Federal Judiciary

Motion for Leave to Amend Invalidity Contentions Denied

By Michael Smith

The order isn't reported yet, but I thought I'd post on Judge Clark's recent opinion (June 9, 2008) denying the defendant's motion for leave to amend its invalidity contentions in the Iovate v. BSN litigation pending in Lufkin, as such orders are always of interest to practitioners.  The case number is 9:07cv46-RC and the docket number of the order is #162.
BSN sought leave to add several prior art references, but Judge Clark found that the references were all available at the time BSN filed its original and previously amended invalidity contentions, and that it had waited in some cases nearly three months after discovering them before filing its motion for leave to add them.  Judge Clark noted that the case is set for trial in September, and fact discovery closes in less than a month, yet BSN's motion for leave did not even include the substance of the proposed amendments, as required by Local Rule CV-7(k).  This failure presented a particular problem later on, when Judge Clark noted that the prejudice to the plaintiff was greater precisely because of this failure to specifically identify where in the prior art the elements of the claim could be found.
Of interest to practitioners is the cogent analysis in the order of the history and purpose of the local patent rules and their centerpiece requirement of mandatory contentions which in the ordinary course of events cannot be amended without a showing of good cause.  Also of interest is Judge Clark's explicit statement that as the ED Tex rules were modeled on the ND Cal rules, he considers the ND Cal's interpretations of its rules "persuasive authority."  Other Eastern District judges have, of course cited ND Cal cases on its patent rules when discussing the parallel ED Tex rule, but offhand I don't recall a court actually saying this before - it was simply assumed that a ND Cal case on point was worth citing.
Judge Clark analyzes the motion for leave using his customary five factor analysis (some formulations only come up with four, but the interests are essentially the same, although some of us might think that different judges consider different factors to be more important). 
One thing Judge Clark noted repeatedly in this case was an evidentiary gap in BSN's claims.  For example, it claimed that older bodybuilding magazines it was seeking leave to use were not available, but it nowhere supported that with an affidavit - and the plaintiff showed that they were in fact available.  Same thing for an old book.  BSN alleged that it was out of print and hard to find.  Plaintiff adduced evidence to the contrary, and Judge Clark got on Amazon and found it easily as well.  (Don't you hate it when that happens?)  Finally, BSN sought to add patents prosecuted by the plaintiff, but Judge Clark thought that searching for prior patents by the plaintiff was something that should have been done at the outset but, again, the chief problem seemed to be that the Court did not believe that the plaintiff carried its burden to show the "good cause" required by P.R. 3-6(b).  Good cause, in other words (mine, not the Court's) requires a pretty good excuse, and the Court didn't believe one was before it.
As noted above, the failure to specifically identify where in the prior art the claims could be found prejudiced the plaintiff standing alone, but Judge Clark went further in his analysis, noting the "pernicious effect" of accepting BSN's argument that simply producing the prior art references put the plaintiff on notice of BSN's invalidity contentions.  "Lawyers who attempted to analyze the possible range of claims against a client would be punished while lazy attorneys would be rewarded. Parties would be encouraged to adopt a
?rolling? approach to infringement and invalidity contentions in the hope of hiding their true
intentions until late in a case. This would thwart the purpose of the local patent rules."
Accordingly, Judge Clark denied the motion.  I'll revise this post if and when the case comes out on Westlaw to add the cite.

Full post as published by Eastern District of Texas Federal Court Practice on June 11, 2008 (boomark / email).