IN RE: PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION - MDL 1880

Filing 677

MEMORANDUM OPINION AND ORDER: The Camera Manufacturers' motion for leave to amend their invalidity contentions, Dkt. 662 , is hereby GRANTED. The Camera Manufacturers are hereby ORDERED to file their amended contentions on or before September 1, 2017. See document for details. Signed by Judge Randolph D. Moss on 8/24/2017. (lcrdm1, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
IN RE PAPST LICENSING GMBH & CO.

Misc. Action No. 07-493 (RDM)

KG PATENT LITIGATION

MDL No. 1880

MEMORANDUM OPINION AND ORDER
This matter is before the Court on the Camera Manufacturers’ Motion for Leave to
Amend Invalidity Contentions as to the “new patents” (U.S. Pat. Nos. 8,966,144 and 8,504,746)
asserted by Papst in this multidistrict litigation.1 Dkt. 662. The Camera Manufacturers contend
that they recently discovered a break in the chain of priority that links Papst’s new patents to its
“old patents” (U.S. Pat. Nos. 6,470,399 and 6,895,449) rendering “Papst’s own earlier published
patent applications prior art to the [n]ew [p]atents.” Id. at 4; see also id. at 5–9, 12. Because this
theory was not set forth in the Camera Manufacturers’ invalidity contentions, they seek leave to
amend those contentions. Id. Papst opposes the Camera Manufacturers’ motion, arguing that the
Camera Manufacturers have failed to meet their burden of establishing “good cause” for
amending their invalidity contentions. Dkt. 669.
For the reasons explained below, the Court will GRANT the Camera Manufacturers’
motion for leave to amend their invalidity contentions.
I. BACKGROUND
Initiated almost a decade ago, this multidistrict litigation originally concerned two
patents—U.S. Patent Nos. 6,470,399 (’399 patent) and 6,895,449 (’449 patent). After extended
proceedings, the Court entered final judgment of non-infringement pursuant to Rule 54(b) with

1

Because Papst has not asserted the new patents against Samsung Techwin Co., Ltd. and
Samsung Opto-Electronics America, Inc., they do not join the Camera Manufacturers’ motion
for leave to amend. See Dkt. 662 at 4 n.1.

