Coopervision, Inc. v. Ciba Vision Corp., 480 F.Supp.2d 884 (E.D.Tex., 2007)
Judge: Ron Clark
Holding: Motion for Leave to Amend Infringement Contentions GRANTED
While Judge Hines was waxing Solomonic on other issues in this case (see post below) Judge Clark was considering whether to permit plaintiff CooperVision to amend its P.R. 3-1 Infringement Contentions to assert two additional independent claims and three additional dependent claims. In a useful footnote #1 (at least to briefwriters), Judge Clark notes that "[t]he Local Rules were amended on October 27, 2007 and the word “preliminary” was eliminated from all references to infringement contentions and invalidity contentions. The rule change does not substantively affect any of the issues in this case, and the court will refer to the current Local Rules for ease of reference."
Getting back to the story, Judge Clark reviewed the role of the local patent rules, and explained that the plaintiff sought leave to amend their PICs, claiming the requisite "good cause" under amended P.R. 3-6. "[I]nterpretation and enforcement of discovery provisions of the Local Patent Rules should not conflict with, and should harmonize with, the discovery provisions of the Federal Rules of Civil Procedure," he observed. "Deciding whether late filed infringement contentions should be excluded is slightly different from deciding whether evidence should be excluded for discovery violations. It is also akin to deciding whether the pleading deadlines of a scheduling order should be extended. Therefore, the court will consider the kinds of factors identified as important in making both types of decisions." As an aside, we may be seeing factor creep here - up to this point the cases cited on the factors to be considered when amending PICs had four factors - this is the first I've seen (or at least noticed) a fifth, so the analysis of the relevant factors is obviously getting more nuanced and detailed. That or I can't count. As a footnote to the aside, those of you that know me know I think there's really only one factor one these motions, no matter what the courts say, but that's just my opinion.
Plaintiff's claimed reason for the late assertion was the defendant's "rolling production of documents," which Judge Clark found reasonable in light of the defendant's actions (which he detailed). "In complex litigation, each party relies heavily on the production of the opposing party to help guide future research," he wrote. "A party that fails to disclose information in a timely manner has little room to complain that the opposing party is tardy."
In light of the Federal Circuit's recent statements in the O2 Micro International Limited v. Monolithic Power Systems, 467 F.3d 1355, 1365-66 (Fed.Cir.2006) regarding diligence in this context, Judge Clark's final statement bears repeating:
CooperVision has acted with reasonable diligence. The court is not convinced that CIBA will suffer unfair prejudice as a result of CooperVision amending its Infringement Contentions. Unlike many cases in which leave to amend contentions is denied, this request was made months before the claim construction hearing and the deadlines for discovery on claim construction. It does not seem necessary to even consider a continuance. . . . IT IS THEREFORE ORDERED that CooperVision's Motion to Amend Infringement Contentions [Doc. # 71] is GRANTED.