Yuntek International, Inc. v. Xiamen JXD Electronic Commerce Co., Ltd.

— 1 — — 2 — — 3 — 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 EUREKA DIVISION — 7 — 8 YUNTEK INTERNATIONAL, INC., Case No. 20-cv-07201-JSW (RMI) 9 Plaintiff, ORDER RE: CROSS-MOTIONS TO 10 v. AMEND INFRINGEMENT AND INVALIDITY CONTENTIONS 11 XIAMEN JXD ELECTRONIC COMMERCE CO., LTD., et al., Re: Dkt. Nos. 56, 58 — 12 — Defendants. — 13 — 14 Now pending before the court are a pair of motions wherein the Parties seek to amend their 15 contentions. On August 19, 2021, Plaintiff and Defendants simultaneously moved to amend their 16 respective infringement (dkt. 56) and invalidity (dkt. 58) contentions. Both motions are fully 17 briefed and ripe for decision, and pursuant to Civil Local R. 7-1(b), the undersigned finds that 18 these matters are suitable for disposition without oral argument. For the reasons that follow, both 19 motions are denied. 20 BACKGROUND 21 This is a patent infringement case brought by Plaintiff Yuntek – a California-based 22 designer and developer of containers and carriers for the housing and transportation of household 23 pets. See SAC (dkt. 52) at 4. In April of 2001, Yuntek was issued a patent (hereafter, “the ‘446 24 Patent”) which “discloses and claims a novel pet carrier that is collapsible, foldable into a compact 25 shape, and lightweight, yet forms a sturdy structure when assembled and is also comfortable for a 26 pet.” Id. Defendants are a two Chinese companies (Xiamen JXD Electronic Commerce Co. and 27 Xiamen Sunnypet Electronic Commerce Co.) based in Xiamen City, Fujian Province; and a 1 import various pet home products into the United States with Petsfit handling the logistical 2 operations for the importation and sale of the accused products in the United States. Id. at 4. In 3 January of 2020, Xiamen Sunnypet, the parent company of Xiamen XJD, was issued a patent (“the 4 ‘945 Patent”) for a pet carrier product. Id. 5 In the operative complaint, Yuntek alleges that Defendants sell one or more products that 6 infringe on Plaintiff’s ‘446 patent, one example of which is identified as Sunnypet’s Model No. 7 DCC1039B1C, sold under the following description: “Petsfit Soft Portable Dog Crate / Cat Crate / 8 Foldable Pet Kennel / Indoor Outdoor Pet Home,” which is offered for sale in multiple sizes. Id. at 9 4-5. Another example is identified as Sunnypet’s Model No. DCC1047C, sold under the following 10 description, “Petsfit Sturdy Wire Frame Soft Pet Crate, Collapsible for Travel,” which is also 11 offered in multiple sizes. Id. at 5. In addition to identifying these examples, the operative 12 complaint states that “Yuntek has identified other infringing products in its Disclosure of Asserted 13 Claims and Infringement Contentions . . . [and that it] expects to identify additional infringing 14 Sunnypet products through discovery in this action.” Id. Plaintiff claims that Defendants have 15 been on notice regarding the allegations that certain Sunnypet products have infringed the ‘446 16 Patent since January 2015, at which time Defendants reportedly extended an initial commitment to 17 change their design so as to “design around the ‘446 Patent,” allegedly followed by a subsequent 18 commitment by Sunnypet’s U.S. distributor to stop selling the infringing products in the United 19 States, “thus seeming to bring the infringing conduct to an end.” Id. at 5-6. “In 2018, [] Yuntek 20 [allegedly] learned that Sunnypet was selling the Accused Products in the U.S. under its own name 21 . . . [however] Sunnypet continues to sell the Accused Products today.” Id. at 6. In short, 22 Plaintiff’s SAC pleads a single count of willful patent infringement (both direct and indirect) 23 regarding “one or more claims of the ‘446 Patent, including, but not limited to, claim 6 . . .” Id. at 24 6-7. 25 LEGAL STANDARD 26 This Court’s Local Patent Rules require parties to identify their respective infringement 27 and invalidity theories early in the litigation. See Patent L.R. 3-1, 3-3. Once served, the 1 contentions may be amended only by order of the court and upon a timely showing of good cause. 