govinfo:USCOURTS-cand-3_17-cv-03848-8

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United States District Court 
Northern District of California 
 
 
 
 
 
 
UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF CALIFORNIA 
 
XPERTUNIVERSE, INC., 
Plaintiff, 
v. 
 
CISCO SYSTEMS, INC., 
Defendant. 
 

 
ORDER GRANTING IN PART AND 
DENYING IN PART MOTION FOR 
LEAVE TO AMEND INFRINGEMENT 
CONTENTIONS 
 
 
I. INTRODUCTION 
The present motion relates to a nearly ten-year old patent action between XpertUniverse, 
Inc. (“XU”) and Cisco Systems (“Cisco”) in which XU alleges Cisco infringes U.S. Patent No. 
7,499,903 (“ ʼ903 Patent”). In January 2026, a six-year stay pending related ex parte 
reexaminations with the U.S. Patent and Trademark Office (“Patent Office”) was lifted, and XU 
now moves for leave to amend its infringement contentions in light of newly released product 
versions that allegedly infringe the ʼ903 Patent. For the following reasons, the motion is granted in 
part and denied in part. 
II. BACKGROUND 
XU filed this lawsuit on July 6, 2017, asserting that Cisco infringes Claim 12 of the ’903 
Patent. XU served its original infringement contentions on November 24, 2017. After the parties 
completed all their claim construction disclosures and briefing, Cisco filed its first reexamination 
request at the Patent Office on June 1, 2018, challenging the validity of Claim 12 (“First 
Reexam”). The case was stayed pending the First Reexam. 

 

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After the first stay was lifted in May 2019 following the conclusion of the First Reexam, 
XU requested to amend its infringement contentions to name three additional products, the 
Packaged Contact Center Enterprise (“PCCE”), Hosted Collaboration Solution for Contact Center 
(“HCS-CC”), and Customer Journey Platform (“CJP”) products. The request was granted in part 
and denied in part in July 2019. XU was granted leave to amend its infringement contentions to 
accuse the CJP product, which was acquired by Cisco in February 2018, and version 12 of the 
PCCE and HCS-CC products, the newest version of the PCCE and HCS-CC products which were 
released while the case was stayed. The request was denied as to other prior versions of the PCCE 
and HCS-CC products because XU had not adequately identified them in its initial contentions 
and that failure resulted from a lack of diligence. Dkt. 168 at 10. After the conclusion of the First 
Reexam, the parties also were ordered to redo their claim construction disclosures, discovery, and 
briefing. 
In early 2020, the parties engaged in a series of meet-and-confers regarding XU’s desire to 
amend its infringement contentions. In February and March 2020, the parties filed joint letters 
with the Court in which XU agreed to provide tables (“Stipulated Summary Tables”) “that 
specifically identif[y] where each of the listed claim limitations are allegedly found in each of the 
accused products” and “serve as a reference for the Court and the record to the extent a dispute 
arises later with respect to XU’s infringement contentions.” Dkt. 219 at 1 (quoting Dkt. 213 at 1–
2). On March 17, 2020, the parties jointly filed stipulated second amended infringement 
contentions and related Stipulated Summary Tables. They stipulated that “XU is limited to the 
specifically identified mappings in these attached exhibits and will not pursue any infringement 
theories or mappings for those listed claim limitations that are not specifically and explicitly 
identified.” Dkt. 223 at 1. 
Meanwhile, in December 2019, Cisco sought a second reexamination, again challenging 
Claim 12, which was granted in February 2020. XU moved to stay the case in May 2020, and in 
June 2020 the stay was granted (“June 2020 Stay”) pending the Second Reexam. The Second 
Reexam and June 2020 Stay lasted six years. After the Second Reexam concluded in October 

 

