Brilliant Instruments, Inc. v. GuideTech, Inc.
Filing
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ORDER by Judge Claudia Wilken DENYING BRILILANT INSTRUMENTS, INC.S 86 MOTION TO AMEND PRELIMINARY INVALIDITY CONTENTIONS AND 113 ADMINISTRATIVE REQUEST FOR LEAVE TO FILE DAUBERT MOTION BEYOND THE APRIL 1 DEADLINE.(ndr, COURT STAFF) (Filed on 4/29/2011)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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No. C 09-5517 CW
BRILLIANT INSTRUMENTS, INC.,
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Plaintiff,
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v.
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GUIDETECH, INC., and RONEN SIGURA,
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Defendants.
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United States District Court
For the Northern District of California
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AND ALL RELATED COUNTERCLAIMS
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ORDER DENYING
BRILILANT
INSTRUMENTS, INC.’S
MOTION TO AMEND
PRELIMINARY
INVALIDITY
CONTENTIONS AND
ADMINISTRATIVE
REQUEST FOR LEAVE TO
FILE DAUBERT MOTION
BEYOND THE APRIL 1
DEADLINE
(Docket Nos. 86 and
113)
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Plaintiff and Counterclaim-Defendant Brilliant Instruments,
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Inc., moves for leave to amend its invalidity contentions and for
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leave to file a Daubert motion after the April 1, 2011 deadline.
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Defendant and Counterclaimant GuideTech, LLC,1 opposes the motions.
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The motions were taken under submission on the papers.
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considered the papers submitted by the parties, the Court DENIES
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Brilliant’s motion for leave to amend its invalidity contentions
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and administrative motion to file its Daubert motion after the
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April 1 deadline.
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Having
BACKGROUND
Brilliant seeks a declaration that its products do not
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infringe GuideTech’s United States Patent Nos. 6,091,671 (’671
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patent); 6,181,649 (’649 patent); 6,226,231 (’231 patent);
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6,456,959 (’959 patent); 6,621,767 (’767 patent); 6,999,382 (’382
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GuideTech, LLC, was apparently erroneously sued as
GuideTech, Inc.
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patent); and 7,203,610 (’610 patent).
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Brilliant’s complaint and counterclaimed for infringement of the
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’671, ’649 and ’231 patents.
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infringement has been and continues to be willful.
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GuideTech’s infringement claims, Brilliant counterclaimed for
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invalidity of the ’671, ’649 and ’231 patents.
GuideTech answered
GuideTech maintains that Brilliant’s
In response to
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At his March 3, 2011 deposition, GuideTech’s infringement
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expert Dr. Burnell G. West discussed a product called the “ITS9000”
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and U.S. Patent No. 6,081,484 (’484 patent), for which he was named
United States District Court
For the Northern District of California
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the inventor.
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measuring signals in a tester system.”
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patent refers to the ITS 9000, stating that “a prior art timing
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measurement unit (TMU) is used in a tester system, such as the ITS
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90000GX system made by Schlumberger Technologies, Inc.”2
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1:10-12.
The ’484 patent is for an invention that “relates to
’484 patent, 1:5-6.
The
Id. at
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At the deposition, Brilliant’s counsel asked West whether
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Figure 4B in the ’484 patent, which was labeled “PRIOR ART,” showed
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elements contained in Claim 1 of the ’671 patent.
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that it did.
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West responded
Behiel Decl., Ex. 1, at 259:11-262:7.
In its proposed amended invalidity contentions, Brilliant
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includes charts that compare elements of claims in the ’671 and
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’231 patents with information it purportedly gleaned from West’s
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deposition.
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With respect to the ’671 patent, Brilliant cites West’s testimony
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regarding Figure 4B of the ’484 patent.
See generally Behiel Decl., Ex. 10, at 40-41 and 50.
Id. at 40-41.
As for its
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GuideTech maintains that the reference to the Schlumberger
“ITS 90000GX” in fact relates to the ITS9000. Brilliant does not
dispute this. Reply 7:13-15.
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proposed contentions regarding the ’231 patent, Brilliant states
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that “Dr. West testified that all claims in the ’231 patent are
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anticipated by U.S. Patent No. 6,081,484.”
Id. at 50.
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The parties’ April 27, 2010 Joint Case Management Statement
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listed April 1, 2011 as the deadline for filing Daubert motions.
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The Court adopted this deadline in its May 4, 2010 Case Management
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Order.
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DISCUSSION
I.
Brilliant’s Motion to Amend
United States District Court
For the Northern District of California
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Under Patent L.R. 3-3(a), a party’s invalidity contentions
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must contain information on the “identity of each item of prior art
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that allegedly anticipates each asserted claim or renders it
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obvious.”
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by order of the Court upon a timely showing of good cause,” which
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may include “recent discovery of material, prior art despite
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earlier diligent search.”
