Largan Precision Co, Ltd. v. Motorola Mobility LLC.

4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA LARGAN PRECISION CO, LTD, Case No. 21-cv-09138-JSW (DMR) 8 Plaintiff, ORDER REGARDING LARGAN PRECISION CO., LTD.’S MOTION 9 v. FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS, 10 MOTOROLA MOBILITY LLC., JOINT DISCOVERY LETTER, AND MOTIONS TO SEAL 11 Defendant.

Re: Dkt. Nos. 227, 228, 229, 236, 242, 12 243, 246 13 PlaintiffLarganPrecisionCo.Ltd.(“Largan”)filed this motion to amend its second amended infringement contentions to add eight Largan products that allegedly practice the claimed invention of Largan’s U.S. Patent No. 8,310,767 (“the ’767 patent”), as well as three Motorola products (Guam, Guam+, and Titan) as Accused Products.1 [Docket No. 227 (Mot.).] Defendant Motorola MobilityLLC(“Motorola”)filedanopposition(DocketNo. 237(Opp’n)),andLarganfiledareply (Docket No. 247 (Reply)). Both parties also filed motions to seal in connection with their briefs.2 [Docket Nos. 228, 229, 236, 246.]

20 The parties also filed a joint discovery letter regarding Largan’s expert reports. [Docket No. 243.] As the issues raised in the joint discovery letter rise and fall with Largan’s motion for leave to amend, the court addresses that letter in this order as well.

23 The court finds these matters suitable for disposition without oral argument. Civ. L.R. 7- 1(b). Having considered the parties’ arguments, the relevant legal authority, and the record in this For reasons explained below, the Titan and Guam+ products are no longer at issue in this motion.

This dispute focuses only on Guam. The order makes reference to Titan and Guam+ for factual context.

1 case, the court deniesLargan’smotiontoamendandgrantsMotorola’srequesttostriketheportions of Largan’s expert reports concerning Guam and the eight Largan products that Largan moves to add to its infringement contentions.

4 I. BACKGROUND3 5 This case began with Largan alleging that Motorola infringes the ’767 patent; U.S. Patent No. 8,514,499 (“the ’499 patent”); U.S. Patent No. 9,696,519 (“the ’519 patent”); U.S. Patent No. 9,784,948(“the’948 patent”); U.S.Patent No. 10,209,487(“the ’487patent”); andU.S.Patent No. 10,564,397 (“the’397patent”). [Docket No. 36 (Am. Compl.).] Twopatentsremain,the ’767 patentandthe’948patent. [DocketNo.82.] The patents are generally directed to imaging systems which comprise multiple lens elements.

11 A. Largan’s Initial and Amended Disclosures 12 On March 11, 2022, pursuant to Patent Local Rule 3-2, Largan served its initial Disclosure of Asserted Claims and Infringement Contentions (“Initial Contentions”). Mot. at 1; Opp’n at 3; see Docket No. 34 (Scheduling Order). According to Largan, the Initial Contentions identified Motorola product One 5G Ace as infringing the Asserted Patents. Mot. at 1. Exhibit 7 to the Initial ContentionsidentifiedLargan’sownproductsthatitallegedpracticetheclaimed inventions. Opp’n at 4. According to Motorola, Exhibit 7 did not include any of the eight Largan products that Largan now seeks to add.

19 On July 6, 2022, Judge White stayed the case pending inter partes review (“IPR”)of all six patents. [Docket No. 70.] On April 5, 2023, Largan moved to lift the stay. [Docket No. 74.] At that point, eight of the asserted claims from the ’767 patent had survived IPR with no appeal permitted. One assertedclaimofthe’948patentwas not challenged by Motorola in the IPR process.

23 Id. at 1. Largan proposed to narrow its infringement contentions from 75 asserted claims over six patents to the nine claims remaining from the ’767 and ’948 patents (the “Asserted Patents”). Id. Judge White lifted the stay on May 16, 2023. [Docket No. 82.]

1 On July 7, 2023, Largan served its Amended Disclosure of Asserted Claims and InfringementContentions(“AmendedContentions”), which disclosed additional Accused Products4 but made no changes to Exhibit 7. Mot. at 2; Opp’nat 4.

4 B. Discovery on Additional Accused Products 5 On February 13, 2025, Largan deposed Motorola’s 30(b)(6) witness, Matthew Biggerstaff, about an email chain and spreadsheet that referenced Titan, Guam, and Guam+. Mot. at 7-8; Opp’n at 7-8; Docket No. 288-2 (2/13/25 Biggerstaff Dep.) at 127:9-136:5; Docket No. 288-9 (2/13/25 Biggerstaff Dep., Largan Ex. 87); Docket No. 288-10 (2/13/25 Biggerstaff Dep., Largan Ex. 88).

9 Motorola had produced the email and spreadsheet on December 20, 2024 and January 10, 2025, respectively. Opp’n at 8.5 Biggerstaff’s testimony indicated that Titan, Guam, and Guam+ used the lenses accused of infringing the Asserted Patents, but he did not know if they were commercialized in the United States: 13 Q. AndsoI’llrepresenttoyouthatthisspreadsheetwasproducedby Motorola -- by Motorola in this case. Is it your understanding looking 14 at this exhibit that the Guam and Guam+ were, in fact, commercialized and sold in the United States market? . . .

THEWITNESS: No. Ican’t besure -- Ican’t besureof that.

BY MR. KRZEMINSKI: Q. Any reason to think this spreadsheet is false or containing 19 inappropriate or incorrect data?

4 Motorola’s Moto G Power (2021), Moto G Stylus (2021), Moto G Stylus 5G (2021), Moto One 5G (2020) and Moto G Stylus (2022).