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2025, Cisco made a third request for ex parte reexamination, which was denied in November 
2025. 
In January 2026, the stay was lifted, and the parties were ordered to submit a joint 
proposed case schedule. The parties, however, could not come to an agreement. XU proposed 
redoing both claim construction and its infringement contentions, in light of newly released, 
allegedly infringing products and product versions, and proposed no cutoff for fact discovery. 
Cisco sought a June 2026 end of fact discovery, proposed case milestones through summary 
judgment, and opposed XU’s efforts to redo claim construction and amend infringement 
contentions. 
On February 9, 2026, XU contacted Cisco, identifying allegedly “new infringing products 
and/or new versions of accused products that Cisco released during (or shortly before) the second 
stay.” Dkt. 275-4 at 68. On February 17, 2026, Cisco reminded XU that it cannot “accuse 
additional products of infringement without complying with the Patent Local Rules.” Dkt. 275-4 at 
72. On March 27, 2026, XU proposed to Cisco over 1,000 pages of amended infringement 
contentions, seeking to amend its infringement contentions to include six products: Unified 
Contact Center Enterprise (“UCCE”) version 15; Unified Contact Center Express (“UCCX”) 
version 15; Packaged Contact Enterprise (“PCCE”) version 15; WebEx Contact Center 
(“WXCC”) new post-2020 release; Webex Contact Center Enterprise (“WXCCE”); and Webex 
Contact Center Enterprise for Government (“WXCCE-G”). On April 24, 2026, XU also provided 
Cisco with the related Stipulated Summary Tables as required by the parties’ March 2020 
stipulation. 
On April 29, 2026, Cisco shared with XU its view that XU was not seeking merely to add 
new versions of previously accused products as represented but instead to introduce new 
infringement theories and accuse three additional products, namely WXCC, WXCCE, and 
WXCCE-G. On May 1, 2026, the parties met and conferred, but they were unable to reach an 
agreement. That same day, XU filed the present motion, which Cisco opposes. 
III. LEGAL STANDARD 
A party may amend its infringement contentions “only by order of the Court upon a timely 

 

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showing of good cause.” Patent L.R. 3-6. Non-exhaustive examples of circumstances that may, 
absent undue prejudice to the non-moving party, support a finding of good cause include: an 
adverse claim construction; recent discovery of material prior art despite an earlier diligent search; 
and recent discovery of nonpublic information about the accused product that, despite diligent 
efforts, was not discovered before service of the infringement contentions. Id. 
The good cause analysis proceeds in two steps. First, the party must “proceed with 
diligence in amending [their infringement] contentions when new information comes to light in 
the course of discovery.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365–
66 (Fed. Cir. 2006). The moving party bears the burden of establishing diligence. Id. at 1355. If 
diligence in amending the contentions is found,1 the next question is whether “the nonmoving 
party would suffer prejudice if the motion to amend were granted.” Apple Inc. v. Samsung Elecs. 
Co. Ltd, No. 12-cv-0630-LHK (PSG), 2013 WL 3246094, at *1 (N.D. Cal. June 26, 
2013) (internal quotation marks omitted). “Prejudice is typically found when amending 
contentions stand to disrupt the case schedule or other court orders.” Karl Storz Endoscopy-Am., 
Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 7386136, at *3 (N.D. Cal. Dec. 21, 
2016). “Courts have allowed amendments when the movant made an honest mistake, the request 
to amend did not appear to be motivated by gamesmanship, or where there was still ample time 
left in discovery.” Id. (citation and internal quotation marks omitted). 
The Patent Local Rules “seek to balance the right to develop new information in discovery 
with the need for certainty as to the legal theories.” O2 Micro, 467 F.3d at 1365–66. “[T]he 
philosophy behind amending claim charts is decidedly conservative, and designed to prevent the 
‘shifting sands’ approach to claim construction.” LG Elecs. Inc. v. Q–Lity Computer Inc., 211 
F.R.D. 360, 367 (N.D. Cal. 2002) (citation omitted). Accordingly, the standard is decidedly less 
liberal than that for leave to amend pleadings. See Advanced Micro Devices, Inc. v. LG Elecs., 
Inc., No. 14-CV-01012-SI, 2017 WL 732896, at *2 (N.D. Cal. Feb. 24, 2017). 
 
1 Where the moving party is unable to show diligence, there is “no need to consider the question of 
prejudice,” although a court in its discretion may elect to do so. See id. at 1368. 

