Contour IP Holding, LLC v. GoPro, Inc.

Background

Contour IP Holding, LLC alleged that GoPro, Inc. infringed claims 11, 12, 14, 15, and 20 of U.S. Patent No. 8,890,954 and claims 4 and 6 of U.S. Patent No. 8,896,694. The patents concern mountable and viewfinderless point-of-view video cameras with wireless connections to portable personal devices. GoPro denied infringement and asserted that the patents were invalid. A jury trial was set for later in 2021, depending on the COVID-19 pandemic.

The order addressed Contour’s and GoPro’s motions in limine, GoPro’s motion to strike and exclude portions of Contour damages expert Dr. Keith Ugone’s supplemental report, and motions to seal.

Contour’s Motions in Limine

1. “Generate” limitations: Granted. Neither party could argue about the “generate” limitation as it related to infringement because the court had already resolved that issue on summary judgment for claim 11. The order stated that GoPro could not relitigate its non-infringement arguments at trial.

2. GoPro’s ability to pay or business impact: Granted. GoPro could not tell or suggest to the jury that it could not pay a judgment or that a significant verdict would harm its business or cause it to fail.

3. General criticism of the Patent Office or Patent Trial and Appeal Board: Granted in part. GoPro could not make generalized comments suggesting that the Patent Office’s examination process was poor or that it generally failed to do its job. GoPro could still make specific attacks on the validity of the patents in this case and rely on evidence that those patents were improperly issued. The court could reconsider the ruling if Contour suggested that the Patent Office carefully evaluated all relevant prior art.

4. Descriptions of Contour entities as “non-practicing entities” or similar terms: Granted in part. GoPro could not call Contour a “patent assertion entity,” and it had agreed not to use “patent troll.” The court allowed the neutral, factual description “non-practicing entity.” The court did not decide in advance whether arguments that Contour improperly asserted patent rights without practicing the patents would be relevant; any objection would depend on the evidence and its purpose at trial.

5. Ambarella as an inventor: Granted in part. GoPro could not use Ambarella evidence as an invalidity reference because the court had previously denied GoPro permission to add certain Ambarella technology to its invalidity contentions. GoPro could use the evidence as background prior art, including to show what a person of ordinary skill in the art knew, or for other defenses not covered by the disclosure requirements. Lay witnesses could describe their personal experiences developing the technology, but they could not give expert technical testimony.

GoPro’s Motions in Limine

1. GoPro’s total accused-product revenues or profits: The court granted the separate motion to strike the portion of Ugone’s supplemental report concerning this subject. The order identified that report as the source of the evidence GoPro sought to exclude.

2. GoPro’s corporate wealth and executives’ wealth or compensation: Granted in part. The court excluded evidence of executive wealth and compensation when it was not connected to a particular disputed issue. The court declined to rule broadly on all evidence of GoPro’s total corporate wealth because admissibility depended on how the evidence was used. The order also stated that evidence of Nicholas Woodman’s stock sales was excluded on other grounds.

3. Testimony from Dr. Erich Speckin: Granted. The court excluded Speckin’s testimony because Contour had not adequately disclosed him as an expert who would testify at trial. His earlier declaration had been submitted for the limited purpose of responding to a motion to stay and did not satisfy the court’s disclosure concerns.

4. Technical opinions of Dr. Keith Ugone: Denied. Ugone could rely on technical information as a basis for his damages opinions if that information was otherwise admissible. He could not testify to technical opinions to establish the truth of those opinions, and the technical information could not support his opinions if it was otherwise inadmissible.

5. Undisclosed opinions of Dr. Jing Hu: Denied except to the limited extent stated in the order. Hu could testify about opinions adequately disclosed in her reports. GoPro could try to impeach her if a particular opinion went beyond the general disclosure. Opinions concerning certain file functions could be used only as rebuttal evidence, not for another purpose. The ruling did not otherwise bar Hu from testifying about underlying opinions disclosed in her report.

6. Alleged factual misrepresentations: Denied. The court treated GoPro’s challenge as concerning the weight of the evidence rather than whether it was admissible. Factual disputes were for the factfinder. Ugone could rely on an assumed fact as a basis for his damages opinions if the evidence otherwise complied with the Federal Rules of Evidence, but he could not testify to establish the substantive truth of a technical statement for which he was unqualified.

7. Evidence allegedly oversimplifying the inventions: Denied. Contour could use shorthand such as “live preview,” “remote control,” and “playback and display” if the actual functionalities were sufficiently defined. The court stated that any suggestion that Contour invented more than the claims covered could be addressed through cross-examination, argument, or an appropriate evidentiary objection.

