Ixi Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Northern District of California, cand-4:2015-cv-03752

MOTION for Leave to Amend its Infringement Contentions and Asserted Claims to Amend/Correct filed by IXI IP,LLC, IXI Mobile (R&D) Ltd. Motion Hearing set for 4/18/2019 02:00 PM in Oakland, Courtroom 2, 4th Floor before Judge Haywood S Gilliam Jr. Responses due by 3/21/2019. Replies due by 3/28/2019. Modified on 3/8/2019 Modified on 3/15/2019

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3 1 Jason D. Cassady (pro hac vice) jcassady@caldwellcc.com 2 Hamad M. Hamad (pro hac vice) 3 hhamad@caldwellcc.com Robert Seth Reich, Jr. (pro hac vice) 4 sreich@caldwellcc.com CALDWELL CASSADY & CURRY P.C. 5 2101 Cedar Springs Rd. Ste. 1000 Dallas, TX 75201 6 Telephone: (214) 888-4848 7 Facsimile: (214) 888-4849 8 Attorneys for Plaintiffs IXI MOBILE (R&D) LTD. and IXI IP, LLC 9 Additional counsel in signature block 10 11 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA 12 13 IXI MOBILE (R&D) LTD. et al., CASE NO. 4:15-CV-03752-HSG 14 Plaintiffs, PLAINTIFFS' MOTION FOR LEAVE TO 15 AMEND ITS INFRINGEMENT v. CONTENTIONS AND ASSERTED CLAIMS 16 SAMSUNG ELECTRONICS CO., LTD., ET AL., Date: April 18, 2019 17 Time: 2:00 p.m. Defendants. Ctrm: Courtroom 2, 4th Floor 18 19 Judge: Hon. Haywood S. Gilliam, Jr. 20 IXI MOBILE (R&D) LTD. et al., CASE NO. 4:15-CV-03755-HSG (Related Case) 21 Plaintiffs, 22 v. 23 APPLE INC., 24 Defendant. 25 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG CONTENTIONS AND ASSERTED CLAIMS 3 1 TO ALL PARTIES AND TO THEIR ATTORNEYS OF RECORD: 2 PLEASE TAKE NOTICE THAT on April 18, at 2:00 p.m.,1 or as soon as the matter may 3 be heard in the courtroom of the Honorable Haywood S. Gilliam, Jr. in Courtroom 2, United 4 States District Court for the Northern District of California, Oakland Courthouse, 1301 Clay 5 Street, Oakland, California, Plaintiffs IXI Mobile (R&D) Ltd. and IXI IP, LLC (collectively, 6 "IXI") move the Court pursuant to Patent L.R. ("Pat. L.R.") 3-6 for leave to amend its 7 infringement contentions ("ICs") against Defendants Apple Inc. ("Apple") and Samsung 8 Electronics Co. Ltd., and Samsung Electronics America Inc. (collectively, "Samsung") 9 (collectively with Apple, "Defendants"). This motion is based on this Notice of Motion, the 10 Memorandum of Points and Authorities, the Declaration of in Support of IXI's Motion to Amend 11 Its ICs and the exhibits attached thereto, and such other written or oral argument as may be 12 presented at or before the hearing on this matter. 13 RELIEF REQUESTED 14 Pursuant to Pat. L.R. 3-6, IXI respectfully requests an order granting leave to amend its 15 infringement contentions against Defendants, as identified in detail in the accompanying 16 Memorandum of Points and Authorities and Proposed Order and as follows: 17 1. to add new claims that issued as a result of the '033 Patent Reexamination; 18 2. to add claims that are currently pending in the '532 Patent Reexamination; and 19 3. to include new products for '532 Patent, Claim 10. 20 21 Dated: March 7, 2019 CALDWELL CASSADY & CURRY, P.C. 22 /s/ Jason Cassady 23 Jason Cassady 24 Attorney for Plaintiff 25 1 Please note that IXI is in the process of conferring with Defendants on an agreed hearing date 26 on a shortened time frame and will file a stipulation and proposed order once the parties agree 27 upon a mutually acceptable date. IXI is available as early as April 18, at 2:00 p.m. 