Contour IP Holding, LLC v. GoPro, Inc.

Background

This order addressed the parties’ invalidity contentions in the second suit between Contour IP Holding, LLC and GoPro, Inc. In the first suit, GoPro had been limited to 15 prior-art references and 30 prior-art combinations, and GoPro had agreed to that limitation. Claim construction had since occurred in the second suit.

Contour argued that GoPro’s invalidity contentions should be stricken in their entirety. The opinion states that Contour had expanded its infringement contentions when it filed the second lawsuit, which invited new invalidity theories. Contour had also known about the issue for several months but acted only at this stage. GoPro argued that the limits from the first case did not automatically bind the second case because consolidated cases can remain separate in some respects.

Court’s reasoning

The court explained that the Local Patent Rules did not automatically impose the earlier limits, but courts may reasonably limit the volume of prior-art references as part of managing a case. Because claim construction had occurred, the court found it fair to require GoPro to narrow its contentions to the material that would ultimately be permitted. The court also stated that striking all of GoPro’s invalidity contentions would be unfair and that Contour had identified no authority requiring that result.

Ruling

Judge Wiliam H. Orrick limited GoPro in the second suit to no more than 15 prior-art references and 30 prior-art combinations. The parties were directed to stipulate to a timeline for GoPro to make the narrowing. If they could not agree, they were ordered to submit a joint letter brief within seven days. The order did not strike GoPro’s invalidity contentions in their entirety.