NantWorks, LLC v. Niantic, Inc.
3:20-cv-06262
N.D. Cal.Mar 12, 2024Background
- NantWorks sued Niantic alleging that Niantic’s AR game apps, Pokémon Go and Harry Potter: Wizards Unite, infringe its US Patent No. 10,403,051 (‘051 patent).
- The ‘051 patent covers technology for incorporating virtual objects into a digital representation of a mobile device’s real-world surroundings using AR.
- Initially, three patents were at issue, but only the ‘051 patent remains in the case.
- After expert disclosures, Niantic moved to strike certain infringement theories presented by NantWorks’ expert, Dr. Turk, arguing they were not disclosed in the infringement contentions as required by local rules.
- The court considered Niantic’s challenge to new infringement theories relating to two functionalities within Pokémon Go — specifically, whether theories relating to "Encounters" mode and new claim limitations were fairly disclosed in NantWorks’ initial contentions.
- The motion concerns whether expert opinions introduced new theories not previously disclosed, violating the district’s patent local rules on fair notice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether paragraphs 134–149 of Turk Report introduce new infringement theories (Encounters mode vs. Map View) | Infringement contentions were broad, covering both modes, not just Map View | Only Map View functionalities were disclosed in contentions | Denied: Contentions were broad enough to encompass both modes |
| Whether contentions for claims 22–23 (time-based, weather, and awareness meter functionalities) were specific enough | Contentions incorporated claim 1, which discusses relevant limitations | Only time-of-day (not weather/awareness meter) was disclosed in contentions | Granted: Contentions not specific enough; expert opinions stricken |
| Whether expert report can introduce new infringement theories not present in contentions | Contentions allowed further elaboration with discovery info | Local rules prohibit introducing new theories via expert reports | Expert reports can elaborate but not introduce undisclosed new theories |
| Adequacy of specificity in infringement contentions as required by local rules | General contentions provided fair notice | Contentions were too general to meet local rules for new theories | Struck certain contentions that were too generalized |
Key Cases Cited
- Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 236 F. Supp. 3d 1110 (N.D. Cal. 2017) (parties must diligently amend infringement contentions when new information arises)
- Huawei Techs. Co. v. Samsung Elecs. Co., 340 F. Supp. 3d 934 (N.D. Cal. 2018) (expert reports may not introduce new infringement theories not disclosed)
- DSS Tech. Mgmt., Inc. v. Apple, Inc., 2020 WL 210318 (N.D. Cal. 2020) (local rules require specificity to crystallize the theory of the case)
- MasterObjects, Inc. v. Meta Platforms, Inc., 2022 WL 4856269 (N.D. Cal. 2022) (contentions need not identify every evidentiary proof, just provide reasonable notice)