Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. et al

Filing 160

ORDER signed by Chief District Judge Kimberly J. Mueller on 5/10/2022 DENYING 153 Motion for Leave to Amend.(Perdue, C.)

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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Advanced Steel Recovery, LLC,

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No. 2:16-cv-00148-KJM-JDP

Plaintiff,

ORDER

v.
X-Body Equipment, Inc. and Jewell
Attachments, LLC,
Defendants.

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Plaintiff Advanced Steel Recovery, LLC (ASR) moves for leave to amend its patent

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infringement contentions. See generally Mot., ECF No. 153; Mem., ECF No. 154. Defendant X-

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Body Equipment, Inc. opposes that motion, which is now fully briefed. See generally Opp’n,

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ECF No. 156; Reply, ECF No. 157. The court submitted the motion without hearing oral

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arguments. Min. Order, ECF No. 159.

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The parties have agreed to adopt the Northern District of California’s Patent Local Rules

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in this matter. See Joint Status Report at 9, ECF No. 29. Under those rules, a party may amend

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its infringement contentions “only by order of the Court upon a timely showing of good cause.”

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N.D. Cal. Patent L.R. 3-6. “In contrast to the more liberal policy for amending pleadings, the

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philosophy behind amending claim charts is decidedly conservative, and designed to prevent the

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shifting sands approach to claim construction.” Oyster Optics, LLC v. Ciena Corp.,
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No. 20-02354, 2022 WL 561931, at *3 (N.D. Cal. Feb. 24, 2022) (quoting GoPro, Inc. v.

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360Heros, Inc., No. 16-01944, 2017 WL 1278756, at *1 (N.D. Cal. Apr. 6, 2017)). “The moving

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party bears the burden of establishing diligence.” Id. (quoting GoPro, 2017 WL 1278756, at *1).

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“The diligence required is twofold: “(1) diligence in discovering the basis for amendment; and

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(2) diligence in seeking amendment once the basis for amendment has been discovered.” GoPro,

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2017 WL 1278756, at *2 (quoting Monolithic Power Sys., Inc. v. Silergy Corp., No. 14-1745,

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2015 WL 5440674, at *2 (N.D. Cal. Sept. 15, 2015)).

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ASR argues it has good cause to amend its infringement contentions for two reasons.
First, it contends it should be permitted to conform its infringement contentions to the court’s

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orders on claim construction. See Mot. at 2–3. The court issued its order on claim construction in

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July 2019, and it denied X-Body’s motion to reconsider that order in October 2020. See Order

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(July 19, 2019), ECF No. 101; Order (Oct. 13, 2020), ECF No. 132. ASR could have sought

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leave to amend its infringement contentions to match the court’s orders then. It was not diligent

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in this respect.

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Second, ASR argues it should be permitted to expand its infringement contentions to

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encompass additional products it learned about only recently. See Mot. at 2; Mem. at 12–14.

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ASR sent discovery requests to X-Body after the court’s orders on claim construction. See

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Nielsen Decl. ¶ 3 & Ex. 1, ECF Nos. 154-1, 154-2. X-Body’s responses to interrogatories, which

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it served in January 2021, referred to three versions of the allegedly infringing product, the

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“Acculoader.” See Resp. Interrog. No. 1, Nielsen Decl. Ex. 1, ECF No. 154-2. X-Body argued

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the case was limited to only the first version of the Acculoader. See id. X-Body refused to

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provide responses about the two later versions because they were omitted from ASR’s

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infringement contentions. See id.

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The dispute went unresolved for several months. Nine months later, in October 2021,

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after X-Body responded to ASR’s document requests, ASR’s counsel claims to have found

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information about the two later Acculoader versions in these documents, including “photographs

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and design or technical documents.” Nielsen Decl. ¶¶ 4, 7, ECF No. 154-1. ASR asked X-Body

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to stipulate to a deadline for ASR to amend its infringement contentions, but X-Body could not
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agree without seeing the amendments ASR proposed. See id. Ex. 4 at 3. Over the next several

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months, the parties exchanged letters and emails about a variety of discovery disputes, but ASR

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did not respond to X-Body’s request to review the proposed amendments; nor did it seek leave to

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amend. See id. Exs. 5–6.

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ASR filed this motion in March 2022—five months after reviewing X-Body’s documents

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and more than a year after learning from X-Body that there were two more versions of the

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Acculoader. ASR has not explained whether and how the three Acculoader versions are similar

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or different, and it has not proposed any amended infringement contentions. “In similar contexts,

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courts have found a lack of good cause and diligence when parties know about the products and

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wait months before amending their contentions.” Oyster Optics, 2022 WL 561931, at *4; see

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also, e.g., GoPro, 2017 WL 1278756, at *2 (finding a party was not diligent after delaying “over

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two months”). ASR has not shown it was diligent in discovering the need for an amendment, and

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it has not shown it was diligent in seeking leave to amend.

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The court need not consider whether an amendment would prejudice X-Body. GoPro,
2017 WL 1278756, at *3.
The motion for leave to amend (ECF No. 153) is denied. IT IS SO ORDERED.
DATED: May 10, 2022.

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