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Batting .500 on motions for leave to amend invalidity contentions

By Michael C. Smith

ACQIS v. IBM, 6:09cv148 (E.D. Tex. 1/20/11)

Judge: Leonard Davis

Holding: Motions for Leave to Amend Invaldity Contentions GRANTED in part and DENIED in part.

Motion for leave to amend contentions, both infringement and invalidity are creatures peculiar to patent local rules that don't permit such amendment absent good cause.  But they apply familiar standards, i.e. the "good cause" requirement of FRCP 16 for amendment of stuff after the deadline for the stuff has passed. (The older I get the fewer nouns I really need - or at least can remember).

In this case, the defendant wanted to add two additional pieces of prior art, both of which were products developed by the defendants or their acquired companies.  (Ed note: I argued these motions on behalf of ACQIS at the hearing).  This similarity, plus the fact that the motions shared factual similarities - filed at the same time, in the same litigation and asserting many of the same facts as justification makes this opinion by Judge Davis of particular interest because he found that the facts that were not similar - which he identifies in the ruling - justified denying one but granting the other.  The Court ruled from the bench at the pretrial hearing in this case, and followed up with this written opinion.

The opinion contains one other section of note, and that is Judge Davis' rejection - citing liberally to prior opinions by Judge Ron Clark of Beaumont, who has written extensively on this area - of the argument as to one of the motions that good cause wasn't required because this was really an amendment that could be made of right under P.R. 3-6(a)(2)(B) as a result of the Court's claims construction.   As the standards for when such amendment is permitted are not well known, this section is worth reproducing in full:

This argument also lacks merit. IBM should have prepared for the possibility that the Court would not adopt its proposed limitation. A party cannot argue that merely because its proposed claim construction is not adopted by the Court, it is surprised and must prepare new invalidity contentions. Convolve, Inc. v. Compaq Computer Corp., 2006 WL 2527773 (S.D.N.Y. August 31, 2006) (holding that parties who have notice of the opposing party?s claim construction but do not prepare for the possibility that the court may adopt it can be held accountable); Finisar Corp., 424 F. Supp. 2d at 901 (granting motion to strike amended invalidity contentions); Nike, Inc. v. Adidas Am., Inc., 479 F. Supp. 2d 664, 667 (E.D. Tex. 2007) (Clark, J.) (granting motion to strike amended infringement contentions even though the court adopted neither party?s proffered claim constructions); Mass Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284, 286 (E.D. Tex. 2008) (Davis, J.). Accepting such an argument would encourage parties to file narrow proposed constructions and hide important prior art until later in the case. Finisar Corp., 424 F. Supp. 2d at 901. For these reasons, the exception articulated by Patent Rule 3-6(a)(2)(B) is narrowly drawn to circumstances where the Court?s construction reasonably surprises a party. Accordingly, IBM is not entitled to amend as a right.

This case is set for jury selection the beginning of February in Tyler before Judge Davis.

Full post as published by Eastern District of Texas Federal Court Practice on January 28, 2011 (boomark / email).