UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

CIVIL ACTION NO. 20-22945-CIV-SCOLA 

CARNIVAL CORPORATION, 

Plaintiff, 

v. 

DECURTIS CORPORATION and 

DECURTIS LLC, 

 Defendants. 

CONTAINS HIGHLY 

CONFIDENTIAL INFORMATION 

FILED UNDER SEAL

DECURTIS LLC, 

Plaintiff, 

v. 

CARNIVAL CORPORATION, 

Defendant. 

 

CARNIVAL CORPORATION’S MOTION FOR LEAVE TO AMEND ITS 

INFRINGEMENT CONTENTIONS 

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TABLE OF CONTENTS

Page

-iINTRODUCTION ......................................................................................................................... 1

FACTUAL BACKGROUND ........................................................................................................ 2

ARGUMENT AND CITATION OF AUTHORITY ..................................................................... 5

I. CARNIVAL DILIGENTLY SOUGHT TO AMEND ITS 

INFRINGEMENT CONTENTIONS. .................................................................... 6

II. CARNIVAL’S AMENDMENT WILL NOT PREJUDICE DECURTIS. ............ 9

CONCLUSION ............................................................................................................................ 11

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-iiTABLE OF AUTHORITIES 

 Page(s) 

Cases 

24/7 Customer, Inc. v. Liveperson, Inc., 

No. 315CV02897JSTKAW, 2016 WL 6673983 (N.D. Cal. Nov. 14, 2016) ..........................10 

DCG Sys. V. Checkpoint Techs., LLC, 

No. C 11-03792 PSG, 2012 WL 1309161 (N.D. Cal. Apr. 16, 2012) .........................6, 8, 9, 11 

Ecomsystems, Inc. v. Shared Mktg. Servs., Inc., 

No. 8:10-CV-1531-T-33MAP, 2012 WL 12899143 (M.D. Fla. Jan. 25, 2012) ........................8 

Foman v. Davis, 

371 U.S. 178 (1962) ...................................................................................................................8 

Fortinet, Inc. v. Palo Alto Networks, Inc., 

No. C-09-00036 RMW, 2010 WL 4608250 (N.D. Cal. Nov. 5, 2010 ...................................7, 9 

Linex Techs., Inc. v. Hewlett-Packard Co., 

No. C 13-159 CW, 2013 WL 5955548 (N.D. Cal. Nov. 6, 2013) .....................................6, 7, 9 

MediaTek, Inc. v. Freescale Semiconductor, Inc., 

No. C11-5341 YGR JSC, 2013 WL 2403644 (N.D. Cal. May 31, 2013) ...........................9, 10 

Motorola Mobility Inc. v. Apple Inc., 

No. 1:10-cv-23580-RNS, Order Allowing Motorola to Supplement Invalidity 

Contentions, ECF No. 259 (S.D. Fla. March 9, 2012) .........................................................6, 11 

O2 Micro Int'l v. Monolithic Power Sys., Inc., 

467 F.3d 1355 (Fed. Cir. 2006)..............................................................................................8, 9 

ProconGPS, Inc. v. Skypatrol, LLC, 

No. 11–3975 SI, 2013 WL 1788049 (N.D. Cal. Apr.26, 2013) .............................................6, 7 

SanDisk Corp. v. Round Rock Research LLC, 

No. C-11-5243-RS, 2013 WL 12173917 (N.D. Cal. Aug. 6, 2013) ........................................10 

Tech. Licensing Corp. v. Blackmagic Design Pty Ltd., 

No. 13-CV-05184-SBA MEJ, 2014 WL 5499511 (N.D. Cal. Oct. 30, 2014) ...........6, 9, 10, 11 

Technology Licensing Corp. v. Blackmagic Design Pty Ltd., 

2014 WL 5499511 Case No. 13-cv-05184 (N.D. Cal. Oct. 30, 2014) ......................................9 

Vasudevan Software, Inc. v. Int'l Bus. Machines Corp., 

No. C09-05897 RS HRL, 2011 WL 940263 (N.D. Cal. Feb. 18, 2011) ....................................9 

Case 1:20-cv-22945-RNS Document 107 Entered on FLSD Docket 12/02/2020 Page 3 of 17
-iiiYodlee, Inc. v. CashEdge, Inc., 

