Plaintiff’s Request to Add New Infringement Theories Denied in Unwired Planet v. Apple

Judge Chhabria found that plaintiff Unwired Planet failed to show good cause why it should be permitted to add new infringement theories to its infringement contentions five months after the Patent L.R. 3-1 deadline, and after the close of claim construction. Unwired Planet, LLC v. Apple, Inc., No. 13-4134 (N.D. Cal. Oct. 23, 2014).

Unwired Planet sued Apple in September 2012 in the District of Nevada. It served initial infringement contentions on Apple in February 2013, and supplemented them in May 2013. In August 2013, the case was transferred to the Northern District of California, and pursuant to the new scheduling order, Unwired Planet filed its First Amended Infringement Contentions in February 2014.

In late February the parties exchanged proposed claim constructions, filed their Joint Claim Construction and Prehearing Statement in March 2014, and filed their claim construction briefs in April 2014. A claim construction hearing took place on August 11. Meanwhile, on June 10, 2014, Apple sent Unwired Planet a letter contending that some of its infringement contentions were deficient and asking Unwired Planet to address them. On July 17, 2014, Unwired Planet responded by filing what it claimed were supplemental infringement contentions. Apple, however, objected to four of Unwired Planet’s supplemental contentions on the grounds that Unwired Planet, rather than adding specificity to its existing infringement contentions, added new infringement theories against newly accused features and technologies.

Unwired Planet argued that it had good cause for amending its contentions either because it discovered new information based on recently produced source code from Apple, or because it is responding to Apple’s proposed claim construction. The court disagreed, noting that Unwired Planet failed to cite any source code in its infringement contentions or in its opening brief. The court also found that a public document that Unwired Planet had cited in its February 2014 contentions provided evidence to support one of the new contentions, and concluded that Unwired Planet failed to demonstrate that it could not have raised the contention previously. The court also declined to find good cause to amend to respond to Apple’s claim constructions, because Unwired Planet was not diligent in seeking to amend.