 

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IV. DISCUSSION 
Cisco opposes XU’s motion only where, according to Cisco, the proposed amendments 
introduce new products, as opposed to new versions of previously accused products, and new 
infringement theories. XU maintains that the newly accused product versions are newer versions 
of previously accused products and the allegedly new infringement theories merely reflect new 
features. Although these disputes are relevant to whether the parties’ March 2020 stipulation, 
which allows amendments for new versions of previously accused products, applies to XU’s 
request to amend, the Court’s focus is on whether XU has made the requisite good cause showing 
for amendment under Patent Local Rule 3-6. In other words, the analysis focuses on whether XU 
sought its amendments with diligence and whether Cisco would be prejudiced by the amendments. 
A. Newly Accused Product Versions 
1. Diligence 
Diligence in seeking to amend infringement contentions has two parts: it requires diligence 
in discovering the basis for amendment as well as diligence in seeking amendment once the basis 
for amendment has been discovered. Here, Cisco argues that XU fails to explain its delays before 
the June 2020 Stay and those after the stay was lifted in January 2026. Beginning with the latter, 
Cisco is not persuasive. XU has shown that shortly after the June 2020 Stay was lifted, it exercised 
reasonable diligence in seeking the proposed amendments. XU engaged Cisco in February 2026 
about its proposed amendments, exercised diligence in attempting to come to a stipulated 
agreement between February 2026 and May 2026, and exercised diligence in filing this motion on 
May 1, 2026 when XU and Cisco failed to reach an agreement after meeting and conferring. 
Accordingly, a showing of sufficient diligence turns on the latter, i.e., whether XU has met its 
diligence burden despite its delays prior to June 2020. 
There is no dispute that UCCE version 15, UCCX version 15, and PCCE version 15 are 
newer versions of previously accused products and that these later versions were released in 2025 
during the June 2020 Stay. In fact, Cisco does not oppose XU’s amendments to include these 
newer product versions. 
As for WXCC post-2020 release, WXCCE, and WXCCE-G, however, the parties dispute 

 

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to which earlier products these versions relate and whether XU acted with diligence to amend its 
infringement contentions to include them. WXCC post-2020 release and WXCCE-G were released 
during the June 2020 Stay while, according to XU’s own admission, WXCCE was released in 
January 2020. Cisco argues these three product versions are new versions of WXCC and WXCCE 
products, released in April 2018 and January 2020, respectively. Thus, according to Cisco, XU 
must show diligence despite its delays since April 2018 and January 2020. By contrast, XU 
argues, at least to some extent persuasively, that WXCC post-2020 release, WXCCE, and 
WXCCE-G are earlier versions of CJP, which XU did include in its earlier infringement 
contentions. 
Cisco’s own opposition shows that these products are versions of CJP. Cisco includes in its 
opposition excerpts from XU’s prior infringement contentions that include the following product 
descriptions: CJP “locates a live expert in an organization and routes a customer, employee, or 
individual (i.e., a seeker) to the expert, based on the needs of the seeker”; WXCC is “a match and 
route system that locates a live expert/agent and routes a customer, employee or individual other 
contact (i.e., a seeker) to the expert, based on the needs of the seeker”; WXCCE is “a match and 
route system that locates a live expert/agent and routes a customer, employee, or individual other 
contact (i.e., a seeker) to the expert, based on the needs of the seeker”; and WXCCE-G is “routing 
services based on WXCCE and/or UCCE.” Dkt. 284, Opp., at 15–16. Cisco insists that the 
excerpted charts “recognize these are different products” seemingly because the charts use 
different product names. Id. at 16. Cisco has highlighted those product names to emphasize its 
point. See id. Yet, Cisco fails to acknowledge, let alone refute, the descriptions immediately 
following its highlights which make clear that these product versions are later versions of the CJP 
match and route system. 
Since XU included earlier versions of WXCC post-2020 release and WXCCE-G in its 
prior infringement contentions and these two product versions were released during the June 2020 
Stay, XU’s failure to seek amendment earlier to include these two versions does not reflect a lack 
of diligence. XU’s prior contentions put forth its position as to the underlying CJP technology, and 

 