No. C 05-01550, 2007 WL 1454259 (May 17, 2007) ...............................................................9 

Statutes 

35 U.S.C. § 271 ........................................................................................................................3, 4, 5 

Other Authorities 

Local Patent Rule 3-6 ...............................................................................................................1, 5, 6 

Local Patent Rule 3-4(a) ..................................................................................................................5 

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INTRODUCTION

Plaintiff Carnival Corporation (“Carnival”) hereby respectfully moves this Court, pursuant to 

Local Patent Rule 3-6 (ECF No. 44 [Order re Patent L.R.s]) for leave to amend Carnival’s 

Disclosure of Asserted Claims and Infringement Contentions (“Infringement Contentions”). The 

relevant excerpts of Carnival’s proposed Amended Infringement Contentions are appended hereto 

as Exhibit M with the additions added by amendment shown in redline. 

 Carnival seeks leave to amend its Infringement Contentions to comport with the additional 

allegations already set forth in Carnival’s subsequent Second Amended Complaint. Carnival 

amended its complaint pursuant to permission of this Court following a timely motion by Carnival 

in accordance with the Scheduling Order in this matter. As relevant here, that amendment added 

allegations pertaining to two patents that Carnival already was asserting in this case: that DeCurtis 

directly infringed United States Patent No. 10,045,184 (the “’184 patent”) and infringed the ’184 

patent and United States Patent No. 10,157,514 (the “’514 patent”) by exporting components. The 

amended infringement contentions do not add new patents, new asserted claims, or new products, 

nor do they change the substance of Carnival’s theories as to how the accused devices practice the 

asserted claims; they merely show how DeCurtis’s activities with respect to those devices infringe 

additional sections of the Patent Act consistent with what already is in the operative complaint. 

 Despite that the additional infringement allegations already are part of the case through 

Carnival’s operative complaint, and despite that DeCurtis has had ample notice of the additional 

infringement theories that Carnival seeks to set forth in its amended contentions, DeCurtis 

nonetheless opposes Carnival’s amendment. DeCurtis’s position should be rejected, particularly 

because the amendments are based on documents produced by DeCurtis in discovery only days 

before the deadline for Carnival to serve its Infringement Contentions. This information produced 

by DeCurtis on the eve of Carnival’s infringement contentions deadline was requested by Carnival 

months earlier. 

 Because Carnival has been diligent in seeking the relevant discovery and in seeking to 

amend its contentions, and because amendment would not prejudice DeCurtis given the posture of 

this case, the Court should grant Carnival leave to amend its Infringement Contentions so that this 

case may be resolved through a proper determination on the merits instead of a technicality that 

DeCurtis helped create. 

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FACTUAL BACKGROUND 

On April 10, 2020, Carnival filed a civil action in this Court. No. 20-cv-21457-JEM, ECF 

No. 1. On May 20, 2020 Carnival filed its First Amended Complaint pursuant to Rule 15(a)(1)(B) 

following DeCurtis’s original motion to dismiss. Id., ECF Nos. 24, 27. Carnival has brought 

claims for breach of contract, misappropriation of trade secrets, and patent infringement against 

DeCurtis. See First Amended Complaint (No. 20-cv-21457-JEM, ECF No. 27). Carnival alleges 

that DeCurtis, a former Carnival contractor, is using the insight gained while working with 

Carnival and misappropriating Carnival intellectual property to make and sell products and 

services, including to Carnival’s competitors in the cruise industry Norwegian Cruise Lines 

(“NCL”) and Virgin Voyages (“VV”), in violation of DeCurtis’s confidentiality obligations and in 

infringement of Carnival patents, specifically the ’184 patent, the ’514 patent, and United States 

Patent Number 10,049,516 (the “’516 patent”). See Id. at ¶¶ 3, 87-91.1 

Discovery commenced on June 12, 2020, and on the same day Carnival served its First Set 

of Interrogatories (Requests No. 1-12) on DeCurtis. See Exhibit A hereto. In relevant part, 

Carnival’s Interrogatory Nos. 4 and 5 respectively ask DeCurtis to describe in detail DeCurtis’s 

relationships with NCL and VV as it relates to the guest engagement systems at issue. Id. Carnival 

also served its First Set of Requests for Production on DeCurtis seeking the same. See Exhibit B 

(Carnival’s First Set of RFPs, Nos. 15, 16, and 20). DeCurtis served responses on July 27, 2020, 

stating in response to Carnival’s interrogatories seeking information relating to DeCurtis’s 

relationship with NCL and VV, that DeCurtis would produce copies of the agreements between 

DeCurtis and VV and between DeCurtis and NCL pursuant to Rule 33(d). See Exhibit C hereto. 

