Sage Electrochromics, Inc. v. View, Inc.

Filing 141

ORDER by Judge Jon S. Tigar granting 113 Motion to Amend/Correct. (jstlc2, COURT STAFF) (Filed on 1/28/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAGE ELECTROCHROMICS, INC.,

Case No. 12-cv-06441-JST

Plaintiff,
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ORDER GRANTING MOTION FOR
LEAVE TO AMEND INFRINGEMENT
CONTENTIONS AND DISCLOSURES

v.
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VIEW, INC.,

Re: ECF No. 113
Defendant.

United States District Court
Northern District of California

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Plaintiff and Counterclaim Defendant SAGE Electrochromics, Inc. (“SAGE”) has moved

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pursuant to Patent Local Rule 3-6(c) to amend its infringement contentions and supplement its

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Patent Local Rule 3-2(e) disclosures. ECF No. 113. Defendant and Counterclaimant View, Inc.

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(“View”) has filed an opposition in which it does not oppose SAGE’s request to amend its

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infringement contentions, but opposes only SAGE’s request to supplement its disclosures.

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“Amendment of . . . Infringement Contentions may be made only by order of the Court

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upon a timely showing of good cause.” Patent Local Rule 3-6. “The local patent rules in the

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Northern District of California . . . require[] both the plaintiff and the defendant in patent cases to

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provide early notice of their infringement and invalidity contentions, and to proceed with diligence

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in amending those contentions when new information comes to light in the course of discovery.”

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O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). It is

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established within the district that in determining whether to grant leave to amend infringement

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contentions, the court first considers whether the moving party was diligent in amending its

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contentions, and only if that criterion is satisfied proceeds to consider whether the non-moving

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party would suffer prejudice if the motion to amend were granted. See, e.g., Acer, Inc. v. Tech.

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Properties Ltd., Case No. 5:08-CV-00877 JF/HRL, 2010 WL 3618687, at *5 (N.D. Cal. Sept. 10,

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2010).
Patent Local Rule 3-1(g) provides:

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If a party claiming patent infringement wishes to preserve the right
to rely, for any purpose, on the assertion that its own apparatus,
product, device, process, method, act, or other instrumentality
practices the claimed invention, the party shall identify, separately
for each asserted claim, each such apparatus, product, device,
process, method, act, or other instrumentality that incorporates or
reflects that particular claim.

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Patent Local Rule 3-2(e) provides that among a party’s disclosure obligations is the

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following:
If a party identifies instrumentalities pursuant to Patent L.R. 3-1(g),
documents sufficient to show the operation of any aspects or
elements of such instrumentalities the patent claimant relies upon as
embodying any asserted claims.

United States District Court
Northern District of California

View cites no authority discussing the proper standard for determining whether a party
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should be permitted to supplement its Patent Local Rule 3-2(e) disclosures, as distinct from
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whether a party should be permitted to amend its infringement contentions. By not opposing
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SAGE’s request to amend its infringement contentions, View presumably concedes that SAGE’s
proposed amendments do not unfairly alter SAGE’s infringement theories.
Even assuming that the two-part “diligence” and “prejudice” standard applies to the

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supplementation of 3-2(e) disclosures, the standard has been met. One set of documents reflect
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the comparative testing of SAGE and View products. SAGE received samples of View’s products

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after bringing a successful motion to compel in September, had comparative tests performed on
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the samples in October, received the final testing results in November, and brought its motion to
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amend in December. As to the second set of documents, while they were received in June, they
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were received from View. While SAGE presumably could have sought to supplement its
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disclosures in June, the Patent Local Rules do not contemplate that a party must supplement its
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disclosures every time it receives a new piece of evidence pertinent to its Rule 3-1(g) contention,
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especially when that evidence is information that the other party already possesses. The Court
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agrees with SAGE that the most appropriate opportunity to supplement 3-2(e) disclosures (and the
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only opportunity explicitly provided for in the Patent Local Rules) is when amending infringement
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or invalidity contentions.
View has also failed to demonstrate that it will be prejudiced by the supplementation of the

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disclosures. Patent Local Rule 3-2(e) requires a litigant to produce documents “sufficient to

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show” the operation of any aspects or elements of such instrumentalities on which the patent

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claimant relies. But it does not require the disclosure of all evidence the party has that supports

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the claim. While View may dispute that the initially disclosed documents are in fact sufficient

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(and may even dispute that the newly disclosed documents are sufficient), the fact that it takes that

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position does not permit it to oppose any later attempts to supplement 3-2(e) disclosures.

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Moreover, the documents are already in the factual record, discovery is still ongoing, and the
Court has not yet set a schedule for dispositive motions. In all, there is no demonstrated undue

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United States District Court
Northern District of California

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prejudice to View.

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The motion is GRANTED.

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IT IS SO ORDERED.

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Dated: January 28, 2014
______________________________________
JON S. TIGAR
United States District Judge

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