Uniloc USA, Inc. v. Apple Inc.

Background

Uniloc USA, Inc., Uniloc Luxembourg, S.A., and Uniloc 2017 LLC sued Apple, Inc., alleging infringement of U.S. Patent No. 7,587,207, titled “Data Delivery Through Beacons.” Apple moved for permission to amend its invalidity contentions. Invalidity contentions are a party’s required disclosures identifying the reasons and materials it says show that a patent is invalid.

Apple sought to add nine references that it identified in documents Uniloc produced in response to discovery requests concerning prior art for a related patent, U.S. Patent No. 6,664,891. Apple served the discovery requests on January 30, 2020, before the March 17, 2020 deadline for its invalidity contentions. Uniloc initially objected but produced responsive documents on March 27, 2020. Apple said it had not learned of the nine references until its counsel reviewed that production, prepared amended contentions within three weeks, and filed the motion after Uniloc declined to agree to the amendment.

Legal standard

The Patent Local Rules allow invalidity contentions to be amended only by court order after a timely showing of good cause. Good cause requires diligence, although perfect diligence is not required. The court also considered whether the amendment would prejudice Uniloc, including whether it would disrupt the case schedule or other court orders.

Court’s analysis

The court found that Apple showed sufficient diligence in both investigating prior art and seeking amendment after receiving Uniloc’s production. The court rejected Uniloc’s argument that Apple was not diligent because it obtained the references from prior litigation involving the related patent. The court also noted that the case had been stayed for substantial periods, which undercut Uniloc’s argument that Apple had waited too long.

The court found no prejudice to Uniloc. When Apple filed the motion, five months remained before the September 28, 2020 fact-discovery deadline. Uniloc did not explain why it could not analyze Apple’s proposed combination of references during that period and did not assert that the amendment would affect claim construction or other scheduled tasks. The additional work required by the amendment, standing alone, did not establish prejudice.

Disposition

The court granted Apple’s motion to amend its invalidity contentions. It ordered Apple to promptly serve the amended contentions on Uniloc, and in any event no later than June 19, 2020. The order addressed amendment of the litigation disclosures; it did not decide whether the patent was valid or whether Apple infringed it.