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Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 1 of 12
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`Case No. 3:16-cv-02787-WHO
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`
`
`ORDER GRANTING SAMSUNG
`LEAVE TO AMEND INFRINGEMENT
`CONTENTIONS
`
`Re: Dkt. No. 116
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`
`
`HUAWEI TECHNOLOGIES, CO, LTD, et
`al.,
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`Plaintiffs,
`
`v.
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`SAMSUNG ELECTRONICS CO, LTD., et
`al.,
`
`Defendants.
`
`INTRODUCTION
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`Counterclaim-plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics America,
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`Inc. (collectively, “Samsung”) seek to amend their infringement contentions to (1) include
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`additional infringing instrumentalities and (2) change the conception dates with respect to
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`Samsung’s U.S. Patent Number 8,228,827 (“’827 Patent”) and RE44,105 (“’105 Patent”).
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`Counterclaim-defendants Huawei Technologies Co., Ltd., Huawei Device USA, Inc., Huawei
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`Technologies USA, Inc. and HiSilicon Technologies Co. Ltd. (collectively, “Huawei”) do not
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`oppose the first request, but contend that Samsung’s second request should be denied because
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`Samsung has not been diligent and Huawei will be prejudiced if Samsung is permitted to amend
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`the conception dates at this time. Because Samsung has been at least marginally diligent and I do
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`not see prejudice to Huawei, Samsung’s motion to amend the conception dates is GRANTED.
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`BACKGROUND
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`Huawei initiated this action on May 24, 2016; Samsung answered and filed counterclaims
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`on August 22, 2016. See Compl. (Dkt. No. 1); Answer, Third Party Complaint, and
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`Counterclaims (Dkt. No. 42[redacted], Dkt. No. 41-3[under seal]).
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`On October 25, 2016, Samsung served its infringement contentions and document
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`productions as dictated by Patent Local Rules 3-1 and 3-2. Lordgooei Decl. ¶ 2 (Dkt. No. 116-1);
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`see Samsung’s Disclosure of Asserted Claims and Infringement Contentions (Id., Ex. 1, Dkt. No.
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`116-2; Huawei’s Partial Opp’n to Samsung’s Mot. (“Opp’n”), Ex. A, Dkt. No. 120-3).1 But it did
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`not identify specific conceptions dates for four of Samsung’s nine asserted patents, including the
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`’827 and ’105 patents. See Samsung’s Disclosure at 8. Rather, it disclosed priority dates of “at
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`least” February 9, 2007 for the ’827 patent and “at least” April 6, 2005 for the ’105 patent. Id.
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`On November 7, 2016, Huawei wrote to Samsung to address deficiencies in its
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`contentions, including Samsung’s failure to identify specific dates of conception for each asserted
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`patent. 11/7/16 Letter to Samsung (Opp’n, Ex. B, Dkt. No. 120-3). It specifically requested
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`confirmation that Samsung would not rely on any conception dates earlier than the priority dates
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`disclosed. Id. at 1. Samsung did not immediately respond and Huawei sent another letter on
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`November 30, 2016. 11/30/16 Letter to Samsung (Opp’n, Ex. C, Dkt. No. 120-3; Lordgooei
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`Decl., Ex. 2, Dkt. No. 116-3). Samsung responded on December 2, 2016, disputing that it was
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`required to identify specific conception dates (as opposed to priority dates), but providing
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`supplemental infringement contentions that identified additional conception dates “in an effort to
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`resolve potential disputes between the parties[.]” 12/2/16 Letter to Huawei (Opp’n, Ex. D, Dkt.
