MyMedicalRecords Inc v. WebMD Health Corp et al

Filing 54


Download PDF
O 1 2 3 4 5 6 7 United States District Court Central District of California 8 9 10 11 MYMEDICALRECORDS, INC., 12 13 14 Plaintiff, v. ORDER GRANTING PLAINTIFF’S MOTION FOR LEAVE TO AMEND QUEST DIAGNOSTICS, INC., 15 Case No. 2:13-cv-02538-ODW(SHx) Defendant. INFRINGEMENT CONTENTIONS [69] 16 17 MYMEDICALRECORDS, INC., 18 19 20 21 Plaintiff, v. 26 27 28 MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS HEALTHCARE SOLUTIONS, INC., [78] Defendants. MYMEDICALRECORDS, INC., 24 25 ORDER GRANTING PLAINTIFF’S JARDOGS, LLC; ALLSCRIPTS 22 23 Case No. 2:13-cv-03560-ODW(SHx) Plaintiff, v. Case No. 2:13-cv-07285-ODW(SHx) -* ORDER GRANTING PLAINTIFF’S MOTION FOR LEAVE TO AMEND WEBMD HEALTH CORP; WEBMD INFRINGEMENT CONTENTIONS HEALTH SERVICES GROUP INC, [48] Defendants/Counterclaimants. I. 1 INTRODUCTION 2 Plaintiff MyMedicalRecords Inc. (“MMR”) asserts U.S. Patent Nos. 8,301,466 3 (“the ’466 Patent”) and 8,498,833 (“the ’883 Patent”) in separate related actions 4 against Defendants Quest Diagnostics, Inc. (“Quest”); Allscripts Healthcare Solutions, 5 Inc. (“Allscripts”); and WebMD Health Corp and WebMD Health Services Group Inc. 6 (collectively, “WebMD”). (Case No. 2:13-cv-02538; Case No. 2:13-cv-03560; Case 7 No. 2:13-cv-07285.) MMR also asserts the ’466 Patent against Empty Jar, LLC f/k/a 8 Jardogs, LLC (“Empty Jar”). (Case No. 2:13-cv-03560). 9 On September 3, 2014, the Court issued its Claim-Construction Order construing 10 the claims of the ’466 Patent and the ’883 Patent. (Case No. 2:13-cv-00631, ECF No. 11 86.) In the Claim-Construction Order, the Court construed claims of the ’466 Patent 12 during which the Court declined to adopt MMR’s proposed constructions. The parties 13 filed their Joint Post-Markman Scheduling report on September 17, 2014 and the 14 Court re-opened discovery the next day. 15 MMR provided its Amended Infringement Contentions for the ’466 Patent to all 16 Defendants on September 23, 2014. Empty Jar and Allscripts do not oppose the 17 amended infringement contentions, whereas Quest and WebMD oppose on the basis 18 that MMR cannot show good cause for the Court to grant leave to amend. The Court 19 finds that MMR’s timely filing of its Amendments, which was without prejudice to 20 the Defendants, satisfies the good-cause element of Patent Local Rule 3-6. Thus, the 21 Motions for Leave to File Amended Infringement Contentions (Case No. 2:13-cv- 22 02538, ECF No. 69; Case No. 2:13-cv-03560, ECF No. 78; Case No. 2:13-cv-07285, 23 ECF No. 48) are GRANTED.1 II. 24 FACTUAL BACKGROUND 25 MMR is the owner of the ’446 Patent titled “Method and System for Providing 26 On-line Records,” and the ’883 Patent titled “Method for Providing a User with a 27 28 1 After carefully considering the papers filed in support of and in opposition to the Motion, the Court deems the matter appropriate for decision without oral argument. Fed. R. Civ. P. 78; L.R. 7-15. 2 1 Service for Accessing and Collecting Prescriptions.” MMR alleges that Defendants 2 infringe one independent claim per patent—claim 8 of the ’466 Patent and claim 1 of 3 the ’883 Patent—as well as six dependent claims. (See e.g. Case No. 2:13-cv-02538, 4 ECF No. 1.) 5 The asserted claims are method claims directed to a method for providing users 6 with a secure and private way to collect, access, and manage medical records2 online. 7 Users can securely request their medical records from healthcare providers, which are 8 received at a remote server—separate from where the healthcare providers store and 9 maintain their respective records. Via an interface, the patient accesses, controls, and 10 manages the aggregated records on the server. 11 Facing several actions involving the same MMR patents, the Court consolidated 12 the cases for claim-construction purposes on December 9, 2013. (Case No. 2:13-cv- 13 00631, ECF No. 38.) The low number case, MyMedicalRecords, Inc. v. Walgreen 14 Co., No. 13-cv-00631-ODW(SHx), was designated as the lead case. The lead case has 15 since settled, but the case remains open for the purposes of discovery pertaining to all 16 of the MMR patent cases.3 17 On August 19, 2014, the Court held a consolidated claim-construction hearing 18 and issued an order on September 3, 2014. (ECF No. 86.) On September 18, 2014, 19 the Court issued the Post-Markman Scheduling Order (ECF No. 88) based upon the 20 parties’ Joint Report (ECF No. 87). Specifically, the Scheduling Order identified 21 February 18, 2015, as the cut-off date for all discovery and granted Defendants leave 22 to file a motion for entry of judgment on invalidity or early summary-judgment 23 motions to be filed by November 17, 2014. 