Mr. Sam’s famous quote about why he changed his mind about LBJ being JFK’s running mate in 1960 also applies to amending patent contentions. You, too, can be a wiser patent practitioner after reading this order by Judge Albright.
Well, actually there often is. But whether that is the case depends on the facts of the case – and where you are.
Another well-worn standard, but a rather different set of facts on the important factor of diligence this time.
This afternoon I’m working on my first sur-sur-sur-reply, which per some rule someplace simply must be written outside with the aid of some Shiner Bock. But while enjoying the sunshine I also enjoyed this opinion which provides some additional clarification on the always interesting topic of when infringement contentions can be amended. And, more importantly, what conduct by a defendant – which was doing so well just yesterday – kneecapped its ability to oppose such a motion, and what conduct by parties does Judge Gilstrap just really not like? You’ll want to take notes here.
So shoot me if I’m off topic. My engineering student (who is still looking for an internship in electrical and computer engineering this summer, if you know anyone) comes home from Baylor Thursday night for Easter and cooks a prototype of his new “folded steak” recipe (he cut an 8 oz. filet partway multiple times, unfolds it to cook, then folds it again over some kind of herbed butter because no one needs to live forever). It worked so well he made eight more for the whole family Saturday night.
You know what ALSO worked well recently? The plaintiff’s motion to amend its infringement contentions which not only worked – the defendant’s related motion for sanctions was denied as well. (The cross motion for sanctions for filing a motion for sanctions was also denied because of course).
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.
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.
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.
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.