2 See Patent L.R. 3-6. By way of illustration, Rule 3-6 provides “[n]on-exhaustive examples of 3 circumstances that may, absent undue prejudice to the non-moving party, support a finding of 4 good cause [such as] [the] recent discovery of material, prior art despite earlier diligent search; and 5 [r]ecent discovery of nonpublic information about the Accused Instrumentality which was not 6 discovered, despite diligent efforts, before the service of the Infringement Contentions.” Id. at 7 Rule 3-6 (b) & (c). Thus, “[t]he local patent rules in the Northern District of California . . . 8 requir[e] both the plaintiff and the defendant in patent cases to provide early notice of their 9 infringement and invalidity contentions, and to proceed with diligence in amending those 10 contentions when new information comes to light in the course of discovery . . . [thus] [t]he rules 11 [] seek to balance the right to develop new information in discovery with the need for certainty as 12 to the legal theories.” MLC Intellectual Prop., LLC v. Micron Tech., Inc., No. 14-cv-03657-SI, — 13 — 2019 U.S. Dist. LEXIS 32411 , at *4 (N.D. Cal. Feb. 28, 2019) (quoting O2 Micro Int’l Ltd. v. 14 Monolithic Power Sys., Inc., 467 F.3d 1355 , 1365-66 (Fed. Cir. 2006)); see also Finjan, Inc. v. 15 Symantec Corp., No. 14-cv-02998-HSG (JSC), 2018 U.S. Dist. LEXIS 14953 , at *5-6 (N.D. Cal. 16 Jan. 29, 2018). 17 Given that “[t]he moving party has the burden of demonstrating good cause,” it is 18 important to note that, for present purposes, “good cause” has been defined as requiring a showing 19 that the moving party acted diligently, coupled with a showing that the opposing party will not be 20 prejudiced. MLC Intellectual Prop., 2019 U.S. Dist. LEXIS 32411 , at *5 (quoting Karl Storz 21 Endoscopy-Am. v. Stryker Corp., No. 14-0876-RS (JSC), 2016 U.S. Dist. LEXIS 176876 , at *7 22 (N.D. Cal. Dec. 21, 2016); and, citing O2 Micro, 467 F.3d at 1355; Radware Ltd. v. F5 Networks, 23 Inc., No. 13-02021-RMW, 2014 U.S. Dist. LEXIS 103215 , 2014 WL 3728482 , at *1 (N.D. Cal. 24 July 28, 2014) (“The burden is on the movant to establish diligence rather than on the opposing 25 party to establish lack of diligence.”). While the diligence component “does not require perfect 26 diligence” (see Facebook, Inc. v. Blackberry Ltd., No. 18-cv-05434-JSW (JSC), 2020 U.S. Dist. 27 LEXIS 31377 , at *14 (N.D. Cal. Feb. 13, 2020)), neither can it be said that the diligence 1 amending pleadings, “the philosophy behind amending claim charts is decidedly conservative, and 2 designed to prevent the ‘shifting sands’ approach to claim construction.” MLC Intellectual Prop., — 3 — 2019 U.S. Dist. LEXIS 32411 at *5 (quoting LG Electronics Inc. v. Q-Lity Computer Inc., 211 4 F.R.D. 360 , 367 (N.D. Cal. 2002). “Diligence consists of two steps: ‘(1) diligence in discovering 5 the basis for amendment; and (2) diligence in seeking amendment once the basis for amendment 6 has been discovered.’” Id. at *5 (quoting Monolithic Power Sys., Inc. v. Silergy Corp., No. 147 1745-VC (KAW), 2015 U.S. Dist. LEXIS 123825 , 2015 WL 5440674 , at *2 (N.D. Cal. Sept. 15, 8 2015)). In evaluating a party’s showing of diligence, “the critical question is whether the party 9 could have discovered the new information earlier had it acted with the requisite diligence.” Id. 10 (quoting Radware, 2014 U.S. Dist. LEXIS 103215 , 2014 WL 3728482 , at *1). If a moving party is 11 unable to show diligence, then – quite obviously – there would be “no need to consider the 12 question of prejudice.” Id. at *6 (quoting O2 Micro, 467 F.3d at 1368). If, however, the court does 13 find that the moving party acted with the requisite degree of diligence, the court must next 14 determine whether the nonmoving party would suffer prejudice if the motion to amend were to be 15 granted. Id. (citing Apple Inc. v. Samsung Elecs. Co. Ltd., No. 12-0630-LHK (PSG), 2013 U.S. 16 Dist. LEXIS 91450, 2013 WL 3246094 , at *1 (N.D. Cal. June 26, 2013)). In this context, 17 prejudice is typically found when amending infringement or invalidity contentions would disrupt 18 the case schedule or other court orders. Id. (citing Karl Storz Endoscopy-Am., 2016 U.S. Dist. 19 LEXIS 176876 , at *8). 