Uniloc 2017 LLC v. Google LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

UNILOC 2017 LLC, §

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Plaintiff, §

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v. §

Case No. 2:18-cv-00503-JRG-RSP

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GOOGLE LLC, §

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Defendant. §

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MEMORANDUM ORDER

Before the Court is Defendant Google LLC’s Motion for Leave to Supplement Its

Invalidity Contentions.1 (Dkt. No. 130). In the Motion, Google asks for leave to supplement its

invalidity contentions with new information Google received from International Business

Machines Corporation (“IBM”), Radware, Inc. (“Radware”), and Loadbalancer.org, Inc.

(“Loadbalancer.org”) (collectively, the “Third Parties”) in response to subpoenas Google served a

few days before serving its invalidity contentions. This Motion was filed several months after

Google received the subpoenaed information and well after the deadline for submitting invalidity

contentions. For the reasons described herein, the Court DENIES Google’s Motion.

I. BACKGROUND

Plaintiff Uniloc 2017 LLC (“Uniloc”) filed this patent infringement action against Google

on November 17, 2018. (Dkt. No. 141 at 2). Uniloc timely served its infringement contentions on

May 6, 2019. While searching for system prior art, Google identified the Third Parties as having

potentially-helpful information by May 17, 2019. (Dkt. No. 130 at 5). Google tried to acquire the

1 After Google filed this Motion on November 25, 2019, Uniloc filed a December 9 response (Dkt. No. 141) to which

Google filed a reply on December 16 (Dkt. No. 144) and Uniloc filed a December 24 sur-reply (Dkt. No. 147).

publicly available information about those systems. While somewhat successful, it felt the Third

Parties may have more information and therefore, subpoenaed the Third Parties on July 10, 2019.

(Id.). Five days later, Google served Uniloc with its invalidity contentions on July 15, 2019.2 (Id.).

Loadbalancer.org, Radware, and IBM each produced documents related to their system on

July 22, 2019, August 5, 2019, and September 9, 2019, respectively. (Id.). The parties exchanged

their P.R. 4-1 disclosures on September 4, 2019, their P.R. 4-2 disclosures on September 25, 2019,

and filed their P.R. 4-3 submission on November 6, 2019. (Dkt. No. 141 at 3). Yet, Google did not

inform Uniloc of the existence of the materials obtained from the Third Parties until October 22,

2019, when Google sought to supplement its invalidity contentions. (Id. at 2). Uniloc opposed the

supplementation and Google filed this Motion on November 25, 2019. Since this motion has been

pending, the parties have also submitted complete claim construction briefing and the Court held

a Markman hearing. (See Dkt. No. 134, Dkt. No. 143, Dkt. No. 146, Dkt. No. 156).

II. ANALYSIS

Local Patent Rule 3-6, which governs changes to a party’s invalidity contentions, requires

a showing of good cause for untimely supplementation of invalidity contentions. See P.R. 3-6(b)

(“[S]upplementation of any Infringement Contentions or Invalidity Contentions . . . may be made

only by order of the Court, which shall be entered only upon a showing of good cause.”). “Good

cause,” according to the Federal Circuit, “requires a showing of diligence.” O2 Micro Int'l Ltd. v.

Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Courts in this District routinely

apply a four-factor test to determine whether good cause has been shown. See Alt v. Medtronic,

2 Normally, Google, as defendant, would have needed to serve its invalidity contentions on June 21, 2019—45 days

after receiving the infringement contentions. See Patent Rule (“P.R.”) 3-4. However, Google indicated that it needed

more time and Uniloc agreed to push the deadline to July 15, 2019. Uniloc agreed to the later deadline under the

condition that any additional extensions for P.R. 3-3/3-4 deadlines only be allowed upon a showing of good cause as

it stated it needed the contentions to prepare for its P.R. 4-1, 4-2, and 4-3 Markman disclosures. (Dkt. No. 141 at 2).

Inc., No. 2:04-CV-370, 2006 WL 278868, at *2 (E.D. Tex. Feb. 1, 2006) (citation omitted). Those

four factors are: (1) the explanation for the failure to meet the deadline; (2) potential prejudice in

allowing the thing that would be excluded; (3) the importance of the thing that would be excluded;

and (4) the availability of a continuance to cure such prejudice. The burden of proving good cause

rests with the party seeking the untimely amendment. Id; S&W Enters., L.L.C. v. SouthTrust Bank

of Ala., NA, 315 F.3d 533, 536 (5th Cir. 2003)).

a. Explanation

“In the context of untimely amendments to invalidity contentions, the first factor—

explanation—requires the amending party to show it was diligent both in discovering and in

disclosing the prior art references.” Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00550-JRG-

RSP, Dkt. No. 133, at *3–4 (E.D. Tex. Jan. 17, 2020) (emphasis in original) (collecting cases). A

party must “explain why, with reasonable diligence, [it] could not have discovered” the relevant

prior art references “prior to the deadline for filing Invalidity Contentions.” Innovative Display

Techs. LLC v. Acer Inc., No. 2:13-CV-00522-JRG, 2014 WL 2796555, at *1 (E.D. Tex. June 19,

2014). “A party’s failure to provide any adequate justification for its untimely disclosure materially

weighs heavily in favor of rejecting the disclosure, and may even be sufficient standing alone to

support exclusion.” Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., No. 2:17-CV-00651-JRG, 2019

WL 2267212, at *3 (E.D. Tex. May 28, 2019) (emphasis in original) (collecting cases).

