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

Filing 482

ORDER. Health Grades, Inc.'s 292 Motion for Leave to Amend Its Infringement Contentions to Incorporate Dr. Philip Greenspun's Expert Report is granted. MDx Medical, Inc.'s 293 , 298 Second Motion for Leave to Amend Invalidity Contentions is granted. By Magistrate Judge Boyd N. Boland on 1/14/13.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Magistrate Judge Boyd N. Boland
Civil Action No. 11-cv-00520-PAB-BNB
HEALTH GRADES, INC.,
Plaintiff,
v.
MDX MEDICAL, INC., d/b/a Vitals.com,
Defendant.
______________________________________________________________________________
ORDER
______________________________________________________________________________
This matter arises on the following:
(1)

Health Grades, Inc.’s Motion for Leave to Amend Its Infringement

Contentions to Incorporate Dr. Philip Greenspun’s Expert Report [Doc. # 292, filed
9/17/2012] (“HG’s Motion”); and
(2)

MDx Medical, Inc.’s Second Motion for Leave to Amend Invalidity

Contentions [Doc. # 293, filed 9/17/2012] (“MDx’s Motion”).
At the parties’ request, I adopted the Patent Local Rules for the Northern District of
California as applicable to this case. Scheduling Order [Doc. # 34] at Part 6(f)(1). Rule 3-6,
Patent L.R., provides that amendment of infringement contentions and invalidity contentions
may be made “only by order of the Court upon a timely showing of good cause.” Good cause
may include an unexpected claim construction, recent discovery of material despite an earlier
diligent search, and recent discovery of nonpublic information. Id. The court in TFH
Publications, Inc. v. Doskocil Mfg. Co., Inc., 705 F. Supp. 2d 361, 365-66 (D. N.J. 2010),

applied analogous rules and held that “[t]he Local Patent Rules exist to further the goal of full,
timely discovery and provide all parties with adequate notice and information with which to
litigate their cases. . . .”
I. HG’s Motion [Doc. # 292]
HG seeks to amend its infringement contentions “to incorporate the infringement
opinions of its technical expert, Dr. Philip Greenspun.” HG’s Motion [Doc. # 292] at p. 1.
According to HG, the amendment involves “twelve categories of information. . . .” Id. at pp. 67. HG admits that five of the categories were not previously disclosed, but argues that the
amendment should be allowed because these five categories “are based on newly discovered
evidence.” Id. at p. 7. HG argues that the remaining seven categories are not new and were
previously disclosed.
MDx opposes the amendment, arguing that some of the five previously undisclosed
categories are based on information known to HG either before the suit was commenced or, at a
minimum, before HG served its amended infringement contentions in February 2012. HG
counters that the information first became known to it through discovery made in June 2012. It
appears to me that the information underlying the previously undisclosed categories is based on
newly discovered evidence.
MDx also complains that even if the information underlying these amendments was
obtained by HG in May and June 2012, the motion to amend infringement contentions was not
made until September 2012 and is untimely. I disagree. HG acted diligently in seeking to
amend its infringement contentions once the underlying information became known to it.
As to the remaining seven categories, MDx’s opposition generally is that Dr. Greenspun

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is impermissibly expanding previously asserted infringement contentions. The amendments
appear to be more a matter of emphasis, and not completely new.
II. MDx’s Motion [Doc. # 293]
HG does not oppose MDx’s Motion, stating instead that it “does not oppose MDx’s
motion to supplement its invalidity contentions except to the extent that it results in an unequal
application of the Local Patent Rules against the partie.” Response [Doc. # 324]. This is an
apparent reference to HG’s goose and gander argument which I previously addressed. See Order
[Doc. # 477] at pp. 8-9.
IT IS ORDERED:
(1)

HG’s Motion [Doc. # 292] is GRANTED; and

(2)

MDx’s Motion [Doc. # 293] is GRANTED.

Dated January 14, 2013.
BY THE COURT:
s/ Boyd N. Boland
United States Magistrate Judge

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