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`No. 120-3); see Samsung’s First Supplemental Disclosure of Asserted Claims and Infringement
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`Contentions (Opp’n, Ex. E, Dkt. No. 120-3; Lordgooei Decl., Ex. 3, Dkt. No. 116-4). It also
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`stated its understanding that “neither party will be required to seek leave to amend their respective
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`infringement contentions” and “reserve[d] the right to update these dates as additional information
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`1 Samsung filed an administrative motion to file under seal information that has been designated
`by Huawei as confidential. Samsung’s Administrative Mot. (Dkt. No. 115). Since Huawei does
`not seek to seal that information (Dkt. No. 119), the motion is DENIED. Huawei filed an
`administrative motion to file under seal information designated by Samsung as Highly
`Confidential, including portions of its partial opposition and Exhibit M attached thereto. Huawei’s
`Administrative Mot. (Dkt. No. 120). Samsung filed a declaration in support of sealing, seeking to
`maintain the confidentiality of Exhibit M (internal meeting minutes) and nine lines from Huawei’s
`Opposition referencing portions of Exhibit M. Lordgooei Decl. ISO Administrative Mot. to File
`Under Seal ¶¶ 4–5 (Dkt. No. 122). Because Samsung’s request is narrowly tailored to seal only
`highly confidential business information, it meets the good cause standard for sealing non-
`dispositive motions and related materials. See Kamakana v. City & Cty. of Honolulu, 447 F.3d
`1172, 1179-80 (9th Cir. 2006) (“A ‘good cause’ showing under Rule 26(c) will suffice to keep
`sealed records attached to non-dispositive motions.”). Huawei’s administrative motion to file
`under seal is GRANTED.
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 3 of 12
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`becomes available.” 12/2/16 Letter to Huawei. Samsung identified “April 6, 2005” as the
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`conception date for the ’105 patent and “January 2007” as the conception date for the ’827 patent.
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`Samsung’s First Supp. Infr. Contentions at 8. Huawei accepted the conception date for the ’105
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`patent, but notified Samsung that it had to identify a specific date, not just a month and year, for
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`the ’827 patent. 12/15/16 Letter to Samsung (Opp’n, Ex. F, Dkt. No. 120-3). It also disputed
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`Samsung’s contention that it could amend without seeking leave because “Huawei is relying on
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`these dates to develop invalidity contentions[,]” and “[a]ny changes could negatively impact
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`Huawei’s ability to put forth an invalidity defense.” Id.
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`Although Samsung continued to disagree that the Patent Local Rules required disclosure of
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`a specific date, it amended its conception date for the ’827 patent to “January 26, 2007.” 1/10/17
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`Letter to Huawei (Opp’n, Ex. G, Dkt. No. 120-3; Lordgooei Decl., Ex. 4, Dkt. No. 116-5). Ten
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`days later on January 20, 2017, the parties exchanged invalidity contentions and accompanying
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`document productions. Huawei contended that Samsung was not entitled to a priority date of
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`February 2007 for the ’827 asserted claims, nor a priority date of April 2005 for the ’105 asserted
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`claims. Huawei’s Invalidity Contentions at 90 (Opp’n, Ex. H, Dkt. No. 120-3; Lodgooei Decl.,
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`Ex. 6, Dkt. No. 116-7). For the ’827 patent, Huawei disclosed allegedly invalidating prior art that
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`it claims was available as early as December 2005 and as late as January 5, 2010. Id. at 27; see
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`Samsung’s Mot. to Amend Infr. Contentions at 3 (“Mot.”)(Dkt. No. 116).2 And for the ’105
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`patent, Huawei disclosed allegedly invalidating prior art that it claims was available as early as
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`1999, and as late as June 8, 2009. Huawei’s Invalidity Contentions at 32–33; see Mot. at 3.
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`According to Huawei, it relied upon the conception dates provided by Samsung to locate key prior
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`art references. See Opp’n at 4 (citing to Huawei’s Invalidity Contentions).
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`Between January 12 and February 14, Samsung identified documents supporting a
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`conception date of January 22, 2007 for the ’827 patent, and March 30, 2005 for the ’105 patent.3
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`2 These dates are not included in the prior art references in Huawei’s infringement contentions.
`They are only mentioned in Samsung’s motion. See Mot. at 3.
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` 3
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` Samsung contends that the archived documents were associated with prior litigation involving
`different counsel. Lordooei Decl. ¶ 3.
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 4 of 12
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`Lordgooei Decl. ¶ 3. Samsung produced the responsive, non-privileged information on February
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`14, 2017. Id.