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the amendments it seeks now with regard to WXCC post-2020 release and WXCCE-G could not 
have been made earlier since these later versions were released during the June 2020 Stay. 
However, before the June 2020 Stay, which XU requested in May 2020, XU had five 
months to seek amendment to include WXCCE. This delay without further explanation is 
generally incompatible with the diligence required to show good cause. See DCG Sys. v. 
Checkpoint Techs., LLC, No. C 11-03792 PSG, 2012 WL 1309161, at *3 (N.D. Cal. Apr. 16, 
2012) (“[I]n the bulk of these cases leave to amend was denied because the patentee 
either unreasonably delayed amending the infringement contentions—five months to one year—or 
there were errors or omissions that patentee’s counsel admitted was his own oversight.” (collecting 
cases)). XU blames its delay on Cisco’s refusals to supplement its discovery. See Dkt. 274, Mot., 
at 20. However, XU also admits it relied on publicly available material and “diligent monitoring” 
to identify WXCCE’s release and does not argue that that material only became available after it 
requested the June 2020 Stay or that with diligence it could not have been discovered earlier. See 
id. at 19–20. Accordingly, while “[i]t is certainly possible that time was required” to identify the 
alleged WXCCE infringements, XU has “failed to establish that it required [five months] to do 
so.” See O2 Micro, 467 F.3d at 1367. 
In sum, XU has established diligence with regard to its proposed amendments to include 
UCCE version 15, UCCX version 15, PCCE version 15, WXCC post-2020 release, and WXCCE-
G but not WXCCE. The analysis need not go further with regard to WXCCE-G. 
2. Prejudice 
With no dispute that UCCE version 15, UCCX version 15, and PCCE version 15 are later 
versions of earlier accused products and finding that WXCC post-2020 release and WXCCE are 
later versions of the earlier accused CJP products, Cisco’s arguments that it is prejudiced because 
XU’s proposal improperly expands the scope of the case is unavailing. The same or substantially 
similar products remain at issue. 
Moreover, as XU persuasively explains, its proposed amendments should not affect 
dramatically deadlines for fact discovery, expert discovery, summary judgment, or trial. The 

 

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parties have not taken any fact depositions other than for claim construction in 2019. Nor have 
they reviewed the source code of the accused products. Any additional discovery needed relating 
to the newly released product versions can be completed alongside these outstanding tasks, with 
minimal impact on the fact or expert discovery periods. Accordingly, Cisco will not be prejudiced 
by allowing amendment. See Karl Storz Endoscopy-Am, No. 14-CV-00876-RS (JSC), at *3 
(“Courts have allowed amendments…where there was still ample time left in discovery.” (citation 
and internal quotation marks omitted)). 
B. New Legal Theories 
XU argues that the “new legal theories” in its proposal, as described by Cisco, merely 
reflect new features that were not present in the previously accused product versions. To the extent 
this is true, XU has demonstrated diligence in seeking amendment shortly after the lifting of the 
June 2020 Stay, during which the new product versions—with the new features—were released. 
As for prejudice, to be sure, XU’s position that new features warrant changes to its infringement 
theories indicates some change in the scope of the case, but, since substantial fact discovery 
remains, Cisco would not be prejudiced by the amendments. See Karl Storz Endoscopy-Am, No. 
14-CV-00876-RS (JSC), at *3. Good cause exists to amend the infringement contentions to 
include these legal theories to the extent they reflect new infringing features of the new product 
versions. 
V. CONCLUSION 
For the foregoing reasons, XU has shown good cause in seeking amendment of its 
infringement contentions to include UCCE version 15, UCCX version 15, PCCE version 15, 
WXCC new post-2020 release, and WXCCE-G and to include new legal theories reflecting new 
features of these product versions. The parties are ordered to meet and confer in light of this Order 
and to submit jointly proposed amended infringement contentions or letter briefs reflecting any 
ongoing disputes by July 15, 2026. To the extent the parties cannot come to an agreement, the 
matter will be referred to the assigned magistrate judge for determination. 
 

 

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IT IS SO ORDERED. 
 
Dated: June 2, 2026 
______________________________________ 
RICHARD SEEBORG 
Chief United States District Judge 
 
 

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