or other instrumentality (‘Accused Instrumentality’) of each opposing party 2 of which the party is aware.” Patent L.R. 3-1(a), (b). “This identification shall be as specific as 3 possible” and must include “[a] chart identifying specifically where and how each limitation of 4 each asserted claim is found within each Accused Instrumentality.” Patent L.R. 3-1(c). 5 Infringement contentions “must be sufficient to provide reasonable notice to the defendant 6 why the plaintiff believes it has a reasonable chance of proving infringement and to raise a 7 reasonable inference that all accused products infringe.” SAGE Electrochromics Inc v. View Inc, 8 No. 12-cv-06441-JST (DMR), 2013 WL 4777164 , at *1 (N.D. Cal. Sept. 6, 2013) (citing, inter 9 alia, Shared Memory Graphics, LLC v. Apple, Inc., 812 F.Supp.2d 1022, 1025 (N.D. Cal. 2010) 10 and Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066 , 1075 (Fed. Cir. 2002)). The Rules 11 do “not require the disclosure of specific evidence or require a plaintiff to prove its infringement 12 case but[,] to the extent appropriate information is reasonably available to it, a patentee must 13 nevertheless disclose the elements in each accused instrumentality that it contends practices each 14 and every limitation of each asserted claim.” Unicorn Energy, 2023 WL 4670294 , at *2 (cleaned 15 up) (citing SAGE Electrochromics, 2013 WL 4777164 , at *2)). 16 B. Patent Local Rule 3.6 – Amendment of Contentions 17 “Amendment of the Infringement Contentions or the Invalidity Contentions may be made 18 only by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. In the context 19 of a motion to strike, “[w]here appropriate, the Court will treat a motion to strike as a motion to 20 compel amendment.” Finjan, Inc. v. Proofpoint, Inc., No. 13-CV-05808-HSG, 2015 WL 21 1517920, at *12 (N.D. Cal. Apr. 2, 2015) (collecting cases). In such cases, “[s]triking a patentee’s 22 infringement contentions is a severe sanction that should be used sparingly and only for good 23 cause.” Id. For example, courts in this District have explained that patentees may be denied leave 24 to amend where they “fail[] to respond to an argument therefore concede[] it through silence” or 25 “steadfastly maintain[] that [they] should not be required to incur the time and expense required to 26 cure the deficiencies.” Universal Connectivity Technologies, Inc. v. HP, Inc., No. 24-cv-0409727 NW (SVK), Dkt. 160 at 19-20 (N.D. Cal. Sept. 8, 2025) (cleaned up) (citing, respectively, Blue 1 Jan. 26, 2015); Shared Memory Graphics LLC v. Apple Inc., No. 10-cv-02475-MMC (JSC), 2011 2 WL 3878388 , at *8 (N.D. Cal. Sept. 2, 2011)). 3 III. DISCUSSION 4 North Sails’ Motion to Strike asks the Court to strike the Operative Contentions, dismiss 5 the complaint with prejudice and award attorneys’ fees under 25 U.S.C. § 285 . See Dkts. 63, 81. 6 The Court first addresses the merits (i.e., whether the Operative Contentions are deficient) and 7 then determines whether North Sails’ proposed remedies are appropriate. 8 A. ImageSails’ Operative Contentions Are Deficient in Several Respects 9 North Sails’ challenges to ImageSails’ infringement contentions fall into several 10 categories. First, North Sails argues that ImageSails’ contentions are deficient as to the preamble 11 element, because charting “[numerous] pages of screenshots with no analysis is clearly insufficient 12 under” the Patent Local Rules. E.g., Dkt. 63 at 12. Second, North Sails argues that the other 13 claim elements are insufficiently charted because assertions of infringement “[u]pon information 14 and belief” with statements that “discovery [is or may be] needed” are insufficient. Id. at 11-12 . 15 Third, North Sails argues that ImageSails cannot assert that claim elements are infringed under the 16 doctrine of equivalents using mere boilerplate placeholders. Id. at 14 . Fourth, North Sails argues 17 that ImageSails’ assertion of willful infringement is insufficient. Id. Fifth and finally, North Sails 18 notes in its mootness statement that portions of the Operative Contentions are directed to Quantum 19 Sails, a sister company of North Sails (“the same holding company ultimately owns both 20 companies”) but who is not a party to this case and over whom Defendant “has no control or 21 influence.” Dkt. 81 at 5. The Court addresses each issue in turn. 22 1. ImageSails Operative Contentions are Deficient as to the Preamble 23 As to the preamble element, the Court finds the Operative Contentions are deficient. 24 Under the Patent Local Rules, infringement contentions may not consist solely of screenshots 25 without any analysis as the Operative Contentions do. See Third. Amend. Inf. Cont. at 240-43. 