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG CONTENTIONS AND ASSERTED CLAIMS 3 1 TABLE OF CONTENTS 2 I. INTRODUCTION .................................................................................................................................1 3 II. FACTUAL BACKGROUND ................................................................................................................1 1. The District Court Proceedings. .....................................................................................................1 4 2. The Inter Partes Review and Court Ordered Stay. ........................................................................2 5 3. IXI's Ex Parte Reexaminations of the '033 Patent. .......................................................................2 6 4. Apple's Reexamination of the '532 Patent.....................................................................................3 7 III. LEGAL STANDARD............................................................................................................................3 8 IV. ARGUMENT .........................................................................................................................................3 1. IXI Has Been Diligent in Seeking To Amend Its Infringement Contentions. ...............................3 9 2. Defendants Will Not Be Unduly Prejudiced by the Proposed Amendments. ................................6 10 V. CONCLUSION ......................................................................................................................................8 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG i CONTENTIONS AND ASSERTED CLAIMS 3 1 TABLE OF AUTHORITIES 2 3 Cases 4 Acer, Inc. v. Tech. Properties Ltd. No. 5:08-CV-00877 JF/HRL, 2011 WL 1838768 (N.D. Cal. May 13, 2011) ................................... 4, 5, 8 5 6 Advanced Micro Devices v. Samsung Electronics Co., Ltd. No. C-08-00986, 2010 WL 1293374 (N.D. Cal. Mar. 31, 2010) .............................................................. 8 7 Apple Inc. v. Samsung Elecs. Co. 8 No. CV 12-00630 LHK, 2012 WL 5632618 (N.D. Cal. Nov. 15, 2012) .............................................. 4, 7 9 Document Generation Corp. v. Allscripts, LLC 10 No. 6:08-CV-479, 2009 WL 1766096 (E.D. Tex. June 23, 2009)............................................................. 7 11 Fujifilm Corp. v. Motorola Mobility LLC 12 No. 12-CV-03587-WHO, 2014 WL 491745 (N.D. Cal. Feb. 5, 2014) ..................................................... 3 13 In Re Koninklijke Philips Patent Litigation 14 No. 18-CV-01885-HSG, 2019 WL 652868 (N.D. Cal. Feb. 15, 2019) ..................................................... 5 15 O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc. 16 467 F.3d 1355 (Fed. Cir. 2006).................................................................................................................. 3 17 The Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. No. C 05-04158 MHP, 2008 WL 624771 (N.D. Cal. Mar. 4, 2008) ......................................................... 8 18 19 Vasudevan Software, Inc. v. Int'l Bus. Machines Corp. No. C09-05897 RS HRL, 2011 WL 940263 (N.D. Cal. Feb. 18, 2011)................................................ 3, 6 20 21 Statutes 22 35 U.S.C. § 305 .............................................................................................................................................. 6 23 24 25 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG ii CONTENTIONS AND ASSERTED CLAIMS 3 1 MEMORANDUM OF POINTS AND AUTHORITIES 2 I. INTRODUCTION 3 The Patent and Trademark Office has clarified, through numerous administrative proceedings, the 4 scope of IXI's inventions. In reexamination proceedings, the PTO issued new claims covering these 5 inventions over the best invalidity theories Defendants were able to set forth in the IPRs. IXI now moves 6 to amend its contentions to add these claims. These claims were not available to assert when IXI 7 prepared its original Infringement Contentions ("ICs"); in fact, given that the matter was stayed, this is 8 the first time that Plaintiffs are able to make this request to the Court. Defendants' resistance to such an 9 amendment appears to be an attempt to force IXI to file a separate suit on these claims, delaying 10 resolution of the parties' dispute, or worse, an attempt to take advantage of Defendants' requested stay 11 and briefing schedules to secure a procedural "gotcha." 