Contour IP Holding, LLC v. GoPro, Inc.
- William Orrick
- 3:17-cv-04738
- U.S. District Court · Northern District of California
- 11
In Contour IP Holding v. GoPro, Judge Orrick granted in part and denied in part GoPro’s motion to amend patent-invalidity contentions and explained inter partes-review estoppel.
Contour IP Holding, LLC and GoPro, Inc.; the order primarily affected GoPro’s invalidity contentions, the prior-art material it could use, and the parties’ discovery involving Socionext Inc.
What happened
In Contour IP Holding, LLC v. GoPro, Inc., GoPro asked to change its contentions about why Contour’s patents were invalid after inter partes review proceedings and a change in GoPro’s counsel. Contour opposed some of the requested changes.
The court denied GoPro’s requests to add more specific challenges under section 112 and to add nine camera systems as prior art because GoPro did not show that it had searched diligently earlier. The court granted GoPro’s request to amend its section 102(g) defense based on the GoPro YHDC5170 Hero HD Camera System. The court also explained that GoPro could use previously considered references when combined with references that were unavailable during the inter partes review, and could rely on the GoPro HD Motorsports HERO video camera and Boland reference if the product had functionality not disclosed in the catalog used during review.
Judge Orrick ordered that GoPro’s motion to amend was granted in part and denied in part. He also stated that the deposition of a corporate representative of Socionext should proceed, with both parties permitted to depose the witness on the same day.
The detailed version
- Contour IP Holding, LLC v. GoPro, Inc. · No. 3:17-cv-04738
- William Orrick
- Jan. 9, 2020
Background
This patent-infringement case concerns U.S. Patent Nos. 8,890,954 and 8,896,694. GoPro previously challenged the patents in inter partes review, a procedure in which the Patent Trial and Appeal Board reviews patent validity. After the proceedings, GoPro retained new counsel, conducted additional searches, and sought permission to amend its invalidity contentions—the disclosures identifying the grounds and evidence GoPro would use to argue that the patents were invalid.
The parties also asked the court to explain the effect of statutory estoppel under 35 U.S.C. § 315(e). Estoppel limits a party that petitioned for inter partes review from later asserting that a patent claim is invalid on a ground it raised or reasonably could have raised during that review.
Motion to Amend
GoPro sought to add three categories of material:
- More specific defenses under 35 U.S.C. § 112 concerning the terms “generate” and “generating.”
- Nine camera-system references as prior art: Canon, Smartvue S8, Smartvue S9, Axis, Panasonic, Sony, Looxcie, Ambarella A5, and Ambarella A5S.
- Additional defenses under 35 U.S.C. § 102(g), including a defense based on the GoPro YHDC5170 Hero HD Camera System.
Under Patent Local Rule 3-6, amendment requires a timely showing of good cause. The court explained that the moving party must first show diligence; if it does not, the court need not consider whether the amendment would prejudice the opposing party.
Section 112 defenses
The court held that its 2018 claim-construction order did not provide good cause for GoPro’s proposed amendment. The parties had debated the relevant claim language since 2016, and GoPro had itself advocated for the “in parallel” language during claim construction. The court also held that statements made by Contour during inter partes review and the Patent Trial and Appeal Board’s 2019 decision did not provide good cause because the court had already issued its claim-construction order.
The court therefore denied GoPro’s motion to amend its section 112 defenses.
Nine camera systems
The court held that GoPro had not shown diligence in locating the nine proposed camera-system references. The references relied on publicly available internet materials, some dating to 2009. GoPro showed that new counsel searched for and promptly disclosed the systems after finding them, but the court stated that the relevant question was whether GoPro could have found them earlier through a diligent search. GoPro did not explain why its earlier searches could not have located the systems.
The court therefore denied GoPro’s motion to add the nine camera systems as prior art.
Section 102(g) defense
Contour did not oppose adding a section 102(g) defense based on the GoPro YHDC5170 Hero HD Camera System. GoPro stated that the defense would be based on that system and that the other evidence identified in its proposed contentions would support the elements of the priority-of-invention defense, including conception and diligent reduction to practice.
The court therefore granted GoPro’s motion to amend its section 102(g) defense.
Inter partes review estoppel
The parties agreed that section 315(e) applied, but disagreed about its scope. GoPro withdrew several invalidity-contention exhibits based exclusively on patents or prior art that could have been raised during inter partes review.
The court explained that GoPro could not assert invalidity defenses based exclusively on material that was subject to estoppel. However, the court agreed with GoPro that estoppel did not prevent it from using references presented during inter partes review when combined with references that were not reasonably available during that review. The court also stated that GoPro could assert grounds that might be cumulative or redundant of grounds raised during inter partes review if the new grounds relied on references or combinations of references that were unavailable during the review.
The court further held that GoPro was not estopped from relying on the GoPro HD Motorsports HERO video camera and Boland, Exhibit A4/B4, provided that the product had functionality not reflected in the GoPro Sales Catalog used during inter partes review.
Discovery dispute
GoPro sought authorization to depose a corporate representative of third-party Socionext Inc. in Japan about the design and functionality of GPI. By the hearing, Socionext had agreed that Contour could depose its representative on the same day as GoPro’s deposition, and the parties had agreed to divide the available time. The court stated that the deposition should proceed and recommended that Socionext provide any additional material responsive to Contour’s subpoena by January 22, 2020.
Disposition
Judge William H. Orrick concluded that GoPro’s motion to amend was granted in part and denied in part. The order also supplied guidance on the scope of inter partes review estoppel and stated that the Socionext deposition should go forward.
Read the full 11-page opinion on CourtListener, the free public archive maintained by the Free Law Project.