United States District Court, D. New Hampshire
REPORT AND RECOMMENDATION OF THE SPECIAL MASTER
JOSEPH A. DICKSON, Magistrate Judge.
This matter comes before the Special Master upon Plaintiff Industrial Technology Research Institute's ("ITRI") motion for leave to serve amended infringement contentions. After considering the submissions of the parties, based upon the following, it is the recommendation of the Special Master that the Court deny ITRI's motion to serve amended infringement contentions.
This matter involves a patent infringement complaint filed against Defendants LG Electronics, Inc. and LG Electronics USA, Inc. (collectively "LG") on November 26, 2010, in the Eastern District of Texas. ITRI filed its original infringement contentions on September 9, 2011, pursuant to the Patent Rules of the Eastern District of Texas. On February 13, 2012, the matter was transferred to the District of New Jersey. Pursuant to the Patent Rules of this District, ITRI served infringement contentions on April 24, 2012.
On July 12, 2013, ITRI filed its prior motion for leave to amend its infringement contentions. While ITRI's motion was pending, on October 10 and 11, 2013, the Court heard the parties' respective claim construction arguments. The Court then issued its Markman opinion on claim construction on January 6, 2014.
Thereafter, on March 7, 2014, ITRI served a letter to LG proposing amendments to its infringement contentions. At a hearing on April 16, 2014, Magistrate Judge Joseph Dickson advised ITRI not to file a motion regarding its proposed amendments until he resolved ITRI's prior motion for leave to amend its infringement contentions. Discovery was then stayed pending a settlement conference between the parties. The settlement conference was ultimately unsuccessful and on September 25, 2014, Judge Dickson granted-in-part and denied-in-part ITRI's July 12, 2013, motion for leave to amend its infringement contentions.
On February 19, 2015, ITRI filed its second motion for leave to serve amended infringement contentions. This matter is currently before the Court and assigned to the undersigned for disposition.
Local Patent Rule 3.7 provides:
Amendment of the Infringement Contentions or the Invalidity Contentions may be made by order of the Court upon a timely application and showing of good cause. The application shall disclose whether the adverse party consents or objects. Non-exhaustive examples of circumstances that may, absent undue prejudice to the adverse party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; (c) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention; and (d) disclosure of an asserted claim and infringement contention by a Hatch-Waxman Act plaintiff under L. Pat. R. 3.6(f) that requires response by defendant because it was not previously presented or reasonably anticipated. The duty to supplement discovery responses under Fed.R.Civ.P. 26(e) does not excuse the need to obtain leave of Court to amend contentions.
The ability to amend infringement contentions under Local Patent Rule 3.7 is committed to the court's discretion. Under the Rule a court's ruling on claim construction may support an amendment. Id Consideration of any such proposed amendment must balance the asserted need for the amendment with the purposes and philosophy embodied in the Local Patent Rules.
Local patent rules seek to advance the orderly progression of patent litigation by requiring the parties "to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed." Atmel Corp. v. Info. Storage Devices, Inc., No. C 95-1987 FMS, 1998 WL 775115, *2 (N.D. Cal. Nov. 5, 1998). They are designed to advance the litigation in a timely and efficient manner and make it less expensive. Raytheon Co. v. Indigo Sys. Corp.. No. 4:07-CV-109, 2008 WL 5378047, at *1 (E.D. Tex. Dec. 23, 2008). In doing so they reflect a more conservative approach than the rules that govern the amendment of pleadings generally and aim to prevent the "vexatious shuffling of positions' that could occur if the parties are permitted to freely modify their infringement contentions at any point in the action." Berger v. Rossignol Ski Co., No. C 05-02523 CRB, 2006 WL 1095914, at *1 (N.D. Cal. Apr. 25, 2006) aff'd, 214 F.Appx. 981 (Fed. Cir. 2007)(quoting JSR Corp. v. Tokyo Ohka Kogya Co.. 2001 U.S. Dist. LEXIS 24959, * 18 (N.D. Cal. Sep. 13, 2001)).
The local patent rules in the Northern District of California require both the plaintiff and the defendant "to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery." 02 Micro Int'l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1365-1366 (Fed. Cir. 2006). "The rules thus seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories." Id . "The same policy rationales motivate this district's Local Patent Rules[.]" Hoffmann-La Roche Inc. v. Orchid Chemicals & Pharmaceuticals Ltd.. 07-CV-4582-SRC MAS, (D.N.J. 2011)
In Copper Innovations Group., LLC v. Nintendo Co.. No. 2:07CV1752, 2012 WL 628465, at *1 (W.D. Pa. Feb. 27, 2012), aff'd, 505 F.Appx. 959 (Fed. Cir. 2013), the District Court struck the plaintiffs amended infringement contentions that were served soon after the Court's Markman hearing. Although the local patent rule permitted an amendment if made in "a timely fashion, asserted in good faith and without purpose of delay, " the Court found that "consideration of any such proposed amendment ...