Leave to Amend

A Defendant’s Understanding of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted:  “Any fool can know.  The point is to understand.”  That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung.  GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories. READ MORE

A Time For Everything: Defendant Can Add To Invalidity Contentions After The Lifting Of A Years-Long Stay

Order Granting Leave to Amend Invalidity Contentions, Richtek Technology Corp. v.. uPI Semiconductor Corp., et al., Case No. 09-cv-05659-WHA (Judge William Alsup)

Much can change procedurally while a patent case is stayed, especially if the parties continue to litigate the patent in other jurisdictions.  In Richtek, the parties returned to district court after the conclusion of reexamination proceedings and two related ITC investigations.  Defendant uPI moved to amend its invalidity contentions, originally served in December 2010, to account for claim interpretations that the plaintiff Richtek disclosed during reexamination.  Judge Alsup permitted the amendment, which added new prior art references, while distinguishing a decision he had rendered a month earlier which precluded Richtek from adding new accused products. READ MORE

Producing 500,000 Pages of Documents and Source Code Found to be Good Cause For Leave to Amend Infringement Contentions

Order Granting Motion For Leave To Amend Infringement Contentions, Delphix Corp. v. Actifio, Inc., Case No: 13-CV-04613 BLF-HRL(Judge Howard R. Lloyd)

The NorCal IP Blog has reported on multiple decisions granting or denying leave to amend infringement contentions. See http://blogs.orrick.com/norcal-ip/?s=infringement+contentions. A constant theme throughout has been the Northern District’s strict adherence to the Patent Local Rules for guidance on allowing amendments. Magistrate Judge Howard R. Lloyd echoed that theme this week in Delphix Corp. v. Actifio, Inc., Case No. 13-cv-04613 BLF (HRL), when he granted defendant/counterclaim plaintiff Actifio, Inc.’s (“Actifio”) motion to amend its infringement contentions. Critical to his decision was plaintiff/counterclaim defendant Delphix Corp.’s (“Delphix”) production of source code and over 500,000 pages of new information about the accused product, not otherwise available to Actifio. READ MORE

Good Reception: Inequitable Conduct and Licensing Defenses Sufficiently Pleaded

Order Granting Leave to Amend Answer, Fujifilm Corporation v. Motorola Mobility LLC, Case No. C 12-03587 (Judge William Orrick)

Fighting over the factual bases for patent-related affirmative defenses?  Here are some take-home points from Judge Orrick, who allowed defendant Motorola Mobility to add allegations that plaintiff Fujifilm’s patent infringement claims are barred by inequitable conduct, and by a license arising from Fujifilm’s membership in the Bluetooth Special Interest Group (SIG):

Plausibility is the ultimate gatekeeper;

  • When a defense sounds in fraud, be sure to plead with particularity;
  • Otherwise, notice pleading is enough;
  • Either way, there are limits to what is required at the pleading stage, versus what is left for discovery; and
  • Delay, even unexplained, may not bar amendment if there is no prejudice.

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