Contour IP Holding, LLC v. GoPro, Inc.

Background

Contour accused several GoPro cameras of infringing claim 11 of the ’954 Patent. In August 2020, the court granted partial summary judgment to Contour, finding that the accused products infringed that claim. The remaining issues, including invalidity, were scheduled for a jury trial that had been repeatedly postponed.

The motion concerned four later-released GoPro products—the HERO7, HERO8, MAX, and HERO9—which Contour had not accused in this case. Contour had taken preliminary steps toward adding some of them but did not seek court permission to amend its infringement contentions. It instead stated that it intended to address the products in a separate proceeding.

Preliminary Challenges

GoPro argued that Contour was barred by judicial estoppel, a doctrine that can prevent a party from taking a clearly inconsistent position after benefiting from an earlier one. The court rejected that argument. It found that Contour’s positions were not clearly inconsistent because the circumstances had changed, and that the court had not relied on Contour’s earlier statement about addressing the products separately.

GoPro also argued that Contour had not complied with Patent Local Rule 3-6, which requires court permission and a timely showing of good cause to amend infringement contentions. The court concluded that the rule did not apply because Contour was not seeking to amend its contentions. The court acknowledged that using a damages motion to do what a party did not pursue through infringement contentions could be improper in some circumstances, but held that accountings and ongoing royalties have separate legal requirements.

Accounting

The court denied Contour’s request for an accounting covering the New Cameras. An accounting is a method of calculating damages that a jury did not determine, often for post-verdict sales of products already found to infringe or for periods the jury did not consider. The court held that Contour’s proposed use—deciding infringement and damages for products not accused or adjudicated in the case—was different and appeared novel.

The court rejected Contour’s reliance on cases discussing accountings for products that had already been accused and found to infringe. It concluded that those authorities did not permit extending an accounting to the New Cameras. The court stated that the denial did not prevent Contour from seeking a later accounting for products found to infringe if it prevailed at trial.

Ongoing Royalty

The court held that an ongoing royalty, an equitable remedy for continuing infringement after an infringement finding, may cover a later-released product that was not previously accused. It adopted the two-step test used by the Federal Circuit for assessing whether a modified product may be covered: first, the product must not be more than “colorably different” from the product previously found to infringe; second, the new product must actually infringe the relevant patent claims.

The court denied Contour’s request for two independent reasons. First, the request was premature because the court’s summary-judgment ruling did not establish that Contour would ultimately prevail; GoPro still planned to argue that the ’954 Patent was invalid at trial. If GoPro succeeded on invalidity, Contour would not be entitled to equitable relief.

Second, Contour had not provided the evidence needed to satisfy the two-step test. The record lacked meaningful discovery, expert reports, technical comparisons, and a limitation-by-limitation analysis showing that each part of claim 11 was met by the New Cameras. Statements by GoPro’s founder and chief executive officer and in-house counsel were not enough, particularly because their meaning was disputed, the statements were not expert technical analyses, and one statement could not address the HERO9, which was released afterward.

Disposition

The court denied without prejudice the motion for an accounting or ongoing royalty. It stated that Contour was not foreclosed from raising the request again in a suitable posture with adequate supporting evidence. The court did not decide whether a future lawsuit concerning the New Cameras would be barred by claim splitting or issue preclusion. Judge William H. Orrick also notified the parties that the scheduled trial might need to be postponed again because of other criminal trials.