DeCurtis’s responses to RFP Nos. 15, 16, and 20 also confirmed that these agreements would be 

produced. See Exhibit D hereto. Nearly two months later, during the evening of September 23, 

2020, DeCurtis served its amended responses to Carnival’s First Set of Interrogatories, identifying 

1

 On April 8, 2020, DeCurtis filed a civil action in the United States District Court for the Middle 

District of Florida seeking a declaratory judgment of unenforceability and non-infringement and 

alleging monopolization, attempted monopolization, tortious interference with contract and 

business relationship, and unfair competition. ECF No. 1. On July 15, 2020, the District Court 

for the Middle District of Florida granted Carnival’s motion to transfer the DeCurtis action to the 

Southern District of Florida, and that case ultimately was consolidated with the present one. ECF 

Nos. 39, 48. 

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the Bates numbers of documents corresponding to its Rule 33(d) document production in response 

to the pertinent interrogatories, which included contracts between DeCurtis and VV and between 

DeCurtis and NCL. See Exhibit E hereto (DeCurtis’s amended responses to Carnival’s 

Interrogatory Nos. 4 and 5). At the same time, DeCurtis produced copies of the VV and NCL 

contracts bearing a Highly Confidential – Attorneys Eyes Only designation. 

These documents were produced only five days and three business days before the deadline 

for Carnival to serve its Infringement Contentions pursuant to the Court’s Scheduling Order (ECF 

No. 73), the timing of which hindered Carnival’s ability to sufficiently review these documents in 

advance of that deadline. On September 28, 2020, Carnival served DeCurtis with its Infringement 

Contentions. Carnival noted that because of the last-minute production of information Carnival 

had timely requested earlier, Carnival was still reviewing DeCurtis’s production and as such, 

Carnival may seek leave to amend its Infringement Contentions based on its further review and 

consideration of those documents. Carnival specifically noted that it may seek leave to amend its 

contentions to “assert[] additional applicable statutory subsections of 35 U.S.C. § 271 (e.g., 

asserting direct infringement of additional claims)....” See Exhibit F at 1-3. 

During the two weeks between service of Carnival’s infringement contentions and the 

deadline for amending the pleadings, Carnival continued to review and assess the DeCurtis 

production. Carnival timely sought leave to amend its First Amended Complaint on October 13, 

2020 to allege direct infringement of the ’514 patent (as already set forth in the contentions), and 

to also allege direct infringement of the ’184 patent by DeCurtis, and that DeCurtis infringed the 

’514 and ’184 patents in violation of 35 U.S.C. §271(f). 

From further review of the non-public contracts, Carnival learned facts about what 

DeCurtis sold, offered for sale, and supplied to its customers. For example, 

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To determine if “good cause” exists, courts apply a two-step analysis: first, the court 

determines if the party was diligent in amending its contentions and second, the court determines 

whether the non-moving party would suffer undue prejudice if the motion to amend is granted. 

DCG Sys. V. Checkpoint Techs., LLC, No. C 11-03792 PSG, 2012 WL 1309161, at *3 (N.D. Cal. 

Apr. 16, 2012) (“Judges in this district have recognized that the Patent Local Rules are not a 

straightjacket into which litigants are locked from the moment their contentions are served.”)4

 

However, even if, unlike here, the movant were not diligent, a court retains discretion to grant 

leave to amend. Tech. Licensing Corp. v. Blackmagic Design Pty Ltd., No. 13-CV-05184-SBA 

MEJ, 2014 WL 5499511, at *2-3 (N.D. Cal. Oct. 30, 2014) (noting that “courts have allowed 

amendment where ‘the request to amend did not appear to be motivated by gamesmanship, or 

where there was still ample time left in discovery.’”) 

