Contour IP Holding, LLC v. Gopro, Inc.

CONTOUR IP HOLDING, LLC, Plaintiff, v. GOPRO, INC., Defendant.

CONTOUR IP HOLDING, LLC, Plaintiff, v. GOPRO, INC., Defendant.

Nos. 3:17-cv-04738-WHO, 3:21-cv-02143-WHO

United States District Court, N.D. California

September 13, 2021

ORDER ON MOTION TO STRIKE, MOTION FOR JUDGMENT ON THE PLEADINGS, AND CLAIM CONSTRUCTION RE: DKT. NOS. 535 20

WILLIAM H. ORRICK UNITED STATES DISTRICT JUDGE

Plaintiff and counter-defendant Contour IP Holdings, LLC (“Contour”) sued defendant and counter-claimant GoPro, Inc. (“GoPro”) for patent infringement alleging that several of GoPro's products infringe patents that concern point-of-view digital video cameras. Since then, Contour filed a follow-on suit that asserts the same patents against newer GoPro products. Three matters are before me: Contour's motion to strike GoPro's inequitable conduct affirmative defense in the second suit GoPro's motion for judgment on the pleadings that the subject matter is unpatentable, and the construction of two claim terms. The motion to strike is granted, but GoPro may move for leave to amend in response to specific pleading deficiencies. The motion for judgment on the pleadings is denied without prejudice to GoPro raising the matter on an evidentiary record at summary judgment. My construction of the disputed terms is the final section of this Order.

Separately, the parties should from now on adhere to the previous order consolidating the cases, which provided that “the lowest numbered case shall be treated as the docket.” Dkt. No. 532. They should submit all filings on that consolidated docket for simplicity.

BACKGROUND

Contour originally filed this suit in 2017. Dkt. No. 1.^[1] It has an involved history that will not be repeated here. The present motions stem from a second case that Contour filed in 2021 that asserted the same claims of the same patents against more recent GoPro products. See 2143 Dkt. No. 1 (“Compl.”). I consolidated the cases. Dkt. No. 532.

The technology is discussed as it becomes relevant to the analysis below. As a general matter, the patents concern point-of-view digital video cameras. In the second suit, Contour asserts claim 11 of U.S. Patent No. 8, 890, 954 (“the '954 Patent”) and claim 3 of U.S. Patent No. 8, 896, 694 (“the '694 Patent”). See Compl. ¶¶ 78-123.

Claim 11 of the ‘954 patent is as follows:

11. A portable, point of view digital video camera, comprising:

a lens;

an image sensor configured to capture light propagating through the lens and representing a scene, and produce real time video image data of the scene;

a wireless connection protocol device configured to send real time image content by wireless transmission directly to and receive control signals or data signals by wireless transmission directly from a personal portable computing device executing an application; and

a camera processor configured to:

receive the video image data directly or indirectly from the image sensor,

generate from the video image data a first image data stream and a second image data stream, wherein the second image data stream is a higher quality than the first image data stream,

cause the wireless connection protocol device to send the first image data stream directly to the personal portable computing device for display on a display of the personal portable computing device, wherein the personal portable computing device generates the control signals for the video camera, and wherein the control signals comprise at least one of a frame alignment, multi-camera synchronization, remote file access, and a resolution setting, and at least one of a lighting setting, a color setting, and an audio setting,

receive the control signals from the personal portable computing device, and

adjust one or more settings of the video camera based at least in part on at least a portion of the control signals received from the personal portable computing device.

2143 Dkt. No. 1-1 (“‘954 Patent”) cl. 11. Claim 3 of the ‘694 patent recites a “point of view digital camera system.” 2143 Dkt. No. 1-2 cl. 3 (emphasis added). But, as explained below, claim 11 is largely representative of both for present purposes; when there are meaningful differences, they are discussed.

In the initial case, I conducted claim construction in July 2018. See Order Regarding Claim Construction (“Const. Order”) [Dkt. No. 251]. Based on those constructions, I granted partial summary judgment to Contour that GoPro's products infringed claim 11. See Order on Motion for Partial Summary Judgment (“SJ Order”) [Dkt. No. 445]. The case was set to proceed to trial but was stalled multiple times due to the COVID-19 pandemic. In March 2021, I denied Contour's motion for an accounting or ongoing royalty to add the new products to the suit, which led to it filing the second suit. Dkt. No. 524.

