Patching Holes in the “Concrete”: Motions to Amend Infringement/Invalidity Contentions

One of the nice things about practicing law in my hometown of Marshall – and especially working out of a pair of circa 1870’s storefronts that are two doors down from my grandfather’s old store – is that I park in my grandfather’s old parking place from the 1960’s each morning and walk past where in 1971 we put our initials in the wet concrete when the city patched the sidewalk out front.  That’s my scrawled “M.S”, followed my Miss Rountree’s “ER” (that’s her in the 1950 photo above), and my grandfather’s formal “C.D”.

These days the “patching” that I see the most comes in the form of trying to amend infringement and invalidity contentions.  Dating back to the origin of local patent rules in the Northern District of California, judges have been emphatic that the rules are designed to require parties to “crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.”  See CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009)  Unlike the liberal policy for amending pleadings, the philosophy behind amending contentions is “decidedly conservative, and designed to prevent the ‘shifting sands’ approach to claim construction.”  Id.

While the purpose of the rules and their “good cause” requirement for amendments has often been described as requiring parties’ contentions to be “set in concrete” early in the case, surprisingly, to my knowledge no reported opinion, for EDTX, ND Cal. or elsewhere has used that phrase, opting for a more flexible description of the analysis in terms of what it is intended to prevent, and not what it requires.  More recently, the opinions on this subject have become aggressively pragmatic, looking at the need and the potential prejudice, and identifying and weighing the facts of each case before deciding whether amendment is allowed.

I’ll be posting a couple of recent EDTX opinions dealing with this subject later today to illustrate the latter point.