5 Motorola states that “Mr. Biggerstaff was asked about an email produced on December 20, 2024 (Exhibit 87) and a document (Exhibit 90)producedonJanuary10,2025aspartofMotorola’semail production.” Opp’n at 8 (emphasis added); see also Docket No. 228-2 (2/13/25 Biggerstaff Dep.) at 230:8-21 (referring to Exhibit 90). The court assumes that Motorola intended to refer to the “document” as “Exhibit 88,” not “Exhibit 90.” Largan attaches Exhibits 87 and 88 to its motion (Docket Nos. 228-9, 228-10), and Motorola does not dispute that those are the correct exhibits at issue. Indeed, Motorola refers to a “financial spreadsheet that Motorola produced” (Opp’n at 9), which is consistent with the contents of Largan Exhibit 88 (Docket No. 228-10). Moreover, no party submitted Largan Exhibit 90 with their briefs, and the excerpts of the Biggerstaff and Chan 1 A. I -- Idon’tknowwhat this spreadsheet is.

2 [Docket No. 228-2 (2/13/25 Biggerstaff Dep.) at 134:22-135:12; see also id. at 132:19-133:3.]

3 At the time of Biggerstaff’s February 13, 2025 deposition, Largan had not identified Guam as an Accused Product. At the end of the deposition, defense counsel represented that Motorola would investigate the issue and would update its disclosures if appropriate: 6 you guys looked at Exhibit 87 and 90 that showed some products that mightusesomeof thelensesaccusedinthiscase. Andwe’ll . . . take 7 a look and see if they were either sold in the United States or, . . . to the extent they weren’t. And we’ll update our financials or 8 disclosures to the extent we find anything, but we’ll let you know ahead of time.

10 [Docket No. 228-2 (2/13/25 Biggerstaff Dep.) at 230:9-21.]

11 Fact discovery closed on February 20, 2025. [Docket No. 158.] Largan asserts that on March 14, 2025, “Motorola disclosed that it had ‘identified additional products which include one or more of the accused lens assemblies’ and proposed a brief extension to the case schedule, including reopening fact discovery on these newly identified products and permitting additional 30(b)(6) depositions.” Mot.at 2. Thus, on March 18, 2025, the parties stipulated to extend the fact discovery deadline to April 16, 2025 to complete limited fact discovery on the newly identified Motorola products. [Docket No. 217 (Stip.); Docket No. 225 (Order Granting Stip.).] The limited discovery included, among other things, Motorola supplementing its interrogatory response “to identify all Motorola products sold in the United States that incorporate one or more of the three accused lens assemblies at issue”; Largan amending its infringement contentions to add any new products identified in Motorola’s supplemental interrogatoryresponse; Motorola “supplement[ing] its interrogatory responses and document production . . . to the extent Largan accuses any newly identified products in its amended infringement contentions”; and two additional depositions of Motorola’s 30(b)(6)witnesses. Stip. at 1-2.

25 Motorola served its supplemental interrogatory response, which does not disclose Guam as a product that was sold in the US and includes an accused lens assembly. Opp’nat8. The next day, Largan emailed Motorola that “[t]he following Motorola models appear to have camera Interrogatory No. 19” and provided a list of 11 Motorola models. [Docket No. 237-2 at ECF p.3.]

2 Largan’s list did not include Guam (or Guam+ and Titan). See id. Largan stated that, “[i]f any of these [11] models were sold in the US and contain one or more of the accused lens assemblies, please confirm that Motorola will supplement its response to Interrogatory No. 19 to identify them by Thursday, March 20.” Id. Motorola responded that one of the 11 identified models did not include any of the accused lens assemblies, three were not sold in the United States, and the remaining models had been identified in an earlier response. Id. at ECF p.1. The emails submitted tothecourt donot showthat Largan respondedto Motorola’s email. See id. 9 OnMarch28,2025,LarganserveditsSecondAmendedInfringementContentions(“Second AmendedContentions”),whichdidnotidentifyGuam,Guam+,andTitanasAccusedProducts. See Stip.; Docket No. 227-3 at 5-7 (redline of proposed third amended infringement contentions).

12 OnApril2,2025,MotorolaservedasupplementalresponsetoLargan’sInterrogatoryNo. 1, which asked Motorola to “Identify all ACCUSED PRODUCTS by model name and associated modelnumber.” [DocketNo. 228-7 at 8.] Motorola did not identify Guam as a responsive product.

15 Id. 16 During the specially extended discovery period, Largan deposed Biggerstaff and Kwan Chan on April 10 and 16, 2025, respectively,intheircapacitiesas Motorola’s30(b)(6)witnesses. Opp’n at 9; Docket Nos. 228-4 & 236-3 (4/10/25 Biggerstaff Dep.); Docket No. 228-5 (4/16/25 Chan Dep.). Largan again questioned Biggerstaff about the Guam, Guam+, and Titan products, including whetherhe“ha[d]anyreasontobelievethereshouldbeadditionalproductsidentifiedinMotorola’s interrogatory responses that show the U.S. products that use the accused lens assemblies at issue,” to which Biggerstaff responded, “[n]o.”6 [Docket No. 236-3 (4/10/25 Biggerstaff Dep.) at 50:18- 22.] In response to a question as why Motorola did not understand Guam to be an accused product, Largan asserts that “Motorola’s counsel improperly instructed [Biggerstaff] not to answer any questions about the Guam, Guam+ and Titan phones on the basis of ‘privilege.’” Mot. at 4 (citing Docket No. 228-4 (4/10/25 Biggerstaff Dep.) at 49:16-25). This, and Largan’s selective excerpt of this exchange, is misleading. Largan re-asked the question shortly thereafter, and Biggerstaff responded without any objection from counsel. [Docket No. 236-3 (4/10/25 Biggerstaff Dep.) at 50:15-22.] Largan continued to question Biggerstaff about the Guam and Guam+ devices and Biggerstaff testified, “I can’t be sure that they were sold in the U.S.” Id. at 48:18-25. Counsel for Motorola then represented on the record that Guam would have been identified in Motorola’s interrogatory response if it included the accused lens assembly. Specifically, when Biggerstaff was asked whether he had reviewed bills of material “to determine whether any U.S. Motorola ssmmartphones included Sunny lens assembly 39292B,” Motorola’s counsel stated, “we’ve already provided this information in a rog response. To the extent that any lens ----any camera or any phone would have included the 39292B lens and that were sold in the U.S., it would have been identified.”

8 Id. at 53:16-54:4.

9 As to Titan, Chan testified that they were “looking into the data that is reflect[ed] in” a 1100 Motorola spreadsheet where “the Titan product is shown to have units and net revenue for the United 1111 States of America market” but that, “based on [his] research, Titan U is not a US based phone.”