20 PLAINTIFF’S MOTION (DKT. 56) 21 Plaintiff’s Original Infringement Contentions 22 Plaintiff originally identified two categories of accused products: (1) pet carriers alleged to 23 literally infringe, in which a mesh screen in the front panel opens upward and attaches above the 24 front opening; and, (2) pet carriers that have been alleged to infringe under the doctrine of 25 equivalents,1 in which the mesh screen in the front panel opens downward and lies flat when fully — 26 — — 27 — 1 See e.g., Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (“To temper unsparing logic and prevent an infringer from stealing the benefit of an invention a patentee may invoke 1 open. See Pl.’s Mot. (56) at 7. Regarding each of these categories, Plaintiff identified the product 2 reference numbers used by Defendants, and / or the product names used by Defendants in their 3 product listings on the website of Amazon, “to the extent permitted by Yuntek’s independent 4 investigation.” Id. Regarding Plaintiff’s allegations of willful infringement, the original 5 infringement contentions only mentioned Plaintiff’s 2018 communication with Defendants, 6 because Yuntek “did not remember that it had also been contacted by Defendants’ counsel about 7 the ‘446 Patent in 2015” at the beginning of a year-long dispute with another party. Id. 8 Plaintiff’s Proposed Amendments 9 Plaintiff seeks to effect amendments in three categories. As to the first category, where 10 Plaintiff’s original infringement contentions identified several of Defendants’ products by their 11 reference numbers, Plaintiff maintains that it made it clear that Defendants’ products were being 12 accused regardless of size, color, pattern, folding style, name, or other identifying information. Id. 13 at 8. Through the discovery process, Plaintiff has reportedly learned of “other pet carrier products 14 sold by Defendants,” some of which “include the same essential features as the originally accused 15 products, but with different reference numbers that seem merely to indicate different sizes, colors, 16 or minor features.” Id. at 8-9. Plaintiff seeks to amend its infringement contentions to expressly 17 list these new reference numbers, as well as “other reference numbers for which Yuntek [still] 18 needs additional information from Defendants [in order] to complete its infringement analysis 19 [because] Yuntek [claims that it] has asked Defendants for that information several times, but 20 Defendants have not provided it.” Id. at 8. These reference numbers are not clearly listed or 21 described in Plaintiff’s Motion itself, instead, Plaintiff directs the undersigned to a redlined copy — 22 — 23 also Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929) (“[O]ne device is an infringement of another if it performs substantially the same function in substantially the same way to obtain the same 24 result . . . the substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the 25 same result, they are the same, even though they differ in name, form, or shape.”); and, Machine Co. v. Murphy, 97 U.S. 120, 125 (1877) (“[I]n determining the question of infringement, the court or jury, as the 26 case may be, are not to judge about similarities or differences by the names of things, but are to look at the machines or their several devices or elements in the light of what they do, or what office or function they 27 perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result, always 1 of its proposed amendments to its infringement contentions that Plaintiff has attached as one of 2 many exhibits to its Motion – Defendants’ Response (dkt. 64), however, organizes this 3 information in a manner that is clear and convenient to identify. See Defs.’s Opp. (dkt. 64) at 2, 4 n.2, & 7. 