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`The next day, Samsung sent Huawei an email with proposed second supplemental
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`infringement contentions attached. 2/15/17 Email to Huawei with Supplemental Infringement
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`Contentions Attachment (Opp’n, Ex. I, Dkt. No. 120-3). The supplemental contentions identified
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`additional infringing products based on Huawei’s supplemental interrogatory responses, and
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`proposed changes to two conception dates: from January 26 to January 22, 2007 for the ’827
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`patent, and from April 6 to March 30, 2005 for the ’105 patent. Id. Huawei responded that it did
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`not oppose Samsung’s revisions to the list of accused products but did oppose the revisions to its
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`claimed conception dates. 2/22/17 Email to Samsung (Opp’n, Ex. J, Dkt. No. 120-3; Lordgooei
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`Decl., Ex. 9, Dkt. No. 116-10). Samsung then requested a meet and confer and, as a compromise,
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`proposed a stipulation to grant Samsung leave to serve disclosures with the revised conception
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`dates and allow Huawei 30 days to respond to identify any additional prior art pre-dating the new
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`conception dates. 2/27/17 Email to Huawei (Lordgooei Decl., Ex. 10, Dkt. No. 116-11).
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`After the meet and confer, Huawei requested that Samsung identify the documents
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`supporting its revised conception dates. 3/8/17 Email to Samsung (Opp’n, Ex. K, Dkt. No. 120-3;
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`Lordgooei Decl., Ex. 11, Dkt. No. 116-12). For the ’827 patent, Samsung identified a document it
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`had produced on February 14, 2017, and for the ’105 patent, Samsung cited a draft privilege log
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`entry. See Opp’n, Ex. L, Dkt. No. 120-3. After reviewing the documents, Huawei maintained its
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`objection to Samsung’s motion for leave to amend its conception dates. On March 13, 2017,
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`Samsung filed its motion. Dkt. No. 116.
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`LEGAL STANDARD
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`Pursuant to the Patent Local Rules for the Northern District of California, a party claiming
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`infringement must submit infringement contentions within fourteen days of the parties’ initial
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`Case Management Conference. Patent L.R. 3-1. These must include, among other things, “each
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`accused apparatus, product, device, process, method, act, or other instrumentality (‘Accused
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`Instrumentality’) of each opposing party of which the party is aware,” and must “be as specific as
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`possible.” Patent L.R. 3-1(b). Rule 3-1(f) requires parties to provide, “[f]or any patent that claims
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 5 of 12
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`priority to an earlier application, the priority date to which each asserted claim allegedly is
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`entitled.”
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`Patent Local Rule 3-2 governs “Document Production Accompanying Disclosure,” which
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`must accompany the Rule 3-1 disclosures. This must contain documents that relate to the sale or
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`other use of the claimed invention, as well as “[a]ll documents evidencing the conception,
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`reduction to practice, design, and development of each claimed invention, which were created on
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`or before the date of application for the patent in suit or the priority date identified pursuant to
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`Patent L.R. 3-1(f), whichever is earlier.” Patent L.R. 3-2(a)-(b). A defendant must serve
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`invalidity contentions and document production no later than 45 days after it is served with the
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`infringement contentions. Patent L.R. 3-3, 3-4.
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`The court may allow a party to amend its infringement contentions only “upon a timely
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`showing of good cause.” Patent L.R. 3-6. The Patent Local Rules supply several circumstances
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`that support a finding of good cause, provided there is no prejudice to the non-moving party. Id.
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`These include “[a] claim construction by the Court different from that proposed by the party
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`seeking amendment,” and “[r]ecent discovery of nonpublic information about the Accused
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`Instrumentality which was not discovered, despite diligent efforts, before the service of the
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`Infringement Contentions.” Id.
