1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 TRUSTED KNIGHT CORPORATION, Case No. 19-cv-01206-EMC

8 Plaintiff,

ORDER DENYING PLAINTIFF’S

9 v. MOTION FOR LEAVE TO AMEND ITS

DISCLOSURE OF ASSERTED CLAIMS

10 INTERNATIONAL BUSINESS AND INFRINGEMENT

MACHINES CORPORATION (IBM), CONTENTIONS

11 Defendant. Docket No. 106 12 13 14 I. INTRODUCTION 15 Now pending is Plaintiff Trusted Knight Corporation’s motion for leave to amend its 16 disclosure of asserted claims and infringement contentions. Docket No. 106. For the reasons 17 discussed below, the Court DENIES Plaintiff’s motion. 18 II. BACKGROUND 19 Plaintiff Trusted Knight Corporation (“Trusted Knight”) brought this action against 20 Defendant IBM, accusing IBM of infringing Trusted Knight’s United States Patent No. 9,503,473 21 (“the ’473 Patent”), which issued on November 22, 2016. See Docket No. 1. The ’473 patent is 22 entitled “Apparatus, System, and Method for Protecting Against Keylogging Malware,” and it 23 “relates to systems and methods for preventing key logger malware that utilizes form grabbing 24 techniques to steal financial and identity information from users’ browsers.” See ’473 Patent at 25 1:21–24. The patent contends that “[k]ey logging is a method of capturing keyboard input to a 26 computer or computing device,” which “is a common technique for obtaining passwords and 27 sensitive information using unauthorized software.” Id. at 1:50–53. This is the second patent 1 Patent No. 8,316,445 (‘the ’445 Patent’) which is an ancestor of the ’473 Patent. The ’473 Patent 2 incorporates by reference the entire disclosure of the ’445 Patent.” See Docket No. 62 (Opening 3 Claim Construction Brief) at 4. Trusted Knight asserted claims 1-6, 8, 10-17, 19-20, 22-23 and 4 25-27. See Docket No. 99 at 2. 5 On December 19, 2019, IBM filed a petition for inter partes review (“IPR”) challenging 6 the validity of each claim of the ’473 Patent asserted in this suit. On July 10, 2020, the Patent and 7 Trademark Office (“PTO”) instituted IPR on all the asserted claims. Docket No. 99. 8 On July 17, 2020, IBM filed a motion to stay proceedings pending the final resolution of 9 the PTO’s IPR of all the asserted claims of the patent-in-suit. Docket Nos. 99, 99-2. While IBM’s 10 motion for stay was still pending – nine months after IBM filed its petition and 1.5 months after 11 the PTO instituted IPR – Trusted Knight filed the currently pending motion for leave to amend its 12 disclosure of asserted claims and infringement contentions on August 27, 2020 to assert for the 13 first time claims 7 and 18. Docket No. 106 (“Motion”). On August 31, 2020, the Court granted 14 IBM’s motion to stay these proceedings pending IPR. Docket No. 112. 15 The Patent Trial and Appeal Board (PTAB) invalidated 27 of Trusted Knight’s 29 claims. 16 Thus, at this point, the only remaining claims of the ’473 Patent are claims 7 and 18 which were 17 not previously asserted in this litigation and which were not the subject of the IPR proceedings. 18 Docket No. 115. Trusted Knight’s appeal from the PTAB’s decision invaliding the 27 claims of 19 the ’473 Patent is currently pending. Docket No. 120. 20 The Court ordered the parties to complete briefing on Trusted Knight’s motion for leave to 21 amend. See Docket No. 122. The Court addresses the motion below. 22 III. LEGAL STANDARD 23 Patent Local Rule 3-1 states, “Not later than 14 days after the Initial Case Management 24 Conference, a party claiming patent infringement shall serve on all parties a “Disclosure of 25 Asserted Claims and Infringement Contentions.”” Patent Local Rule 3-6 governs the process for 26 any amendment of infringement contentions:

27 Amendment of the Infringement Contentions or the Invalidity that may, absent undue prejudice to the non-moving party, support a 1 finding of good cause include:

2 (a) A claim construction by the Court different from that proposed by the party seeking amendment; 3 (b) Recent discovery of material, prior art despite earlier diligent 4 search; and

5 (c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, 6 before the service of the Infringement Contentions.

