In Positive Technologies, Inc. v. Sony Electronics, Inc. (January 28, 2013), Judge Illston (Northern District of California) granted Defendants Amazon.com, Inc.’s and Barnes & Nobles, Inc.’s motion to amend their invalidity contentions to add “conforming amendments” and “new-art amendments”.  Both amendments are said to relate to the Court’s claim construction order.  The Court focuses on the two aspects of good cause for the proposed amendments, including diligence in discovery the new information and the passage of time in seeking to add the new information to the contentions once discovered.  Defendants argue that the amendments, particularly the new prior art, relate to an expansive claim construction concerning two types of devices covered in the Court’s claim construction order.  Although six months elapsed between the claim construction order and when the Defendants located the new prior art, the detail surrounding Defendants’ efforts appears to have persuaded the Court the allow the proposed amendments.

In this case, the Court ruled that since fact discovery had not yet closed, and in light of Plaintiff failing to articulate whether the prior art was relevant, whether Defendants were engaging in “gamesmanship” for the amendments, and what type of prejudice would result to the Plaintiff, the Court permitted the proposed amendments.

Takeaways – it appears to be increasingly relevant to track the timing contention efforts once the initial contentions have been served.  Details on these activities remain important to the Court when considering proposed amendments to invalidity contentions.

In Koninklijke Philips Electronics NV v. Cinram Int’l Inc. (October 24, 2012), Judge Stearns (Southern District of New York) granted Plaintiff Philips’ motion to preclude defendants from introducing argument or evidence regarding prior art first disclosed in its 35 U.S.C § 282 Notice.  Although § 282 provides that “the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial,” the provision does not subsume earlier deadlines imposed by a Court.

In this case, the Court ruled that Defendants may only rely on prior art references (and combinations) identified in invalidity contentions or expert reports.

Takeaways – Section 282 is not likely to save the day when trying to supplement invalidity contentions.

When I traveled internationally for a wedding last year, we traveled through Switzerland and Germany, ending up in Greece for a wedding of one of my good friends.  To avoid high data rates for our smartphones we opted to try out Xcom Global’s Mifi.  At the time of rental we were shipped 3 MiFi’s, each set for a different country.  The devices worked fine wherever we traveled and they ended up costing less than the cost of 100MB plans for each of our two smartphones.  Now Xcom offers a universal MiFi that appears to work in multiple countries.  I haven’t tried it yet, but it sounds even more promising.

Why am I telling you this?  Although I don’t do this often, I’m entering a contest promotion – this one sponsored by Xcom Global.  I rarely comment publicly on products and services that I own and use on a daily basis (although I highly recommend Sonos for music and Kaleidescape for DVD and Blu Ray movie management), but I do feel comfortable recommending Xcom Global.  The promotion doesn’t require any of this writeup, but if I’m going to fulfill the contest condition by publishing their contest, I thought I would explain the product at least a little.

Send me a note if you want any further info on our experience with Xcom Global.  By the way, the bride and groom also rented a MiFi for Greece, and they had no problems with the service either.

Below is the obligatory Xcom Global language required for entry into the contest:

Where would you travel with $5,000?
Enter XCom Global’s End of Summer Giveaway!

http://www.xcomglobal.com

Rent and Avoid High Roaming Fees
in 175 countries for a Low Flat Rate

In Medtronic Corevalve LLC v. Edwards Lifesciences Corp. (June 25, 2012), Judge Selna (Central District of California) granted Defendant Edwards’ request to supplement its invalidity contentions to add additional prior art references.  The main basis for Defendant Edwards’ request focused on a new search conducted by defendant after plaintiff asserted additional method claims in the litigation.

The Court focused  on Patent Local Rule 3-6 of the Central District of California to consider permitting the requested supplements.  The Court explained that it “must first consider whether [Defendant] Edwards acted diligently in discovering the bases for the amendment and whether Edwards timely moved for leave to amend.”  (Order at 3).

In Baden Sports, Inc. v. Wilson Sporting Goods Co. (June 28, 2012), Judge Pechman (Western District of Washington) granted Defendant Wilson’s request to supplement its invalidity contentions to add additional prior art references.  The main basis for Defendant Wilson’s request focused on the Court’s adoption of Plaintiff’s proposed constructions for each of the four disputed terms.

In permitting the requested supplement, the Court focuses on Local Patent Rule W.D. Wash. 124 of the Western District of Washington and notes that amendments to contentions require a “showing of good cause … absent undue prejudice to the non-moving party.”  (Order at 2).   The Court identified five factors underlying a good cause analysis including:

“(1) the reasons proffered for the need to amend after the deadline for submitting contentions had passed, (2) the diligence of the moving party, (3) the importance of the proposed amendments, together with any prejudice to the moving party if amendment is denied, (4) potential prejudice to the non-moving party, and (5) the availability of a continuance to cure any prejudice.”  Convolve, Inc. v. Compaq Computer Corp., 2007 WL 700904 at *2 (S.D.N.Y Mar. 7, 2007).