Genentech, Inc. v. Trustees of the University of Pennsylvania

Filing 321

ORDER denying 293 Motion For Relief From Magistrate Judge Order (lhklc2, COURT STAFF) (Filed on 9/16/2011)

1
2
3
4
5
6
7
8
UNITED STATES DISTRICT COURT

10

NORTHERN DISTRICT OF CALIFORNIA

11
United States District Court
For the Northern District of California

9

SAN JOSE DIVISION

12
13
14
15
16

GENENTECH, INC.,
Plaintiff,
v.
THE TRUSTEES OF THE UNIVERSITY OF
PENNSYLVANIA, a Pennsylvania non-profit
corporation,
Defendant.

17
18

)
)
)
)
)
)
)
)
)
)
)

Case No.: 10-CV-02037-LHK

ORDER DENYING MOTION FOR
RELIEF FROM MAGISTRATE JUDGE
ORDER

On August 10, 2011, Plaintiff, Genentech, Inc. (“Genentech”) moved for relief from an

19

order by Magistrate Judge Grewal denying Plaintiff’s Motion to Amend Invalidity Contentions.

20

See Mot. for Relief from Magistrate’s Order, ECF No. 293; Order Granting-in-part and Denying-

21

in-part Genentech’s Mot. to Amend Invalidity Contentions (“July 27 Order”), July 27, 2011, ECF

22

No. 285. Genentech sought leave from Magistrate Judge Grewal to amend two of its invalidity

23

contentions related to its existing written description and non-enablement defenses. Genentech

24

sought to amend its contentions to include two alleged frauds on the United States Patent and

25

Trademark Office regarding the efficacy of U.S. Patent No. 6,733,752 (the ’752 Patent). The Court

26

set forth a detailed description of Genentech’s allegations in its Order Granting Leave to Amend

27

Complaint and will not do so here. See ECF No. 238. Magistrate Judge Grewal denied

28

Genentech’s motion to amend its invalidity contentions because he found that Genentech knew
about the facts supporting the theory of invalidity at least four months prior to seeking leave to
Case No.: 10-CV-02037-LHK
ORDER DENYING MOTION FOR RELIEF

1

1
2
3
4
5
6
7
8
9
10

United States District Court
For the Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

amend. Therefore, Judge Grewal concluded, Genentech was not diligent in seeking leave to
amend, and could not establish good cause as is required pursuant to Local Patent Rule 3-6. See
July 27 Order, ECF No. 285.
Pursuant to Federal Rule of Civil Procedure 72, a district judge may set aside a magistrate
judge’s non-dispositive pretrial order only if it is “clearly erroneous or contrary to law.” Fed. R.
Civ. P. 72(a). Genentech has conceded that the facts are not in dispute and that the Magistrate
Judge’s ruling was not “clearly erroneous.” See Mot. for Relief from Magistrate’s Order at 1, ECF
No. 293. Instead, Genentech argues that the following ruling by Judge Grewal is contrary to law:
“No exception [to the diligence requirement] is provided simply because a further amendment
might be justified after a claim construction is issued. Genentech’s failure to seek leave to amend
its invalidity contentions at or around the time it moved to add its inequitable conduct allegations
falls short of this standard.” See July 27 Order at 3, ECF No. 285.
Patent Local Rule 3-6 allows the parties to amend invalidity contentions “only by order of
the Court upon a timely showing of good cause.” Pat. L.R. 3-6. The Federal Circuit has
interpreted the “good cause” requirement of the local patent rules as requiring “a showing that the
party seeking leave to amend acted with diligence in promptly moving to amend when new
evidence is revealed in discovery.” O2 Micro Int’l Ltd v. Monolithic Power Systems, Inc., 467 F.3d
1355, 1363 & 1366 (Fed. Cir. 2006). Only if the moving party is able to show diligence may the
court consider the prejudice to the non-moving party. See CBS Interactive, Inc., 257 F.R.D. at 201;
see also Acer, Inc. v. Technology Properties Ltd., 2010 WL 3618687, *3 (N.D. Cal. Sept. 10, 2010)
(“[The moving party] must demonstrate good cause, an inquiry that considers first whether the
moving party was diligent in amending its contentions and then whether the non-moving party
would suffer prejudice if the motion to amend were granted. . . . If [the moving party] was not
diligent, the inquiry should end.”).
Given the facts in this case, the Court does not find that Judge Grewal’s order was contrary
to law. Genentech admittedly had the relevant evidence in its possession when it sought leave to
file an amended complaint, but waited four months after that to file its motion to amend its
invalidity contentions. Genentech’s only justification for its delay is that Genentech anticipated it
Case No.: 10-CV-02037-LHK
ORDER DENYING MOTION FOR RELIEF

2

1
2
3
4
5
6
7
8
9
10

would have to amend its invalidity contentions after the Court’s claim construction order, and thus
waited until after the Court issued its order to amend all at once. Genentech concedes, however,
that the proposed invalidity contentions at stake here were not necessitated by or affected by the
Court’s claim construction order. Thus, the relevant case law does not compel a contrary result
than the one reached by Judge Grewal. Because the Court concludes that the Magistrate Judge’s
Order is neither clearly erroneous, nor contrary to law, the Plaintiffs’ Motion for Relief is
DENIED.
IT IS SO ORDERED.
Dated: September 16, 2011

_________________________________
LUCY H. KOH
United States District Judge

United States District Court
For the Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Case No.: 10-CV-02037-LHK
ORDER DENYING MOTION FOR RELIEF

3