The Regents of the University of California et al v. Affymetrix, Inc. et al, No. 3:2017cv01394 - Document 267 (S.D. Cal. 2018)
Court Description: ORDER granting Defendants' 216 Motion for Leave to Amend Invalidity Contentions. Defendants are ordered to serve their amended invalidity contentions on Plaintiffs within 7 days from the date this Order is filed. Signed by Judge Marilyn L. Huff on 8/24/2018. (jah)
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The Regents of the University of California et al v. Affymetrix, Inc. et al Doc. 267 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 13 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA; and BECTON, DICKINSON and COMPANY, Case No.: 17-cv-01394-H-NLS 15 v. ORDER GRANTING DEFENDANTS’ MOTION FOR LEAVE TO AMEND THEIR INVALIDITY CONTENTIONS 16 AFFYMETRIX, INC.; and LIFE TECHNOLOGIES CORP., [Doc. No. 216.] Plaintiffs, 14 17 Defendants. 18 19 On July 18, 2018, Defendants Affymetrix, Inc. and Life Technologies Corp. filed a 20 motion for leave to amend their invalidity contentions. (Doc. No. 216.) On August 13, 21 2018, Plaintiffs the Regents of the University of California, Becton, Dickinson and 22 Company, Sirigen, Inc., and Sirigen II Limited filed a response in opposition to 23 Defendants’ motion. (Doc. No. 262.) On August 17, 2018, the Court took the matter under 24 submission. (Doc. No. 263.) On August 20, 2018, Defendants filed a reply. (Doc. No. 25 265.) For the reasons below, the Court grants Defendants’ motion for leave to amend their 26 invalidity contentions. 27 /// 28 /// 1 17-cv-01394-H-NLS Dockets.Justia.com 1 Background 2 On July 10, 2017, Plaintiffs Regents and Becton, Dickinson filed a complaint for 3 patent infringement against Defendants Affymetrix and Life Technologies, alleging 4 infringement of U.S. Patent No. 9,085,799, U.S. Patent No. 8,110,673, and U.S. Patent No. 5 8,835,113. (Doc. No. 1, Compl.) On September 8, 2017, Defendants filed an answer to 6 Plaintiffs’ complaint. (Doc. No. 37.) 7 On October 6, 2017, the Court issued a scheduling order. (Doc. No. 55.) On 8 November 20, 2017, the Court denied Plaintiff Becton, Dickinson’s motion for a 9 preliminary injunction without prejudice. (Doc No. 69.) On November 30, 2017, the Court 10 issued an amended scheduling order. (Doc. No. 76.) 11 On February 7, 2018, the Court granted the parties’ joint motion for leave for 12 Plaintiffs to file a first amended complaint and to modify the scheduling order. (Doc. No. 13 100.) On February 9, 2018, Plaintiffs filed a first amended complaint: (1) adding Sirigen 14 and Sirigen II as additional Plaintiffs and adding claims that Defendants’ products infringe 15 four Sirigen patents: U.S. Patent No. 9,547,008, U.S. Patent No. 9,139,869, U.S. Patent 16 No. 8,575,303, and U.S. Patent No. 8,455,613; (2) adding infringement allegations against 17 additional accused products; and (3) adding allegations of induced infringement against 18 Defendants. (Doc. No. 101, FAC.) 19 On February 23, 2018, the Court issued a second amended scheduling order. (Doc. 20 No. 105.) On March 26, 2018, the Court issued a claim construction order, construing 21 disputed claim terms from the ’799 patent, the ’673 patent, and the ’113 patent. (Doc. No. 22 138.) On May 1, 2018, the Court granted Defendants’ motion for summary judgment of 23 non-infringement of the ’799 patent. (Doc. No. 170.) On May 14, 2018, the Court denied 24 Defendants’ motion for summary judgment of non-infringement of the ’673 patent and the 25 ’113 patent. (Doc. No. 183.) 26 By the present motion, Defendants move pursuant to Patent Local Rule 3.6(b)(3) to 27 amend their invalidity contentions. (Doc. No. 216-1.) Specifically, Defendants seek to 28 amend their invalidity contentions for the ’673 patent and the ’113 patent to add two 2 17-cv-01394-H-NLS 1 additional prior references, the Yang reference and the Hou reference, and to clarify their 2 contentions as to the “AF750APC” reference. (Id. at 1; see Doc. No. 217, Watson Decl. 3 Ex. A.) 4 5 Discussion I. Legal Standards 6 Patent Local Rule 3.3 require a party opposing a claim of patent infringement to 7 serve on all parties its “Invalidity Contentions” within 60 days after being served with the 8 “Disclosure of Asserted Claims and Infringement Contentions.” Patent Local Rule 3.6(b) 9 provides: 10 11 12 13 As a matter of right, a party opposing a claim of patent infringement may serve “Amended Invalidity Contentions” no later than the completion of claim construction discovery. Thereafter, absent undue prejudice to the opposing party, a party opposing infringement may only amend its validity contentions: ... 14 15 3. upon a timely motion showing good cause. 16 The Federal Circuit has explained that patent local rules such as these “requir[e] both 17 the plaintiff and the defendant in patent cases to provide early notice of their infringement 18 and invalidity contentions, and to proceed with diligence in amending those contentions 19 when new information comes to light in the course of discovery. The rules thus seek to 20 balance the right to develop new information in discovery with the need for certainty as to 21 the legal theories.