5 As to the second category, Plaintiff also seeks to amend its infringement contentions such 6 as to add a new set of willfulness allegations. See Pl.’s Mot. (dkt. 56) at 9-10. While Plaintiff’s 7 willfulness allegations were previously based on communications it had with Defendants in 2018 8 – during a recent settlement conference in this case, Defendants’ counsel’s mentioning of earlier 9 communication between the Parties informed Plaintiff of the fact of certain communications 10 between the parties in 2015, which Plaintiff admits that it “did not remember.” Id. Specifically, in 11 2015, Plaintiff was embroiled in a similar patent dispute with a company called K&H 12 Manufacturing; and, in the course of that dispute, Defendants communicated with Plaintiff in 13 January and February of 2015, such as to inform Plaintiff that Defendants supplied K&H with the 14 products in question. Id. at 9. However, “[p]rior to the settlement conference, Yuntek did not recall 15 these communications and Yuntek’s counsel was unaware of them.” Id. As such, Plaintiff now 16 seeks leave to amend its willful infringement allegations to include the 2015 communications, and 17 well as supplementing its indirect infringement allegations with information related to K&H and 18 its downstream customers. In this regard, the undersigned finds that no significant discussion is 19 warranted in order to find that Plaintiff’s lapse in memory is inconsistent with the requisite 20 showing of diligence that is required in this context – Plaintiff’s request to amend its willfulness 21 allegations to include reference to the 2015 communications that it “did not recall” is DENIED. 22 As to the third category, the undersigned must first note that Plaintiff’s motion is poorly 23 drafted and lacks a clear statement about the exact substance of its proposed amendments as well 24 as lacking a clear description of its showing of diligence; instead, Plaintiff appears to attempt to 25 incorporate that information by reference to various materials peppered throughout the more than 26 400 pages it has attached to its motion. See id. at 10. However, the undersigned is not inclined to 27 go fishing through Plaintiff’s attachments and exhibits in order to cobble together the substance of 1 Plaintiff contends that it wishes to amend its original infringement contentions in order “to 2 supplement those allegations with information about proceedings that occurred [in this court] after 3 Yuntek served its original [i]nfringement [c]ontentions,” Plaintiff’s Motion (dkt. 56) does not 4 actually enumerate or describe that information, nor does the Motion itself make any appreciable 5 showing of diligence in this regard. See id. at 10. Instead, the Motion directs the reader to page 46 6 of a 50-page exhibit to a declaration which contains certain redline edits to what appears to be an 7 amended disclosure of infringement contentions labeled, “proposed version for purposes of meet8 and-confer discussion.” See Exh-B (dkt. 56-5) at 7, 53. Also, where Plaintiff’s infringement 9 contentions previously stated that it would later produce certain documents, Plaintiff now wishes 10 to amend those contentions to state that those documents have now been produced. See Pl.’s Mot. 11 (dkt. 56) at 10, n.2. Specifically, the amendments encompass: (1) a certified copy of the ‘446 12 Patent file’s history (where previously an uncertified copy had been produced); (2) an agreement 13 between Plaintiff and another alleged infringer that was signed and produced after Plaintiff served 14 its initial infringement contentions and produced promptly thereafter; and, (3) another such 15 agreement between Plaintiff and an infringer from 2013, where “Yuntek only recently realized that 16 there was an earlier agreement with the same company.” Id. Plaintiff’s diligence showing as to 17 these items was given short shrift to say the least. See id. 18 Defendants’ Arguments in Opposition 19 In essence, Defendants’ oppose Plaintiff’s proposed amendments on grounds that it has 20 failed to show the requisite diligence, and that allowing the amendment would be prejudicial 21 because: “[f]rom the outset, Yuntek only accused three products while demanding a ten percent 22 royalty . . . [inducing Defendants to] agree[] to Yuntek’s [proposed] shorten[ing] [of the] case 23 schedule,” which renders Plaintiff’s proposed amendments prejudicial because “[t]his change in 24 scope would force [Defendants] to defend [themselves] against allegations within the constraints 25 of an accelerated schedule [that was] ordered when the case was smaller.” Id. at 2-10. With respect 26 to amending infringement contentions to include additional products, Defendants have arranged a 27 chart identifying 9 products lines at issue: first, three of these product lines have been on sale at 1 another two were first sold in April of 2021 (well after the institution of this lawsuit); and, lastly, 2 the Classy Go and Comfy Go products that were sold by K&H in 2015, about which Plaintiff 3 suffered a lapse in memory. See id. at 7. 