1122 [Docket No. 228-5 (4/16/25 Chan Dep.) at 53:7-17.] Rather, “based on [his] research at the moment, 1133 these are ”” Id. at 54:1-4; see id. aatt 63:7-10 (“Titan, 1144 from what I know is -- what I’m researching on because I know for a fact that it’s not a US phone 1155 based on the product information.”); id. aatt 57:16-17 (“The is already 1166 completed. We determined this is not a US phone.”). Chan was not able to confirm whether the 1177 Guam and Guam+ products had US sales. Id.aatt 62:24-63:17. Neither Chan nor Motorola’s counsel 1188 represented that they would investigate the issue any further, much less provide the results of such 1199 investigation to Largan’s counsel. Seeidd..at 62:24-64:8.

2200 Largan contends that, “[a]fter the deposition, Motorola/Chan never provided Largan with 2211 the results of Chan’s investigation into the issue, nor were Motorola/Chan able to disprove 2222 Motorola’s sales records showing that all three products were sold in the United States.” Mot. at 4.

2233 However, in a May 12, 2025 email from Motorola sent in response to Largan’s notification of its 2244 intent to move to amend its infringement contentions, Motorola confirmeedd its position that Guam 2255 does not include an accused lens assembly: 2266 Regarding the Guam product, as we have explained, the Guam product does not include any accused lens assembly. We explained 2277 this to you in email correspondence; Motorola confirmed this in an see, e.g., MML-LARGAN00413302, which shows that the Guam 1 pprroodduucctt iinncclluuddeess tthhee MML-LARGAN00163414 does not suggest otherwise; from the 2 context, it is clear that references to Guam mean Guam +, which includes the same lens as the Titan. Largan, thus, has no good faith 3 basis to amend its infringement contentions or assert that the Guam product infringes any asserted patent.

5 [Docket No.228-6 at 1.] Largan’s reply does not directly dispute Motorola’s assertion that Chan investigated the Guam product further, and that tthhe May 12 email provided Largan with the results of thatinvestigation.7 See Opp’nat 9 (“On May 12, 2025, Motorola provided Largan with the results of Mr. Chan’s investigation (despite Largan’s contentions otherwise, see Mot. at 4) and explained that ‘the Guam product does not include any accused lens assembly.’””)).

1100 CC.. Events Leading To This Motion 1111 The parties exchanged expert reports on May 16, 2025. Mot. at 5; Opp’n at 2; see Docket 1122 NNoos. 225, 226. Motorola’s expert report regarding commercial success noted that Largan’s 1133 infringement contentions had not identified any lens models tthhaatt LLaarrggaann ssoolldd ttoo tthhaatt 1144 practice the Asserted Patents. Mot. at 5, 10; Opp’n at 2. It was only upon reviewing Motorola’s 1155 expert report that Largan “recheck[ed] its list of models,” leading iitt ttoo realize that it had failed to 1166 identify eight of its own products that practice the claimed invention. According to Largan, it 1177 “inadvertently omitted from [its] prior disclosures” “five customer-specific embodiments of the 1188 ’767 patent and three off-the-shelf models[.]” Mot. at 5, 10. This led Largan to file the instant 1199 motion in which iitt seeks to amend its infringement contentions to add eight of its own practicing 2200 products, and to identify Guam, Guam+ and Titan as infringing Motorola products.

2211 II. MOTION TO AMEND[DOCKET NO. 227] 2222 “The local patent rules in the Northern District of California ...requir[e] both the plaintiff 2233 and the defendant in patent cases to provide early notice of their infringement and invalidity 2244 contentions, and to proceed with diligence in amending those contentions when new information 2255 7Largan appears to maintain that Motorola did not share the results of the investigation. See Reply 2266 at 3 (“Motorola has been aware of the existence of the Guam phone since at least February 2025, and apparently has been investigating those products for months without telling Largan of the 2277 outcome of its ‘investigation.’”)(emphasis added). Largan does not explain why the May 12, 2025 comestolightinthecourseofdiscovery.” O2MicroInt’lLtd.v.MonolithicPowerSys.,Inc., 467 2 F.3d 1355, 1365–66 (Fed. Cir. 2006).

3 Patent Local Rule 3-1 requires a patentee to “serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.’” Infringement contentions must include, among other things, “each accused apparatus, product, device, process, method, act, or other instrumentality . . . of each opposing party of which the party is aware” and, “[i]f a party claiming patent infringement wishes to preserve the right to rely . . . on the assertion that its own . . . apparatus, product, [or] device . . . practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, [or] device . . . that incorporates or reflects that particular claim.” Patent L.R. 3-1(b), (g). “The purpose of the infringement and invalidity contentions required under the Patent Local Rules is to require the parties to crystallize their theories of the case early in the litigation in order to further the goal of full, timely discovery and provide all parties with adequate notice of an information with which to litigate their claims.”

14 Unicorn Energy AG v. Tesla Inc., No. 21-cv-07476-BLF (SVK), 2023 WL 4670294, at *1 (N.D. Cal. July 19, 2023) (cleaned up).

16 A party may amend its infringement contentions “only by order of the Court upon a timely showing of good cause.” Patent L.R. 3-6. Whether good cause exists depends on “whether (1) the moving party was diligent in amending its contentions, and (2) the non-moving party would suffer prejudiceifleavetoamendweregranted.” Impinj, Inc. v. NXP USA, Inc., No. 19-CV-03161-YGR, 2022 WL 2125133, at *1 (N.D. Cal. Mar. 4, 2022) (citations omitted).

21 A. Largan’s Products 22 After careful review of the record, the court concludes that Largan was not diligent in discovering the basis for amendment to add its own products to its infringement contentions.

