Order Granting Leave to Amend Answer and Granting Transfer of Venue, OptoLum, Inc. v. Cree, Inc., D. Ariz. (July 24, 2017) (Judge Douglas Rayes)
Since the Supreme Court’s decision in TC Heartland, many defendants in earlier-filed cases have tested whether they can raise an improper venue defense, or waived the issue by failing to raise it in their answers or through later litigation conduct. A majority of district courts to consider the issue have found that TC Heartland did not change the law so as to qualify as an exception to the waiver doctrine, but some jurisdictions have taken the opposite view. (A chart of exemplary cases is included below.) Judge Rayes’ recent decision in OptoLum v. Cree leads the District of Arizona into the minority group and suggests that the question will continue to be addressed district by district.
Defendant Cree was in a position that may sound familiar to many pre-TC Heartland defendants: At the start of the case, Cree had moved to dismiss under Rule 12(b)(6) and for transfer under 28 U.S.C. § 1404. After the court dismissed certain claims and denied transfer, Cree filed an answer admitting that venue is proper. In light of TC Heartland, however, Cree moved to amend its answer to deny proper venue and to dismiss on that basis. READ MORE
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
Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (Judge William Alsup) (November 29, 2016)
In an effort to promote judicial efficiency, Courts often allow a plaintiff to supplement its complaint if doing so would settle the parties’ controversies in one action. This is the rationale Judge Alsup applied in Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (N.D. Cal. Nov. 29, 2016) when allowing plaintiff Illumina to amend its complaint to add a newly issued patent that was granted after plaintiff filed its complaint. Judge Alsup listed several efficiency-related factors favoring supplementation: (1) the supplemental claims accuse the very same product already in the action; (2) the newly issued patent has narrower claims, so allowing them in this action would avoid duplicating some of the issues already in the case; (3) even though there are new issues associated with the supplemental claims, there is no evidence that these new issues would be so burdensome as to delay the current schedule. Thus, because of the significant commonalities between the two patents, the Court decided that it would serve the purpose of judicial efficiency to enable the parties to litigate both patents in the same case.
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
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/iplandscape/?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
Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)
Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.
In the first order, he denied plaintiff’s request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. READ MORE
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.