4 Discussion 5 Because it was abundantly evident from the Parties’ filings that their meet and conger 6 efforts had been perfunctory at best, the undersigned twice ordered the Parties to meet and confer 7 further in a good faith effort to narrow or resolve these disputes (see dkts. 76, 81). After the 8 second round, it remained apparent that the parties were still speaking past one another; one 9 example of which is evident in the Parties’ dizzying inability to even be able to agree about the 10 most basic of foundations upon which to base their arguments. Compare Stipulation (dkt. 82) at 4 11 (wherein Plaintiff contends that “amendment of Yuntek’s infringement contentions is technically 12 unnecessary” as to the Classy Go and Comfy Go products because they are the same as 13 Defendants’ Model # DCC1039 which is already an accused product); with id. at 6 (wherein 14 Defendants contend that “[t]he Classy Go and Comfy Go products are not the #DCC1039 product 15 by [a] different name [and because] Defendants have not seen a claim chart or detailed explanation 16 for why Plaintiff has taken this position . . . [Defendants] cannot fully dispute it here.”). This is a 17 textbook example of failure to take the meet and confer process seriously. Nevertheless, the 18 undersigned will accept Plaintiff’s concession that “amendment of Yuntek’s infringement 19 contentions is technically unnecessary” as to the Classy Go and Comfy Go products. While 20 Plaintiff contends that its original infringement contentions identified Model # DCC1039 as an 21 accused product regardless of names or other identifiers, it nevertheless asks that “it should be 22 allowed to make clear that these products are accused.” See id. at 4. The undersigned disagrees. 23 Plaintiff cannot simultaneously contend that an amendment is both unnecessary and necessary. 24 Because Plaintiff has conceded that amending in this regard is “technically unnecessary,” its 25 request to amend regarding the Classy Go and Comfy Go products is DENIED. 26 In similarly frustrating fashion, the Parties fail to argue in a cohesive and comprehensible 27 manner as to Plaintiff’s request to amend its infringement contentions such as to include 1 DCC1047054&5. See id. at 4, 6. Plaintiff contends that additional discovery reveals that these 2 products “should be deemed within the scope of Yuntek’s original infringement contentions 3 because they are essentially the same as Defendants’ Model Nos. DCC1039 and DCC1047 (id. at 4 4); however, Defendants respond (id. at 6) that these “are not different names for products that 5 have already been accused – they are different products.” Regrettably, this sort of disconnect is a 6 clear reflection of the fact that the Parties have treated their meet and confer requirements as a 7 mere formality which, in turn, has operated to waste judicial time and resources; and, despite 8 being ordered to further meet and confer on two subsequent occasions after they filed their 9 amendment motions, the Parties are still no closer to presenting an intelligible set of disputes. As 10 to Defendants’ Model Nos. DCC1039023&4&5, DCC1039033&4&5, and DCC1047054&5 – 11 Defendants state that these products have “not yet been made or sold by Defendants.” See Defs. 12 Opp. (dkt. 64) at 7. For that reason, as well as based on Plaintiff’s statement that those three sets of 13 model numbers, as well as Model No. DCC10391, should be deemed to fall within the scope of 14 Plaintiff’s original infringement contentions because Plaintiff thinks that they are substantially the 15 same as Model Nos. DCC1039 and DCC1047 which were originally accused, Plaintiff’s request to 16 amend such as to expressly include these additional sets of model numbers is likewise DENIED. 