Amending Contentions to Add Products and DOE arguments

Orders passing on motions to amend infringement or invalidity contentions are always of interest, since you want to know which fact situations will and won’t permit contentions to be changed.  In a recent case the court granted the plaintiff’s motion for leave to amend its contentions to add additional allegedly infringing products and doctrine of equivalents (DOE) arguments based on deposition testimony obtained in the case.

Supplementing Invalidity Contentions

You want to.  You know you do.  But the question is whether you can show good cause under P.R. 3-6(b).  Because that’s the standard for amending your invalidity (or infringement) contentions in a patent infringement case.

This recent opinion out of Marshall addressing a motion to supplement invalidity contentions (the third in the case) provides a useful review of the relevant standards, and cautions that a lack of prejudice “without more” is not sufficient to make the required showing. In this case, one reference passed the threshold by the proverbial skin of its teeth, but the other did not – making this a particularly good opinion to consult to see how much diligence gets just a raised eyebrow, and how much gets a throat cutting gesture.

“Good cause” doubleheader

No, not that kind of good cause.

It’s been a good week for researching the standards for amending infringement contentions, with two opinions addressing the always-of-interest issue of when amendment of infringement contentions is proper, including clarification of the proper standard for “good cause”.  The cases are useful because they present the usual facts and arguments for why leave to amend should or should not be granted, along with the Court’s impression of each.

The “Vindicator” of Infringement Contentions

Thought I wouldn’t be able to tie a patent case post to yet another aircraft from the Naval Aviation Museum, didn’t you?  Well, you’d be wrong.

Parker is pictured next to a spectacular restoration of an abysmal combat aircraft from World War II – the SB2U Vindicator dive bomber.  The Vindicator was state of the art when it joined the US carrier fleet in 1937, painted up all pretty with chrome yellow wings and white tails (carrier air groups were color coded back then, meaning that these are Saratoga aircraft, although on the Enterprise) here in that 1940 Fred MacMurray classic Dive Bomber, but by 1942 it was hopelessly outclassed and had been replaced by the SBD Dauntless.  Its last combat action was as part of a hand-me-down to a Marine unit at the Battle of Midway (filmed by Hollywood director John Ford at left), where ground crews had to use adhesive tape from the infirmary to keep the fabric on the wings from peeling off.  The aircraft’s performance was so awful that pilots took to calling them Vibrators or  Wind Indicators.

So what does this have to do with infringement contentions?

You know those truly awful contentions you sometimes get where you can’t tell what the plaintiff is contending, and the court grants the motion to strike and they replead and it still isn’t clear, and it’s hundreds of pages of completely unintelligible text?  These Vindicator-type contentions are what this case is about, and thankfully, it comes with an explanation of what the purpose of infringement contentions is, what not to do when an issue is raised whether they are compliant, and what relief you might be able to get when confronted with them.

Sufficiency of Contentions Referencing Representative Products

One of the key features of patent litigation in many of the patent-heavy districts is mandatory disclosure of detailed infringement and invalidity contentions.  The EDTX has used such a procedure since 2000, when Judge T. John Ward adopted the Northern District of California’s local patent rules for cases in his court, and the rules were adopted district-wide several years later. One of the common issues regarding contentions is when they are sufficient, and specifically when a party can chart one “exemplar” product and have that chart cover others.  This was the issue presented in a recent decision by Judge Roy Payne in Marshall.

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.