24 “Diligence is ‘the critical issue’ in the good cause determination.” Sunpower Corp. Sys. v. Sunlink Corp., No. C08-02807 SBA, 2009 WL 1657987, at *1 (N.D. Cal. June 12, 2009) (quoting Karl Storz Endoscopy Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260, at *3 (N.D. Cal. May 13, 2016)). “While the diligence component does not require perfect as unlike the generally-applicable liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the ‘shifting sands’ approach to claim construction.” Yuntek Int’l, Inc. v. Xiamen JXD Elec. Com. Co., No. 2200-ccvv- 07201-JSW (RMI), 2021 WL 4974980, at *2 (N.D. Cal. Oct. 26, 2021) (cleaned up).

5 The diligence analysis “consists of two subparts: ‘(1) diligence in discovering the basis for amendment; and (2) diligence in seeking amendment once the basis for amendment has been discovered.’” R.N Nehushtan Tr. Ltd. v. Apple Inc., No. 22-CCVV-01832-WHO, 2023 WL 10364531, at *1 (N.D. Cal. May 19, 2023) (quoting Karl Storz, 2016 WL 2855260, at *3). “The burden is on the movant [seeking to amend] to establish diligence rather than on the opposing party to establish 1100 a lack of diligence.” O2 Micro, 467 F.3d at 1366.

1111 On this record, it is simply not credible that the omission of eight Largan products was 1122 “inadvertent.” As the patent holder and the seller of the lenses, Largan cannot deny that this 1133 information was in its possession even before it initiated this action against Motorola; indeed, 1144 Largan admits that it had a “list of models[.]” Mot. at 5. Largan thus had ample time to identify 1155 all of its own products that practice the claimed invention of the ’767 patent, including when it 1166 conducted its pre-suit investigation and drafted its Initial, Amended, and Second Amended 1177 Contentions. Largan and its counsel presumably reviewed its contentions at each step of the process, 1188 yet they somehow failed to notice that they did not include eight of Largan’s ownproducts. That it 1199 took Motorola’s expert to call attention to the error belies any notion that Largan was diligent, and 2200 Largan offers no other explanation as to why it did not discover the omission before exchanging 2211 expert reports on May 16, 2025, more than three years after serving its Initial Contentions.

2222 LLaarrggaann’’ss iiddeennttiiffiiccaattiioonn ooff iinn iittss iinntteerrrrooggaattoorryy responses does not 2233 compel a different result. See Reply aatt 3. Largan contends that because “Largan identified the 2244 aass rreellaattiinngg ttoo tthhee ppaatteennttss aatt iissssuuee, Motorola knew that models that practice the 2255 ppaatteennttss wweerree ssoolldd ttoo ” Id. EEsssseennttiiaallllyy,, LLaarrggaann aarrgguueess tthhaatt bbyy iiddeennttiiffyyiinngg tthhee 2266 in interrogatory responses, it implicitly put Motorola on notice of the eight missing 2277 products because they were sold under that agreement. Yet Largan also admits that it “had not iinntteennddeedd ttoo ppllaaccee eevveerryy mmooddeell ssoolldd ttoo tthhaatt pprraaccttiicceedd tthhee AAsssseerrtteedd PPaatteennttss aatt iissssuuee— particularly where Largan did not identify them in three rounds of infringement contentions. See MLC Intell. Prop., LLC v. Micron Tech., Inc., No. 14-CCVV-03657-SI, 2019 WL 1865921, at *4 (N.D. Cal. Apr. 25, 2019) (“[I]mplicit disclosures are contrary to the purpose of the local patent rules, which require parties to disclose the basis for their contentions in order to make them explicit and streamline patent litigation.”) (emphasis in the original; cleaned up); Thought, Inc. v. Oracle Corp., No. 12-CCVV-05601-WHO, 2016 WL 3230696, at *6 (N.D. Cal. June 13, 2016), aff’d, 698 F. App’x 8 1028 (Fed. Cir. 2017) (“Thought’s current argument that this theory was ‘implicitly’ disclosed and that Oracle should have realized Thought intended to rely on the ‘internal’ wrapped sessions when 1100 the Supplemental Infringement Contentions did not strike through ‘sessions.readObject(object)’ and 1111 referred generally to the ‘functionality’ of TopLink, is gamesmanship. The purpose of requiring 1122 parties to disclose the basis for their contentions is to make them explicit and streamline patent 1133 litigation.”) (citation omitted).

1144 Contrary to Largan’s assertion (Reply at 3), Apple Inc. v. Samsung ElectronicsCo., No. CV 1155 1122-00630 LHK, 2012 WL 5632618, at *5 (N.D. Cal. Nov. 15, 2012), does not support a finding of 1166 good cause here. In that case, the court found that Apple had made an “honest mistake” in omitting 1177 claim charts from its initial contentions because “[t]he missing claims charts [we]re listed in Apple’s 1188 Claims Summary Table (the table of contents of their June 15 contentions), and duplicates of other 1199 charts were served in place of the second set of omitted charts.” Id.at *5. In other words, there was 2200 evidence that Apple had intended to include the claim charts from the beginning, but an “honest 2211 mistake” led to their omission. Largan offers no such evidence here. Nothing in its Initial, 2222 Amended, or Second Amended Contentions indicates that Largan intended to identify the eight 2233 products at issue in this motion.

2244 Instead, this case is similar to Tigo Energy Inc. v. Altenergy Power Sys. Inc., No. 20-CCVV- 2255 03622-NC, 2021 WL 4027371 (N.D. Cal. Mar. 25, 2021),in which the court found that the patentee, 2266 Tigo Energy, was not diligent in seeking to amend its contentions. Like Largan, Tigo amended its 2277 infringement contentions three times before seeking leave to amend once again to assert another because it made an honest mistake in only recently discovering that the ‘diode D3 was “a bypass circuit” . . . as required by claim 5of the ’321patent,’ and therefore only recently believed that the accused product has a bypass circuit as described in claim 5.” Id. at *2 (citation omitted). Tigo further contended that it should be permitted to amend its contentions “because its proposed amendment [wa]s based on its counsel’s honest mistake, rather than newly produced or discovered material, [and] that it may establish diligence simply by seeking amendment promptly after discovering its mistake.” Id. at *3.

