There’s no crying in amending invalidity contentions

Well, actually there often is. But whether that is the case depends on the facts of the case – and where you are.

As readers know, like most patent-laden courts, the Eastern District of Texas’ patent local rules generally require that a party show “good cause” to amend its invalidity contentions.

By contrast, the local patent rules in WDTX-Waco permit defendants to amend their contentions without leave of court until 8 weeks after the Markman “so long as counsel certifies that it undertook reasonable efforts to prepare its preliminary contentions and the amendment is based on material identified after those preliminary contentions were served” and the amendment is done “seasonably”.

The distinction was of critical importance in this case. Defendant Google sought leave to amend its invalidity contentions with three additional prior art references. It filed its motion seeking leave to amend several months after the deadline for submitting invalidity contentions, and before the claim construction briefing had started. Its argument for supplementing the contentions was that the plaintiff had proposed “previously unforeseen” claim constructions, and it discovered the references as part of prior art searching conducted in light of the parties’ claim construction disclosures.

Translated into football, this is a little like a cornerback explaining to his coach that it was when he saw the quarterback throw the football at the receiver on his side of the field that he realized he should go try to cover him. Or an outfielder sitting in the dugout telling his manager that he noticed as soon as the batter hit the ball into right field that he ought to head that way.

After reviewing the standards for amendments to a party’s invalidity contentions, Judge Gilstrap found that the necessary good cause had not been shown. First, he held that Google had failed to adequately demonstrate that it exercised diligence in discovering the proposed references. It was undisputed that the three proposed references were all publicly available and accessible to Google prior to the deadline for invalidity contentions, and the Court concluded that the “unforeseen claim construction proposals” argument was inadequate.

Not that this argument might not work in another case – but Judge Gilstrap makes clear that the specific facts needed to support the argument were not present in this case.

Google neither describes its initial efforts to conduct prior art research nor describes how Uniloc’s claim construction proposals reasonably caused Google to engage in different search efforts. Google does not identify which claim construction terms gave rise to Google’s ostensibly different prior art search. Nor does Google explain how Uniloc’s proposed claim constructions were unforeseen in a manner that would justify untimely disclosure of the Three Proposed References. For example, Google does not identify new prior art search terms that arose based on Uniloc’s proposals; Google does not identify new subject matter that would be covered by Uniloc’s proposals; and Google does not offer any other substantive basis that would cause Google to take a different approach to searching for prior art than it had previously taken. Indeed, Google does not offer any specific explanation of how Uniloc’s proposals relate to the Three Proposed References, or how the Three Proposed References are responsive to a substantive proposal from Uniloc. Instead, Google only offers a broad and conclusory statement that Uniloc’s claim construction proposals were “unforeseen.” Then, to compound this problem, when pressed by Uniloc for an explanation—particularly in light of the fact that Uniloc largely proposed plain meaning—Google stated that it could not go into further detail “[w]ithout revealing privileged internal discussions.” (Dkt. No. 106 at 2). That response is inadequate. While Google is certainly entitled not to waive attorney client privilege with respect to this issue, it cannot use privilege as a shield to limit scrutiny of its justifications while using the same justifications as a sword to seek relief from the deadlines imposed by the Court.

Order at 5.

The Court’s discussion of the prejudice and importance factors is also interesting because it highlights the frequent tension between these factors. As Judge Gilstrap puts it, “either the Three Proposed References are highly unique (and thus require Uniloc to perform additional, unique work to respond) or the Three Proposed References are cumulative of other prior art to a degree that no “special action” is needed to address them. The three proposed references cannot be both at the same time.” For reasons he ties to the parties’ briefing, the Court concluded that both the prejudice and importance factors were neutral in this case. (As you might expect when factors are in tension).

The final factor dealt with availability and utility of a continuance, but neither party sought a continuance nor did the Court find that the continuance would be necessary or appropriate.

In conclusion, Judge Gilstrap concluded that Google had not carried its burden of good cause to excuse its late disclosure of the three proposed references. This is a very useful opinion because it sets out the standards, and notes specifically where the facts of the case as set out in the briefing didn’t support the necessary findings to obtain the relief sought. As I said above, this argument might work in another case, and I’ve seen not dissimilar arguments work on a regular basis. But not with the facts in this case.

Again, the outcome would likely have been different in Waco, where instead of having to obtain a court order finding that there was good cause for the amendment, Google would only have had to certify when serving the amended contentions that it undertook reasonable efforts to prepare its original invalidity contentions, and that it found the new references later. And as long as it amended “seasonably” after discovering the new references, it could have waited another four or five months to serve the contentions with the new references.

© 2020 Michael C. Smith. Use limited to individual subscribers. Further distribution prohibited.

This blog does not constitute legal advice. If you’d like to discuss a related legal matter, please contact Michael C. Smith via email or call 903-938-8900.