Intellectual Property Law

In a recent decision addressing the Patent Local Rules of the Northern District of California, Judge Patel granted Stanford University leave to amend its infringement contentions to reach a third product of defendant Roche Molecular Systems (called "TaqMan").  The product had been approved for sale in the United States several months after Stanford had submitted its preliminary infringement contentions pursuant to the Patent Local Rules.  (Court order available on Pacer)  The court granted leave to amend even though Stanford waited five months after serving its amended infringement contentions on Roche to formally seek leave to amend from the court.

In its order, the court took a practical approach in granting leave to amend, noting "that judicial resources will be preserved if the amendment is granted.  This action is between parties that seem to have endless resources, as made clear by their numerous appeals, motions and subsequent motions to reconsider.  If this amendment is not allowed, Stanford will certainly bring a new suit with respect to the TaqMan against Roche.  Stanford will then likely attempt to relate that new case to the present action.  This provides another compelling reason to allow the amendment: it is more efficient to dispose of all the issues amongst a set of parties in one action, without splitting the litigation into various pieces in front of different judges or creating the wasteful task of analyzing administrative motions that relate cases."  Id. at 6.

This case is of particular interest given the recent changes to the Patent Local Rules which the IP Blawg has been monitoring closely.  Judge Patel did not apply the amendments (which no longer allow for "preliminary" infringement contentions) since they are effective only for cases filed on or after March 1, 2008.  It is unclear, however, whether the same result would apply under the amendments.  Although the "good cause" standard governing amendments to contentions remains the same (compare former Patent Local Rule 3-7 to new Patent Local Rule 3-6), the new rule expressly requires a "timely showing of good cause."  Do you think Stanford met this requirement here?  Will courts simply disregard the efficiencies noted in Judge Patel's order if faced with this issue in the future?

For a discussion of these and other issues concerning the impact of the amendments to the Patent Local Rules, BASF's IP Section will be hosting a bench/bar conference on April 2 at the federal courthouse in San Francisco.  We hope to see you there!

Today?s Blogger:  Jeff Fisher