A key objective of many local patent rules is to encourage parties to solidify their legal theories regarding infringement and invalidity at the outset of litigation. These rules save litigant and court resources by preventing the ‘shifting sands’ approach to claim construction, i.e., it discourages parties from subsequently amending their claim charts throughout the lawsuit, thereby making the opposition respond to a moving target of contentions. To this end, under their local patent rules, some courts will only allow for amendment of contentions when these amendments are made for good cause and when the moving party acts diligently in amending based on newly discovered information.
Some districts have already held that good cause is lacking where a party moves to amend contentions based on aMarkman ruling in their favor. See, e.g., Thermapure v. Just Right Cleaning, No. CV–11–0431–RHW, 2013 WL 3340494 (E.D. Was. Nov. 7, 2012). In Silver State Intellectual Technologies, Inc. v. Garmin International, Inc. (.pdf), No. 2:11-CV-01578-PMP, 2014 WL 3687245 (D.Nev. July 24, 2014), Judge Pro took a similarly narrow view of what constitutes good cause in deciding that a Markman ruling adopting the opposing party’s claim construction does not necessarily give rise to good cause to amend.
Following the court’s Markman ruling adopting plaintiff’s claim construction, the accused infringer amended its contentions to include new invalidity arguments based on newly identified prior art in light of the court’s construction. The defendant argued that the good cause requirement was met due to the court’s adoption of claim construction other than defendant’s. Indeed, the District of Nevada’s Local Patent Rules identifies a court’s claim construction different from that proposed by a party as an example of a circumstance that may support a finding of good cause for that party to amend its contentions. D. Nev. R. 16.1-12. However, Judge Pro noted that such a finding is not automatic, “particularly where the Court adopts the construction proposed by the other party, as such a construction would not come as a surprise to the party seeking to amend.” Id. at *4. Judge Pro granted plaintiff’s motion to strike for lack of good cause those portions of defendant’s amended contentions that were added based on the court’s claim construction. This order was based in part on the fact that the defendant had sufficient notice that the court might construe the claims as it did, because that construction was proposed by the plaintiff in its initial claim construction brief filed nearly a year before the court’s construction order. Thus, according to the court, the defendant was aware of the risk of such a construction being adopted and should have prepared accordingly, and that its subsequent adoption did not constitute good cause for the amended contentions.
The court’s order was also based in part on the defendant’s lack of diligence in amending its contentions following the Markman ruling. The defendant filed its amendments on the final day of fact discovery, nearly two months after the construction order. Therefore, the court held, the plaintiff would be unfairly prejudiced by having to extend discovery and expend resources to respond to the new contentions.
Litigants should not assume that they will have automatic leave to amend their contentions following an adverse claim construction. They should anticipate the possibility that the court will adopt the opposing party’s proposed claim construction and should act diligently to conduct discovery and amend their contentions as necessary.