respect to certain defendants, Dkts. 559, 560, and the plaintiff—Papst Licensing GMBH & Co.
KG (“Papst”)—appealed that partial final judgment, Dkt. 561. In February 2015, the Federal
Circuit concluded that the Court had incorrectly construed various claims terms and, accordingly,
vacated the Court’s entry of summary judgment. In re Papst Licensing Digital Camera Patent
Lit., 778 F.3d 1255 (Fed. Cir. 2015). After the case was remanded, Papst asserted two additional
patents—U.S. Patent Nos. 8,504,746 (’746 patent) and 8,966,144 (’144 patent)—against the
defendants, and, over Papst’s objection, those new patent infringement actions were transferred
to this Court in October 2015 for inclusion in the pending multidistrict litigation. See Dkt. 606.
Following the transfer of the new cases asserting the ’746 and ’144 patents, the Court
issued its Ninth Practice and Procedure Order. Dkt. 608. Among other things, that Order
designated which cases would be included in the “First Wave” cases and designated the
defendants in those cases as the “Camera Manufacturers;” affirmed that the litigation would be
governed by the Patent Local Rules of the Northern District of California (“Patent Local Rules”);
stayed all discovery other than discovery relating to claims construction; and directed that the
Camera Manufacturers file their invalidity contentions no later than February 12, 2016. Id. at 1–
5. The Order emphasized that the Camera Manufacturers would be permitted to amend their
invalidity contentions only “by order of the Court upon a timely showing of good cause,” as
provided in Patent Local Rule 3-6. Id. at 6 (quoting Patent L.R. 3-6). The Camera
Manufacturers filed their invalidity contentions on January 29, 2016. Dkt. 620.
In July 2016, the multidistrict litigation was transferred to the undersigned judge, Dkt.
632, and the Court held a four-day claims construction hearing in November and December
2016. On October 17, 2016, roughly a month before the claims construction hearing, counsel for
the Camera Manufacturers wrote to Papst indicating that they intended to seek leave of the
Court, pursuant to Patent Local Rule 3-6, to amend their invalidity contentions with respect to
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the ’746 and ’144 patents, and asking whether Papst would consent to the proposed amendment.
Dkt. 662-3 at 2. As explained in the October 17, 2016, letter, the Camera Manufacturers asserted
that the new patents were “not entitled to claim priority” back to the old patents because the
chain of priority linking them together “was broken.” Id. Specifically, the Camera
Manufacturers pointed out that patent application ’778—the application that the new patents cite
to support their priority claim back to the old patents, see Dkt. 662 at 6–7—failed to claim
priority to the ’399 patent or its application, Dkt. 662-3 at 2. Accordingly, the Camera
Manufacturers continued, “all asserted claims in the [new patents] [we]re invalid as anticipated
. . . by” the inventor’s “earlier publications” and applications. Id.; see also Dkt. 662 at 9. On
October 28, 2016, Papst responded in a letter that posed a series of questions relating to whether
the standards set forth in Patent Local Rule 3-6 were satisfied, denied that “there [wa]s any break
in the priority chain for” the new patents, and indicated that, “[b]ased on [the] October 17,
2016[,] letter, Papst [could not] consent to the [Camera Manufacturers’] proposed amendment to
[their] invalidity contentions.” Dkt. 662-4 at 2.
Notwithstanding Papst’s denial that there was a break in the priority chain, on November
10, 2016, Papst filed a petition with the U.S. Patent and Trademark Office (“PTO”) for a
“delayed claim of priority,” arguing that the failure of the ’778 patent application to claim
priority to the ’399 patent was the “result of an administrative error” that had only “recently
come to [Papst’s] attention.” Dkt. 662-1 at 4. The parties continued to correspond with each
other over the next several months. On December 7, 2016, the Camera Manufacturers responded
to the list of questions posed by Papst on October 28, 2016. Dkt. 662-5 at 2. They explained
that the ’778 application was not the application for either of the new patents, but rather was
“one of many applications related to” those patents; that the prosecution of the new patents
“spanned a period of [eighteen] years” and that the prosecution history included “tens of
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thousands of pages;” that the Camera Manufacturers informed Papst of the issue “[u]pon
discover[y]” of the alleged priority defect; that Papst has been on notice of the issue “since at
least August” when it was raised in a similar case “pending in the Eastern District of Texas;” and
that Papst would suffer no prejudice by permitting the amendment. Id. About three weeks later,
Papst responded more definitively than in its first letter, asserting that “it is apparent that the
Camera Manufacturers . . . cannot demonstrate the requisite diligence for amending [their]
invalidity contentions” and that, accordingly, Papst would oppose their motion for leave to
amend. Dkt. 662-6 at 2.
By mid-January 2017, the Camera Manufacturers had learned that Papst had filed a
petition with the PTO for a delayed claim of priority with respect to the ’778 patent application,
and, on that basis, they asked, once “again[,] that Papst consent to the proposed amendment to
the invalidity contentions” in order to “avoid wasting the parties’ and the Court’s time with an
unnecessary dispute.” Dkt. 662-7 at 2. If Papst would not consent, the Camera Manufacturers
continued, they intended to “request a telephonic conference [with the Court, as required by the
Court’s procedures] to discuss the parties’ dispute and [to] seek leave to file a motion for leave to
amend [their] invalidity contentions.” Id. The next day, Papst responded succinctly: “Papst
does not consent to the [Camera Manufacturers’] request to amend their invalidity contentions.”
Dkt. 662-8 at 2. At a telephonic status conference held on January 27, 2017, the Court granted
the Camera Manufacturers leave to file the pending motion. See Minute Entry (Jan. 27, 2017).
II. ANALYSIS
As the parties have agreed and the Court has repeatedly confirmed, unless otherwise
ordered, the Patent Local Rules for the Northern District of California apply to this litigation.
See, e.g., Dkt. 628 at 2. As relevant here, Patent Local Rule 3-6, provides that invalidity
contentions may be amended “only by order of the Court upon a timely showing of good cause.”
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Patent L.R. 3-6. The moving party bears the burden of establishing good cause. See O2 Micro
Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). To do so, it must
demonstrate that it “acted with diligence in promptly moving to amend.” Id. at 1363. If the
moving party is able to show sufficient diligence, the Court “then must determine whether the
non-moving party would suffer [undue] prejudice if the motion to amend were granted.” Tech.
Licensing Corp. v. Blackmagic Design Pty Ltd., No. 13-cv-05184, 2014 WL 5499511, at *2
(N.D. Cal. Oct. 30, 2014) (internal quotation marks omitted) (citing Patent L.R. 3-6).
Determining whether “good cause” exists is not a mechanical process. The Court must
consider all of the relevant circumstances, including the extent to which permitting an
amendment would interfere with the purposes of requiring the early disclosure of invalidity
contentions, and whether permitting an amendment would facilitate the “just, speedy, and
inexpensive determination” of the litigation, see Fed. R. Civ. P. 1.
A.