8 Thecourtdisagreedandfoundthat“Tigo’samendmentcannotbedeemedanhonestmistake because it never intended to include claim 5 of patent ’321 in its initial contentions or subsequent amendments.” Id.at*4. Thecourtexplainedthat“[w]ithoutofferinganexplanationastohowTigo failed to discover its mistake regarding the bypass circuit from information it had at its disposal before serving its initial infringement contentions, Tigo ha[d] not established diligence in discovering the basis for its amendment.” Id. 14 Berger v. Rossignol Ski Co., 2006 WL 1095914 (N.D. Cal. Apr. 25, 2006), aff’d, 214 F. 15 App’x 981 (Fed. Cir. 2007), is also instructive. There, the patentees sought to amend their infringement contentions after summary judgment to add a new patent. Id. at *1-2. However, the patentees “offer[ed] no explanation as to why the ‘errors’ were made in the first place, and, in particular, how they could have ‘mistakenly’ omitted any contentions as to the ’569 [patent].” Id. at*4. Thecourtfoundthatthepatenteeswerenotdiligentinseekingtoamendbecausethey“should have become aware of the alleged errors, and in particular, the omission of any contentions as to the ’569, when defendant served its preliminary invalidity contentions” yet they waited until after summary judgment to move to amend. Id. 23 Like Tigo Energy and Berger, the record shows that Largan failed to discover its mistake before serving three rounds of infringement contentions, and Largan offers no explanation to justify the omission. Merely passing it off as an “inadvertent mistake” is insufficient. Accordingly, the court finds that Largan has not established that it was diligent in seeking to amend its Second Amended Contentions to identify eight of its own products that allegedly embody the claimed inventionofthe’767patent. Largan’s motionis deniedas tothis proposedamendment.8 2 B. Guam+ and Titan Are No Longer at Issue in This Motion 3 Largan’s motion seeks leave to amend its Second Amended Contentions to include Motorola’s Guam+ and Titan products. However, “Motorola . . . only opposes Largan’s belated amendment with respect to the Guam product.” Opp’n at 1 n.2; see also Docket No. 228-6 at 1 (“Motorola . . . will not object to the sales of only the Guam + and Titan products, as provided in MML-LARGAN00016856, being accounted for in the case.”). As there is no dispute with respect to amending the Second Amended Contentions to add the Guam+ and Titan products, the court grants Largan’smotionas tothose.

10 C. Guam 11 Largan argues there is good cause to amend its Second Amended Contentions to add the Guam because “Motorola blocked Largan’s attempts to obtain further discovery into [this product] and failed to provide any details/results from its supposed investigation into the issue[,]” thus preventing Largan from filing its motion earlier. Mot. at 11. Largan also contends that, because Motorola does not oppose amendment as to the Guam+ and Titan products, Motorola is precluded from arguing that Largan was not diligent as to Guam. Reply at 1. Motorola opposes amendment as to the Guam product on grounds that Largan was not diligent in discovering the basis for amendment and seeking to amend. Opp’n at 10-11.

19 The court finds that Largan was not diligent in discovering the basis for amending its Second Amended Contentions to add the Guam product. The record shows that the two documents that referenced Guam—the email (Biggerstaff Exhibit 87) and spreadsheet (Biggerstaff Exhibit 88)—were produced December 10, 2024 and January 10, 2025, respectively. Opp’n at 8. On The court does not reach the question of whether Largan was diligent in moving to amend or whether Motorola would be prejudiced by amendment. Tigo Energy, 2021 WL 4027371, at *4 (“Where the moving party does not establish that it was diligent in discovering the basis for its proposed amendment, the court need not determine whether the moving party was diligent in quickly movingtoamend.”)(citingKarl Storz, 2016 WL 7386136, *3); Asia Vital Components Co. v. Asetek Danmark A/S, No. 16-CV-07160-JST, 2018 WL 3108927, at *1 (N.D. Cal. June 25, 2018) (“If the moving party was not diligent, there is ‘no need to consider the question of prejudice.’”) (quoting February 13, 2025, Largan deposed Biggerstaff about both documents. [Docket No. 288-2 (2/13/25 Biggerstaff Dep.) at 127:9-136:5; Docket No. 288-9 (2/13/25 Biggerstaff Dep., Ex. 87); Docket No. 288-10 (2/13/25 Biggerstaff Dep., Ex. 88)].

4 The parties thereafter stipulated to conduct limited discovery after the fact discovery cutoff on additional “MotorolaproductssoldintheUnitedStatesthatincorporateoneormoreofthethree accused lens assemblies at issue.” [Docket No. 217 at 1.] Given Biggerstaff’s testimony and Motorola’s counsel’s representation that Motorola would “look and see” whether the products specifically identified in Biggerstaff Exhibits 87 and 88 were or were not sold in the United States (Docket No. 228-2 (2/13/25 Biggerstaff Dep.) at 230:8-21), it is evident that the “Motorola products”inthestipulationintendedtoinclude the ability to conduct further discovery on Guam.

11 Yet the record shows that Largan failed to pursue such discovery. After Motorola supplemented its interrogatory response regarding such products, Largan followed up on March 18, 2025 to confirm whether 11 additional Motorola models contained the accused lens assemblies and should be included in the response. [Docket No. 237-2 at 2.] Largan had been, or should have been, aware of the Guam product for nearly three months at that point (that is, since the email shown as Biggerstaff Exhibit 87 was produced on December 20, 2025) and had deposed Biggerstaff about it approximately one month prior. However, Largan inexplicably did not include it in its list (see id.) and offers no explanation as to why it was omitted. The record before the court shows that Largan did not specifically raise the Guam issue again until Biggerstaff’s April 10, 2025 deposition and Chan’s April 16, 2025 deposition. [Docket No. 236-3 (4/10/25 Biggerstaff Dep.) at 50:15-22; Docket No. 228-5 (4/16/25 Chan Dep.) at 58:1-64:8.]

22 Largancomplains that Motorola’s stonewallingpreventedLarganfromobtainingdiscovery on the Guam product. The record is devoid of evidence that Motorola engaged in stonewalling or obfuscation such that Largan should be excused from its failure to pursue discovery on Guam during the extended discovery period that was created specifically for that purpose.

