Swanson v. Alza Corporation

Filing 217

ORDER by Judge Hamilton denying 191 Motion for Leave to File Amended Inventorship and Invalidity Contentions (pjhlc1, COURT STAFF) (Filed on 9/9/2014)

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1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 9 11 For the Northern District of California United States District Court 10 12 DR. JAMES M. SWANSON, 13 14 Plaintiff, No. C 12-4579 PJH v. ORDER DENYING PLAINTIFF'S MOTION FOR LEAVE TO AMEND INVENTORSHIP AND INVALIDITY CONTENTIONS 15 ALZA CORPORATION, 16 Defendant. _______________________________/ 17 18 The motion of plaintiff Dr. James M. Swanson for leave to amend his inventorship 19 and invalidity contentions came on for hearing before this court on September 3, 2014. Dr. 20 Swanson appeared by his counsel Robert Yorio and Michael Adelsheim, and defendant 21 ALZA Corporation ("ALZA") appeared by its counsel George Pappas and Kurt Calia. 22 Having read the parties' papers and carefully considered their arguments and the relevant 23 legal authority, the court DENIES the motion as follows and for the reasons stated at the 24 hearing. 25 26 BACKGROUND In the April 25, 2014, Order Construing Claims, the court construed the term "[in a 27 manner that achieves] a substantially ascending methylphenidate plasma drug 28 concentration over a period of about [x] hours following said administration” as meaning 1 "a profile in which the plasma concentration of methylphenidate generally rises over 2 approximately [x] hours.” See April 25, 2014, Order at 13-17, 29. 3 Dr. Swanson had proposed that the term be construed as "an effect time profile 4 similar to three doses of immediate release methylphenidate given approximately every 4 5 hours for approximately 12 hours per day." ALZA had proposed that the term be construed 6 as "a substantially ascending methylphenidate plasma drug concentration over a period of 7 approximately [x] hours, but may include a slight dip." 8 9 The construction adopted by the court generally followed ALZA's proposed construction, except that it substituted "generally rises" in place of ALZA's proposed "substantially ascending" (which simply replicated the words of the claim term); and omitted 11 For the Northern District of California United States District Court 10 the proposed limitation "may include a slight dip,” which ALZA argued it had inserted based 12 on a portion of the specification. The court found "no support in the claim language for 13 adding the limitation 'can include a slight dip,'" and furthermore, concluded that 14 "substantially ascending" meant that the plasma drug concentration would "substantially" or 15 "generally" or "approximately" rise, but might also briefly descend (though it would not 16 necessarily do so). See April 25, 2014 Order at 13-15. 17 Now Dr. Swanson seeks leave to amend his inventorship contentions and his 18 invalidity contentions. He argues that because the construction determined by the court 19 was not advocated by either party, he should be permitted leave to amend. He contends 20 that he was been diligent in seeking leave to amend because he had no reason to know of 21 the need for amendment until April 25, 2014. DISCUSSION 22 23 24 A. Legal Standard The Patent Local Rules provide that a party may supplement or amend its invalidity 25 or infringement contentions only by order of the court "upon a timely showing of good 26 cause." Patent L.R. 3-6. 27 Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: 28 2 (a) A claim construction order by the Court different from that proposed by the party seeking amendment; 1 2 (b) Recent discovery of material, prior art despite earlier diligent search; and 3 (c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions. 4 5 Pat. L.R. 3-6. 6 The local patent rules in the Northern District of California require the parties in patent 7 cases to "provide early notice of their infringement and invalidity contentions, and to proceed 8 with diligence in amending those contentions when new information comes to light in the 9 course of discovery. The rules thus seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories.” Golden Hour Data Sys., Inc. 11 For the Northern District of California United States District Court 10 v. Health Servs. Integration, Inc., 2008 WL 2622794, at *2 (N.D. Cal. Jul.1, 2008) (citing O2 12 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)). 13 Whether good cause has been established is within the sound discretion of the trial court. 14 See Vasudevan Software, Inc. v. International Bus. Machines Corp., 2011 WL 940263, at * 15 1 (N.D. Cal. Feb. 18, 2011). While there is no similar rule regarding inventorship 16 contentions – as inventorship is not generally at issue in a patent infringement action – the 17 court assumes a similar standard applies. 18 B. Plaintiff's Motion 19 Dr. Swanson argues that the construction adopted by the court was not advocated by 20 either party, and that he should therefore be permitted to amend his inventorship and 21 invalidity contentions. He asserts that prior to the April 25, 2014 order, he was "up against 22 ALZA's overly narrow interpretation of its claimed drug plasma concentration as including 'a 23 slight dip,'" and that the court's construction is significant because it acknowledges the 24 inherent variability of plasma drug concentrations without limiting such variability to "a slight 25 dip." 26 Dr. Swanson contends that he acted diligently in seeking leave to amend, because 27 he was unaware prior to the April 25, 2014 claim construction order that amendment would 28 3 1 be necessary. He filed the present motion on July 11, 2014, and argues that a delay of only 2 2 1/2 months is not unreasonable. 3 Dr. Swanson also asserts that ALZA will not be prejudiced if the court permits the 4 requested amendments, as ALZA anticipated in the March 21, 2013 case management 5 conference statement that he would seek to amend the inventorship contentions, and 6 indicated that he should be permitted to do so upon a timely showing of good cause. 7 The court finds that the motion must be DENIED, as it is neither timely nor supported 8 by good cause. With regard to timeliness, Dr. Swanson's argument is based on the premise 9 that the court construed the disputed term in a way that was not proposed by either side, 11 date of the claim construction order. However, apart from deleting the "slight dip" limitation For the Northern District of California United States District Court 10 and that the operative date for determining diligence should therefore be April 25, 2014, the 12 from ALZA's proposed construction, the court did not significantly modify that construction. 13 Further, as the order makes clear, in construing the term, the court decided against 14 including the "may include a slight dip" limitation because there was no support for that 15 specific limitation in the claim language. Contrary to what Dr. Swanson seems to be 16 suggesting, the omission of the "may include a slight dip" limitation was not intended as a 17 comment on whether there can be or should be or might be a slight dip in the course of the 18 "substantially ascending . . . plasma drug concentration." The order explains that "in the 19 context of the claim language, the use of 'substantially' indicates that the plasma 20 concentration generally rises, but that the rise is not necessarily uniform, and that some 21 variation is permitted." April 25, 2014 Order at 14. "To account for this inherent variability, 22 the plasma curve is described as 'substantially' ascending." Id. 23 The court finds that the operative date for determining diligence is the date that ALZA 24 served its proposed constructions – September 2013. The court finds further that such a 25 considerable delay does not reflect diligence in seeking leave to amend. 26 With regard to good cause, Dr. Swanson's argument is again that the court construed 27 the term in a way not proposed by either side. However, as stated above, the court's 28 construction did not differ substantially from ALZA's proposed construction. The fact that 4 1 ALZA wanted to insert an additional limitation does not mean that without that limitation the 2 court's construction is markedly different from ALZA's. 3 4 CONCLUSION In accordance with the foregoing, plaintiff's motion is DENIED. 5 6 IT IS SO ORDERED. 7 Dated: September 9, 2014 ______________________________ PHYLLIS J. HAMILTON United States District Judge 8 9 11 For the Northern District of California United States District Court 10 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5

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