Diligence
As explained below, the Court concludes that the Camera Manufacturers have acted with

sufficient diligence at this early stage of the proceeding concerning the new patents. “The
diligence required for a showing of good cause has two phases: (1) diligence in discovering the
basis for amendment; and (2) diligence in seeking amendment once the basis for amendment has
been discovered.” Tech. Props. Ltd. LLC v. Canon Inc., No. 14-cv-03640, 2016 WL 1570163, at
*2 (N.D. Cal. Apr. 19, 2016) (quotation marks and alteration omitted). The Court will start with
the latter phase and then turn to the former.
1.

Diligence in Seeking Amendment

The Court is persuaded that, once they became aware of the potential invalidity defense,
the Camera Manufacturers acted with sufficient dispatch in raising the issue, first, with Papst
and, then, with the Court. Although the Camera Manufacturers do not specify precisely when
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they learned of the asserted break in the chain of priority, they have explained that the “issue
came to [their] attention” when “invalidity contentions were served” on August 24, 2016, in a
case involving the same patents pending in the Eastern District of Texas. Dkt. 661 at 5 (Tr. of
Jan. 27, 2017, Telephonic Conf.). They have further represented that, after learning that the
break in the chain of priority had been raised in the Texas litigation, they “spent a month
researching [whether] it would be relevant” in this proceeding, and then contacted Papst by letter
on October 17, 2016, to notify Papst that they wanted to add this theory to their invalidity
contentions and to see whether Papst would consent to the amendment. Id. at 5–6; see also Dkt.
662-3.
Had Papst simply responded that it would not consent, the Camera Manufacturers might
reasonably be faulted for having waited until January to raise the issue with the Court. But that
is not what Papst did. Rather, it posed a series of questions to the Camera Manufacturers seeking
an explanation for why the good cause standard was satisfied; it “disagreed” with the Camera
Manufacturers’ contention that a break in priority had occurred; and it declined to consent to the
proposed amendment “[b]ased on [the Camera Manufacturers’] October 17, 2016[,] letter.” Dkt.
662-4. In the Court’s view, the Camera Manufacturers reasonably construed this response as a
request for further justification and not as a firm “no.” The Camera Manufacturers, then,
responded to the questions posed by Papst in letter dated December 7, 2016. Dkt. 662-5.
Although they might have responded more quickly, the Court concludes that, given the number
of parties and attorneys involved and the intervening holiday, the forty days it took the Camera
Manufacturers to answer Papst’s letter was not unreasonable.
Approximately three weeks later, Papst wrote back stating that “it is apparent that the
Camera Manufacturers . . . cannot demonstrate the requisite diligence for amending [their]
invalidity contentions” and that, accordingly, Papst had decided to oppose their motion for leave
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to amend. Dkt. 662-6 at 2. That response, among other things, validates the Camera
Manufacturers’ understanding the Papst was, until then, considering whether to consent to the
amendment. Finally, despite Papst’s unqualified response, the Camera Manufacturers gave their
effort to obtain consent one more shot. Having learned (without notification from Papst) that
Papst had petitioned the PTO in early November 2016 for a delayed claim of priority with
respect to the ’778 patent application, the Camera Manufacturers asked whether, “[i]n view of
Papst’s recently-filed petition and Papst’s admissions therein,” it would “consent to the proposed
amendment to the invalidity contentions.” Dkt. 662-7 at 2. And, in the alternative, they asked
“when Papst [wa]s available” for a telephonic conference with the Court to address “the parties’
dispute and [for the Camera Manufacturers to] seek leave to file a motion for leave to amend
[their] invalidity contentions.” Id. When Papst reaffirmed its decision not to consent the next
day, Dkt. 662-8, the Camera Manufacturers promptly sought permission from the Court to file
the pending motion, see Notice of Hearing (Jan. 24, 2017).
In the Court’s view, although the Camera Manufacturers might have moved with
somewhat greater alacrity, much of the delay is attributable to the questions Papst posed and, to a
lesser extent, to Papst’s failure to inform the Camera Manufacturers when it filed its petition for
a delayed claim of priority with the PTO in November 2016. The Camera Manufacturers, more
generally, can hardly be faulted for attempting to resolve the present dispute without the need for
a contested motion or for substantial judicial involvement.
Papst pushes back by arguing that “interim communications between the parties” do not
“excuse [the Camera Manufacturers’] . . . protracted delay” in “rais[ing] th[is] issue with the
Court,” and it cites a handful of cases that it says supports that position. Dkt. 669 at 15. The
requests for amendment in those cases, however, arose in contexts unlike the present
circumstances. In Oracle America, Inc. v. Google Inc., for example, the court chastised the
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defendant for “gambl[ing] for months on the possibility that a stipulation [permitting
amendment] might be reached” between the parties, but it also highlighted that the defendant
was attempting to amend its invalidity contentions at the “eleventh hour,” just two months before
trial. No. C 10-03561, 2011 WL 3443835, at *1 (N.D. Cal. Aug. 8, 2011) (emphasis removed);
see also Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 11-cv-01846, 2012 WL 1067548, at *3
(N.D. Cal. Mar. 27, 2012) (noting that, “[w]hile seeking a stipulation from opposing counsel may
establish reasonable diligence in some instances,” Samsung’s attempts to obtain Apple’s consent
did not demonstrate diligence in light of “the expedited case schedule faced by the parties”).
Here, no such concern is present. Trial has not been scheduled, discovery is stayed, and there are
no upcoming deadlines that might be affected by the proposed amendment.
The Court, accordingly, finds that the Camera Manufacturers acted with sufficient
diligence in seeking leave of the Court to amend their invalidity contentions after they
recognized that there was a potential break in the chain of priority.
2.

