Hydrodynamic Industrial Co Ltd v. Green Max Distributors Inc et al
Filing
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ORDER DENYING MOTION FOR LEAVE TO AMEND 53 by Judge Otis D. Wright, II . (lc) .Modified on 8/29/2013 (lc).
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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HYDRODYNAMIC INDUSTRIAL CO
LTD.,
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v.
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Plaintiff,
Case No. 2:12-cv-05058-ODW (JEMx)
ORDER DENYING MOTION FOR
LEAVE TO AMEND [53]
GREEN MAX DISTRIBUTORS, INC.,
Defendant.
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GREEN MAX DISTRIBUTORS, INC.,
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v.
Counterclaimant,
HYDRODYNAMIC INDUSTRIAL CO
LTD.,
Counterdefendant.
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On July 31, 2013, Plaintiff Hydrodynamic Industrial Co Ltd. filed this Motion
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for Leave to Amend its Invalidity Contentions. (ECF No. 50.) Hydrodynamic seeks
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to add numerous photos, publications, and prior-art references to its original invalidity
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contentions. But since Hydrodynamic has failed to establish the requisite good cause
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for amending its Invalidity Contentions, the Court DENIES its request.
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The Patent Local Rules reflect a more conservative approach to amendment
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than the liberal policy for amending pleadings under the Federal Rules of Civil
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Procedure. Patent Local Rule 3-6 permits amendment of invalidity contentions “only
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by order of the Court upon a timely showing of good cause.” Compare Fed. R. Civ.
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P. 15(a)(2) (permitting leave to amend “when justice so requires.”). To make a
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satisfactory showing of good cause, a party seeking to amend its invalidity contentions
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must show that it “acted with diligence in promptly moving to amend when new
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evidence is revealed.” See O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d
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1355, 1363 (Fed. Cir. 2006) (affirming the district court’s denial of leave to amend
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infringement contentions where the party seeking to amend had the necessary
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discovery almost three months before moving for leave to amend). Further, even if
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the moving party establishes that it was diligent, the Court then considers the potential
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prejudice to the nonmoving party in determining whether leave to amend should be
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granted. Id. at 1368.
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One circumstance that may support a finding of good cause is the “[r]ecent
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discovery of material, prior art despite earlier diligent search.” Patent L.R. 7-15.
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Here, Green Max seeks to add numerous additional references to its original invalidity
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contentions. These additional references include (1) additional photos that “more
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clearly and from different angles” depict the prior art, (2) full versions of the
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publications that depict the prior-art references, (3) nine newly cited publications, and
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(4) eleven newly cited prior art references. (Compare Mot. Ex. A, with Ex. B.)
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Although newly discovered prior art can provide a basis to amend a party’s invalidity
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contentions, the party seeking to amend must still make a showing of diligence. O2
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Micro, 467 F.3d at 1366.
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Green Max argues that despite not moving to amend its invalidity contentions
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until August 2013, Green Max was diligent because it provided Hydrodynamic with
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many of the additional references it seeks to include. (Mot 4–5.) Green Max asserts
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that it provided Hydrodynamic with updated invalidity contentions containing “most”
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of the additional references in response to an interrogatory on February 20, 2013, and
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then disclosed some of the additional references at Green Max’s deposition’s of
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Hydrodynamic conducted on July 16, 2013. (Id.) But Green Max’s disclosure of the
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prior art to Hydrodynamic is irrelevant to the diligence inquiry. Green Max must have
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been diligent in discovering the new prior art and in bringing its motion to amend its
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invalidity contentions—not in its disclosure to Hydrodynamic. See O2 Micro, 467
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F.3d at 1363.
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Hydrodynamic points out that Green Max has been aware of the need to amend
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its invalidity contentions since at least April 2013. (Opp’n 3.) In support of this
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claim, Hydrodynamic cites to counsels’ email correspondence of April 3, 2013. (Id.)
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In the correspondence, Hydrodynamic informed Green Max that it was aware that
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Green Max possessed new, undisclosed prior art and asked Green Max to remit the
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prior art and update its invalidity contentions accordingly.
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Nonetheless, Green Max waited until July 31, 2013,—almost four months later—to
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file its Motion.
(Id.; Mot. Ex. E.)
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Nowhere in its Motion does Green Max attempt to explain this almost
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four-month delay. Both parties agree that Green Max (1) provided Hydrodynamic
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with updated invalidity contentions in February 2013, (2) received Hydrodynamic’s
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April email urging it to amend its invalidity contentions, and (3) utilized the prior art
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in its July deposition. And yet at no time in this period did Green Max move to
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amend its invalidity contentions. Quite simply, Green Max’s failure to timely file its
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Motion is baffling.
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The Court also notes that Hydrodynamic would be substantially prejudiced by
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the Court permitting Green Max to amend its invalidity contentions at this late date.
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Although Hydrodynamic has not filed any substantive motions that would be
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impacted by Green Max’s amendment, the August 5, 2013 discovery cut off date has
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long passed. Permitting amendment at this time would prejudice Hydrodynamic who
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is no longer able to conduct discovery regarding the various new prior-art references.
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In sum, Green Max has failed to establish diligence in seeking amendment, and
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therefore has also failed to establish good cause for amendment under Patent Local
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Rule 3-6. Because Hydrodynamic has failed to establish good cause for amending its
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Invalidity Contentions, the Court DENIES the Motion for Leave to Amend.
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IT IS SO ORDERED.
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August 29, 2013
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____________________________________
HON. OTIS D. WRIGHT II
UNITED STATES DISTRICT JUDGE
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