26 Largan contends that “Motorola’s counsel neverupdatedLarganon its investigation” about Guam. Mot. at 9. Again, the record shows otherwise. After Biggerstaff testified about Guam at his whether the products raised in the exhibits—including Guam—were sold in the United States and would “update our financials or disclosures to the extent we find anything[.]]”” [Docket No. 228-2 (2/13/25 Biggerstaff Dep.) at 230:8-21.]

4 Motorola did not include Guam in its March 17, 2025 supplemental interrogatory response, thus indicating that Motorola’s investigation did not implicate Guam as an accused product.

6 Largan’s March 18, 2025 follow-up email, which asked whether 11 other Motorola products should have been included, did not ask about Guam. [See Docket No.237-2 at ECF p.2..]]

8 During Biggerstaff’s April 10, 2025 deposition, Largan’s counsel asked Biggerstaff if he “ha[d] any reason to believe there should be additional products identified in Motorola’s 1100 interrogatory responses that show the U.S. products that use the accused lens assemblies at issue[.]”

1111 [Docket No. 236-3 (4/10/25 Biggerstaff Dep.) at 50:18-21.] Biggerstaff’s responded “[n]o.” Id. 1122 aatt 50:22. Motorola’s counsel also representedon the record that Guam would have been identified 1133 in Motorola’s interrogatory response if it included the accused lens assembly. Id. at 54:3-7 1144 (“[W]e’ve already provided this information in a rog response. To the extent that any lens ---- any 1155 camera or any phone would have included the 39292B lens and that were sold in the U.S., it would 1166 have been identified.”).

1177 At his deposition, Chan was not able to confirm whether Guam had US sales. [See Docket 1188 No. 228-5 (4/16/25 Chan Dep.) at 58:7-59:4.] Neither Chan nor Motorola’s counsel made any 1199 promise to investigate Guam furtheror share the results of any such investigation with Largan. See 2200 id.at 62:24-64:8. Nevertheless, Motorola later did exactly that. In its May 12, 2025 emailto Largan, 2211 Motorolaexplaineeddthat its investigation showeedd the Guam product does not infringe: 2222 Regarding the Guam product, as we have explained, the Guam product does not include any accused lens assembly. We explained 2233 this to you in email correspondence; Motorola confirmed this in an interrogatory response; and Matt Biggerstaff confirmed this in his 2244 deposition. This is also confirmed by documents produced in the case, see, e.g., MML-LARGAN00413302, which shows that the Guam 2255 product includes MML-LARGAN00163414 does not suggest otherwise; from the 2266 context, it is clear that references to Guam mean Guam +, which includes the same lens as the Titan.

2277 1 Largan’s assertion that “Motorola failed to offer any testimony or documents showing that the Guam … phone[] does] not use accused Sunny lens assembly Sunny 39292A in order to contradict the evidence Largan put forth” (Mot. at 9) is also unpersuasive. Based on the exhibits submitted by the parties, it does not appear that Largan ever pursued discovery to confirm whether Guam does or does not use a different lens assembly than those disclosed in the Asserted Patents.9 There is also no evidence that Largan pushed back on Motorola’s assertion in its May 12, 2025 email that the document giving rise to Largan’sbelief that the Guam product should be added as an Accused Product referred to Guam+ and not Guam. In addition, Largan misleadingly asserts that “[o]n May 7, 2025, Largan indicated it required a meet and confer in advance of moving to amend itsinfringementcontentionstoaddtheGuam,Guam+andTitanphonesasAccusedProducts.” Mot.

11 at 4 (citing Docket No. 228-6). Largan’s email does no such thing, and instead says: 12 [p]lease indicate whether you will stipulate to Largan’s supplementation of its Infringement Contentions to include Guam, 13 Guam+ and Titan, which should have at least been disclosed by Motorola in its most recent disclosure, if not earlier, during the initial 14 discovery period. If Motorola objects to the inclusion of these products in Largan’s Infringement Contentions, please provide the 15 basis for your objection.

16 [Docket No. 228-6 at 2.] Largan’s email does not ask to meet and confer; instead, it instructs Motorola to either stipulate or provide objections. Motorola sent its objections three days later. Id. at 1. Nothing in the email thread provided to the court indicates that Largan requested a meet and confer afterreceivingMotorola’s response.

20 Insum,Largan’sargumentthatMotoroladidnotproducediscoveryontheGuamproductis undermined by the fact that Largan failed to meaningfully follow up about Guam during the extended discovery period—the very purpose of which was to seek additional discovery on Motorola products such as Guam. Instead, Largan waited until the extended fact discovery deadline passed before acting. The record demonstrates that Motorola investigated Guam and consistently took the position that Guam is not an accused product, as demonstrated in Motorola’s two Motorola makes the same argument in its opposition. Opp’n at 10. Notably, Largan does not supplemental interrogatory responses during the specially extended discovery period, as well as representations by Motorola’s counsel in depositions and email correspondence. There is no evidencethat MotorolablockedLargan’s abilitytonaildownanylingering doubts it may have had about the Guam product through discovery or by making direct inquiries to Motorola counsel.

5 Under these circumstances, the court cannot find that Largan was diligent in discovering the basis for amendment as to the Guam product. Largan’s motionis deniedonthat ground.10 III. JOINT DISCOVERY LETTER [DOCKET NO. 243] 8 MotorolaseeksanorderstrikingLargan’sexpertdisclosuresregardingLargan’sownnewly identified allegedly practicing products and the Guam product, on grounds that they were not included in Largan’s Second Amended Contentions. [Docket No. 243 at 1.] Because the court denies Largan’s motion for leave to amend to add these products, they are not at issue and do not require expert testimony. Motorola’s request is therefore granted.

13 IV. MOTIONS TO FILE UNDER SEAL 14 Both parties move to file under seal portions of their briefs and exhibits thereto, as well as the joint discovery letter. [Docket Nos. 228, 229, 236, 242, 246.]

16 Civil Local Rule 79-5(b) states that “no document may be filed under seal (i.e., closed to inspection by the public) except pursuant to a court order that authorizes the sealing of the particular document, or portions thereof. A sealing order may issue only upon a request that establishes that the document, or portions thereof, are privileged, protectable as a trade secret or otherwise entitled to protection under the law (hereinafter referred to as ‘sealable’).” Furthermore, “[r]eference to a stipulation or protective order that allows a party to designate certain documents as confidential is not sufficient to establish that a document, or portions thereof, are sealable.” Civ. L.R. 79- 5(d)(1)(A).