Diligence in Discovering Basis for the Amendment

The more difficult question is whether the Camera Manufacturers were sufficiently
diligent in the first phase—that is, whether they should have identified the alleged defect in the
chain of priority earlier than they did. “[I]n considering a party’s diligence, the critical question
is whether the party ‘could have discovered [the new information] earlier had it acted with the
requisite diligence.’” Symantec Corp. v. Acronis Corp., No. 11-5310, 2013 WL 5368053, at *4
(N.D. Cal. Sept. 25, 2013) (quoting Google, Inc. v. Netlist, Inc., No. C 08-4144, 2010 WL
1838693, at *2 (N.D. Cal. May 5, 2010)); see also Sunpower Corp. Sys. v. Sunlink Corp., No. C08-2807, 2009 WL 1657987, at *1 (N.D. Cal. June 12, 2009 (“[T]he critical issue is whether or
not [the party seeking to amend] exercised diligence in discovering the prior art.”). The
requirement that the moving party act with “the requisite diligence” does not mean, however,
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that courts demand “perfect diligence”—“hindsight is often ‘20/20’” and courts recognize that
“identifying and evaluating prior art can be difficult.” Fujifilm Corp. v. Motorola Mobility LLC,
No. 12-cv-03587, 2014 WL 491745, at *4 (N.D. Cal. Feb. 5, 2014). Although “mistakes or
omissions are not[,] by themselves,” sufficient to establish good cause for amendment, Symantec
Corp., 2013 WL 5368053, at *4, “[c]ourts have allowed amendments when the movant has made
an honest mistake, the request to amend did not appear to be motivated by gamesmanship, or
where there was still ample time left in discovery,” OpenDNS, Inc. v. Select Notifications Media,
LLC, No. C11-05101, 2013 WL 2422623, at *3 (N.D. Cal. June 3, 2013).
Here, Papst argues that the Camera Manufacturers were not diligent because they were
aware of the ’778 application years before they filed their invalidity contentions. They assert
that, because the “’778 application [wa]s listed on the face of the [n]ew [p]atents,” the Camera
Manufacturers “cannot credibly claim that it was difficult to locate . . . the alleged mistake” in
the chain of priority. Dkt. 669 at 12; see also id. at 10–17. Put differently, Papst argues that the
Camera Manufacturers had all of the information necessary to assert this invalidity contention
long before their contentions were due, and their failure to put the pieces together in a timely
fashion does not constitute good cause. Papst’s argument has some appeal; it is correct that the
Camera Manufacturers could have identified the grounds for their new invalidity contention from
the face of the relevant patents and patent applications. Although a close question, the Court
nonetheless finds that the Camera Manufacturers have met their burden of showing sufficient
diligence for several reasons.
First, although this multidistrict litigation is approaching its tenth year, the potential
significance of the ’778 application is relatively new to the case. The purported break in the
priority chain found in the ’778 application was not relevant to any of the issues litigated by the
parties between 2007 and 2015, nor was it relevant to any of the issues appealed to the Federal
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Circuit. As a result, the years of work that preceded the incorporation of Papst’s new cases
asserting the ’746 and ’144 patents into the multidistrict litigation in 2015 has no bearing on the
issue presented.
Second, although Papst is correct that a careful analysis of the priority chain would have
revealed the defect now at issue, a showing of diligence does not require a showing of
“perfect[ion].” Fujifilm, 2014 WL 491745, at *4; see also OpenDNS, 2013 WL 2422623, at *3
(noting that honest mistake[s]” happen in litigation). Here, Papst is hard pressed to argue that the
Camera Manufacturers’ oversight was so obvious that they cannot possibly establish good cause.
As the Camera Manufacturers point out, Papst itself missed the same arguable break in the
priority chain. It was only after the issue was raised in the Texas litigation, and only after the
Camera Manufacturers raised the issue with Papst, that Papst petitioned the PTO seeking to
correct the alleged defect in the chain of priority for the new patents. In doing so, Papst
explained that it had only recently come to its attention that the ’778 application “mistakenly
omit[ted] a specific reference to” an earlier filed application. Dkt. 662-1 at 4. Papst further
explained that “this omission [was] a result of an administrative error.” Id. Although the
standard for a petition for a delayed claim of priority is admittedly less demanding than the good
cause standard, see 37 C.F.R. § 1.78(e) (delay was “unintentional”), the fact that Papst
nonetheless put its claims at risk by the omission, and the fact that Papst presumably conducted
