FullView, Inc. v. Polycom, Inc.
- Edward Chen
- 3:18-cv-00510
- U.S. District Court · Northern District of California
- 17
In FullView v. Polycom, Judge Chen denied FullView leave to add two patents and denied Polycom’s motion to sever the case.
FullView’s effort to add the ’397 and ’090 patents was blocked, while Polycom’s request to split the case was denied; the existing litigation continued in its current structure.
What happened
In FullView, Inc. v. Polycom, Inc., FullView asked to add two patents to its patent-infringement lawsuit. Polycom opposed the request and asked the court to split the case into separate actions.
The court denied FullView’s request to add the patents. It found that FullView had known about them for years, waited too long to assert them, and did not show the required diligence. The court also concluded that adding the patents would be futile because their claims were directed to the abstract idea of combining images and did not add an inventive concept.
The court also denied Polycom’s motion to sever. Judge Chen concluded that splitting the case was not necessary for efficient resolution and could create parallel proceedings involving the same facts. The order disposed of both motions.
The detailed version
- FullView, Inc. v. Polycom, Inc. · No. 3:18-cv-00510
- Edward Chen
- Apr. 28, 2021
Background
FullView sued Polycom for allegedly infringing the ’711 and ’143 patents, which concern technology for creating panoramic or composite images. By the time of this order, the ’143 Patent was the only patent still at issue in the case, and claims 10 through 12 were in dispute. The court had previously dismissed FullView’s allegations concerning the ’711 Patent under 35 U.S.C. § 101.
FullView moved for leave to file a third amended complaint adding the ’397 and ’090 patents. FullView acknowledged that these patents were from the same family as the ’711 Patent, had identical figures and similar specifications, and covered the same invention. Polycom opposed the amendment and moved to sever the allegations concerning the ’143 Patent from those concerning the ’711 Patent. Polycom also sought a stay while the Federal Circuit reviewed the court’s earlier dismissal of the ’711 Patent allegations.
Motion for Leave to Amend
The court denied FullView’s motion for leave to amend the complaint. It also denied leave to amend FullView’s infringement contentions under Patent Local Rule 3–6.
First, the court found that FullView had not acted diligently. The ’090 and ’397 patents had been included in the 2011 licensing agreement underlying FullView’s claims, and FullView admitted that it knew about the patents when it knew about the ’711 and ’143 patents. FullView nevertheless filed three complaints over nearly three years without asserting them. Because FullView did not show diligence or good cause for the delayed amendment, the court denied relief under Patent Local Rule 3–6.
Second, applying Federal Rule of Civil Procedure 15, the court found undue delay and bad faith. The court viewed FullView’s effort to add the nearly identical patents after dismissal of the ’711 Patent claims as an attempt to avoid the effect of that dismissal and pursue the dispute piecemeal.
Third, the court found the proposed amendment futile. Under the two-step framework for patent eligibility described in Alice Corp. v. CLS Bank International, the court concluded that the proposed claims were directed to the abstract idea of merging images to create a seamless composite image. It further concluded that the claims did not contain an inventive concept that transformed that abstract idea into a patent-eligible invention. The court found that terms concerning the arrangement of sensors, reflective surfaces, and image transducers described generic components or desired results without specifying a sufficiently particular technological solution.
Motion to Sever
The court denied Polycom’s motion to sever. Polycom asked the court to create separate actions for the ’143 Patent and the ’711 Patent. The court concluded that severance was not necessary to resolve the issues efficiently, particularly because FullView had indicated that it was not interested in a piecemeal appeal if the claims were severed.
The court also reasoned that severance could result in two parallel actions based on the same core facts if the Federal Circuit reversed the earlier dismissal of the ’711 Patent allegations. The court viewed that possibility as wasteful and declined to structure the case in the manner Polycom requested.
Disposition
Judge Edward Chen denied FullView’s motion for leave to amend the second amended complaint and denied Polycom’s motion to sever. The order disposed of Docket Nos. 123 and 129.
Read the full 17-page opinion on CourtListener, the free public archive maintained by the Free Law Project.