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`The patent local rules were designed to require parties to crystallize their theories of
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`infringement early in litigation, and to adhere to such theories. Apple Inc. v. Samsung Elecs. Co.,
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`No. 12-CV-0630-LHK PSG, 2013 WL 3246094, at *1 (N.D. Cal. June 26, 2013). In determining
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`whether a party has good cause to amend, courts will first look to see whether the moving party
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`has good cause, which requires that it act with diligence, and then to whether the non-moving
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`party will suffer prejudice. Id. The focus of this inquiry is on the moving party’s reasons for
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`seeking amendment. Id. The moving party bears the burden of establishing diligence. Id. “Only
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`if the moving party is able to show diligence may the court consider the prejudice to the non-
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`moving party.” Id.
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`“[T]he philosophy behind amending claim charts is decidedly conservative, and designed
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`to prevent the ‘shifting sands’ approach to claim construction.” Atmel Corp. v. Info. Storage
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 6 of 12
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`Devices Inc., No. C 95-1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. Nov. 5, 1998); see also O2
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`Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006). The Federal
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`Circuit has recognized that the local rules simultaneously require parties to provide early notice of
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`invalidity and infringement contentions, while proceeding with diligence in amending those
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`contentions. O2 Micro, 467 F.3d at 1365-66. They “thus seek to balance the right to develop new
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`information in discovery with the need for certainty as to the legal theories.” Id. at 1366.
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`DISCUSSION
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`I.
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`THE PATENT LOCAL RULES AND DISCLOSURE OF SPECIFIC CONCEPTION
`DATES
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`The parties devote a portion of their briefing to whether the Patent Local Rules require
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`parties to disclose specific conception dates when serving infringement contentions. See Mot. at 2
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`n.2; Opp’n at 7; Reply at 2, 4 (Dkt. No. 123). Although not dispositive of Samsung’s motion, the
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`answer to this question determines the boundaries by which to measure Samsung’s diligence.4
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`Huawei cites to several Northern District cases reiterating that “Patent L.R. 3–l(f) particularly
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`requires a patent holder to assert a specific date of conception, not a date range, and Patent L.R. 3–
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`2(b) requires the proactive and expedient production of evidence of that conception date.”
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`Harvatek Corp. v. Cree, Inc., No. C 14-05353 WHA, 2015 WL 4396379 (N.D. Cal. July 17,
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`2015); see also Thought, Inc. v. Oracle Corp., No. 12-CV-05601-WHO, 2015 WL 5834064 (N.D.
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`Cal. Oct. 7, 2015)(following Harvatek); OpenTV, Inc. v. Apple Inc., No. 15-CV-02008-EJD (NC),
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`2016 WL 3196643, at *2 (N.D. Cal. June 9, 2016)(“The Court agrees with Judge Orrick’s
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`reasoning in Thought that OpenTV had an obligation to disclose its conception date and the
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`relevant documents to support the conception date under the Patent Local Rules.”).
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`Samsung argues that the rules only explicitly require disclosure of a priority date, as
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`opposed to a conception date, and it distinguishes Huawei’s cases by highlighting the
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`corresponding discovery requests that mandated disclosure of the conception dates. Mot. at 2 n.2.
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`4 To this point, Samsung insists, “the question before the Court is whether Samsung exercised
`diligence in seeking to supplement its December 2, 2016 Infringement Contentions[,]” as opposed
`to its October 25, 2016 Infringement Contentions. Reply at 5.
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 7 of 12
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`But I previously agreed with the reasoning in Harvatek Corporation that finds the obligation
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`stems from the rules, not discovery requests, and while some of my colleagues disagree, I have not
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`been persuaded to change my mind.5 See Thought, Inc., 2015 WL 5834064, at *5 (following the
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`reasoning in Harvatek). Moreover, Samsung was clearly on notice that Huawei sought specific
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`conception dates,6 so its diligence should be marked from the date of its initial infringement
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`contentions.
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`II. MOTION FOR LEAVE TO AMEND
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`Samsung insists that there is good cause for amendment because it has been diligent in its
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`discovery efforts and Huawei will not suffer any prejudice.7 Mot. at 6 (Dkt. No. 116). Since
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`Huawei does not object to the addition of new instrumentalities, that portion of Samsung’s motion
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`is GRANTED without discussion. Huawei, however, argues that Samsung has failed to
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`demonstrate the requisite diligence, and allowing Samsung to amend its conception dates would
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`5 The Harvatek court found,
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`Those rules are in place to require patent holders to “crystallize their
`theories of the case early in the litigation,” which heads off the
`possibility of abuse in the form of theories contrived to get behind
`later-disclosed prior art. This poses a minimal burden for a patent
`holder, who should already know the conception date of a patented
`invention prior to commencing litigation.