substantial due diligence with respect to the ’746 and ’144 patents before bringing the pending
infringement actions, amply demonstrate that Papst failed to live up to the standard that it sets for
the Camera Manufacturers. To be sure, two wrongs don’t make a right. But the question of due
diligence turns on whether the omitted contention was “difficult to find,” Sunpower Corp. Sys.,
2009 WL 1657987, at *2, and Papst’s failure to find precisely the same issue—when it had every
incentive to do so—provides powerful evidence in support of the Camera Manufacturers.
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Third, the Court must consider the Camera Manufacturers’ claim of good cause in light
of the purposes of Patent Local Rules 3-3 (invalidity contentions) and 3-6 (amendments to
contentions). See Netflix, Inc. v. Rovi Corp., No. 11-cv-06591, 2015 WL 3504969, at *2 (N.D.
Cal. June 2, 2015) (explaining the “philosophy behind” the interplay of the rule permitting
amendment and the rule “requir[ing] parties to define their theories of infringement and
invalidity early on in the course of the litigation” (internal quotation marks omitted)). Those
rules are designed to permit a party asserting an infringement claim “to pin down” the other
side’s “theories” and to thereby channel “discovery and trial preparation” in an efficient and fair
manner. O2 Micro, 467 F.3d at 1365. The rules, accordingly, “seek to balance the right to
develop new information in discovery with the need for certainty as to the legal theories” at
issue. Id. at 1366. As a corollary to this underlying purpose, court have frequently “allowed
amendments when ‘the request to amend did not appear to be motivated by gamesmanship, or
where there was still ample time left in discovery,’” Tech. Licensing, 2014 WL 5499511, at *3
(quoting OpenDNS, 2013 WL 2422623, at *3), and have stressed that the “Patent Local Rules
were designed to prevent the parties from shifting their theories in reaction to adverse substantive
rulings or late in discovery, leaving the opposing party with little time to conduct discovery on a
new theory,” Yodlee Inc. v. CashEdge, Inc., No. C 05-1550, 2007 WL 1454259, at *2 (N.D. Cal.
May 17, 2007) (citations omitted). This “policy . . . prevents the ‘shifting sands’ approach to
claim construction” and reflects the Patent Local Rules’ “concern with parties sandbagging
opponents late in the discovery period.” Id. (internal quotation marks omitted).
Here, these considerations favor permitting the Camera Manufacturers to amend their
invalidity contentions. In this case—as in Yodlee—there have been no substantive rulings issued
by the Court between when the Camera Manufacturers served their invalidity contentions and
when they filed their motion to amend those contentions, and there is no basis to believe that the
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Camera Manufacturers motion is “motivated by gamesmanship.” Id. Moreover—as in Yodlee—
the press of a discovery deadline is not at issue; discovery is currently stayed, and the Court has
not yet set a discovery schedule. See id.; see also Tech. Licensing, 2014 WL 5499511, at *3.
Unlike many of the cases cited by Papst in which amendments were proposed late in the
discovery period or on the eve of trial, see Dkt. 668 at 4, permitting an amendment here would
not affect the timing or pace of proceedings between the parties. The Court is cognizant that this
litigation has been ongoing for nearly a decade, but the Camera Manufacturers’ request will not
prolong it any further.
Fourth, although the parties have agreed that the Patent Local Rules will govern this
proceeding, those rules—including any requirements relating to amendment—must yield to the
Federal Rules of Civil Procedure in the event of any conflict. The Federal Rules are meant to
“secure the just, speedy, and inexpensive determination of every action,” Foman v. Davis, 371
U.S. 178, 182 (1962) (quoting Fed. R. Civ. P. 1), and as the Federal Circuit has explained,
“refusing to allow any amendment to [invalidity] contentions based on new information
developed” by the parties over the course of the litigation “could be contrary to the spirit of the
Federal Rules,” O2 Micro, 467 F.3d at 1366. Questions of patent validity, moreover, are of
broad public importance and thus merit consideration where fairly presented. See, e.g.,
Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431, 2006 WL 1329997, at
*6 (N.D. Cal. May 15, 2006) (explaining that “the Federal Circuit strongly encourages district
courts to decide issues pertaining to invalidity when those issues have been presented to the
court, particularly because patent validity has important public implications”). Here, there is no
reason not to permit the Camera Manufacturers to raise this additional invalidity contention other
than their modest delay in identifying the issue.