17 As to Defendants’ Model Nos. DCC1910 and DCC1811 (see Pl.’s Mot., Exh. A (dkt. 56-1) 18 at 5-6), Defendants contend that Plaintiff has failed to establish diligence as to these model 19 numbers because they have both been for sale and available on Amazon, respectively, since at 20 least February of 2016 and December of 2014. See Defs. Opp. (dkt. 64) at 7. Regarding Plaintiff’s 21 effort to establish diligence as to these two model numbers in its Motion, Plaintiff only mentions 22 that “Defendants’ product listings on www.amazon.com do not include Defendants’ internal 23 reference numbers for the listed products [and as such] Yuntek has no way to identify those 24 reference numbers from the Amazon listings.” See Pl.’s Mot. (dkt. 56) at 13-14. This generalized 25 argument in Plaintiff’s Motion is unpersuasive, and, if Plaintiff had been diligent, it could have 26 identified these publicly available products otherwise – for example, by identifying them using 27 other points of reference such as a product name, a number assigned by Amazon, or some other 1 arguments in this regard such as to deploy them in its reply brief. See Pl.’s Reply (dkt. 68) at 7-9. 2 In its reply brief, for example, Plaintiff contends that Defendants’ evidence that Model #DCC1910 3 was publicly available does not “clearly” show its infringing features. Id. Further, as to Model No. 4 DCC1811, Plaintiff simply criticizes Defendants’ “effort to show Yuntek’s lack of diligence.” Id. 5 at 7. First, the undersigned will not consider Plaintiff’s diligence arguments that appeared for the 6 first time in its reply brief.2 Second, Plaintiff’s arguments seems to be confused about the fact that 7 it is Plaintiff’s burden to establish diligence through its original Motion; there is no burden on 8 Defendant to establish a lack of diligence. See id. at 8 (where Plaintiff contends that “[a]s there is 9 no evidence before the Court that information about Model #DCC1811 was publicly available 10 when Yuntek served its [i]nfringement [c]ontentions, or otherwise showing a lack of diligence by 11 Yuntek, Yuntek should be granted leave to add DCC1811 as an accused product.”); but see 12 Radware, 2014 U.S. Dist. LEXIS 103215 , 2014 WL 3728482 , at *1 (N.D. Cal. July 28, 2014) 13 (“The burden is on the movant to establish diligence rather than on the opposing party to establish 14 lack of diligence.”). Accordingly, Plaintiff’s request to amend its contentions to include 15 Defendants’ Model Nos. DCC1910 and DCC1811 is DENIED. 16 This problem is compounded in relation to Plaintiff’s request to amend such as to include 17 Model No. DCC2611 because: (a) Plaintiff has failed to demonstrate diligence in seeking to 18 amend to include this information; (b) Plaintiff relies on a conflating of the relevant burdens in 19 claiming that “Defendants have not shown that Model #DCC2611 was available to Yuntek earlier 20 in this litigation” (see Pl.’s Reply (dkt. 68) at 9-10); and, (c) because of Yuntek’s statement that it — 21 — — 22 — 2 See generally Filarsky v. Life Ins. Co. of N. Am. “lina,” 391 F. Supp. 3d 928 , 946 n.28 (N.D. Cal. 2019) (“The Court declines to consider Dr. Filarsky’s “surcharge” argument, as it was raised for the first time in 23 his reply brief.”); DeSoto Cab Co. v. Uber Techs., Inc., No. 16-cv-06385-JSW, 2018 U.S. Dist. LEXIS 226261 , at *40 (N.D. Cal. Sep. 24, 2018) (“The Court declines to address Uber’s standing argument, 24 because it was raised for the first time in Uber’s reply brief.”); Groupion, LLC v. Groupon, Inc., No. C 1100870 JSW, 2012 U.S. Dist. LEXIS 102905 , at *10 n.3 (N.D. Cal. July 23, 2012) (“Because Groupion 25 waited and asserted this argument, and supporting evidence, for the first time in its reply brief, the Court strikes it.”); Data Mark v. Brain Tunnelgenix Techs. Corp., No. C 10-04958 JSW, 2011 U.S. Dist. LEXIS 26 170541, at *20 n.5 (N.D. Cal. Aug. 12, 2011) (“In their reply brief, the Titronics Defendants argue for the first time that Plaintiffs’ conversion claim against them fails for the additional reason that reverse27 engineering