Health Grades, Inc. v. MDX Medical, Inc.

Filing 304

ORDER. The 87 Recommendation of United States Magistrate Judge is accepted. Defendant's 62 motion to strike plaintiff's supplemental infringement contentions is granted and the request to amend contained within plaintiff's 71 response to that motion is disregarded. By Judge Philip A. Brimmer on 9/24/12.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 11-cv-00520-PAB-BNB
HEALTH GRADES, INC.,
Plaintiff,
v.
MDX MEDICAL, INC.,
doing business as Vitals.com,
Defendant.
_____________________________________________________________________
ORDER
_____________________________________________________________________
This matter is before the Court on the Recommendation of United States
Magistrate Judge [Docket No. 87]. The magistrate judge recommends that the Court
grant defendant’s motion to strike plaintiff’s supplemental infringement contentions
[Docket No. 62] and deny a request to amend contained within plaintiff’s response to
that motion [Docket No. 71]. Plaintiff filed timely objections [Docket No. 102] to the
Recommendation. The magistrate judge construed the relevant issues as being
dispositive and, therefore, issued the Recommendation. The parties dispute whether
the issues are dispositive. In an abundance of caution, the Court will review the
Recommendation de novo. See Fed. R. Civ. P. 72(b)(3) (“The district judge must
determine de novo any part of the magistrate judge’s disposition that has been properly
objected to.”).
Plaintiff is the assignee and owner of U.S. Patent No. 7,752,060 (the “’060
Patent”) and contends that a website owned by defendant infringes the ’060 Patent.

The deadline for disclosure of infringement contentions was July 19, 2011. See Docket
No. 46. The parties agreed to have the Local Rules of Practice for Patent Cases of the
United States District Court for the Northern District of California apply in this case. See
Docket No. 34 at 6. Those rules require that “[a]mendment of the [i]nfringement
[c]ontentions or the [i]nvalidity [c]ontentions may be made only by order of the Court
upon a timely showing of good cause.” Docket No. 34 at 22. On October 20, 2011,
plaintiff attempted to amend its infringement contentions by serving, without leave of the
Court, supplemental infringement contentions upon defendant. Plaintiff’s attempt to
amend such contentions without leave of court therefore violated the Scheduling Order
and the rules applicable to this case. Cf. Fed. R. Civ. P. 7(b)(1) (“A request for a court
order must be made by motion.”). Plaintiff’s attempt to seek such leave in its response
to defendant’s motion to strike was improper. See D.C.COLO.LCivR 7.1C (“ A motion
shall not be included in a response or reply to the original motion. A motion shall be
made in a separate paper.”). In its objections to the Recommendation, plaintiff again
attempts to argue why it should be permitted to amend its infringement contentions.
The merits of any such request was not before the Court, as plaintiff had not filed a
motion requesting any court action.1 Wherefore, it is
ORDERED that, for the reasons discussed above, the Recommendation of
United States Magistrate Judge [Docket No. 87] is ACCEPTED. It is further
ORDERED that defendant’s motion to strike plaintiff’s supplemental infringement
contentions [Docket No. 62] is GRANTED and the request to amend contained within
1

Plaintiff has since filed a motion for leave to amend its infringement contentions
[Docket Nos. 292, 298].
2

plaintiff’s response to that motion [Docket No. 71] is disregarded.

DATED September 24, 2012.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

3