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`2015 WL 4396379, at *3.
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` 6
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` And arguably, that the Patent Local Rules required it. See Harvatek, 2015 WL 4396379, at *3
`(“Patent L.R. 3–l(f) particularly requires a patent holder to assert a specific date of conception, not
`a date range, and Patent L.R. 3–2(b) requires the proactive and expedient production of evidence
`of that conception date.”)
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` 7
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` Samsung cites to Apple Inc. v. Samsung Elecs. Co. for the proposition that “a court need not find
`diligence before finding good cause to grant leave to amend if there would be no prejudice to the
`non-moving party.” Reply at 3–4; see No. CV 12-00630 LHK, 2012 WL 5632618, at *5 (N.D.
`Cal. Nov. 15, 2012)(“[E]ven if the movant was arguably not diligent, the court may still grant
`leave to amend.”). But those amendments pertained to Apple’s mistaken omission of certain
`claims charts that were mentioned in its summary chart. Id. That is an entirely different scenario
`from that presented here. See id. (“Here, it appears that Apple’s omission of the second set of
`charts was due to an honest mistake. … The omission, though careless, does not appear to be
`motivated by gamesmanship. Precluding Apple from bringing these claims because of an
`administrative mistake would be an unnecessarily harsh result.”). Moreover, the Federal Circuit
`has stated its “agree[ment] with the Northern District of California that “good cause” requires a
`showing of diligence[,]” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366
`(Fed. Cir. 2006), which seems to undercut Samsung’s argument.
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 8 of 12
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`cause prejudice because Huawei relied on those dates in its prior art investigation.8
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`A.
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`Diligence
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`“[T]he diligence required for a showing of good cause has two phases: (1) diligence in
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`discovering the basis for amendment; and (2) diligence in seeking amendment once the basis for
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`amendment has been discovered.” Positive Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226 SI,
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`2013 WL 322556, at *2 (N.D. Cal. Jan. 28, 2013). Huawei does not appear to challenge the latter,
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`so I will focus on Samsung’s diligence in discovering the basis for the proposed amendment. “In
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`considering the party’s diligence, the critical question is whether the party could have discovered
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`the new information earlier had it acted with the requisite diligence.” Apple Inc. v. Samsung
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`Elecs. Co., No. CV 12-00630 LHK, 2012 WL 5632618, at *2 (N.D. Cal. Nov. 15, 2012)(internal
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`quotation marks and alterations omitted). Although the issue is close, Samsung was diligent
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`enough to warrant my review of prejudice to Huawei.
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` Samsung asserts that, despite diligent effort, it only recently located the documents
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`corroborating new conception dates for the two patents, and it notified Huawei within days of
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`discovering the documents.9 Mot. at 8. It states that “multiple inventors listed on each of the
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`asserted patents[] complicat[ed] Samsung’s document collection efforts[,]” and some of the
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`documents came from archival resources from a prior litigation with different counsel. Mot. at 8;
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`Lordgooei Decl. ¶ 3. Huawei highlights that “Samsung does not explain why it waited to
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`investigate its own prior document productions and contentions from that [prior] litigation until six
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`8 Huawei also points to the inadequacy of the documents allegedly corroborating Samsung’s new
`conception dates, while Samsung argues that it is too early to discuss the futility of the proposed
`amendments. Mot. at 10; Opp’n at 11–13. “[T]he good cause requirement does not require the
`court to analyze the strength of plaintiff's infringement contentions.” The Bd. of Trustees of
`Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. C 05-04158 MHP, 2008 WL
`624771, at *4 (N.D. Cal. Mar. 4, 2008). But Huawei is not asking me to assess the strength of
`Samsung’s infringement contentions. Rather, Huawei points to the fact that the produced
`documents fail to adequately corroborate Samsung’s new proposed conception dates. See APtent
`L. R. 3-2. Nonetheless, I agree that it is premature to determine whether Samsung can prove its
`asserted conception dates.