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Finally, the Court is not convinced that the PTO’s decision to grant Papst’s petition for a
delayed claim of priority, see Dkt. 669-4, changes this analysis. The Camera Manufacturers
have asserted that they may contest the PTO’s ex parte determination in this Court, see Dkt. 662
at 12 n.6, and, even if that determination is upheld, they assert that it would only apply
prospectively from the date of the PTO’s decision, see Dkt. 668 at 6 (citing Southwest Software,
Inc. v. Harlequin Inc., 226 F.3d 1280, 1295–96 (Fed. Cir. 2000) (“[W]here the claim is invalid
on its face without the certificate of correction, it strikes us as an illogical result to allow the
patent holder, once the certificate of correction has issued, to sue an alleged infringer for
activities that occurred before the issuance of the certificate of correction.”)).
The Court, accordingly, concludes that the Camera Manufacturers have demonstrated
sufficient diligence in their discovery of the grounds for their proposed amendment.
B.

Prejudice
Even if the moving party has carried its “burden of establishing diligence,” the Court

“may deny a motion for leave to amend invalidity contentions if” doing so “would cause ‘undue
prejudice to the non-moving party.’” Tech. Props., 2016 WL 1570163, at *2 (quoting Patent
L.R. 3-6). For many of the same reasons discussed above, the Court concludes that Papst will
not suffer any undue prejudice if the Camera Manufacturers are permitted to amend their
invalidity contentions. Papst has not filed any pending motions that will be “impacted or
rendered moot by [the Camera Manufacturers’] amendment,” and, as discussed above, there is no
“fact discovery cutoff” that would be affected by permitting the Camera Manufacturers to assert
a new invalidity theory at this juncture in the litigation. Yodlee, 2007 WL 1454259, at *3. The
Court is cognizant that Papst may have to expend “resources” addressing an invalidity contention
that it deems “meritless and futile,” Dkt. 669 at 5; see also id. at 18–20, but, at this point in the
litigation, “any tax on [Papst’s] resources is outweighed by the [Camera Manufacturers’] right to
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develop new information . . . , as well as the interest in considering material information to
secure the just resolution of this action,” Fujifilm, 2014 WL 491745, at *6.
In short, the only cost imposed on Papst by the Camera Manufacturers’ identification of
this additional invalidity contention, which it would not have incurred had they included the
contention in their January 29, 2016, filing, has been the cost of opposing this motion.
CONCLUSION
For the foregoing reasons, the Court concludes that the Camera Manufacturers have
demonstrated good cause for amending their invalidity contentions as required under Patent
Local Rule 3-6. Accordingly, the Court GRANTS the Camera Manufacturers’ motion for leave
to amend their invalidity contentions (Dkt. 662). The Camera Manufacturers are ORDERED to
file their amended contentions on or before September 1, 2017.
SO ORDERED.

/s/ Randolph D. Moss
RANDOLPH D. MOSS
United States District Judge
Date: August 24, 2017

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