26 Infringement contentions “must be sufficient to provide reasonable notice to the defendant why 27 the plaintiff believes it has a reasonable chance of proving infringement and to raise a reasonable 1 *1 (citing, inter alia, Shared Memory Graphics, LLC v. Apple, Inc., 812 F. Supp. 2d 1022 , 1025 2 (N.D. Cal. 2010) and Antonious v. Spalding & Evenflo Cos., Inc., 275 F.3d 1066 , 1075 (Fed. Cir. 3 2002)). ImageSails must include sufficient analysis to explain how the screenshots support its 4 assertion that “[a] method for printing high resolution images to wind catching fabrics without 5 compromising the performance of the wind-catching fabrics” was used. ‘618 Patent, Claim 1.4 6 2. ImageSails Operative Contentions are Deficient as to Several of the Claim Elements [7] 8 As to the other elements, the Court agrees with North Sails in part. 9 With regard to claim element 1[a],5 ImageSails’ contentions include a screenshot of North 10 Sails’ “request for quote” page and a comment explaining that “initially for [a] quote request of 11 sails art, the size and dimensions related to [the] boat and rig are required” such that ImageSails 12 infers that the printing process requires identifying the size and shape of fabric. Third Amend. Inf. 13 Cont. at 244. To be sure, ImageSails also states that “[d]iscovery will be needed to confirm these 14 inferences,” but that is permitted within the Patent Local Rules. The Rules do “not require the 15 disclosure of specific evidence or require a plaintiff to prove its infringement case but[,] to the 16 extent appropriate information is reasonably available to it, a patentee must nevertheless disclose 17 the elements in each accused instrumentality that it contends practices each and every limitation of 18 each asserted claim.” Unicorn Energy, 2023 WL 4670294 , at *2 (cleaned up) (citing SAGE 19 Electrochromics, 2013 WL 4777164 , at *2)). The Rules thus leave ample space for discovery to 20 confirm inferences that the patentee might reasonably draw from certain facts. 21 For similar reasons, the Court finds that claim elements 1[b] 1[d], 1[i], 1[l] and 1[m] are 22 sufficiently charted at this juncture, while the Operative Contentions are deficient with respect to 23 claim elements 1[e]–1[h] and 1[j]–[k]. See Third Amend. Inf. Cont. at 244-48. Specifically, claim [24] 25 4 For example, ImageSails’ Second Amended Infringement Contentions contained at least some explanation (that “the performance has not been compromised because there is a man sailing on 26 the boat.”). E.g., Second Amend. Inf. Cont. at 241. This is not to suggest that ImageSails needs to return to the 3,000-page chart of its Second Contentions; rather, to the extent that its analysis or 27 explanation applies to any screenshots equally, it may include such analysis either before or after 1 elements 1[e]–1[h] and 1[j]–[k] are insufficiently charted because they include no explanation of a 2 factual basis upon which ImageSails draws its inferences of infringing activity or why ImageSails 3 believes that discovery is likely to confirm such inferences. See id. In other words, even in the 4 absence of discovery, North Sails is entitled to know the facts upon which ImageSails asserts 5 infringement and, importantly, how those facts demonstrate infringement. See, e.g., SAGE 6 Electrochromics Inc, 2013 WL 4777164 , at *1 (infringement contentions must set forth “why the 7 plaintiff believes it has a reasonable chance of proving infringement.” (Emphasis added)). 8 3. ImageSails’ Does Not Disclose any Doctrine of Equivalents Theory 9 Next, the Court finds the Operative Contentions do not assert any theories of infringement 10 under the doctrine of equivalents (“DOE”). Specifically, while prior infringement contentions 11 included occasional invocations of the doctrine, (e.g., Second Amend. Inf. Cont. at 236-484), 12 ImageSails has removed all such references in its Operative Contentions, (see Third Amend. Inf. 13 Cont. at 241-48). 14 4. ImageSails’ Willfulness Disclosure is Insufficient 15 Finally, ImageSails’ assertion of willful infringement consists of the assertion that 16 “Defendant’s infringement was willful because Defendant was aware of Plaintiff and Plaintiff’s 17 invention … and so likely was aware of the patent as well.” Third Amend. Inf. Cont. at 2. As 18 support, ImageSails relies on the declaration of Mr. Gohstand and his recollection of a February 19 16, 2015 conversation with John Gladstone, “who was head of graphics for North Sails” at the 20 time, at the “Sail Strictly Miami” event as well as ImageSails’ general efforts to approach large 21 sailmakers with “with royalty and/or licensing proposals.” Id. (citing Dkt. 1-2). 