In this case, Google has not adequately demonstrated that it “exercised diligence in

discovering the prior art.” See Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00493-JRG-RSP,

2019 WL 6465318, at *1 (E.D. Tex. Dec. 2, 2019) (quoting Invensys Sys., Inc. v. Emerson Elec.

Co., No. 6:12-CV-799, 2014 WL 12598865, at *3 (E.D. Tex. Dec. 3, 2014)). As an initial matter,

Uniloc claims that some of the requested documents were publicly available, giving a

Loadbalancer.org “administration manual” as an example. (See Dkt. No. 141 at 5 (referencing Dkt.

No. 141-2)). If this information was publicly available, then Google should have been able to

acquire this information, had it diligently searched for it, even without the subpoenas.

Next, Google claimed that it was aware of the of the prior art by May 17, 2019. Section I,

supra, at 2. Yet, Google only subpoenaed the Third Parties on July 10, 2019 and provides no

explanation for the delay.3 Instead, Google states that the subpoenas were served before the

invalidity contentions were due. While true, service was rendered only five days before the

invalidity contentions deadline, a deadline that had been pushed back at Google’s request. Google

provides no further explanation for why it requested this information, information it had been

aware of for months at that point, only a few days before it was due. The Court concludes that

these actions do not support a finding of diligence.

Apart from Google’s issues regarding discovery of the new information, Google also was

not diligent in disclosing the alleged prior art. Google received the information from the Third

Parties on July 22, 2019, August 5, 2019, and September 9, 2019, respectively. Yet, it did not

disclose this information to Uniloc until October 22, 2019. Three months passed between Google

first receiving a response to the subpoenas and its disclosure to Uniloc. During this time, the parties

had begun the process of claim construction, exchanging proposed claim terms and preliminary

claim constructions. Google provides no explanation this extended delay.

Thus, this factor weighs against granting leave to supplement Google’s contentions.

b. Prejudice

This factor is concerned with the prejudice that is likely to result from any supplementation.

As an initial matter, the Court notes the tension between Google’s prejudice and importance

3 The Court does not consider Google’s statement that it “explicitly reserved its right to supplement its contentions

after receiving any additional discovery” as an explanation. (Dkt. No. 130 at 2).

arguments. Google argues that the new information has little prejudice because “the only additions

. . . to Google’s supplemental invalidity chart are of callouts and citations to documents from these

Third Party productions, all of which are consistent with the disclosures already included in

Google’s initial claim charts.” (Dkt. No. 130 at 9). Yet in its importance section, Google asserts

the new information is “particularly important to Google’s invalidity defense in view of Uniloc’s

interpretation of certain claim limitations . . . .” (Id. at 7). The tension is clear—either the new

information is particularly important (and Uniloc must perform additional, unique work to

respond) or the new information is cumulative of other prior art so no special action is needed. The

new information cannot be both at the same time.

Uniloc asserts that it relied on Google’s disclosures in formulating its claim construction

materials.4 It did not have the benefit of this new information for months during discovery, while

Google did. It further was unable to know whether this information would be allowed while the

motion was pending. Finally, the Court has already held a claim construction hearing, further

disadvantaging Uniloc.

c. Importance

This factor focuses on the importance of the evidence which may be excluded. As noted

above, in the context of prior art, the importance of a given reference rises in proportion to the

uniqueness of its substantive disclosures relative to other, previously-disclosed prior art. When a

proposed reference’s disclosures are substantively cumulative of the disclosures in other references

4 Google argues that Uniloc barely relied on Google’s invalidity disclosures. (Dkt. No. 144 at 4). Even if true,

Uniloc should not have to suffer even a perceived disadvantage due to Google’s lack of diligence. P.R. 3-6(b) is

meant to be used in the rare situation where a party genuinely discovered key prior art after it submitted its invalidity

contentions—not as a method to extend its deadline.

that have already been identified in a party’s invalidity charts, such proposed reference offers little

or no value probative value and is unlikely to be important.

Google has already identified at least 348 combinations of prior art references that

allegedly render the patents-in-suit obvious in seventeen different sets of charts. (Dkt. No. 147 at

3). Google admits that it has already located and included information from the Third Parties that

it found prior to submitting its invalidity contentions. (Dkt. No. 130 at 9). While Google declares

that this information will allow additional detail, it does not adequately identify any disclosure in

the new information that is distinct from Google’s already-identified prior art. Accordingly, the

Court has no basis to conclude that the new information would constitute important evidence at

trial or otherwise.

Thus, this factor weighs against supplementation since the importance is low.

d. Continuance

This factor is concerned with the availability and utility of a continuance to cure any harm

that may result from permitting the untimely amendment. Neither party seeks a continuance, nor

does the Court find a continuance would be appropriate.

Accordingly, Google’s Motion for Leave to Supplement Its Invalidity Contentions is

DENIED.