8. Undisclosed evidence of willfulness: Granted. Contour could not present evidence or arguments concerning alleged copying or monitoring of Contour products, Woodman’s stock sales, GoPro’s continued release of products or failure to design around the patents, or communications between GoPro and Contour entities as previously undisclosed bases for willfulness. The court found that Contour had not adequately disclosed these theories in response to GoPro’s interrogatory and had not shown that the nondisclosure was justified or harmless.

9. Undisclosed secondary considerations of nonobviousness: Granted in part, denied in part. The court denied the portion seeking to exclude evidence of secondary considerations such as commercial success, unresolved need, and failure by others because Contour had sufficiently disclosed the general theories or GoPro had not timely sought clarification. The court granted in part GoPro’s alternative request concerning the timing and use of copying evidence. Copying could be used to support willfulness and, subject to other rulings, in rebuttal, but could not be used for other purposes because of the risk of confusing the validity and infringement issues.

10. Evidence inconsistent with the summary judgment order: Denied. The court agreed that the parties could not contradict its summary judgment ruling, but found that the specific testimony from Hu concerning the prior-art reference Boland presented a distinct argument and was not so inconsistent with Contour’s earlier position as to require exclusion or judicial estoppel.

11. Referring to plaintiff as “Contour”: Denied except to the limited extent explained in the order. Contour could refer to itself by its name, but it could not suggest that it was the same company as Contour, LLC or Contour, Inc. GoPro could present appropriate evidence and argument about the distinctions among those entities.

12. References to inter partes review proceedings: Granted in part. Evidence and argument about the patent-review proceedings generally could not be used because of the risk of confusing the jury. If GoPro suggested that references had not previously been considered when they had been, Contour could introduce evidence to rebut that suggestion. Evidence from the proceedings could also be used for the limited purpose of addressing willfulness, if that theory remained available under the order’s other rulings.

13. Foreign production: Granted in part. The parties were bound by their stipulation not to introduce evidence or argument about the geographic locations of manufacturing, sales, offers to sell, use, or importation of the accused products. The court did not exclude otherwise admissible documents merely because they contained stray geographic references, provided the evidence was presented neutrally and without creating bias against foreign corporations.

14. Unaccused products: Granted. Evidence concerning unaccused products was excluded from trial as irrelevant.

Motion to Strike and Exclude Ugone’s Supplemental Opinions

The court granted GoPro’s motion to strike and exclude portions of Ugone’s supplemental opinions under Federal Rule of Evidence 702, which governs the admissibility of expert testimony. The court explained that expert opinions must be relevant, reliable, based on sufficient facts or data, and produced through reliably applied methods.

- 50% apportionment: The court struck Ugone’s opinion that a 50% apportionment factor was an appropriate maximum because the report provided no underlying economic analysis or quantitative support for that figure. The court struck only that discrete opinion, not the other analysis that Contour identified as the substantive portion of the damages theory. - Apportionment of “display and playback” value: The court struck Ugone’s apportionment opinions because they did not measure the incremental value of the claimed features over conventional features. The court also found that the 50% allocations for “browse and delete” and “trim and share” lacked a technical basis. - Profit split: The court struck Ugone’s opinions relying on a modified Nash Bargaining Solution. The court found that the record lacked sufficient evidence that the modified method was reliable, tested, peer-reviewed, generally accepted, or properly tied to the facts of the case. The order stated that reliance on the separate Rubinstein bargaining model was not barred by that ruling. - Contour-iON agreement: The court rejected Ugone’s reliance on the 2016 agreement as an arms-length negotiation under his own definition because iON had an ownership interest in Contour when the agreement was negotiated. The later redemption of iON’s shares in October 2017 did not change the parties’ financial relationship in mid-2016. - MPV license opinions: The court struck opinions about an agreement between MPV and GoPro that did not appear in Ugone’s original report. The permission to supplement was limited to correcting identified deficiencies and did not allow new rebuttal opinions. - Entire market value rule opinions: The court struck new opinions comparing Contour’s apportioned gross profits with GoPro’s total revenues and profits because they were outside the permitted scope of supplementation. The ruling did not address related opinions in Ugone’s original report that GoPro had not moved to strike.

Motions to Seal

The court granted the motions to seal. It found compelling reasons to seal narrow portions concerning company financial information, product source code and similar confidential details, and licensing agreements involving the parties and third parties. The court did not redact any portion of the order itself. It cautioned that sealed information might need to be disclosed publicly if the parties used it at trial.

Disposition

Judge William H. Orrick stated that the motions in limine and the motion to strike and exclude were resolved as described above. This was a pretrial evidentiary order; it did not decide the remaining patent-infringement or patent-validity issues on their merits.