is legal when it concerns a product that is not protected by a patent. Because this argument was raised for the first time in the reply brief, the Court will not consider it.”); and, In re Chen, No. C 10-00146 1 “seeks to amend its [i]nfringement [c]ontentions to add a reference to Defendants’ Model 2 #DCC2611 – not as an accused product but as a product that is under investigation for 3 infringement.” Id. In this regard, Plaintiff submits that it has “repeatedly asked Defendants to 4 provide additional information to allow Yuntek to complete its infringement investigation, but 5 Defendants have not done so.” Id. at 9 n.6. Because Plaintiff has failed to move to compel this 6 information, and because Plaintiff essentially seeks to improperly use a motion to amend its 7 invalidity contentions as a surrogate for a motion to compel discovery, Plaintiff’s request to amend 8 its contentions to include Model DCC2611 “as a product that is under investigation” is DENIED. 9 Lastly, Plaintiff seeks to amend its contentions such as to include references to certain 10 products that it “is investigating [for] possible infringement of one or more claims of the ‘446 11 Patent,” namely Defendants’ Model Nos. DCC001810, DCC002611, DHCA012033LN, and 12 DHCA012033N1. See Pl.’s Mot., Exh. A (dkt. 56-1) at 6. While Plaintiff’s principal Motion does 13 not make any substantial reference to any diligence efforts relating to these model numbers, 14 Plaintiff’s reply brief simply contends that “Defendants do not say how Yuntek could have been 15 expected to learn about these products using ordinary diligence absent discovery from Defendants 16 [thus] Yuntek should be found to have exercised diligence related to these products.” See Pl.’s 17 Reply (dkt. 68) at 6. First, putting aside questions about the deficiency of Plaintiff’s diligence 18 showing in this regard, future investigations for possible infringement are not an acceptable reason 19 for amending infringement contentions now, and Plaintiff’s request to do so should be denied for 20 that reason alone. Second, Plaintiff’s failure to establish diligence is highlighted by its effort to 21 once again saddle Defendants with the non-existent burden of disproving diligence. Third, 22 Defendants point out that Model Nos. DHCA012033LN and DHCA012033N1 were first sold in 23 April of 2021, five months after Plaintiff filed its Complaint in this case. Def.’s Opp. (dkt. 64) at 24 8. Defendants add that the proper procedure would be for Plaintiff to seek leave to file a 25 supplemental complaint in order to add accused products that were released after the filing of the 26 complaint. Id. (citing Rembrandt Patent Innovations, LLC v. Apple Inc., No. C 14-05094 WHA, — 27 — 2015 WL 8607390 at *2 (N.D. Cal. Dec. 13, 2015)). Plaintiff replies to the effect that “Yuntek 1 leave to file a supplemental complaint as to these products and that Yuntek be granted such leave.” 2 Pl.’s Reply (dkt. 68) at 6 n.5. First, the undersigned is not empowered to grant Plaintiff the leave it 3 seeks, and even if the undersigned was vested with such authority, the undersigned would not be 4 inclined to accept such an invitation because a passing reference in a footnote in a reply brief in an 5 unrelated matter is not a suitable surrogate for a properly noticed and briefed motion. For all of 6 these reasons, Plaintiff’s request to amend its contentions such as to include references to 7 Defendants’ Model Nos. DCC001810, DCC002611, DHCA012033LN, and DHCA012033N1 is 8 likewise DENIED. 9 DEFENDANTS’ MOTION (dkt. 58) 10 On the same day that Plaintiff moved to amend its infringement contentions, Defendants 11 similarly moved to amend their invalidity contentions. See Defs.’ Mot. (dkt. 58) at 2. Due to 12 Plaintiff’s shifting use of the term “front opening,” Defendants sought to amend their invalidity 13 contentions to include certain references to three other patents that they contend would 14 demonstrate that the technology demonstrated in Plaintiff’s ‘446 patent would have been obvious 15 to someone skilled in the art. See id. at 2-3 (“In light of the heightened significance that Yuntek 16 has placed on this term, Defendants reviewed the prior art that [they] had disclosed in [their] 17 original invalidity contentions, specifically evaluating references to supplement their contentions 18 to address the scope of Yuntek’s newly proposed construction [of the term “front opening,”] [and] 19 [a]fter conducting this analysis, Defendants promptly notified Yuntek of [their] intent to amend 20 [their] invalidity contentions.”). Thereafter, Plaintiff responded in opposition (dkt. 67), and 21 Defendants replied (dkt. 69); Defendants also moved to strike (dkt. 75) Plaintiff’s changed use of 22 the claim construction term “front opening.” 23 Upon being ordered (dkt. 76) to meet and confer further in order to narrow or resolve these 24 disputes, the Parties arrived at an agreement to the effect that “[t]he term ‘front opening’ in 25 asserted claims 6, 7, 41, and 54 of the ‘446 Patent shall be given its plain and ordinary meaning.” 26 See Order on Stipulation (dkt. 83). Consequently, Plaintiff argued that this change rendered 27 Defendants’ motion to amend its contentions moot due to the fact that “Defendants’ entire motion 1 opening’ in the asserted independent claims of Yuntek’s ‘446 Patent.” See Plaintiff’s Further 2 Remarks (dkt. 82) at 3. Defendants respond that “[g]iven the commotion surrounding the 3 construction of this term, and the substantial resources Defendants have spent to respond to 4 Plaintiff’s multiple changing positions, Defendants argue that [it] is reasonable to permit a modest 5 amendment directed to that term.” See Defendants’ Further Remarks (dkt. 82) at 5. More 6 specifically, “Defendants submit that if Plaintiff’s reference to different products in their original 7 contentions justifies an amendment to bring in allegedly similar products, then Defendants’ 8 mention and production of the [references to three other patents] should likewise justify 9 amendment of their invalidity contentions.” Id. at 6. 10 The undersigned finds that, in light of the above, no further amendments to Defendants’ 11 contentions are justified under the circumstances. First, the undersigned has denied all of 12 Plaintiff’s requests to amend its infringement contentions, so Defendants’ reliance on a “what’s 13 good for the goose is good for the gander” approach is undermined. More importantly though, as 14 Plaintiff suggests, the Parties’ subsequent agreement to limit “front opening” to “its plain and 15 ordinary meaning” has essentially eviscerated all of the reasoning that Defendants advanced for 16 needing to amend their invalidity contentions in the first place. All that remains now is 17 Defendants’ assertion that some measure of “commotion” and the hassle of dealing with Plaintiff’s 18 previously-shifting use of the term somehow still justifies an amendment. The undersigned is 19 unpersuaded. As mentioned above, this Court’s patent rules require parties to provide early notice 20 of their infringement and invalidity contentions, and to proceed with diligence in amending those 21 contentions, such as to balance a party’s ability to develop new information in discovery with the 22 overarching need for certainty as to the legal theories involved in the case. See MLC Intellectual 23 Prop., LLC, 2019 U.S. Dist. LEXIS 32411 , at *4. For these reasons, Defendants’ Motion to 24 Amend (dkt. 58) their invalidity contentions is DENIED. 25 // 26 // 27 // 1 CONCLUSION 2 In short, for all the reasons stated herein, and because the Parties’ arguments regarding 3 their diligence and their actual need for proposed amendments did not establish good cause, the 4 || undersigned believes that the considerations relating to the Parties’ right to develop new 5 information and theories through discovery, and the need for certainty as to the theories involved 6 || in the case, have now tipped the balance to favor certainty and constancy of the legal theories at 7 || play. Accordingly, both Parties’ motions to amend (dkts. 56 & 58) are DENIED in their entirety. 8 IT IS SO ORDERED. 9 Dated: October 26, 2021 — 10 — — 11 — R@BERT M. ILLMAN 3 12 United States Magistrate Judge — 15 — — 16 — Z 18 — 19 — — 20 — — 21 — — 22 — — 23 — — 24 — — 25 — — 26 — — 27 — — 28 —