Carnival satisfies both requirements of the good cause standard and accordingly, the Court 

should grant Carnival’s request for leave to amend its Infringement Contentions. Indeed, as this 

Court has recognized, it has “broad discretion” to allow amendment of contentions. See Motorola 

Mobility Inc. v. Apple Inc., No. 1:10-cv-23580-RNS, Order Allowing Motorola to Supplement 

Invalidity Contentions, ECF No. 259 (S.D. Fla. March 9, 2012) (finding that granting leave to 

amend invalidity contentions would “ensure that this matter is decided on the merits rather than 

on the basis of procedural technicalities.”) 

I. CARNIVAL DILIGENTLY SOUGHT TO AMEND ITS INFRINGEMENT 

CONTENTIONS. 

 Here, Carnival was both diligent in discovering the information forming the basis of its 

proposed amendment, and in seeking leave to amend once new evidence has been discovered. See 

e.g. Linex Techs., Inc. v. Hewlett-Packard Co., No. C 13-159 CW, 2013 WL 5955548, at *1-2 

(N.D. Cal. Nov. 6, 2013) (record demonstrated that the plaintiff amended its contentions as it 

gained evidence from the defendants). The critical question is whether the moving party could 

have discovered the new information had it acted with the requisite diligence. Id; see also 

ProconGPS, Inc. v. Skypatrol, LLC, No. 11–3975, 2013 WL 1788049, at *2 (N.D. Cal. Apr.26, 

2013) (granting amendment where the party moved diligently following the receipt of highly 

4

 Because Local Patent Rule 3-6 is modeled after the Northern District of California local patent 

rules, case law from that district is instructive. See e.g. Motorola Mobility Inc. v. Apple Inc., 

No. 1:10-cv-23580-RNS, Order Allowing Motorola to Supplement Invalidity Contentions, ECF 

No. 259 (S.D. Fla. March 9, 2012) (citing N.D. Cal. case). 

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confidential non-public discovery, and amendments did not add new products to the case). 

First, Carnival was diligent in seeking the information that forms the basis of Carnival’s 

amended allegations. The documents were produced by DeCurtis in response to discovery 

requests that Carnival served in June 2020 on the first day discovery was permitted; thus, Carnival 

did not delay in attempting to obtain from DeCurtis the information that Carnival subsequently 

received shortly before its infringement contention deadline. Further, DeCurtis only produced the 

pertinent documents on the eve of Carnival’s deadline to serve its Infringement Contentions, and 

notably did so under a Highly Confidential – Attorneys Eyes Only designation, meaning that 

Carnival could not have obtained these documents but for DeCurtis’s production. Fortinet, Inc. v. 

Palo Alto Networks, Inc., No. C-09-00036 RMW, 2010 WL 4608250, at *1 (N.D. Cal. Nov. 5, 

2010 (allowing amendment where Fortinet was not able to discover nonpublic information about 

the accused products despite diligent discovery efforts); ProconGPS, Inc. v. Skypatrol, LLC, No. 

C 11-3975 SI, 2013 WL 1788049, at *1 (N.D. Cal. Apr. 26, 2013) (in granting motion to amend 

infringement contentions, noting “[the plaintiff] states that the recent discovery included detailed 

information about the internal workings of [the defendant’s] products, and that this information is 

not publicly available, as evidence by the fact that it is almost entirely made up of material that 

[the defendant] has designated ‘Highly Confidential – Attorney’s Eyes Only.’”) 

In addition, the agreements contain relevant factual information pertaining to Carnival’s 

infringement theories beyond what was previously available to Carnival. As explained in detail in 

the Factual Background section above, the “Highly Confidential” 

. 

Thus, Carnival was diligent in discovering the basis for the amendment. ProconGPS, Inc. 

v. Skypatrol, LLC, No. C 11-3975 SI, 2013 WL 1788049, at *1–2 (N.D. Cal. Apr. 26, 2013) 

(finding diligence where the amendment was based on recently produced documents where the 

defendant had initially delayed in producing responsive documents); Linex Techs., Inc. v. HewlettPackard Co., No. C 13-159 CW, 2013 WL 5955548, at *2 (N.D. Cal. Nov. 6, 2013) (concluding 

that Linex was sufficiently diligent where “Linex amended its infringement contentions as it 

gained access to the relevant evidence from Defendants”). 