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 22 1365–66 (Fed. Cir. 2006). “In contrast to the more liberal policy for amending pleadings, 23 ‘the philosophy behind amending claim charts is decidedly conservative, and designed to 24 prevent the “shifting sands” approach to claim construction.’” Verinata Health, Inc. v. 25 Ariosa Diagnostics, Inc., 236 F. Supp. 3d 1110, 1113 (N.D. Cal. 2017). 26 To establish “good cause” under Patent Local Rule 3.6(b)(3), the moving party must 27 demonstrate that it “has acted diligently and the opposing party will not be prejudiced.” Id. 28 (“‘[T]he moving party bears the burden of demonstrating good cause.’”); see O2 Micro, 3 17-cv-01394-H-NLS 1 467 F.3d at 1355. “‘[T]he diligence required for a showing of good cause has two subparts: 2 (1) diligence in discovering the basis for amendment; and (2) diligence in seeking 3 amendment once the basis for amendment has been discovered.’” Karl Storz Endoscopy- 4 Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260, at *3 (N.D. 5 Cal. May 13, 2016). Further, in the context of a motion for leave to amend contentions, 6 “[p]rejudice is typically found when amending contentions stand to disrupt the case 7 schedule or other court orders.” Id.; see WhatsApp Inc. v. Intercarrier Commc’ns, LLC, 8 No. 13-CV-04272-JST, 2014 WL 12703766, at *4 (N.D. Cal. Sept. 3, 2014). 9 II. Analysis 10 A. 11 Defendants have demonstrated that despite their current need to amend their 12 contentions to add two recently discovered prior art references, they were diligent in their 13 previous prior art searches. On May 15, 2018, Defendants served Plaintiffs with their 14 second amended invalidity contentions regarding the ’673 patent, the ’113 patent, and the 15 ’799 patent. (Doc. No. 217, Watson Decl. ¶ 9, Ex. H.) Less than two weeks prior, 16 Defendants also served Plaintiffs with their initial invalidity contentions regarding the ’008 17 patent, the ’869 patent, the ’303 patent, and the ’613 patent. (Id. ¶ 8, Ex. G.) These 18 invalidity contentions spanned 247 pages and included 107 prior art references and 19 numerous claim charts. (Id. Exs. G, H.) The thoroughness of Defendants’ prior invalidity 20 contentions demonstrates their diligence. See Karl Storz Endoscopy-Am., 2016 WL 21 2855260, at *4 (“[Defendant’s] initial invalidity contentions themselves belie a finding that 22 its search was not diligent: they included over 500 prior art references among the 31 claim 23 charts and 400 additional pages of analysis addressing [plaintiff]’s claims. It strains 24 credulity to imagine that [defendant] was not diligent in uncovering and evaluating this 25 many references.”). Diligence 26 In addition, Defendants’ diligence in preparing their prior invalidity contentions is 27 underscored by the number of patents and claims at issue in this case. In the present action, 28 Plaintiffs allege infringement of over a hundred patent claims. (Doc. No. 101, FAC ¶¶ 54, 4 17-cv-01394-H-NLS 1 61, 72, 84, 93, 104, 111.) Courts “have found good cause to amend invalidity contentions 2 due to the large scope of the initial prior art search” based on the number of claims being 3 asserted in the action. Karl Storz Endoscopy-Am., 2016 WL 2855260, at *5; see, e.g., 4 Network Prot. Scis., LLC v. Fortinet, Inc., No. C 12-01106 WHA, 2013 WL 1949051, at 5 *2 (N.D. Cal. May 9, 2013). 6 Further, Defendants were diligent in moving to amend their contentions. Defendants 7 became aware of the Hou and Yang references sometime after May 15, 2018, during the 8 time when they were preparing their IPR petitions. (Doc. No. 217, Watson Decl. ¶ 11.) 9 Defendants gave Plaintiffs notice of their intent to move for leave to amend their 10 contentions to include these two references on July 11, 2018, and Defendants filed the 11 present motion on July 18, 2018, about two months later. (Doc. No. 217, Watson Decl. ¶ 12 12; Doc. No. 216.) The less than two months period between the time Defendants 13 discovered the references at issue and the time Defendants gave Plaintiffs notice of their 14 intent to amend their invalidity contentions is reasonable and establishes Defendants’ 15 diligence in seeking leave to amend.1 See Karl Storz Endoscopy-Am., 2016 WL 2855260, 16 at *7 (finding diligence where the defendant moved for leave to amend within two months 17 of discovering the references at issue and within one month of filing its IPR petition); 18 Radware Ltd. v. F5 Networks, Inc., No. C-13-02021-RMW, 2014 WL 3728482, at *2 19 (N.D. Cal. 2014) (“[U]nder these particular facts, three months’ delay in moving for leave 20 to amend does not undermine [defendant’s] diligence.”). 