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Patent Local Rules “requires a showing of diligence.”
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Int’l v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed.
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Cir. 2006).
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“to establish diligence rather than on the opposing party to
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establish a lack of diligence.”
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Amendments to infringement contentions may “be made only
Patent L.R. 3-6.
Good cause under the
O2 Micro
The burden is on the party amending its contentions
Id.
Brilliant seeks leave to amend its invalidity contentions to
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refer to the “ITS9000,” which Brilliant maintains is prior art that
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anticipates the patents it claims are invalid.
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that it did not learn about the relevance of this product until
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West discussed at his March 3, 2011 deposition.
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to West’s testimony that, at one time, the ITS9000 was a trade
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secret.
Brilliant maintains
Brilliant points
Brilliant maintains that, upon discovering information
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about the ITS9000, it diligently sought leave to amend its
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contentions, filing the current motion on March 16, 2011.
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Brilliant’s argument, however, is vitiated by the publicly
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available ’484 patent, which Brilliant knew of and believed to be
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“relevant prior art” in June 2010.
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above, the ’484 patent refers to the ITS9000 as underlying prior
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art, putting Brilliant on notice of that product.
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portion of West’s testimony on which Brilliant relies for its
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current motion pertains to what is shown in Figure 4B of the ’484
See Reply at 8 n.3.
Indeed, the
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United States District Court
For the Northern District of California
As noted
patent.
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represent the ITS9000 without saying so does not support
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Brilliant’s position.
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’484 patent, 4:26.
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investigated this prior art.
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See Behiel Decl., Ex. 1, at 259:2-4.
That Figure 4B may
Figure 4B is labeled “PRIOR ART.”
See also
To be diligent, Brilliant should have
It did not do so.
Brilliant’s proposed amended contentions concerning the ’231
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patent further demonstrate its lack of diligence.
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contentions state, “Dr. West testified that all claims in the ’231
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patent are anticipated by U.S. Patent No. 6,081,484.”
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Decl., Ex. 10, at 50.
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“secret aspects of the ITS9000” for this purported testimony.
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at 7.
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characteristics of the ITS9000 not disclosed in the ’484 patent.3
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Further, Brilliant did not need West’s testimony to know that the
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’484 patent was relevant.
Those proposed
See Behiel
Brilliant maintains that West relied on
Mot.
However, Brilliant does not identify any material
As noted above, it knew in June 2010
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Indeed, Brilliant acknowledges that many elements of the
ITS9000 were at issue “in a patent application filed 10/14/1997”
and that this application ripened into the ’484 patent. Mot. at 6
n.3. However, Brilliant does not identify elements not disclosed
in that application or the ’484 patent that are relevant to its
claims of invalidity.
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that the patent constituted relevant prior art.
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Accordingly, the Court denies Brilliant’s motion for leave to
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amend its contentions based on the ITS9000.
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II.
Administrative Motion for Leave to File Brilliant’s Daubert
Motion Beyond the April 1 Deadline
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Brilliant seeks leave to file a Daubert motion challenging
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West’s expert report and testimony.
As noted above, the deadline
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to file Daubert motions was April 1, 2011.
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Pursuant to Federal Rule of Civil Procedure 16(b)(4), a
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scheduling order “may be modified only for good cause and with the
United States District Court
For the Northern District of California
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judge’s consent.”
In order to determine whether good cause exists,
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courts primarily consider the diligence of the party seeking the
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modification.
Johnson v. Mammoth Recreations, Inc., 975 F.2d 604,
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609 (9th Cir. 1992); see also Coleman v. Quaker Oats Co., 232 F.3d
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1271, 1294 (9th Cir. 2000).
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Brilliant asserts that it was not “reasonably feasible” to
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complete the Daubert motion by the deadline because West’s
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deposition was March 3 and it was busy preparing its opening claim
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construction brief, motion for summary judgment and motion to amend
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its infringement contentions.
Administrative Mot. at 2.
This
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argument does not establish good cause.
Brilliant knew of the
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Daubert motion deadline for almost a year.
And after that deadline
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passed, Brilliant waited two weeks before seeking leave to file a
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belated motion.
Finally, although it points to West’s testimony on
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March 3, Brilliant was served with West’s expert report on January
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28, 2011.
See Case Management Order (Docket No. 29).
Under these
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circumstances, Brilliant has not demonstrated its diligence.
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Accordingly, Brilliant’s administrative motion is denied.
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CONCLUSION
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For the foregoing reasons, the Court DENIES Brilliant’s motion
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for leave to amend (Docket No. 86) and administrative motion for
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leave to file its Daubert motion after the deadline (Docket No.
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113).
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IT IS SO ORDERED.
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Dated:
4/29/2011
CLAUDIA WILKEN
United States District Judge
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United States District Court
For the Northern District of California
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