Second, in addition to acting diligently to discover the basis for the amendment, Carnival 

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also has been diligent in promptly seeking leave to amend its Infringement Contentions. Following 

Carnival’s review of DeCurtis’s September 23rd document production, Carnival timely moved on 

October 13, 2020 for leave to amend its First Amended Complaint to allege its new theories of 

infringement. ECF Nos. 81, 85. On October 21, 2020, the Court granted Carnival’s motion for 

leave to amend its First Amended Complaint. ECF No. 86. Carnival then filed its Second 

Amendment Complaint on the same day. ECF No. 88. Following the granting of that motion, 

Carnival conferred with counsel for DeCurtis regarding the relief requested herein on November 

5, 2020, filed a motion to seal its forthcoming motion for leave to amend on November 13, 2020 

(ECF No. 98) and now following the grant of that motion to seal, files this motion seeking leave 

to amend its Infringement Contentions to conform to the allegations that already are set forth in 

Carnival’s Second Amended Complaint.5

Accordingly, the facts demonstrate that Carnival has been diligent in moving to amend its 

infringement theories. Ecomsystems, Inc. v. Shared Mktg. Servs., Inc., No. 8:10-CV-1531-T33MAP, 2012 WL 12899143, at *1 (M.D. Fla. Jan. 25, 2012) (citing O2 Micro Int'l v. Monolithic 

Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006) (interpreting “good cause” to mean that “a 

party has been diligent in amending its contentions after the discovery of new evidence”))6; DCG 

Systems, 2012 WL 1309161, at *3 (granting amendment where “the manuals giving rise to the 

proposed amendment were not publicly available [and] DCG tendered its proposed amendments a 

few weeks after it received them”). 

Because Carnival was diligent in seeking leave to amend its infringement contentions, and 

because amendment would not frustrate the Patent Rules’ purpose of “require[ing] parties to 

5

 Practically speaking, it would not have made sense for Carnival to submit this request prior to 

the Court granting Carnival leave to amend its complaint. Because the amendment to Carnival’s 

complaint and the amendment to its infringement contentions track each other, had the Court 

denied Carnival’s request to amend the complaint, a request to amend infringement contentions 

would have been moot. 

6

 In Ecomsystems, Inc., the court found good cause for amendment of the plaintiff’s infringement 

contentions pursuant to the standard in Foman v. Davis, 371 U.S. 178 (1962), which considers 

factors of undue delay, bad faith, repeated failure to cure deficiencies, undue prejudice, and futility 

in determining whether to deny amendment. Ecomsystems, Inc., 2012 WL 12899143, at *1. None 

of those factors weigh against amendment here: as explained, Carnival has promptly moved for 

leave to amend to conform its infringement contentions with the allegations of its Second 

Amended Complaint and thus, no prejudice will result to DeCurtis as discussed infra. Further, the 

factors of futility and failure to cure deficiencies are inapplicable under the facts at hand. 

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crystallize their theories of the case early in the litigation,” Carnival should be granted leave to 

amend. See Tech. Licensing Corp. v. Blackmagic Design Pty Ltd., No. 13-CV-05184-SBA MEJ, 

2014 WL 5499511, at *3 (N.D. Cal. Oct. 30, 2014) (citing O2 Micro Int'l v. Monolithic Power 

Sys., Inc., 467 F.3d 1355, 1366 n. 12 (Fed. Cir. 2006)). 

II. CARNIVAL’S AMENDMENT WILL NOT PREJUDICE DECURTIS. 

 Granting Carnival’s motion for leave to amend its Infringement Contentions will not 

prejudice DeCurtis, particularly considering the early stage of this litigation. See Fortinet, 2010 

WL 4608250, at *1 (concluding that “in light of the relatively early stage of this case” defendant 

would not be unduly prejudiced by allowing amendment of Fortinet’s infringement contentions). 

Courts have found a lack of prejudice despite that an amendment “may force [defendant] to 

research further prior art [or] amend its invalidity contentions” (DCG Systems, 2012 WL 1309161, 

at *3), and even in circumstances where the court finds that, unlike here, the moving party “did 

not move to amend as expeditiously as it could have.” Contra MediaTek, Inc. v. Freescale 

Semiconductor, Inc., No. C11-5341 YGR JSC, 2013 WL 2403644, at *8 (N.D. Cal. May 31, 2013). 