12 Good cause exists for IXI to amend its disclosure of asserted claims and infringement contentions 13 against Defendants for U.S. Patent No. 7,039,033 (the "'033 Patent") and 7,295,532 (the "'532 Patent"). 14 First, IXI promptly notified Defendants about its new claims once the new claims were issued and 15 immediately sought to add the new claims to this case once the stay was lifted. The fact that IXI 16 complied with the stay and briefing schedules that Defendants themselves suggested cannot now be used 17 against IXI. IXI's diligence is beyond dispute. Second, Defendants suffer no prejudice resulting from 18 these amendments as they relate to the technology already at issue in this case, and the schedule can 19 account for them. Additionally, as a matter of law, the reexamined claims cannot be broader in scope 20 than the original claims, so Defendants will suffer no prejudice in the form of expanded or new 21 infringement theories. Also, adding the new claims eliminates the need for duplicative, parallel 22 litigation—another compelling reason for allowing IXI to amend its ICs. 23 II. FACTUAL BACKGROUND 24 1. The District Court Proceedings. 25 IXI commenced these patent infringement actions in the Southern District of New York on June 26 17, 2014 against Samsung and on October 2, 2014 against Apple. Pursuant to the New York court's case 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 1 CONTENTIONS AND ASSERTED CLAIMS 3 1 management plan, IXI served Defendants with its original ICs on January 20, 2015. Thereafter, IXI 2 amended its contentions against the Defendants and served the operative Second Amended Contentions 3 in April 2015. The cases were subsequently transferred to this Court in August 2015. At the time the 4 cases were transferred, discovery was ongoing, and IXI had submitted an opening claim construction 5 brief, but Defendants had not yet responded. 6 2. The Inter Partes Review and Court-Ordered Stay. 7 In June 2015, Defendants filed IPR petitions challenging the validity of certain of IXI's asserted patent 8 claims. After filing the IPR petitions, Defendants moved to stay this litigation until the IPRs were 9 resolved by the Patent Trial and Appeal Board (the "PTAB"). This Court granted the stay on November 10 12, 2015. Dkt. Nos. 119, 133.2 On January 2, 2016, the PTAB instituted IPR proceedings for all 11 challenged claims, except for Claim 10 of the '532 Patent. On December 21, 2016, the PTAB issued its 12 Final Written Decisions in favor of Defendants. Dkt. No. 138. IXI appealed with respect to the '033 13 Patent. The Federal Circuit affirmed the decision on September 10, 2018, and the IPR proceedings 14 concluded. 15 3. IXI's Ex Parte Reexaminations of the '033 Patent. 16 On March 24, 2017, IXI requested an ex parte reexamination of the '033 Patent and submitted a 17 set of amended and new claims along with the prior art that Defendants submitted during the IPRs and all 18 of the prior art from their invalidity contentions in this case (the "'033 Reexam"). Just a few weeks later, 19 IXI notified Defendants of the new claims in '033 Reexam and their infringement. Ex. 1 (Apple notice), 20 Ex. 2 (Samsung notice). On February 2, 2018, the USPTO issued a reexamination certificate for the '033 21 Patent that granted IXI additional claims over all the prior art cited by Defendants' IPR challenges and 22 invalidity contentions. Since the stay in this case was still pending, IXI notified Defendants that the 23 reexamination had concluded, that new claims had issued, and that IXI believed Defendants infringed 24 these new claims. Ex. 3 (Samsung notice), Ex. 4 (Apple notice). And once the IPR appeal was final, 25 26 2 For simplicity, all referenced docket numbers are to the docket in the lead case IXI v. Samsung, Case No. 27 4:15-CV-03752-HSG. 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 2 CONTENTIONS AND ASSERTED CLAIMS 3 1 triggering the briefing schedule to lift the stay, IXI promptly notified the Court of its intent to assert these 2 new claims, Dkt. 142-2, and moved to lift the stay, Dkt. 145. 