RMail Limited v. Amazon.com, et al., 2:10cv258 (2/8/13)
Judge: Rodney Gilstrap
Holding: Motion for Leave to Supplement Infringement Contentions DENIED.
Plaintiff sought leave to supplement its infringement contentions to assert an additional claim. In his order denying the motion, Judge Gilstrap noted that at the time the plaintiff filed its motion for leave, claim construction briefing had already begun. After laying out the relevant legal standards, the court went through the applicable factors to determine whether leave should be granted.
With respect to the first factor, the plaintiff’s explanation for the failure to meet the deadline, plaintiff contended that it had obtained two important pieces of information through discovery. Defendants claimed that there was nothing new in the discovery which explained the plaintiff’s failure to meet the deadline. “The Court agrees,” Judge Gilstrap wrote. “RPost has not shown that its delay was reasonable. The information that RPost now solely relies upon in its proposed supplemental contentions is information that is publicly available to it prior to the P.R. 3-1 deadline.” Accordingly, the court found that the first factor strongly favored denying leave.
The second factor looks to the importance of the thing that would be excluded. The plaintiff asserted that it would be precluded from asserting the new claim in a separate action, but the court wrote that “the same can be said of any unasserted claim in any patent infringement case,” and that this alone did not make a particular claim important. Thus, this factor was also found to favor denial.
The third factor is the potential prejudice to defendants if the motion for leave was granted. Judge Gilstrap found the addition of claim at this late stage of litigation would cause prejudice to defendants and burden the Court.
The parties have concluded their claim construction briefing on the ’624 Patent. To permit RPost to supplement its infringement contentions now would require additional claim construction briefing. While RPost has construed one claim term from claim 7 in its opening brief, Defendants have yet to respond and may propose additional terms to construe. The Court would then await a reply brief from RPost. However, there is insufficient time before the scheduled Markman hearing for the parties to complete such briefing, and for the Court to review such briefing, in a reasonable manner. Thus, in addition to supplemental briefing, allowing the supplemental contention would also require either a supplemental Markman hearing or a continuance of the hearing. Because fact discovery in this case is set to close April 1, 2013 and the case is set for trial in August of 2013, allowing the amendment would prejudice Defendants and create added burdens for the Court. This factor favors denial.
The final factor looks to the availability of a continuance to cure any potential prejudice. The Court held that the plaintiff had offered no argument in support of its conclusory statement that a continuance could cure any allege prejudice.
Accordingly, citing the impending Markman hearing and the completed claim construction briefing, Judge Gilstrap held that the plaintiff's “newfound concern” that it may not have sufficient information to build its case on the presently asserted claims did not justify granting leave for its “untimely disclosure based on information publicly available to it prior to the original deadline.” Accordingly the court held that the plaintiff had not demonstrated good cause under P.R. 3-6, and accordingly denied leave to amend.