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` 9
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` Samsung’s apparent attempts to shift the burden to Huawei to contend that Samsung has failed to
`exercise the requisite diligence is improper. See O2 Micro Int'l Ltd. v. Monolithic Power Sys.,
`Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)(“The burden is on the movant to establish diligence
`rather than on the opposing party to establish a lack of diligence.”)
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`8
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 9 of 12
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`months after asserting that patent in this litigation and after its conception dates were due.”10
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`Opp’n at 8. It contends that Samsung’s delay and lack of explanation suggests some
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`gamesmanship because Samsung waited until after it received Huawei’s invalidity contentions
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`“before finally settling on its new dates.”11 Id. Samsung’s reply offers little in the way of
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`explanation,12 and most of the argument pertains to the prejudice analysis, not diligence. See
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`Reply at 5–6.
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`Samsung’s cases are not particularly helpful. See Altera Corp. v. PACT XPP Techs., AG,
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`No. 14-CV-02868-JD, 2015 WL 928122, at *3 (N.D. Cal. Feb. 19, 2015)(granting defendant’s
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`motion to amend when just over two months elapsed between Altera’s initial production and
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`PACT’s motion to amend its infringement contentions); Delphix Corp. v. Actifio, Inc., No. 13-CV-
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`04613-BLF-HRL, 2015 WL 5693722, at *2 (N.D. Cal. Sept. 29, 2015)(granting defendant’s
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`motion to amend when based exclusively on information learned from plaintiff); Personalweb
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`Techs., LLC v. Github, Inc., No. 5-16-CV-01267-EJD-HRL, 2016 WL 3519292, at *2 (N.D. Cal.
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`June 28, 2016)(granting plaintiff’s motion to amend after the court provided claim construction
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`different than that proposed by the plaintiff); ZiLOG, Inc. v. Quicklogic Corp., No. C03-03725
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`JW, 2006 WL 563057, at *1 (N.D. Cal. Mar. 6, 2006)(granting plaintiff’s motion to amend, filed
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`after USPTO decision invalidating certain claims). Only the first one even mentions conception
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`dates, and the basis for amending the conception dates is not clear from the order. See Altera,
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`2015 WL 928122, at *3 (declining to resolve the issue of whether the patent local rule’s reference
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`to “priority date” meant only the priority date of an earlier application and not the date of
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`conception). The cases may support the timelines at issue here, if considering the date of
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`Samsung’s supplemental disclosure, but that alone does not establish Samsung’s diligence,
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`10 Huawei surmises that the “prior litigation” may refer to the U.S. International Trade
`Commission Investigation in which Samsung asserted the ’827 patent. Opp’n at 8.
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`11 As an example, Huawei states that “Samsung also does not explain why it was able to claim a
`January 26, 2007 conception date for the ’827 patent on January 10, 2017 but was not able to
`claim a January 22, 2007 conception date until after invalidity contentions had been served.”
`Opp’n at 8 n.4.
`
`12 “Simply because Samsung continued to search for responsive materials and located documents
`in archival document repositories in no way supports Huawei’s speculations… .” Reply at 5.
`9
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 10 of 12
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`
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`especially when the documents were in its possession the entire time.
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`Samsung insists that its “continued [] search for responsive materials” does not mean that
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`it failed to exercise the requisite diligence, nor does it suggest that Samsung is participating in
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`gamesmanship. Reply at 5. It seems clear that Samsung could have discovered this new
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`information sooner, since the information was in its own possession. See Apple Inc., 2012 WL
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`5632618, at *2 (noting the “critical question is whether the party could have discovered the new
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`information earlier”). But it maintains that it did search the archival database, but only discovered
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`the documents in January 2017. There is no evidence of gamesmanship regarding the timing of
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`the discovery of the documents.