3 4 4. Apple's Reexamination of the '532 Patent. 5 On April 3, 2018—over two years after the PTAB denied institution of Claim 10 of the '532 6 Patent—Apple requested an ex parte reexamination of Claim 10, as well as four additional claims of the 7 '532 Patent that were not challenged by Defendants' IPR petitions. The USPTO granted Apple's ex 8 parte reexamination request on May 23, 2018 (the "'532 Reexam"). This reexamination is presently 9 ongoing. IXI has submitted its response to the pending office action along with new claims to be added 10 during the reexamination of the '532 Patent. Ex. 5. IXI provided Defendants notice of the new '532 11 Patent claims and its intent to assert those claims once the '532 Reexam concludes. Ex. 6. 12 III. LEGAL STANDARD 13 The Patent Local Rules seek to "balance the right to develop new information in discovery with 14 the need for certainty as to the legal theories." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 15 F.3d 1355, 1366 (Fed. Cir. 2006). Accordingly, under Patent Local Rule 3-6, amendment to 16 infringement contentions "may be made only by order of the Court upon a timely showing of good 17 cause." In determining whether good cause exists, the Court considers (1) whether the moving party was 18 diligent in moving to amend its contentions and (2) whether the non-moving party would suffer undue 19 prejudice if leave to amend were granted. Vasudevan Software, Inc. v. Int'l Bus. Machines Corp., No. 20 C09-05897 RS HRL, 2011 WL 940263, at *1 (N.D. Cal. Feb. 18, 2011). Good cause "does not require 21 perfect diligence." Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2014 WL 22 491745, at *4 (N.D. Cal. Feb. 5, 2014). 23 IV. ARGUMENT 24 1. IXI Has Been Diligent in Seeking To Amend Its Infringement Contentions. 25 This is a classic case where amending contentions is appropriate because (1) IXI could not have 26 asserted these new claims or accused the newly released products when it originally prepared its 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 3 CONTENTIONS AND ASSERTED CLAIMS 3 1 contentions, and (2) IXI acted diligently in promptly notifying Defendants of its intent to assert the new 2 claims and in seeking to lift the stay to amend its contentions. 3 First, the new claims and new products that IXI seeks to add to its ICs did not exist when IXI 4 prepared and served its operative infringement contentions in this case. "Recent discovery of material. . 5. despite earlier diligent search" is an explicit example in Patent Local Rule 3-6 of circumstances that 6 may support good cause. Here, there is no dispute that IXI could not have included the new claims and 7 products it is seeking to add now despite all of IXI's diligent efforts in preparing the operative ICs. In 8 such instances, courts in this district have found good cause and allowed parties to amend their 9 infringement contentions. See e.g., Acer, Inc. v. Tech. Properties Ltd., No. 5:08-CV-00877 JF/HRL, 10 2011 WL 1838768, at *1 (N.D. Cal. May 13, 2011) (granting leave to amend to add newly issued claims 11 from reexamination); Apple Inc. v. Samsung Elecs. Co., No. CV 12-00630 LHK, 2012 WL 5632618, at 12 *2 (N.D. Cal. Nov. 15, 2012) ("Courts of the Northern District of California have found good cause for 13 leave to amend when the defendant released new products, so long as the plaintiff acted diligently in 14 seeking leave to amend."). 15 Second, the facts of this case show that IXI's diligence in seeking to amend its ICs is beyond 16 dispute. Almost immediately after this case was transferred, Defendants insisted the proceedings should 17 be stayed pending their petitions for inter partes review. While the case was stayed, IXI requested the 18 '033 Reexam and submitted new claims, as it was entitled to do. Shortly thereafter, IXI notified 19 Defendants of the '033 Reexam and the pending new claims even before those claims finally issued. 