7 The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions. 8 9 The Patent Local Rules “require parties to state early in the litigation and with specificity 10 their contentions with respect to infringement and invalidity.” O2 Micro Int’l, Ltd. v. Monolithic 11 Power Sys., Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006). The purpose of the Patent Local Rules “is 12 to ensure early crystallization of the parties’ theories, and specifically, to place the burden on the 13 plaintiff to quickly decide on and disclose the contours of its case.” OpenTV, Inc. v. Apple Inc., 14 No.15-cv-02008-EJD-NC, 2016 WL 3196643, at *3 (N.D. Cal. June 9, 2016). Thus, amendments 15 to a party’s contentions require a showing of good cause. See Pat. L.R. 3-6. 16 The moving party bears the burden of establishing diligence. O2 Micro, 467 F.3d at 1355. 17 Where the moving party is unable to show diligence, there is “no need to consider the question of 18 prejudice,” although a court in its discretion may elect to do so. See id. at 1368 (affirming district 19 court's denial of leave to amend upon finding the moving party was not diligent, without 20 considering the question of prejudice to the non-moving party). “If the court finds that the moving 21 party has acted with diligence, it must then determine whether the nonmoving party would suffer 22 prejudice if the motion to amend were granted.” Apple Inc. v. Samsung Elecs. Co. Ltd, No. 12-cv- 23 0630-LHK (PSG), 2013 WL 3246094, at *1 (N.D. Cal. June 26, 2013) (internal quotation marks 24 omitted). 25 IV. DISCUSSION 26 A. Trusted Knight Has Not Demonstrated Good Cause For The Court To Grant Leave To 27 Amend 1 its asserted claims and infringement contentions because it demonstrated diligence in efforts 2 during discovery but it was “hamstrung by deficiencies and delays in IBM’s production” of code 3 and documents. Motion at 8. Trust Knight contends that even if they have not shown diligence, 4 leave should be granted to amend because IBM would not be prejudiced. Id. As explained below, 5 the Court finds Trusted Knight’s arguments unpersuasive and denies the motion. 6 1. Trusted Knight Fails To Meet Its Burden To Establish Diligence 7 Trusted Knight’s argument that it was diligent in discovering the information necessary to 8 assert its newly proposed claims 7 and18 blames IBM for failing to produce sufficient discovery 9 materials in a timely manner. See Motion at 3-5, 8-9. The argument fails. Trusted Knight’s reply 10 brief includes a table noting the number of pages that were produced by IBM during discovery, 11 between July 19, 2019 and August 21, 2020. Docket No. 130 (“Reply”) at 8. The table shows 12 that IBM produced over 99% of the documents produced to-date by November 13, 2019. Id. 13 Nowhere in its briefing does Trusted Knight explain what it discovered and when that led it to 14 realize that warranted belated assertion of claims 7 and 18. The relevant question, which Trusted 15 Knight leaves entirely unanswered, is what, specifically, Trusted Knight reviewed that gave it 16 good cause to raise the instant motion to amend on August 28, 2020. Trusted Knight fails to 17 establish it exercised diligence. 18 In fact, as IBM points out, Trusted Knight’s last inspection of IBM’s source code occurred 19 on October 15, 2019, Docket No. 125-1 (“McKee Decl.) ¶ 1, Exh. A, 10 months before bringing 20 the instant motion. See also id. at ¶ 2, Ex. B (describing October 15 as Trusted Knight’s “experts’ 21 final review of IBM’s code”). To the extent that Trusted Knight implies that IBM’s reference to 22 prior art in its IPR filings justifies Trusted Knight’s amendment to its infringement contentions to 23 add previously unasserted claims, it fails to explain why that reference to prior art altered the 24 landscape so as to justify assertion of claims 7 and 18. 25 IBM asserts Trusted Knight’s rationale for seeking leave to amend is the result of 26 gamesmanship, not diligent, good faith discovery efforts. Docket No. 125 (“Opp.”) at 11. IBM 27 contends, motion: recognizing the asserted claims of the ’473 patent were 1 likely to be invalidated, it aimed to keep its case alive by switching gears to assert the only two claims not covered by IBM’s IPR— 2 claims that were not challenged in the IPR because they weren’t asserted in the litigation and IBM was required to be judicious on 3 space in its IPR petition and the PTAB’s resources. 4 Id. IBM concludes, “In this case, Trusted Knight waited nearly 18 months after filing suit, 14 5 months after IBM’s code was available for inspection, 10 months after it served its infringement 6 contentions and last inspected IBM’s code, 8 months after IBM filed its IPR, nearly 3 months after 7 the Markman hearing and 2 months after the Court’s claim construction order, and more than 1.5 8 months after IBM’s IPR was instituted (and after the parties had fully briefed IBM’s motion to 9 stay based on that institution) before filing its motion to amend.” Id. at 12. IBM’s response is 10 compelling. 11 The Court cannot find good cause and diligence to grant Trusted Knight’s motion for leave 12 to amend. 13 2. IBM Would Be Prejudiced By Amendment 14 Because Trusted Knight is unable to show diligence, there is “no need to consider the 15 question of prejudice.” O2 Micro, 467 F.3d at 1368. Even if Trusted Knight had shown due 16 diligence, IBM would be prejudiced were the amendment permitted because IBM relied on 17 Trusted Knight’s original identification of asserted claims in deciding which claims to challenge 18 through IPR. The IPR claim bar has passed such that IBM may not now challenge claims 7 and 19 18. Cf. Capella Photonics, Inc. v. Cisco Systems, Inc., No. 14-cv-03348-EMC, 2019 WL 20 2359096, at *5 (N.D. Cal. June 4, 2019) (“Defendants have litigated this case for many years 21 through the IPR proceedings and appeals, and they reasonably believed that upon prevailing 22 before the PTO and an appeal, this litigation would be near completion . . . [I]t would be highly 23 prejudicial to force Defendants to engage piecemeal in a whole new round of litigation.”). 24 /// 25 /// 26 /// 27 /// 1 V. CONCLUSION 2 For the foregoing reasons, Trusted Knight’s motion for leave to amend its disclosure of 3 asserted claims and infringement contentions, Docket No. 106, is DENIED. 4 This order disposes of Docket No. 106. 5 6 IT IS SO ORDERED. 7 8 Dated: November 9, 2021 9 10 ______________________________________

EDWARD M. CHEN

11 United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27