Contour IP Holding, LLC v. GoPro, Inc.

Background

Contour, the patent owner, accused GoPro of infringing claims 11, 12, 14, 15, 20, and 30 of U.S. Patent Nos. 8,890,954 and 8,803,991. The patents concern mountable, viewfinderless point-of-view video cameras that can connect wirelessly to a personal portable device. The order focused substantially on claim 11 of the ’954 patent, which requires a camera processor to record in parallel a lower-quality image stream and a higher-quality image stream. The court had previously construed “generate” to mean “record in parallel from the video image data” those two streams.

The opinion addressed five substantive motions: Contour’s motion for partial summary judgment, GoPro’s motion for partial summary judgment, Contour’s motion to strike two GoPro experts, GoPro’s motion to strike Contour technical expert Jing Hu, and GoPro’s motion to strike Contour damages expert Keith Ugone. It also addressed 18 motions to seal.

Contour’s Motion for Partial Summary Judgment

The court granted in part and denied in part Contour’s motion. On infringement of claim 11, the court held that GoPro’s technical expert Kevin Almeroth did not create a genuine dispute of material fact. Almeroth’s opinions treated the phrase “from the video image data” and the phrase “in parallel” as imposing processing-related limits that were not in the claim’s plain language or in the court’s earlier construction. The court held that those opinions improperly sought new claim constructions at the summary-judgment stage. Because no material factual dispute prevented a finding that the accused products practice claim 11, Contour was entitled to partial summary judgment on infringement of that claim.

The court did not grant Contour summary judgment on willful infringement. It held that the issue was not appropriate for summary judgment because GoPro’s defenses should be resolved before any finding of willfulness and because the factual parts of the willfulness question must be decided by a jury. The court also held that the evidence cited by Contour did not establish willful infringement as a matter of law. It declined to rule that evidence concerning the timing of a GoPro stock sale was necessarily irrelevant.

GoPro’s Motion for Partial Summary Judgment

The court granted GoPro’s motion for partial summary judgment on Contour’s request for pre-suit infringement damages. The issue was whether Contour had complied with the patent-marking requirements in Section 287(a) of Title 35, which can provide constructive notice and permit damages from an earlier date.

GoPro identified four products—the ContourGPS, Contour+, Contour+2, and Contour 4K—as possibly practicing the patents and allegedly being unmarked. The court held that GoPro did not have to concede that those products practiced the patents in order to satisfy its initial burden of identifying products. Contour then had to show that it complied with the marking requirements or that marking was not required.

The court found Contour’s evidence insufficient for the ContourGPS and Contour+ because Contour did not show that those products were no longer made or offered for sale after the patents issued, and its evidence did not establish that no units were sold or offered for sale. The court also found Contour’s showing concerning the Contour+2 insufficient. Contour relied on a user manual directing users to a website with patent information but did not show that the camera itself could not be marked, as required for using a label as an alternative. The deficiencies concerning the ContourGPS and Contour+ independently entitled GoPro to summary judgment on this issue. The resulting ruling barred Contour from recovering the pre-suit damages at issue before January 5, 2015.

Motions to Strike and Expert Testimony

Contour moved to strike the reports of GoPro’s technical expert Almeroth and damages expert Patrick Kennedy because they relied on GoPro’s 2018 settlement agreement with Monument Peak Ventures, LLC. The court denied Contour’s motion. It held that the settlement agreement’s provisions, including its statement that the agreement was not evidence of a reasonable royalty or comparable license, could be used to challenge the experts’ opinions, but did not require exclusion. The court found that the experts had performed technical and economic comparisons and that Contour’s challenges principally concerned the weight of the testimony rather than admissibility. The court also held that judicial estoppel—a doctrine that can prevent a party from taking inconsistent positions—did not apply because no court had relied on or accepted the position in the settlement agreement.

GoPro moved to strike Hu’s opinions concerning whether Contour products practiced the asserted claims, copying, secondary considerations, and products made by iON. The court denied that motion. Hu had relied on documents, deposition testimony, and testing of four Contour products. The court held that any gaps in her analysis or disputes about a connection between copying evidence and the patented features went to the weight of her testimony, which could be tested through cross-examination, rather than its admissibility.

The court granted in part and denied in part GoPro’s motion to strike Ugone’s damages opinions. It found significant problems with his apportionment analysis—the process of separating the value of patented features from the value of other product features. In particular, the 80-percent figure was not supported by Ugone’s own economic analysis and instead came from a Contour executive; the analysis assigning 67 percent of Wi-Fi value to allegedly infringing features was insufficiently tied to the patented features; and Ugone did not reliably allocate profits between Contour and GoPro. The court also found unreliable Ugone’s use of the 2016 Contour-iON license without a principled explanation or adjustments, and required a supplemental report to amend or explain apportionment of any royalty rates. The court did not exclude his opinions about the commercial acceptability of non-infringing alternatives, finding that those challenges went to weight rather than admissibility.

The court allowed Contour to serve a supplemental report from Ugone by September 18, 2020. GoPro could depose Ugone for up to three hours within 20 days after service and could raise a further challenge in a motion before trial.

Sealing Motions

The court stated that the 18 sealing motions were deficient because many were overbroad or supported only by attorney declarations or confidentiality designations. It granted the narrowly tailored requests supported by declarations from Ambarella General Counsel Michael Morehead and iON Chief Executive Officer Giovanni Tomaselli. It also identified information that would not be sealed, including information discussed in open court, iON’s identity as Contour’s licensee, royalty rates in the iON agreements, related marking requirements, and evidence allegedly suggesting that GoPro sought to disassemble Contour products.

The court granted a few limited sealing requests, denied some with prejudice, and denied the remaining requests without prejudice so the parties could submit narrower requests. It ordered Contour and GoPro to file any renewed joint motion within 30 days and to identify materials that could be unsealed or resubmitted with only approved redactions.

Disposition

Contour’s motion for partial summary judgment was granted in part and denied in part. GoPro’s motion for partial summary judgment was granted. Contour’s motion to strike Almeroth’s and Kennedy’s opinions was denied. GoPro’s motion to strike Hu’s opinions was denied. GoPro’s motion to strike Ugone’s opinions was granted in part and denied in part. The sealing motions were resolved as described above.