Brilliant Instruments, Inc. v. GuideTech, Inc.

Filing 125

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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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 No. C 09-5517 CW BRILLIANT INSTRUMENTS, INC., 5 Plaintiff, 6 v. 7 GUIDETECH, INC., and RONEN SIGURA, 8 Defendants. 9 United States District Court For the Northern District of California 10 / AND ALL RELATED COUNTERCLAIMS / 11 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) 12 13 Plaintiff and Counterclaim-Defendant Brilliant Instruments, 14 Inc., moves for leave to amend its invalidity contentions and for 15 leave to file a Daubert motion after the April 1, 2011 deadline. 16 Defendant and Counterclaimant GuideTech, LLC,1 opposes the motions. 17 The motions were taken under submission on the papers. 18 considered the papers submitted by the parties, the Court DENIES 19 Brilliant’s motion for leave to amend its invalidity contentions 20 and administrative motion to file its Daubert motion after the 21 April 1 deadline. 22 23 Having BACKGROUND Brilliant seeks a declaration that its products do not 24 infringe GuideTech’s United States Patent Nos. 6,091,671 (’671 25 patent); 6,181,649 (’649 patent); 6,226,231 (’231 patent); 26 6,456,959 (’959 patent); 6,621,767 (’767 patent); 6,999,382 (’382 27 1 28 GuideTech, LLC, was apparently erroneously sued as GuideTech, Inc. 1 patent); and 7,203,610 (’610 patent). 2 Brilliant’s complaint and counterclaimed for infringement of the 3 ’671, ’649 and ’231 patents. 4 infringement has been and continues to be willful. 5 GuideTech’s infringement claims, Brilliant counterclaimed for 6 invalidity of the ’671, ’649 and ’231 patents. GuideTech answered GuideTech maintains that Brilliant’s In response to 7 At his March 3, 2011 deposition, GuideTech’s infringement 8 expert Dr. Burnell G. West discussed a product called the “ITS9000” 9 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 10 the inventor. 11 measuring signals in a tester system.” 12 patent refers to the ITS 9000, stating that “a prior art timing 13 measurement unit (TMU) is used in a tester system, such as the ITS 14 90000GX system made by Schlumberger Technologies, Inc.”2 15 1:10-12. The ’484 patent is for an invention that “relates to ’484 patent, 1:5-6. The Id. at 16 At the deposition, Brilliant’s counsel asked West whether 17 Figure 4B in the ’484 patent, which was labeled “PRIOR ART,” showed 18 elements contained in Claim 1 of the ’671 patent. 19 that it did. 20 West responded Behiel Decl., Ex. 1, at 259:11-262:7. In its proposed amended invalidity contentions, Brilliant 21 includes charts that compare elements of claims in the ’671 and 22 ’231 patents with information it purportedly gleaned from West’s 23 deposition. 24 With respect to the ’671 patent, Brilliant cites West’s testimony 25 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 26 27 28 2 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. 2 1 proposed contentions regarding the ’231 patent, Brilliant states 2 that “Dr. West testified that all claims in the ’231 patent are 3 anticipated by U.S. Patent No. 6,081,484.” Id. at 50. 4 The parties’ April 27, 2010 Joint Case Management Statement 5 listed April 1, 2011 as the deadline for filing Daubert motions. 6 The Court adopted this deadline in its May 4, 2010 Case Management 7 Order. 8 9 DISCUSSION I. Brilliant’s Motion to Amend United States District Court For the Northern District of California 10 Under Patent L.R. 3-3(a), a party’s invalidity contentions 11 must contain information on the “identity of each item of prior art 12 that allegedly anticipates each asserted claim or renders it 13 obvious.” 14 by order of the Court upon a timely showing of good cause,” which 15 may include “recent discovery of material, prior art despite 16 earlier diligent search.” 17 Patent Local Rules “requires a showing of diligence.” 18 Int’l v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. 19 Cir. 2006). 20 “to establish diligence rather than on the opposing party to 21 establish a lack of diligence.” 22 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 23 refer to the “ITS9000,” which Brilliant maintains is prior art that 24 anticipates the patents it claims are invalid. 25 that it did not learn about the relevance of this product until 26 West discussed at his March 3, 2011 deposition. 27 to West’s testimony that, at one time, the ITS9000 was a trade 28 secret. Brilliant maintains Brilliant points Brilliant maintains that, upon discovering information 3 1 about the ITS9000, it diligently sought leave to amend its 2 contentions, filing the current motion on March 16, 2011. 3 Brilliant’s argument, however, is vitiated by the publicly 4 available ’484 patent, which Brilliant knew of and believed to be 5 “relevant prior art” in June 2010. 6 above, the ’484 patent refers to the ITS9000 as underlying prior 7 art, putting Brilliant on notice of that product. 8 portion of West’s testimony on which Brilliant relies for its 9 current motion pertains to what is shown in Figure 4B of the ’484 See Reply at 8 n.3. Indeed, the 10 United States District Court For the Northern District of California As noted patent. 11 represent the ITS9000 without saying so does not support 12 Brilliant’s position. 13 ’484 patent, 4:26. 14 investigated this prior art. 15 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 16 patent further demonstrate its lack of diligence. 17 contentions state, “Dr. West testified that all claims in the ’231 18 patent are anticipated by U.S. Patent No. 6,081,484.” 19 Decl., Ex. 10, at 50. 20 “secret aspects of the ITS9000” for this purported testimony. 21 at 7. 22 characteristics of the ITS9000 not disclosed in the ’484 patent.3 23 Further, Brilliant did not need West’s testimony to know that the 24 ’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 25 3 26 27 28 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. 4 1 that the patent constituted relevant prior art. 2 Accordingly, the Court denies Brilliant’s motion for leave to 3 amend its contentions based on the ITS9000. 4 II. Administrative Motion for Leave to File Brilliant’s Daubert Motion Beyond the April 1 Deadline 5 Brilliant seeks leave to file a Daubert motion challenging 6 West’s expert report and testimony. As noted above, the deadline 7 to file Daubert motions was April 1, 2011. 8 Pursuant to Federal Rule of Civil Procedure 16(b)(4), a 9 scheduling order “may be modified only for good cause and with the United States District Court For the Northern District of California 10 judge’s consent.” In order to determine whether good cause exists, 11 courts primarily consider the diligence of the party seeking the 12 modification. Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 13 609 (9th Cir. 1992); see also Coleman v. Quaker Oats Co., 232 F.3d 14 1271, 1294 (9th Cir. 2000). 15 Brilliant asserts that it was not “reasonably feasible” to 16 complete the Daubert motion by the deadline because West’s 17 deposition was March 3 and it was busy preparing its opening claim 18 construction brief, motion for summary judgment and motion to amend 19 its infringement contentions. Administrative Mot. at 2. This 20 argument does not establish good cause. Brilliant knew of the 21 Daubert motion deadline for almost a year. And after that deadline 22 passed, Brilliant waited two weeks before seeking leave to file a 23 belated motion. Finally, although it points to West’s testimony on 24 March 3, Brilliant was served with West’s expert report on January 25 28, 2011. See Case Management Order (Docket No. 29). Under these 26 circumstances, Brilliant has not demonstrated its diligence. 27 Accordingly, Brilliant’s administrative motion is denied. 28 5 1 CONCLUSION 2 For the foregoing reasons, the Court DENIES Brilliant’s motion 3 for leave to amend (Docket No. 86) and administrative motion for 4 leave to file its Daubert motion after the deadline (Docket No. 5 113). 6 IT IS SO ORDERED. 7 8 Dated: 4/29/2011 CLAUDIA WILKEN United States District Judge 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6

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