24 On October 3, 2013, MMR filed with the Court its Unopposed Motion for 25 Leave to Amend Infringement Contentions to Empty Jar, LLC, F/K/A Jardogs, LLC. 26 (Case No. 2:13-cv-03560, ECF No. 79.) On October 8, 2014, MMR filed its Motion 27 2 28 The ’883 Patent is specifically directed to drug prescriptions. The Court includes drug prescriptions within “medical records” unless otherwise indicated. 3 Citations to the docket refer to the docket in the lead case unless indicated otherwise. 3 1 for Leave to Amend Infringement Contentions to WebMD (Case No. 2:13-cv-07285, 2 ECF No. 48) and WebMD timely opposed (Id., ECF No. 50). On October 9, 2014, 3 MMR filed its Motion for Leave to Amend Infringement Contentions to Quest (Case 4 No. 2:13-cv-02538, ECF No. 69) and Quest timely opposed (Id., ECF No. 73). These 5 Motions are now before the Court for decision. III. 6 LEGAL STANDARD 7 The Patent Local Rules reflect a more conservative approach to amendment 8 than the liberal policy for amending pleadings under the Federal Rules of Civil 9 Procedure. Patent Local Rule 3-6 permits amendment of infringement contentions 10 “only by order of the Court upon a timely showing of good cause.” Compare Patent 11 L.R. 3-6 with Fed. R. Civ. P. 15(a)(2) (permitting leave to amend “when justice so 12 requires”). 13 To make a satisfactory showing of good cause, a party seeking to amend its 14 infringement contentions must show that it “acted with diligence in promptly moving 15 to amend when new evidence is revealed.” See O2 Micro Int’l, Ltd. v. Monolithic 16 Power Sys., 467 F.3d 1355, 1363 (Fed. Cir. 2006) (affirming the district court’s denial 17 of leave to amend infringement contentions where the party seeking to amend had the 18 necessary discovery almost three months before moving for leave to amend). Even if 19 the moving party establishes its diligence, the Court then considers the potential 20 prejudice to the nonmoving party in determining whether to grant leave to amend. Id. 21 at 1368. 22 23 24 25 26 27 Patent Local Rule 3-6 includes a non-exhaustive list of scenarios that could support a finding of good cause: (a) A claim construction by the Court different from that proposed by the party seeking amendment; (b) Recent discovery of material, prior art despite earlier diligent search; and 28 4 1 (c) Recent discovery of nonpublic information about the Accused 2 Instrumentality which was not discovered, despite diligent efforts, 3 before the service of the Infringement Contentions. IV. 4 DISCUSSION 5 MMR moves to amend its infringement contentions in response to the Court’s 6 Claim-Construction Order regarding the ’466 Patent terms “receiving at the server the 7 files . . . from a healthcare provider associated with the user,” “maintained on the 8 server independently,” and “managed privately.” MMR argues that good cause exists 9 since the Court adopted constructions of these terms that were different from MMR’s 10 proposed constructions.4 11 contends that it timely amended its infringement contentions five days after the Court 12 re-opened fact discovery and only 20 days after the Court’s Claim-Construction 13 Order. (Id.) Further, MMR argues that even if the Court determines that MMR was 14 not diligent, the Court should still grant leave to amend because Defendants will not 15 suffer undue prejudice. (Id. at 5.) Particularly, MMR notes that Defendants received 16 the Amended Infringement Contentions five months before close of discovery and 17 seven months before trial. (Id.) (Case No. 2:13-cv-02538, ECF No. 69 at 4.) MMR 18 Defendants WebMD and Quest (“Defendants”) oppose amending the 19 infringement contentions, contending that MMR was not diligent because MMR was 20 on notice of Defendants’ proposed claim constructions four months prior to the 21 Court’s Claim-Construction Order adopting those constructions. (Case No. 2:13-cv- 22 02538, ECF No. 73 at 7.) Further, Defendants argue because summary-judgment 23 motions are due November 17, 2014, they would be unduly prejudiced with respect to 24 their position regarding noninfringement, invalidity, and claim construction if 25 amended infringement contentions were served at this time. (Id. at 9.) 26 27 28 4 MMR’s Motion for Leave to Amend Infringement Contentions was substantially similar in all three cases and therefore citations of the Motion will refer to Case No. 2:13-cv-02538. 