20 Once the final claims did issue, IXI again renewed its notice to Defendants and advised them that they 21 were infringing. Pursuant to the Court's order regarding the stay (id.), the parties notified the Court once 22 the IPRs and related appeal were completed; the first thing IXI did was indicate that "Plaintiffs intend to 23 assert the Reexam Claims issued in the Reexamination Certificate for the '033 Patent, and to continue 24 their assertion of claim 10 in the '532 Patent." Dkt 142. at 2. Briefing on the motion to lift the stay 25 occurred according to the parties' agreed schedule. Dkt. 146. Now that the stay has been lifted, this 26 motion is being briefed according to Defendants' proposed schedule. See Dkt. 158 at 12. Committed to 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 4 CONTENTIONS AND ASSERTED CLAIMS 3 1 being diligent, IXI has also provided Defendants notice of the pending new claims in the '532 Reexam to 2 avoid any disruption in the future. And IXI is seeking to amend the ICs for claim 10 of the '532 Patent to 3 account for the release of new products since the stay has been in place for the past three plus years. 4 Finally, should the Court allow it, IXI intends to timely serve its amended ICs for both the '033 Patent 5 and '532 Patent, based on the pending new claims, by May 2, 2019 as Defendants proposed in the 6 parties' Joint Case Management Statement, Dkt. 158 at 12. Again, IXI's diligence is beyond dispute. 7 Other courts in the Northern District of California have found that good cause exists to add new 8 claims that issue from a reexamination. See, e.g., Acer, 2011 WL 1838768, at *4. In Acer, the defendant 9 Technology Properties Ltd. ("TPL") sought leave to amend its infringement contentions to assert new 10 claims that had issued during reexamination of two of its asserted patents. Judge Fogel granted the 11 request "[b]ecause TPL seeks to assert certain claims that it reasonably could not have asserted prior to 12 the reexamination of the patents. . . ." Id. Recognizing that "it was not unreasonable for TPL to 13 investigate potentially infringing products after [the PTO provided notice that new claims would issue,]" 14 Judge Fogel found diligence where (1) TPL provided prompt notice after the PTO indicated new claims 15 would issue for the '890 Patent and (2) where TPL offered to conditionally assert its '749 Patent before 16 the new claims formally issued. Id. at *3. Here, IXI has done that by (1) providing notice both before 17 and after the '033 Patent's new claims issued and (2) seeking to conditionally add the pending, new '532 18 Patent claims now. 19 Finally, Defendants cannot credibly claim that too much time has passed since the '033 Reexam 20 concluded in February 2018 because the case was stayed at that time (and up until February 21, 2019)— 21 at Defendants' request—and IXI has subsequently complied with all the agreed briefing schedules to 22 properly raise this issue now. Indeed, this Court recently rejected such an argument. In Re Koninklijke 23 Philips Patent Litigation, No. 18-CV-01885-HSG, 2019 WL 652868, at *4 (N.D. Cal. Feb. 15, 2019) 24 ("[D]ue to the transfer, Defendants' request to pause proceedings, and Defendants' stipulation to the 25 briefing schedule that Plaintiffs have adhered to, the Court finds that Plaintiffs have demonstrated good 26 cause to amend[.]"). Likewise, good cause to amend exists here. 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 5 CONTENTIONS AND ASSERTED CLAIMS 3 1 2. Defendants Will Not Be Unduly Prejudiced by the Proposed Amendments. 