Here, there is a July 12, 2021 deadline to complete fact discovery and an August 25, 2021 

deadline to complete expert discovery, and the case will not proceed to trial until early 2022 [ECF 

No. 73]; thus, DeCurtis has ample time to conduct discovery on Carnival’s additional infringement 

theories. See e.g., Linex Techs., Inc. v. Hewlett-Packard Co., No. C 13-159 CW, 2013 WL 

5955548, at *2 (N.D. Cal. Nov. 6, 2013) (allowing amendment because “case remain[ed] in its 

early stage”); Yodlee, Inc. v. CashEdge, Inc., No. C 05-01550, 2007 WL 1454259 at *2 (May 17, 

2007) (“[t]here is still ample time left in the discovery period, so the Patent Local Rules’ concern 

with parties sandbagging opponents late in the discovery period is also not at issue.”); Technology 

Licensing Corp. v. Blackmagic Design Pty Ltd., 2014 WL 5499511Case No. 13-cv-05184, at *3 

(N.D. Cal. Oct. 30, 2014) (same, where dates had not yet been set for close of fact or expert 

discovery). 

Furthermore, claim construction has not commenced; consequently, DeCurtis has adequate 

time to consider Carnival’s infringement theories here too. See ECF No. 73. Notwithstanding, 

some courts have found a lack of prejudice even after the filing of claim construction briefs. See 

Vasudevan Software, Inc. v. Int'l Bus. Machines Corp., No. C09-05897 RS HRL, 2011 WL 

940263, at *3–4 (N.D. Cal. Feb. 18, 2011) (“[w]hile it is true that [plaintiff] did not move for leave 

to amend until after the parties filed their claim construction briefs and [the magistrate judge] held 

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the claim construction hearing, the Court is not convinced that [plaintiff’s] proposed amendments 

will dramatically affect any of the claims that were construed, and [the magistrate judge] can issue 

a supplemental claim construction order if he believes it to be necessary” and thus, the defendant 

“would not be unduly prejudiced” by the court granting leave to amend contentions); 24/7 

Customer, Inc. v. Liveperson, Inc., No. 315CV02897JSTKAW, 2016 WL 6673983, at *3 (N.D. 

Cal. Nov. 14, 2016) (granting Liveperson’s motion to amend invalidity contentions even though 

34/7 has already selected terms for claim constriction, submitted its claim construction positions, 

filed its opening brief, and selected claims for assertion); MediaTek, Inc. v. Freescale 

Semiconductor, Inc., No. C11-5341 YGR JSC, 2013 WL 2403644, at *1, 8 (N.D. Cal. May 31, 

2013) (granting in part MediaTek’s motion for leave to amend its infringement contentions even 

where “MediaTek did not move to amend as expeditiously as it could have” and the motion to 

amend was brought after filing of claim construction briefing and after Markman hearing). 

Carnival’s infringement theories already are set forth in its Second Amended Complaint, 

making amendment of its contentions particularly appropriate. See e.g. SanDisk Corp. v. Round 

Rock Research LLC, No. C-11-5243-RS, 2013 WL 12173917 at *1 (N.D. Cal. Aug. 6, 2013) 

(“[e]ven if there is room for disagreement as to how diligent [the defendant] was, at this juncture 

in the schedule, permitting the amendment of the counterclaims is warranted under Rule 15, with 

the result that there is good cause for amending the infringement contentions as well.”) 

At this stage of the case, DeCurtis cannot show that granting leave to amend would 

prejudice DeCurtis, particularly since DeCurtis already was on notice of these infringement 

theories at the time it served its non-infringement contentions on October 29. Indeed, DeCurtis 

already addressed these theories in those non-infringement contentions. Exhibit N at 5-6, 11-12. 

The contentions do not add new patents or new products. The contentions do not assert new 

claims. The contentions do not change the substance of Carnival’s theories as to how the accused 

devices practice the asserted claims; they merely show how DeCurtis’s activities with respect to 

those devices infringe additional sections of the Patent Act based on the newly produced discovery. 

