Bot M8 LLC v. Sony Corporation Of America

Background

Bot M8 LLC asserted six patents against Sony Corporation of America, Sony Corporation, and Sony Interactive Entertainment LLC. The patents concerned casino, arcade, and video games. The earlier complaint asserted infringement involving the PlayStation 4 and several games, including Uncharted 4, Uncharted: The Lost Legacy, and God of War.

After the case was transferred to the Northern District of California, the court directed Bot M8 to file an amended complaint explaining, element by element, how Sony’s products allegedly infringed the patents. The court also directed Bot M8 to reverse engineer the PlayStation 4 to support its allegations. Bot M8 agreed to a December 5 amendment deadline and filed an amended complaint on time.

On January 27, 2020, the court dismissed infringement claims involving the ’540, ’990, ’988, and ’670 patents and dismissed the ’777-patent claim concerning God of War. The court allowed the ’363-patent claims and the ’777-patent claims concerning the Uncharted games to proceed. Although the order stated that Bot M8 did not deserve another opportunity to replead, it allowed Bot M8 until February 13 to seek leave to amend.

Motion to Amend

Bot M8 sought leave to file another amended complaint. It relied on statements made at a January 29 discovery hearing that the Digital Millennium Copyright Act and other anti-hacking statutes had restricted its ability to reverse engineer the PlayStation 4 and decrypt its code. Bot M8 asserted that the proposed amendments were based on new evidence obtained after the court gave permission to conduct the reverse engineering.

The court treated the request as governed by Federal Rule of Civil Procedure 16(b)(4), which allows a court-set deadline to be changed only for “good cause.” The central issue under that rule was whether Bot M8 had acted diligently. The court rejected Bot M8’s argument that the more lenient Rule 15 standard applied.

The court found that Bot M8 had not shown diligence. At the November 21 case-management conference, Bot M8 said it had already torn down the PlayStation 4 and agreed to amend within two weeks. It did not raise concerns about the Digital Millennium Copyright Act or other anti-hacking laws during that conference, when it filed its timely amended complaint, or at the January 23 hearing on Sony’s motion to dismiss. The court found that Bot M8 raised those concerns only after several claims were dismissed on January 27.

The court clarified that its January 29 statement giving Bot M8 permission to have the PlayStation 4 analyzed did not create a new reverse-engineering deadline or extend the December 5 pleading deadline. The court also found that Bot M8 cited no legal authority supporting its asserted concerns about the Digital Millennium Copyright Act or other anti-hacking statutes. The proposed amendments concerning the ’777 patent were independently untimely because they appeared to rely on public website information and in-game screenshots rather than new reverse engineering and should have been included earlier.

Ruling

Judge William Alsup denied Bot M8’s motion to amend. The court concluded that the proposed amendments were nine weeks overdue and lacked good cause. The court stated that the case would proceed on the ’363-patent infringement claim and the ’777-patent infringement claims involving the Uncharted games.