2 Defendants cannot credibly claim undue prejudice. At the case management conference, Apple's 3 counsel claimed to be "bothered" by the fact that IXI sought new claims in the '033 Reexam—but this is 4 not undue prejudice. Feb. 21, 2019 Hr'g Tr. at 7. Seeking new claims in a reexamination on a patent 5 that has been through an IPR is a procedure that the PTAB has expressly approved. See, e.g., Ex. 7, Idle 6 Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, at 6 (P.T.A.B. Jun. 11, 2013) (Paper 26) ("[A] patent 7 owner may file a request for ex parte reexamination, relying on the Board's conclusion of a[n IPR] 8 petitioner's having shown reasonable likelihood of success on certain alleged grounds of unpatenatability 9 [sic] as raising a substantial new question of unpatentability."); Ex. 8, Innolux Corp. v. Semiconductor 10 Energy Lab. Co., Ltd., IPR2013-00066, Paper 24 (Jul. 18, 2013) (''To the extent that [the patent owner] 11 perceives the limit for motions to amend to be unfair [in an IPR], [the patent owner] may possibly pursue 12 such additional claims by filing a request for ex parte reexamination.'').3 Notably, these cases came out 13 years before Defendants decided to file their IPR petitions. Moreover, by 2015, major law firms were 14 advising patent owners to always consider whether to attempt amend their claims in reexamination as 15 opposed to amending them in an inter partes review. See Observations On Amendments in an Inter 16 Partes Review, www.bpla.org/page/NewsL20150404Lantier (2015) ("Whether to attempt to amend 17 claims in an inter partes review, in an ex parte reexamination, or in a reissue application will depend on 18 case-specific circumstances, including the stage of an inter partes review, the status of related litigation, 19 and other factors. It will be increasingly important for patent owners to carefully consider all of these 20 factors if amendment of the claims is a preferred path to preserving patent rights."). Amending and 21 adding new claims in a reexamination is entirely proper, and the new claims were a foreseeable result of 22 Defendants' availing themselves of the administrative IPR process. While Defendants may not like the 23 result, they cannot complaint to be prejudiced simply because IXI did not give up after Defendants filed 24 IPRs and instead properly used another administrative remedy that was available. 25 26 3 Because these PTAB statements were publicly available before Defendants even filed their IPRs, 27 Defendants can hardly claim to be surprised that IXI availed itself of this right. 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 6 CONTENTIONS AND ASSERTED CLAIMS 3 1 Defendants also cannot credibly claim that these new claims prejudicially change the complexity 2 or scope of this case. The new claims relate to the same technology, asserted patents, and parties that 3 were and are at issue in this case. The new claims from the '033 and '532 Reexams also cannot be 4 broader in scope than the original claims.4 "Because the reexamination process prohibits claim 5 amendments that would enlarge the scope of the initial patent, Defendants' fears of expanded claim 6 scope coverage are largely misplaced." Document Generation Corp. v. Allscripts, LLC, No. 6:08-CV- 7 479, 2009 WL 1766096, at *2 (E.D. Tex. June 23, 2009). Presumably, Defendants have already 8 investigated IXI's original allegations related to the '033 and '532 Patents. To the extent any additional 9 prior art searching was needed, Defendants have been on notice since February 2018, and Apple certainly 10 must have already preformed such a search as it filed new IPR petitions against the new '033 Patent 11 claims in November 2018. Apple also filed the '532 Reexam and is aware of the pending claims. 12 Regardless, even if the complexity of this case has somewhat changed, it is not unduly 13 prejudicial. Neither claim construction briefing nor discovery have been completed, and the Court has 14 not set a schedule, let alone a Markman hearing or a trial date. Given the lack of any pending deadlines, 15 there is time to address any additional complexity that IXI's amendments might cause and build a fair 16 schedule. As the Apple court explained, "with ample time left on the pretrial clock, [Defendants] should 17 be able to pursue any additional art without any undue prejudice." Apple, WL 5632618 at *6. 