LEGAL STANDARD

I. MOTION TO STRIKE

A. Generally

Federal Rule of Civil Procedure (“FRCP”) 12(f) allows the Court to “strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” “The function of a 12(f) motion to strike is to avoid the expenditure of time and money that must arise from litigating spurious issues by dispensing with those issues prior to trial.” Whittlestone, Inc. v. Handi-Craft Co., 618 F.3d 970, 973 (9th Cir. 2010) (citation and alteration omitted). Motions to strike “are generally disfavored [by courts] because the motions may be used as delaying tactics and because of the strong policy favoring resolution on the merits.” Barnes v. AT&T Pension Ben. Plan-Nonbargained Program, 718 F.Supp.2d 1167, 1170 (N.D. Cal. 2010) (citation omitted). Such motions should only be granted if “the matter has no logical connection to the controversy at issue and may prejudice one or more of the parties to the suit.” New York City Employees' Ret. Sys. v. Berry, 667 F.Supp.2d 1121, 1128 (N.D. Cal. 2009). “Where the moving party cannot adequately demonstrate such prejudice, courts frequently deny motions to strike even though the offending matter literally was within one or more of the categories set forth in Rule 12(f).” Id. (citation and quotation marks omitted).

In resolving a motion to strike, the pleadings must be viewed in the light most favorable to the nonmoving party. Platte Anchor Bolt, Inc. v. IHI, Inc., 352 F.Supp.2d 1048, 1057 (N.D. Cal. 2004). “Ultimately, whether to grant a motion to strike lies within the sound discretion of the district court.” Cruz v. Bank of New York Mellon, No. 12-CV-00846-LHK, 2012 WL 2838957, at *2 (N.D. Cal. July 10, 2012) (citing Whittlestone, 618 F.3d at 973).

B. Failure to State an Affirmative Defense

i. Generally

Under FRCP 12(b)(6), a district court must dismiss a complaint if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff pleads facts that “allow the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts do not require “heightened fact pleading of specifics, ” a plaintiff must allege facts sufficient to “raise a right to relief above the speculative level.” See Twombly, 550 U.S. at 555, 570.

In deciding whether the plaintiff has stated a claim upon which relief can be granted, the Court accepts the plaintiff's allegations as true and draws all reasonable inferences in favor of the plaintiff. See Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court is not required to accept as true “allegations that are merely conclusory, unwarranted deductions of fact, or unreasonable inferences.” See In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008).

If the court dismisses the complaint, it “should grant leave to amend even if no request to amend the pleading was made, unless it determines that the pleading could not possibly be cured by the allegation of other facts.” See Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). In making this determination, the court should consider factors such as “the presence or absence of undue delay, bad faith, dilatory motive, repeated failure to cure deficiencies by previous amendments, undue prejudice to the opposing party and futility of the proposed amendment.” See Moore v. Kayport Package Express, 885 F.2d 531, 538 (9th Cir. 1989).

ii. Rule 9(b)

FRCP 9(b) imposes a heightened pleading standard when a claim alleges fraud or mistake. Federal Circuit law governs “whether inequitable conduct has been pleaded with particularity under Rule 9(b).” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1326 (Fed. Cir. 2009). Under FRCP 9(b), to state a claim for fraud, a party must plead with “particularity the circumstances constituting the fraud.” “[T]he ‘circumstances' in Rule 9(b) must be . . . pleaded in detail-this means the who, what, when, where, and how of the alleged fraud.” Exergen, 575 F.3d at 1327 (some internal quotation marks and alteration omitted). However, “[m]alice, intent, knowledge, and other conditions of mind of a person may be averred generally, ” Fed.R.Civ.P. 9(b), including knowledge of the withheld information and specific intent to deceive, Exergen, 575 F.3d at 1327.

II. MOTION FOR JUDGMENT ON THE PLEADINGS

FRCP 12(c) provides that, “[a]fter the pleadings are closed-but early enough not to delay trial-a party may move for judgment on the pleadings.” A motion for judgment on the pleadings can “raise the defense of failure to...