5 1 MMR has shown diligence sufficient to meet the good cause standard. Apple 2 Inc. v. Samsung Elecs. Co., 2013 WL 3246094, at *5 (N.D. Cal. June 26, 2013) (“[t]he 3 decision by the court to adopt a particular construction gives rise to good cause not 4 because the construction happens to be different but because that difference is material 5 to a party’s theory of infringement. 6 contentions, amendment of the contentions to address the material difference in the 7 claim construction is appropriate.”). 8 Markman Schedule that they plan on filing leave for amendment of infringement 9 contentions, which was filed on September 17, 2014, fourteen days after the Court 10 issued the Claim-Construction Order. (See ECF No. 87 at 4-5.) Further, cases that 11 denied leave to amend infringement contentions after claim construction did so 12 because a significant amount of unaccounted time lapsed between the claim 13 construction order and amendment and the amendments were filed near the end of 14 discovery or close to trial. See e.g. Apple, Inc. v. Samsung Elecs. Co., 2014 WL 15 1322028, at *7 (N.D. Cal. Mar. 28, 2014) (finding that Samsung was not diligent 16 when filing leave to amend infringement contentions almost a year after the claim- 17 construction order and less than three weeks before trial). Because those theories are reflected in the MMR provided notice in the Joint Post- 18 While the Court agrees that diligence is properly measured from the time MMR 19 had notice of Defendants’ proposed constructions, the constructions exchanged on 20 May 1, 2014, were “preliminary” claim constructions subject to change until the Joint 21 Claim-Construction Statement. (ECF No. 74 at 4.) Therefore, MMR did not know 22 the final proposed constructions until July 7, 2014. 23 Construction Chart, ECF No. 69. Under these particular facts, a three-month delay in 24 moving for leave to amend does not undermine MMR’s diligence. See Radware Ltd. 25 v. F5 Networks, Inc., 2014 WL 3728482, at *2 (N.D. Cal. July 28, 2014) (finding 26 Radware diligent when there was a three-month delay between receiving notice of 27 source code identified in defendant’s interrogatory responses and seeking leave to 28 amend). It was reasonable for MMR to wait until after the Court issued the Claim- 6 See Final Joint Claim- 1 Construction Order and re-opened discovery, rather than amend immediately after the 2 Joint Claim Construction Statement was filed. Additionally, MMR’s delay does not 3 undermine the notice function of infringement contentions. Once proposed claim 4 constructions were exchanged between the parties, Defendants were also on notice 5 that MMR would amend their infringement contentions based upon a new claim 6 construction. Neither party had any way of predicting how the Court would rule on 7 the claim construction dispute before it issued the Claim-Construction Order. Notwithstanding the diligence issue, Defendants will not be prejudiced by 8 9 MMR’s proposed changes. The end of fact discovery is February 18, 2015. 10 Defendants have sufficient time to review MMR’s amended infringement contentions. 11 Further, MMR’s proposed amendments do not add new patent claims or new 12 products. See Linex Technologies, Inc. v. Hewlett–Packard Co., 2013 WL 5955548, 13 at *2 (N.D. Cal. Nov. 6, 2013) (granting motion for leave to amend infringement 14 contentions where the plaintiff's “proposed amendments to its infringement 15 contentions do not add new patent claims or new products” and the defendants had 16 “sufficient time to review [the] amended infringement contentions”). Lastly, MMR 17 gave notice regarding its intent to amend infringement contentions in the Joint Post- 18 Markman Schedule, and Defendants still pursued an early summary judgment motions 19 due date. (See ECF No. 87 at 4-5.) By their own logic, Defendants should have 20 anticipated the possibility that MMR would have leave to amend its infringement 21 contentions, and therefore cannot argue that they are now prejudiced by their own 22 actions. 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// 7 V. 1 CONCLUSION 2 In sum, the Court GRANTS MMR’s Motion for Leave to Amend Infringement 3 Contentions with respect to all the Defendants in the above captioned cases. (Case 4 No. 2:13-cv-02538, ECF No. 69; Case No. 2:13-cv-03560, ECF No. 79; Case No. 5 2:13-cv-07285, ECF No. 48.) 6 7 IT IS SO ORDERED. 8 9 10 November 6, 2014 11 12 13 ____________________________________ OTIS D. WRIGHT, II UNITED STATES DISTRICT JUDGE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?