18 Allowing IXI to add the new claims and new products to its ICs is also in the interests of judicial 19 economy. IXI has a right to enforce its new claims and adding them to this case, if accepted, would 20 allow the Court to resolve the entire dispute between the parties over these patents. In contrast, 21 Defendants' objection to allowing the newly issued claims and new products into this case would force 22 IXI to file a new lawsuit to assert these claims against Defendants—duplicating the lawsuits between the 23 parties and splitting the litigation into various pieces. Other courts in this district have recognized such 24 4 See 35 U.S.C. § 305 ("No proposed amended or new claim enlarging the scope of a claim of the patent 25 will be permitted in a reexamination proceeding under this chapter."); Vasudevan Software, Inc. v. Int'l Bus. Machines Corp., No. C-09-5897, 2010 WL 3629830, at *3-4 (N.D. Cal. Sept. 14, 2010) (Lloyd, J.) 26 (noting that the Patent Act prohibits "any claim amendment that would enlarge the scope of the initial 27 patent") (citation and internal quotation omitted). 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 7 CONTENTIONS AND ASSERTED CLAIMS 3 1 overlapping subject matter as "provid[ing] another compelling reason to allow the amendment: it is more 2 efficient to dispose of all the issues amongst a set of parties in one action, without splitting the litigation 3 into various pieces in front of different judges or creating the wasteful task of analyzing administrative 4 motions to relate cases." The Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., 5 Inc., No. C 05-04158 MHP, 2008 WL 624771, at *4 (N.D. Cal. Mar. 4, 2008); see also Acer, 2011 WL 6 1838768 at *5 ("[A]ny such prejudice is insufficient to outweigh TPL's right to assert new claims and the 7 Court's interest in resolving the parties' disputes as comprehensively as is possible."); cf. Advanced 8 Micro Devices v. Samsung Electronics Co., Ltd., No. C-08-00986, 2010 WL 1293374, *3 (N.D. Cal. 9 Mar. 31, 2010) (denying motion to strike portions of final infringement contentions because "the 10 products named and charted in the FIC involve the same technology and the same alleged infringer as the 11 products named and charted in the PIC" (emphasis added)). IXI's new claims should therefore be 12 considered in this case and not future, parallel litigation. The negligible amount of prejudice Defendants 13 might suffer (if any) pales in comparison to these compelling reasons to allow IXI to amend its 14 contentions. 15 V. CONCLUSION 16 Because good cause exists to allow IXI to amend its infringement contentions and no prejudice 17 will result to Defendants, IXI respectfully request that this motion for leave be granted. 18 19 20 21 22 23 24 25 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG 8 CONTENTIONS AND ASSERTED CLAIMS 3 1 Dated: March 7, 2019 CALDWELL CASSADY & CURRY P.C. 2 By:/s/ Jason D. Cassady 3 Jason D. Cassady (pro hac vice) jcassady@caldwellcc.com 4 Hamad M. Hamad (pro hac vice) hhamad@caldwellcc.com 5 Robert Seth Reich, Jr. (pro hac vice) sreich@caldwellcc.com 6 CALDWELL CASSADY & CURRY P.C. 7 2101 Cedar Springs Rd. Ste. 1000 Dallas, TX 75201 8 Telephone: (214) 888-4848 9 John V. Picone III, Bar No. 187226 jpicone@hopkinscarley.com 10 Jennifer S. Coleman, Bar No. 213210 11 jcoleman@hopkinscarley.com HOPKINS & CARLEY 12 A Law Corporation The Letitia Building 13 70 South First Street San Jose, CA 95113-2406 14 15 mailing address: P.O. Box 1469 16 San Jose, CA 95109-1469 Telephone: (408) 286-9800 17 Facsimile: (408) 998-4790 18 Thomas Biemer (pro hac vice) 19 tbiemer@dilworthlaw.com John J. Higson (pro hac vice) 20 jhigson@dilworthlaw.com Joshua Wolson (pro hac vice) 21 jwolson@dilworthlaw.com DILWORTH PAXSON LLP 22 1500 Market Street, Ste. 3500(E) 23 Philadelphia, PA 19106 24 Attorneys for Plaintiffs IXI MOBILE (R&D) LTD. and IXI IP, LLC 25 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT Case No. 4:15-CV-03752 & 03755-HSG CONTENTIONS AND ASSERTED CLAIMS