District of New Jersey Denies Motion to Amend Invalidity Contentions, Citing Defendant’s Lack of Diligence and Timeliness in Filing Motion

In Razor USA LLC v. DGL Group, Ltd., the United States District Court for the District of New Jersey recently denied a defendant’s motion to amend its invalidity contentions to include an additional written description argument. The case involves utility and design patents pertaining to a hoverboard. After learning that the design patent issued with drawings had previously been rejected by the Patent and Trademark Office (PTO) (as opposed to those that the PTO later approved), the defendant sought to add an argument that the design patent was invalid pursuant to 35 U.S.C. § 112(a) for the same reasons that the PTO had previously rejected the published drawings.

The defendant asserted that it learned about this “new” defense after the plaintiff’s expert stated in a declaration that he had reviewed the prosecution history of the design patent, which prompted the defendant’s own investigation of the prosecution history.

In evaluating whether the defendant’s application met the requirements of Local Patent Rule 3.7, the court looked to the defendant’s diligence and the timeliness of the motion. The court concluded that both were lacking. With respect to diligence, the “dominant consideration” in the motion to amend, the court concluded that the defendant had failed to act with the requisite diligence in discovering the information it sought to add to its contentions. The defendant did not dispute that it had access to the information that gave rise to the proposed amendment – the patent’s prosecution history – since the beginning of the litigation. The court reasoned that the defendant’s “belated review of key documents pertaining to one of the two patents in suit…documents which had been in [its] possession for over two years before filing th[e] motion, [did] not carry that burden.” Id. at 10.

For the same reasons, the court found that the defendant’s application was untimely. The defendant “had ample time” to review the prosecution history and seek leave to amend its contentions and offered “no persuasive explanation for the delay” in bringing its motion to amend. Id. at 11. And, even if the court were to credit the defendant’s assertion that the basis for the amendment came from the plaintiff’s expert (as opposed to the prosecution history), the defendant nevertheless waited five months to file its motion. According to the court, such a delay “frustrates the purpose of the Local Patent Rules in shaping discovery.” Id.

Ultimately, the court concluded that the defendant “could have, and under controlling law, should have acted sooner” and denied the defendant’s motion.

Gibbons will continue to monitor and report developments in local patent rules.

Neither the firm nor the authors of this blog post were involved in the litigation.