We're going through our invalidity contention decisions database to identify cases where a Court's decision considers the impact of supplemental invalidity contentions on the claim construction process under local patent rules. We previously identified the following cases in other blog posts:
- CardSoft, Inc. v. VeriFone Systems, Inc. (May 28, 2012), Judge Payne (Eastern District of Texas)
- Nano-Second Technology Co., Ltd. v. Dynaflex Int'l (June 6, 2012), Judge Lew (Central District of California)
- Bayer Cropscience AG v. Dow Agrosciences LLC (June 7, 2012), Judge Schneider (District of Delaware)
We'll review our database of 85+ cases and eventually identify all relevant cases for this topic.
To start things off, let's consider Play Visions, Inc. v. Dollar Tree Stores, Inc. (November 30, 2010), Judge Pechman (Western District of Washington).
In this case, Judge Pechman granted Defendants' request to amend their preliminary invalidity contentions finding good cause for the proposed amendment, relying on Local Patent Rule LR 124. The Court first determined that the Defendants had been diligent in searching for prior art, and that the contentions supplement were timely provided, with the motion to amend the contentions was filed roughly two months after the contention deadline.
The Court weighed the potential prejudice to the plaintiff and determined that
There is no evidence of prejudice given that the parties have yet to engage in claims [sic] construction and discovery does not end for months.
(Order at 4). Again we see a focus on the claim construction impact with respect to invalidity contentions supplement. Here, the Court was entirely focused on prejudice to a party under the guise of claim construction. From the outset, the Court frames the issue:
Restrictions on amendment to invalidity contentions are aimed at avoiding the "shifting sands" approach to claim construction. See Halo Elecs., Inc. v. Bel Fuse Inc., 2010 WL 3489593, at *1 (N.D. Cal. Sept. 3, 2010) (granting motion for leave to amend invalidity contentions where the defendants argued they search diligently over a broad spectrum of prior art).
(Order at 2). So again, the focus remains on whether allowing supplemental contentions will in some way impact claim construction discovery. We've already explained our viewpoint that Phillips is at odds with how the local patent rules are being applied when prior art supplements are linked to the claim construction process.
We'll continue to report our findings in subsequent posts.