This belies any contention by DeCurtis that it would expend resources in responding to Carnival’s 

infringement theories. In any event, such an argument should be rejected in favor of a full and fair 

determination of this litigation on the merits. See Tech. Licensing Corp. v. Blackmagic Design Pty 

Ltd., No. 13-CV-05184-SBA MEJ, 2014 WL 5499511, at *3 (N.D. Cal. Oct. 30, 2014) (rejecting 

the defendant’s argument it would be prejudiced because it had already served invalidity 

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contentions, concluding any “tax” on the defendant’s resources was outweighed by the plaintiff’s 

“right to develop new information in discovery, as well as the interest in considering material 

information to secure the just resolution of this action.”). Furthermore, during the parties’ meet 

and confer process, DeCurtis did not identify any changes it would need to make to its contentions 

in response to Carnival’s amendment.7 

On the other hand, allowing Carnival to amend its infringement contentions to comport 

with the allegations of its Second Amended Complaint will further the interests of justice. See e.g. 

Tech. Licensing Corp. v. Blackmagic Design Pty Ltd., Case No. 13-cv-05184, 2014 WL 5499511, 

at *3 (N.D. Cal. Oct. 30, 2014) (amendment at this time would not “frustrate the [patent rules’] 

goal of ‘requiring parties to crystallize their theories of the case early in the litigation.’”); DCG 

Systems, 2012 WL 1309161, at *3. If the Court were to deny Carnival leave to amend its 

Infringement Contentions, then Carnival effectively would be precluded from pursuing theories 

already set forth in its Second Amended Complaint, thereby prejudicing Carnival. Motorola 

Mobility Inc., No. 1:1-cv-23580-RNS, ECF No. 259 at 2 (“[t]he Court finds that the prejudice to 

[the defendant] if not allowed to supplement would be too great, and may preclude a fair 

determination of this case on the merits.”) 

CONCLUSION

WHEREFORE, for the foregoing reasons, Carnival respectfully requests that this Court 

grant Carnival’s motion for leave to amend its Infringement Contentions. 

Rule 7.1 Certificate of Good Faith Conference 

Pursuant to Local Rule 7.1, I hereby certify that counsel for the movant has conferred with 

all parties who may be affected by the relief sought in the motion in a good faith effort to resolve 

the issues raised in this motion and has been unable to do so. Counsel for DeCurtis advised that 

DeCurtis intends to oppose Carnival’s motion for leave to amend its infringement contentions. 

7

 Carnival would not oppose a reasonable request by DeCurtis to amend its contentions to respond 

specifically to Carnival’s amendment. 

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Dated: December 2, 2020 RESPECTFULLY SUBMITTED, 

GRAYROBINSON, P.A. 

333 S.E. 2nd Avenue, Suite 3200 

MIAMI, FL 33131 

TEL: (305) 416-6880 

By: /s/ Jorge Espinosa 

Jorge Espinosa 

Florida Bar No. 779032 

jorge.espinosa@gray-robinson.com 

Robert R. Jimenez 

Florida Bar No. 72020 

robert.jimenez@gray-robinson.com 

Diana Marie Fassbender 

Florida Bar No. 0017095 

dszego@orrick.com 

Steven J. Routh (pro hac vice) 

T. Vann Pearce, Jr. (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP

Columbia Center, 

1152 15th Street, N.W. 

Washington, D.C. 20005-1706 

Tel: (202) 339-8533 

Robert L. Uriarte (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE 

LLP

1000 Marsh Road 

Menlo Park, CA 94025 

Tel: (650) 289-7105 

Attorneys for CARNIVAL CORPORATION

 

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CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on December 2, 2020, a redacted copy of the 

foregoing was served electronically, via CM/ECF, on all counsel of record who are deemed to 

have consented to such service under the Court’s local rules. An unredacted version of the 

foregoing brief and supporting exhibits are being served electronically, via email, on all counsel 

of record who are deemed to have consented such service under the Court’s local rules. 

Dated: December 2, 2020

By: /s/ Jorge Espinosa

 Jorge Espinosa 

 

4132-2331-7800 

Case 1:20-cv-22945-RNS Document 107 Entered on FLSD Docket 12/02/2020 Page 17 of 17