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`The Harvatek court rejected the plaintiff’s reasons for delay, which included “language
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`and geographic barriers,” and “the fact that some evidence [was] in the possession of third
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`parties[.]” Harvatek, 2015 WL 4396379, at *2. The court stated that a patent holder “should
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`already know the conception date of a patented invention prior to commencing litigation,” and,
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`even if plaintiff did not intend abuse, “the rules must have teeth if they are to have any effect.” Id.
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`at *3. Samsung attempts to distinguish Harvatek by pointing to defendant’s interrogatories
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`specifically requesting conception dates, plaintiff’s reliance on a “miscommunication” in failing to
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`produce corroborating documents, and the summary judgment motion that was stayed pending
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`resolution of plaintiff’s motion to amend. None of those facts help Samsung establish its own
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`diligence. At the same time, it appears that Samsung was at least marginally diligent in attempting
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`to respond to Huawei’s repeated requests, so I will proceed to a discussion of prejudice. See
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`Apple, Inc., 2012 WL 5632618, at *2 (“If the court finds that the moving party was not diligent in
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`amending its infringement contentions, there is no need to consider the question of prejudice to the
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`non-moving party, although a court in its discretion may elect to do so.”).
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`B.
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`Prejudice
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`Samsung contends that even if it did not exercise the requisite diligence, Huawei has not
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`suffered any prejudice because Huawei’s invalidity contentions identify prior art predating
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 11 of 12
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`
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`Samsung’s updated conception dates and,13 moreover, Huawei contests Samsung’s priority dates
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`based on earlier applications. Mot. at 9. Thus Samsung insists that “Huawei’s search for prior art,
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`and invalidity positions, would have been no different, regardless of Samsung’s amendment.” Id.
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`To further alleviate any perceived prejudice, Samsung offered to allow Huawei 30 days to revisit
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`its prior art search, if its motion is granted. Id.
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`Huawei insists that its prior art investigation relied on the conception dates, in part by
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`minimizing the need to find 102(b) art, once 102(a) art was located. Opp’n at 3. It also alleges
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`that if Samsung’s motion is granted, it will have to obtain third-party discovery to corroborate
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`invention dates for certain references. Id. But any prejudice here is minimal at best. Samsung’s
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`new conception dates differ from its previous conception dates by one week or less, and Huawei
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`has already identified prior art references that predate Samsung’s new conception dates for each of
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`the patents. Huawei highlights four prior art references that would be lost if Samsung is permitted
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`to amend, but indicated that it may be able to rehabilitate those references as 102(g) prior art
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`through third party discovery. If this proves true, the only prejudice to Huawei would be the
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`resources expended in additional prior art investigations.14 Considering the broader goal of patent
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`litigation to reach the “right” result, I find this type of prejudice insignificant in the wider scheme.
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`See Apple Inc., 2012 WL 5632618, at *6 (“[I]nvalidity claims should stand or fall regardless of
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`another party’s theory of claim or scope, even if that party is the patentee.”).
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`III.
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`SCOPE OF PATENTS AND CLAIMS AT ISSUE
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`The parties submitted a Claim Construction Statement prior to the hearing on Samsung’s
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`motion. Dkt. No. 124. During the hearing, we discussed how this case can proceed on a
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`manageable scale. I directed the parties to file joint or competing proposals by Wednesday, May
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`3, 2017.
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`13 Specifically, Samsung states that Huawei included 14 references that predate Samsung’s
`proposed conception date for the ’105 patent, and 9 references for the ’827 patent. Reply at 8.
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`14 Huawei argues that it would be “extra prejudiced” in allowing Samsung to rely on a privilege
`log entry in asserting a new conception date for the ’105 patent. See Opp’n at 12. I agree that this
`type of disclosure appears inadequate. The parties should meet and confer to resolve the issue and
`send me a joint letter describing any disagreement.
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`Case 3:16-cv-02787-WHO Document 130 Filed 04/27/17 Page 12 of 12
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`In accordance with the foregoing, Samsung’s motion for leave to amend its infringement
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`CONCLUSION
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`contentions is GRANTED.
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`IT IS SO ORDERED.
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`Dated: April 27, 2017
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`
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`
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`William H. Orrick
`United States District Judge
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`

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