24 In assessing whether documents may be filed under seal, there is “a strong presumption in favor of access.” Foltz v. State Farm Mut. Auto. Ins., 331 F.3d 1122, 1135 (9th Cir. 2003). In For the reasons stated in footnote 8, the court does not reach the question of whether Largan accordancewiththestrongpublicpolicyfavoringaccesstocourtrecords, “[a]partyseekingtoseal a judicial record . . . bears the burden of overcoming this strong presumption by meeting the ‘compelling reasons’ standard.” Kamakana v. City & County of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006). “Under this stringent standard, a court may seal records only when it finds ‘a compelling reason and articulate[s] the factual basis for its ruling, without relying on hypothesis or conjecture.’” Ctr. for Auto Safety v. Chrysler Grp., LLC, 809 F.3d 1092, 1096–97 (9th Cir. 2016) (quoting Kamakana,447F.3dat1179). Thosereasonsmust“outweighthegeneralhistoryofaccess andthepublicpoliciesfavoringdisclosure,suchasthe‘publicinterestinunderstandingthejudicial process.’” Kamakana, 447 F.3d at 1178-79 (quoting Hagestad v. Tragesser, 49 F.3d 1430, 1434 (9th Cir. 1995)). The court must “conscientiously balance[ ] the competing interests of the public andthepartywhoseeks tokeep”the records secret. Id. at 1179.

12 The Ninth Circuit has “carved out an exception to the presumption of access to judicial records”for“court recordsattached onlytonon-dispositivemotions.” Id. (quoting Foltz, 331 F.3d 14 at 1135). The court reasonedthat “the public has less of a need for access to court records attached only to non-dispositive motions because those documents are often ‘unrelated, or only tangentially related, to the underlying cause of action.’” Id. (quoting Foltz,331F.3dat 1135).“A ‘good cause’ showing under Rule 26(c) will suffice to keep sealed records attached to non-dispositive motions.”

18 Id. at 1180 (citing Foltz, 331 F.3d at 1135). The Ninth Circuit has distinguished “dispositive” and “non-dispositive” motions. Ctr. for Auto Safety, 809 F.3d at 1097-98. These terms are not “mechanicalclassifications”and“publicaccess[tojudicialrecords]willturnonwhetherthemotion ismorethantangentiallyrelatedtothemeritsofa case.” Id. at 1097, 1101. Therefore, a party must satisfy the more demanding “compelling reasons” standard to seal a motion that is more than tangentially related to the merits of the case. Id. at 1101-02.

24 As the issues raised in this particular motion to amend infringement contentions are nondispositive discovery issues that are only “tangentially related” to the merits of the case, the courtappliesthe“goodcause”standardtotheparties’sealingmotions. See SanDisk3d IP Holdings Ltd. v. Viasat, Inc., No. 22-CV-04376-HSG, 2025 WL 835034, at *2 (N.D. Cal. Mar. 17, 2025) motion for leave to amend infringement contentions); Ipsilium LLC vy. Cisco Sys., Inc., No. 17-CV- || 07179-HSG, 2020 WL 8991670, at *2 (N.D. Cal. Mar. 16, 2020) (same); Finjan, Inc. v. Check Point Software Techs., Inc., No. 18-CV-02621-WHO, 2019 WL 7801443, at *11 (N.D. Cal. Aug. 12, |} 2019).

5 A. Motions to File Under Seal Submitted in Connection with the Motion for 6 Leave to Amend [Docket Nos. 228, 229, 236, 246] Having reviewed the parties’ motions, the court finds good cause exists and grants Largan’s motion to file under seal (Docket No. 246). The court grants in part and denies in part Largan’s motion to file under seal its Reply in support of its motion for leave to amend (Docket No. 228), Largan’s motion to consider whether another party’s material should be sealed (Docket No. 229), and Motorola’s motion to consider whether another party’s material should be sealed (Docket No. 236)!' as follows: a = 3 Docket No. Document Portion to Sought be Ruling Sealed 227 Largan’s Motion for Highlighted portions | Granted as to the following: 15 Leave to Amend Its Infringement Page 3, lines 15-19 Q 16 Contentions Page 3, lines 21-22 Page 3, lines 13-14 Page 8, line 2 18 Page 8, lines 4-10 Page 11, lines 20-21 50 Denied as to the following: Page 7, lines 24-28 Page 8, lines 14-18 22 .

The moving party has not 23 established that these portions contain information that 24 warrant sealing.

07 '! Although Motorola styles its Motion as a Motion to consider whether another party’s material should be sealed, it appears that Motorola only seeks to materials that it, not Largan, designates as 28 confidential.

Docket No. Document Portion to Sought be Ruling Sealed 227-4 Excerpt of the Entire document Denied without prejudice. The 3 deposition transcript proposed redactions are not from the Deposition “narrowly tailored to seal only 4 of Matt Biggerstaff the sealable material,” andthe dated February 13, moving party has not 2025 (Krzeminski establishedthat“a less 6 Decl., Ex. C) restrictive alternative to sealing is not sufficient[.]” Civ. 7 L.R. 79-5(c)(1)(iii), (c)(3).

8 227-5 Excerpt of a letter Entire document Denied without prejudice. The from K. Koballa to T. proposed redactions are not 9 Krzeminski dated “narrowly tailored to seal only April 21, 2025 the sealable material,” andthe (Krzeminski Decl., moving party has not 11 Ex. D) establishedthat“a less restrictive alternative to sealing 12 is not sufficient[.]” Civ. L.R. 79-5(c)(1)(iii), (c)(3).

227-6 Excerpt of the Entire document Denied without prejudice. The deposition transcript proposed redactions are not 15 from the Deposition “narrowly tailored to seal only of Matt Biggerstaff the sealable material,” andthe 16 dated April 10, 2025 moving party has not (Krzeminski Decl., establishedthat“a less 17 Ex. E) restrictive alternative to sealing is not sufficient[.]” Civ. L.R. 79-5(c)(1)(iii), (c)(3).