21 Plaintiffs argue that Defendants could not have been diligent in their previous prior 22 art searches because the Hou and Yang references were both published in major journals 23 in the relevant field and both references are cited in “Huang (2004),” a reference that was 24 included in Defendants’ initial December 15, 2017 invalidity contentions. (Doc. No. 262 25 26 1 27 28 Plaintiffs criticize Defendants for failing to state the precise date on which they discovered the Yang and Hou references. (Doc. No. 262 at 6-7, 11.) But regardless what that specific date was, it is undisputed that it was less than two months between the date of discovery and the date Defendants notified Plaintiffs of their intent to amend their contentions, a reasonable period of time. 5 17-cv-01394-H-NLS 1 at 7-8.) But other courts have rejected similar arguments, particularly in a case such as 2 this, where the defendant is facing an enormous number of a claims and a correspondingly 3 enormous number of relevant prior art references. See Karl Storz Endoscopy-Am., 2016 4 WL 2855260, at *5 (“[T]he mere possibility that [defendant] might have discovered the 5 references earlier does not defeat its diligence.”). “Unsuccessful prior art searches, 6 standing alone, do not demonstrate an absence of diligence.” Network Prot. Scis., 2013 7 WL 1949051, at *2. In sum, Defendants have demonstrated that they were diligent in 8 discovering the prior art references at issue and moving to amend to include them in their 9 contentions. 10 B. 11 Turning to the prejudice, here, Defendants have demonstrated that Plaintiffs would 12 not be prejudiced by amendment of the invalidity contentions. This action is currently in 13 the middle of the discovery and claim construction stages of the case. A claim construction 14 hearing on the ’008 patent, the ’869 patent, the ’303 patent, and the ’613 patent is scheduled 15 for August 31, 2018. (Doc. No. 105 at 14.) Initial expert reports are not due until 16 November 9, 2018, and the close of fact and expert discovery is not until January 24, 2019. 17 (Id. at 14-15.) The pretrial motion cutoff is not until February 14, 2019, and the trial date 18 is scheduled for May 14, 2019. (Id. at 15-16.) “Therefore, [Plaintiffs] will not be 19 prejudiced by amendment of the invalidity contentions because ‘there is still ample time 20 left in the discovery period.’” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12- 21 05501 SI, 2014 WL 1648175, at *3 (N.D. Cal. Apr. 23, 2014) (finding no prejudice where 22 the fact discovery deadline was four months away, the expert discovery deadline was seven 23 months away, and the trial date was ten months away). Prejudice 24 Further, Defendants’ proposed amended invalidity contentions would not pose a risk 25 to any of the above discovery and motion deadlines or the Court’s trial schedule. “Courts 26 have found no prejudice where, as here, the proposed amendments did not pose a risk to 27 discovery and motion deadlines or the trial schedule.” Karl Storz Endoscopy-Am., 2016 28 WL 2855260, at *7. 6 17-cv-01394-H-NLS 1 In addition, the Court rejects Plaintiffs’ contention that they will suffer prejudice if 2 the Court grants Defendants’ motion because they will be forced to spend additional time 3 analyzing and responding to the amended contentions. (See Doc. No. 262 at 13.) Plaintiffs 4 will have to spend additional time analyzing and responding to the prior art references at 5 issue regardless of whether Defendants amend their invalidity contentions because those 6 references are already at issue in the co-pending IPR proceedings. Moreover, a complaint 7 that amendment of the contentions would cause Plaintiffs “to perform more work than it 8 would have to perform otherwise . . . is not prejudice.” Karl Storz Endoscopy-Am., 2016 9 WL 2855260, at *9; see Trans Video Elecs., Ltd. v. Sony Elecs., Inc., 278 F.R.D. 505, 510 10 n.2 (N.D. Cal. 2011) (“Generally, the issue is not whether the defendant would be required 11 to engage in additional work in response to newly amended claims.”). In sum, Defendants 12 have demonstrated that the proposed amendments to their invalidity contentions would not 13 prejudice Plaintiffs.2 14 Conclusion 15 For the reasons above, the Court grants Defendants’ motion to amend their invalidity 16 contentions. The Court orders Defendants to serve their amended invalidity contentions 17 on Plaintiffs within seven (7) days from the date this order is filed. 18 19 IT IS SO ORDERED. DATED: August 24, 2018 20 MARILYN L. HUFF, District Judge UNITED STATES DISTRICT COURT 21 22 23 24 25 26 27 28 2 The Court notes that even if it assumed that Defendants were not diligent, the lack of any prejudice at all to Plaintiffs from the proposed amendments would lead to Court to exercise its discretion and still grant Defendants’ motion for leave to amend their invalidity contentions. See Karl Storz Endoscopy-Am., 2016 WL 2855260, at *3 (“[T]he court retains discretion to grant leave to amend even in the absence of diligence so long as there is no prejudice to the opposing party.”); see Twilio, Inc. v. TeleSign Corp., No. 16CV06925LHKSVK, 2017 WL 3581186, at *4 (N.D. Cal. Aug. 18, 2017). 7 17-cv-01394-H-NLS
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