Court Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Failure to Show When It Could Have Discovered New Information
In MicroVention, Inc. v. Balt USA, LLC, the United States District Court for the Central District of California recently denied a defendant’s motion to amend its invalidity contentions to add additional written description and enablement arguments, finding a lack of diligence by the defendant.
The court, which in patent cases “follows a schedule similar to that imposed by the Northern District of California,” emphasized the diligence that must be shown to warrant a party amending its invalidity contentions. Specifically, the court noted that “‘[t]he critical issue is not when [the party] discovered [the] information, but rather whether [it] could have discovered it earlier had it acted with the requisite diligence.’” (quoting Google, Inc. v. Netlist Inc., 2020 WL 1838693, at *2 (N.D. Cal. May 5, 2010)). As we recently reported, the District of New Jersey “adopted verbatim [its] Local Patent Rules from the Northern District of California.” TFH Publ’n, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361, 365 (D.N.J. 2010).
The court found that one of the defendant’s proposed amendments was based on the claim construction position the plaintiff had taken during the claim construction phase of the case. However, the court recognized that the plaintiff’s claim construction had not changed since the beginning of the case and, on that basis, found that the defendant was not diligent because it failed to show why it could not have addressed that argument earlier. The court also disagreed with the defendant’s argument that it was diligent because its second proposed amendment was based on recently obtained deposition testimony. The court noted that the defendant had failed to connect the deposition testimony to the specification of the patent-at-issue and, therefore, the testimony could not have formed the basis of a written description or enablement defense.
Thus, because the defendant could have discovered earlier the information forming the bases of its proposed amendments, the court denied its motion to amend.
Gibbons will continue to monitor and report developments in local patent rules.