PersonalWeb Technologies LLC v. EMC Corporation

4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION PERSONALWEB TECHNOLOGIES LLC, et al., Case No. 5:13-cv-01358-EJD 9 Plaintiffs, ORDER GRANTING DEFENDANTS’ MOTION FOR LEAVE TO AMEND 10 v. INVALIDITY CONTENTIONS; DENYING DEFENDANTS’ MOTION 11 EMC CORPORATION, et al., FOR LEAVE TO FILE SUPPLEMENTAL CLAIM 12 Defendants. CONSTRUCTION BRIEFING 13 Re: Dkt. Nos. 71, 73 14 On October 4, 2019, Defendants moved for leave to amend its invalidity contentions. Dkt.

15 71. Pursuant to Local Patent Rule 3-6, this Court may grant leave to amend upon a showing of “good cause.” The Court concludes good cause has been shown because: (1) Defendants were not required to raise a Section 101 defense when this case was originally brought in Texas; (2) other courts have held that the Alice decision provides good cause for amendment, see Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1322 (Fed. Cir. 2016); and (3) no unfair prejudice to Plaintiff would result. See Dkt. 71 at ECF 3–5. Accordingly, Defendants’ motion for leave to amend its invalidity contentions is GRANTED. Defendants, however, are instructed to file joint briefing with Defendants Facebook and Google/YouTube (who are subject to similar PersonalWeb actions) pursuant to this Court’s October 10, 2019 order. The parties were instructed to file a status report as to all three of the cases. The motion is tentatively set to be heard on December 19, 2019.

26 On October 11, 2019, Defendants filed a motion for leave to file supplemental claim Case No.: 5:13-cv-01358-EJD ORDER GRANTING DEFENDANTS’ MOTION FOR LEAVE TO AMEND INVALIDITY construction briefing. Dkt. 73. Because the Alice ruling could moot Defendants’ claim || construction argument, the Court dismisses the motion for leave to file supplemental claim construction briefing without prejudice and instructs Defendants to re-file the motion (if || necessary) after the Court rules on the Alice issue.

5 IT IS SO ORDERED.

6 Dated: October 15, 2019 EDWARD J. DAVILA 8 United States District Judge

© & Z 18 27 Case No.: 5:13-cv-01358-EJD ORDER GRANTING DEFENDANTS’ MOTION FOR LEAVE TO AMEND INVALIDITY || CONTENTIONS; DENYING DEFENDANTS’ MOTION FOR LEAVE TO FILE SUPPLEMENTAL CLAIM CONSTRUCTION BRIEFING