PersonalWeb Technologies LLC v. EMC Corporation
- Edward Davila
- 5:13-cv-01358
- U.S. District Court · Northern District of California
- 2
In PersonalWeb v. EMC, Judge Davila granted defendants’ amendment request but dismissed their supplemental claim-construction briefing motion without prejudice.
The defendants were allowed to amend their invalidity contentions. Their motion for supplemental claim-construction briefing was dismissed without prejudice, allowing them to refile if necessary after the court rules on the Alice issue. PersonalWeb was the plaintiff affected by the amendment.
What happened
In PersonalWeb Technologies LLC v. EMC Corporation, the defendants asked to amend their invalidity contentions, which identify their patent-invalidity defenses. The court found good cause because they had not been required to raise a Section 101 defense when the case began in Texas, other courts had treated the Alice decision as good cause, and the amendment would not unfairly prejudice the plaintiff.
The court granted the defendants’ motion to amend. It instructed them to file joint briefing with defendants Facebook and Google/YouTube under an earlier order and to participate in a status report covering all three cases. The court also dismissed without prejudice the defendants’ motion for permission to file supplemental claim-construction briefing because the Alice ruling could make that briefing unnecessary.
Judge Edward J. Davila issued the order on October 15, 2019. The defendants may refile the claim-construction briefing motion if it remains necessary after the court rules on the Alice issue.
The detailed version
- PersonalWeb Technologies LLC v. EMC Corporation · No. 5:13-cv-01358
- Edward Davila
- Oct. 15, 2019
Background
The defendants moved for leave to amend their invalidity contentions under Local Patent Rule 3-6. That rule allows amendment upon a showing of good cause. The defendants also moved for leave to file supplemental claim-construction briefing.
Amended invalidity contentions
The court found good cause for the proposed amendment because: (1) the defendants were not required to raise a Section 101 defense when the case was originally brought in Texas; (2) other courts had held that the Alice decision could provide good cause for amendment; and (3) the amendment would not unfairly prejudice PersonalWeb. The court therefore granted the defendants’ motion for leave to amend their invalidity contentions.
The court instructed the defendants to file joint briefing with defendants Facebook and Google/YouTube, which were subject to similar PersonalWeb actions, under the court’s October 10, 2019 order. The parties were also instructed to file a status report concerning all three cases. The motion was tentatively set for a December 19, 2019 hearing.
Supplemental claim-construction briefing
The court stated that the Alice ruling could make the defendants’ claim-construction argument unnecessary. It therefore dismissed without prejudice the defendants’ motion for leave to file supplemental claim-construction briefing and instructed them to refile the motion, if necessary, after the court ruled on the Alice issue.
Disposition
The order granted the motion for leave to amend invalidity contentions and dismissed without prejudice the motion for leave to file supplemental claim-construction briefing.
Read the full 2-page opinion on CourtListener, the free public archive maintained by the Free Law Project.