22 Under the Patent Local Rules, a “bare recitation of the required elements for willful 23 infringement is insufficient as is a mere allegation of actual knowledge, without more.” Blue 24 Spike, 2015 WL 335842 , at *8 (internal quotation marks and citations omitted). Rather, “[i]n this 25 District, willful infringement requires a patentee to make out the barest factual assertion of 26 knowledge of an issued patent[.]” Id. At a minimum, there must be a factual assertion of pre-suit 27 knowledge of the asserted patent itself – not merely of the invention. See id. Here, even assuming 1 ImageSails’ sailmaking method, there is no suggestion that John Gladstone or anyone else at 2 North Sails had knowledge that Mr. Gohstand had patented the method. See Dkt. 1-2, ¶¶ 8-9. 3 Thus, the declaration of Mr. Gohstand and ImageSails’ willfulness contention are insufficient. 4 5. ImageSails’ Contentions Directed to Quantum Sails Are Irrelevant 5 Finally, the Court agrees with North Sails that, to the extent any of the infringement 6 contentions are directed to Quantum Sails rather than North Sails, without any explanation as to 7 the relevance of Quantum Sails to this action, such contentions are irrelevant. 8 B. Based Upon the Deficiencies Identified in Section III.A., the Court Will Strike the Contentions with Leave to Amend in Part as Set Forth Herein [9] 10 As to the remedy sought by North Sails, at this early stage of the case, striking contentions 11 with prejudice is inappropriate. “Striking a patentee’s infringement contentions is a severe 12 sanction that should be used sparingly and only for good cause.” Finjan, 2015 WL 1517920 , at 13 *12. In the context of amending infringement contentions, “[t]he good cause inquiry is two-fold: 14 (1) whether the moving party was diligent in amending its contentions; and (2) whether the non15 moving party would suffer prejudice if the motion to amend were granted.” Synchronoss Techs., 16 Inc. v. Dropbox Inc., No. 16-CV-00119-HSG, 2018 WL 5619743 , at *3 (N.D. Cal. Oct. 29, 2018) 17 (citation omitted). 18 Here, this is the first motion to strike or to compel amendments, and the case is in a 19 relatively early stage such that prejudice is limited; in such cases, absent “‘egregious conduct’ [or] 20 ‘bad faith,’” “[c]ourts in this District generally allow plaintiffs leave to amend.” See id. Contrary 21 to the arguments put forth by North Sails, the Court does not find ImageSails’ conduct to have 22 been in bad faith. Rather, the history as set forth shows a series of good faith, if misguided and 23 flawed, attempts at amendment by ImageSails. See, supra, §§ I.A-D. 24 However, ImageSails’ conduct raises serious concerns as to its diligence: Part of the 25 diligence inquiry is whether a patentee has been “diligen[t] in discovering the basis for 26 amendment.” See, e.g., Applied Materials, Inc. v. Demaray LLC, No. 20-CV-09341-EJD (NC), [27] 2023 WL 12088683 , at *2 (N.D. Cal. July 3, 2023). While ImageSails was “diligent” in serving ] the Patent Local Rules, understanding their import and seeking to serve conforming contentions 2 || that would place North Sails on notice of its theories of infringement. 3 In consideration of all of the foregoing, the Court will provide ImageSails one more 4 || opportunity to amend its contentions in accordance with the Court’s guidance. Accordingly, the 5 Court ORDERS as follows. 6 ImageSails’ Operative Contentions are hereby STRICKEN for failure to comply with the 7 Patent Local Rules. While ImageSails’ contentions as to claim elements 1[b] 1[d], [i], □□□□ and 8 1[m] are sufficient, its remaining contentions are not. 9 ImageSails is granted leave to amend with regard to its chart for the preamble element of 10 claim 1, as well as claim elements 1[e]—1[h] and 1[j]-[k]. 11 ImageSails is denied leave to amend with regard to its assertion of doctrine of 12 || equivalents, willfulness and its contentions that appear to be directed to Quantum Sails. However, 13 ImageSails may move for leave to amend as to these contentions in the future, pursuant to Patent 14 || L.R. 3-6, if supported by the requisite good cause. Importantly, ImageSails must take care to 15 comply with its duties under the Patent Local Rules, including timely supplementation of its a 16 || contentions as evidence in discovery becomes available. 2 17 Finally, because the Court has granted ImageSails leave to amend, it DENIES North Sails’ Z 18 || request for dismissal of this case and DENIES its request for attorneys’ fees. 19 |} IV. CONCLUSION 20 For the forgoing reasons, North Sails’ Motion to Strike is GRANTED IN PART and 21 DENIED IN PART. ImageSails shall serve its fourth amended infringement contentions 22 || addressing the deficiencies identified herein no later than January 30, 2026. [23] 24 SO ORDERED. 25 || Dated: January 9, 2026 [26] 27 Suis vert SUSAN VAN KEULEN 28 United States Magistrate Judge