NantWorks, LLC v. Niantic, Inc.

Background

NantWorks sued Niantic, alleging that Niantic’s augmented-reality game applications infringe NantWorks’s patents. In March 2021, Niantic served invalidity contentions—disclosures identifying the prior art and arguments Niantic relied on to challenge the patents’ validity. Those contentions included charts for Google Maps Mobile, Layar, and Parallel Kingdoms.

Before serving the original contentions, Niantic had subpoenaed Google and PerBlue, the maker of Parallel Kingdoms, and had begun investigating Layar. Google and Layar produced documents in April and May 2021. The court later stayed the case while Niantic pursued inter partes review, and lifted the stay on January 21, 2022. PerBlue produced documents to Niantic on March 29, 2022, and Niantic produced them to NantWorks the same day.

The parties then agreed to reduce the number of asserted claims and prior-art references. After NantWorks narrowed its claims, Niantic narrowed its prior-art grounds and served supplemental invalidity contentions by April 1, 2022. Following the parties’ discussions, Niantic re-served supplemental contentions on April 26. The changes included clarifying that Niantic was relying only on its narrowed prior-art grounds, removing language at NantWorks’s request, and citing third-party material produced after the original contentions. The three prior-art grounds themselves had already been asserted in March 2021.

Legal standard

Patent Local Rule 3-6 permits amendments to infringement or invalidity contentions only with a court order based on a timely showing of good cause. The rule identifies the recent discovery of material prior art despite an earlier diligent search as one circumstance that may support good cause. The moving party must show diligence, and courts also consider whether the amendment would unfairly prejudice the opposing party.

Court’s analysis

The court found good cause. It concluded that Niantic acted diligently after the stay was lifted: the last third-party production occurred shortly afterward; the parties then narrowed their claims and prior-art grounds; Niantic served supplemental charts addressing the remaining claims; and Niantic promptly served revised charts after the parties met and conferred.

The court also found no prejudice. Claim construction—the process of deciding what patent-claim terms mean—was still at an early stage. The original invalidity charts and subpoenas had already disclosed Niantic’s reliance on the three prior-art references, and Niantic disclosed and incorporated the third-party productions promptly.

The court distinguished NantWorks’s cited cases because those cases involved adding new prior-art references later in the litigation or after significant case developments. The court also rejected NantWorks’s argument that Niantic’s amendment was improper sandbagging, reasoning that the supplemental contentions followed the parties’ agreement to narrow the asserted claims and prior-art references.

The court noted that NantWorks also argued that block quotes in the invalidity contentions violated Patent Local Rule 3-3(c), which requires identifying where each limitation of each asserted claim appears in each item of prior art. The court said the three-line argument was insufficient for it to address that issue.

Disposition

The court granted Niantic leave to serve its April 26 supplemental invalidity contentions. It stated that this disposed of ECF No. 101. The order addressed the amendment of litigation contentions and did not decide the underlying patent-infringement or patent-validity questions.