227-7 Excerpt of the Entire document Denied without prejudice. The 20 deposition transcript proposed redactions are not from the Deposition “narrowly tailored to seal only 21 of Kwan Chan dated the sealable material,” andthe April 16, 2025 22 (Krzeminski Decl., moving party has not Ex. F) establishedthat“a less 23 restrictive alternative to sealing is not sufficient[.]” Civ. 24 L.R. 79-5(c)(1)(iii), (c)(3).

Docket No. Document Portion to Sought be Ruling Sealed 227-8 Email Highlighted portions Granted communications with the subject line “Larganv.Motorola– Additional Accused Products”betweenE.

Embree and K.

Koballa dated May 7- 12, 2025 (Krzeminski Decl., Ex. G).

8 227-9 Excerpt ofMotorola’s Entire document Denied without prejudice. The Sixth Amended proposed redactions are not 9 Objections and “narrowly tailored to seal only Responses toLargan’s the sealable material,” andthe 10 F In i t r e st r r S o e g t a o to f r ies dated moving party has not 11 April 2, 2025 establishedthat“a less (Krzeminski Decl., restrictive alternative to sealing 12 Ex. H). is not sufficient[.]” Civ. L.R. 79-5(c)(1)(iii), (c)(3).

227-10 Excerpt ofMotorola’s Entire document Denied without prejudice. The 14 Fourth Amended proposed redactions are not Objections and “narrowly tailored to seal only 15 Responses toLargan’s the sealable material,” andthe Seventh Set of 16 Interrogatories dated moving party has not April 9, 2025 establishedthat“a less 17 (Krzeminski Decl., restrictive alternative to sealing Ex. I). is not sufficient[.]” Civ. 18 L.R. 79-5(c)(1)(iii), (c)(3).

19 227-12 Largan Exhibit 87 Entire document Denied without prejudice. The 20 d o u f r M in a g t t t h h e e w D eposition proposed redactions are not “narrowly tailored to seal only Biggerstaff on April 21 13, 2025 (Krzeminski the sealable material,” andthe Decl., Ex. K) moving party has not 22 establishedthat“a less restrictive alternative to sealing is not sufficient[.]” Civ. 24 L.R. 79-5(c)(1)(iii), (c)(3).

Sealed 227-13 Excerpt of Largan Entire document Denied without prejudice. Th 3 Exhibit 88 during the proposed redactions are not Reposition of erstaft “narrowly tailored to seal only 4 on April 13-5025 the sealable material,” and the 5 (Krzeminski Decl., moving party has not Ex. L) established that “a less 6 restrictive alternative to sealin, is not sufficient[.]” Civ. 7 L.R. 79-5(c)(1)Gii), □□□□□□□ 8 237 Motorola’s Highlighted portions Granted as to the following: Opposition to 9 aargan s Motion to Page 2, line 1 10 men Page 9, line 23 11 Denied as to the following: 12 Page 9, lines 6-8 Page 9, lines 11-12 Page 9, lines 17-18 Page 10, lines 9-11 ty 15 The moving party has not established that these portions 16 contain information that warrant sealing.

5 13 237-3 Excerpt of the Entire document Denied without prejudice. Th transcript of the April proposed redactions are not 19 Nu oe Boeerstat “narrowly tailored to seal only (Declaration of Kacey the sealable material,” and the 20 Koballa, Ex. B) parties have not established that “a less restrictive 21 alternative to sealing is not sufficient[.]” Civ. L.R. 79- S(c)(1 (ili), (c)(3).

Any renewed motion to file under seal shall be filed within 7 days of this order. The parties shall carefully consider what, in light of the “strong presumption in favor of [public] access” to court filings, Foltz, 331 F.3d at 1135, truly merits sealing and ensure that any proposed redactions are “narrowly tailored to seal only the sealable material,” Civ. L.R. 79-5(c)(3). If the parties do not timely renew their motions, the court will order the aforementioned exhibits to be unsealed.

2 B. Motion to File Under Seal Joint Discovery Letter [Docket No. 242] 3 The court finds the proposed redactions are narrowly tailored and good cause exists to seal || the highlighted portions on page 3 of the parties’ joint discovery letter regarding Largan’s expert || reports. The court thus grants Motorola’s motion to file under seal (Docket No. 242).

6 || Vv. CONCLUSION 7 For the reasons stated above, the court orders as follows: 8 Largan’s motion to amend is denied.

9 The portions of Largan’s expert reports that concern the Guam product and 10 Largan’s eight products that allegedly practice the claimed invention of the □□□□ 11 patent are stricken.

12 Largan’s motion to file under seal (Docket No. 246) is granted.

5 13 Largan’s motion to file under seal (Docket No. 228) is granted in part and denied in 14 part.

15 Largan’s motion to consider whether another party’s material should be sealed 16 (Docket No. 229) is granted in part and denied in part. i 17 Motorola’s motion to consider whether another party’s material should be sealed Z 18 (Docket No. 236) is granted in part and denied in part.

19 Motorola’s motion to file under seal portions of the parties’ joint discovery letter 20 regarding Largan’s experts (Docket No. 242) is granted.

21 Any renewed motions to for leave to file under seal shall be filed within 7 days of 22 this order.

23 As the parties may file renewed sealing motions, the court is filing this order under seal, with || unredacted copies served on counsel. No later than 7 days of this order, the parties shall meet and 25 confer in good faith to determine what, if anything, warrants sealing. Should the parties determine || that portions of the order merit sealing, they shall file a single motion for leave to file under seal— 27 that is, a joint motion if both parties propose redactions or a single motion if only one party seeks || redactions. Although the court expects the parties to work in good faith to resolve any disputes, they may propose competing redactions if there is any disagreement. Proposed redactions should || be made in a single document with joint and competing redactions identified by different colored || highlights.

4 The court will unseal this order if the parties do not timely file renewed motions for leave to file under seal, or if they do not timely move for leave to file this order under seal.

7 IT IS SO ORDERED.

8 Dated: August 11, 2025 Le Donna M. Ryu 10 Chief Magistrate Judge

© & O Z 18