Peerless Industries, Inc. v. Crimson AV, LLC
Filing
376
Opinion and Order Signed by the Honorable Joan H. Lefkow on 11/27/2013: Defendants' motion for reconsideration 349 is denied.Mailed notice(mad, )
IN THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF ILLINOIS
EASTERN DISTRICT
PEERLESS INDUSTRIES, INC.,
)
)
)
)
)
)
)
)
)
)
Plaintiff,
v.
CRIMSON AV, LLC, and VLADIMIR
GLEYZER,
Defendants.
Case No: 11 C 1768
Judge Joan H. Lefkow
OPINION AND ORDER
Presently before the court is a motion for reconsideration filed by defendants, Crimson
AV, LLC (“Crimson”) and Vladimir Gleyzer (“Gleyzer,” together, “defendants”), asking the
court to reconsider its ruling of October 2, 2013. (Dkt. 331.) In that ruling, the court reinstated
Crimson’s motion for partial summary judgment of invalidity but limited defendants to
maintaining invalidity defenses that they timely disclosed. For the foregoing reasons,
defendants’ motion (dkt. 349) is denied.1
BACKGROUND
The court assumes the reader’s familiarity with the background of this case, including
earlier decisions, as well as the underlying litigation and will set out facts only as necessary for
disposition of the remaining issues.2
1
The court has jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1338, and 1367, and
venue is proper under 28 U.S.C. §§ 1391(b) and 1400(b).
2
In particular, the court laid out the relevant facts in this dispute in its October 1, 2013 Opinion
and Order (dkt. 330) granting Peerless’s motion for summary judgment as to infringement and denying
Crimson’s motion for summary judgment as to noninfringment.
1
Peerless brought suit against defendants based on their manufacture and sale of television
mounts, seeking damages for patent infringement of United States Patent 7,823,850 (“the ’850
patent”), trade dress infringement, and various violations of Illinois statutory and common law.
(Dkt. 55, Third Am. Compl.) On February 28, 2013, Peerless moved for summary judgment on
the issues of infringement and validity. (Dkt. 170.) Crimson moved for summary judgment on
the issue of noninfringment on January 18, 2013 (dkt. 134), and on April 5, 2013, of invalidity.
(Dkt. 193.) On April 11, 2013 the court denied Crimson’s motion for partial summary judgment
as to invalidity without prejudice. (Dkt. 200.) On October 1, 2013, the court granted Peerless
summary judgment as to infringement, held that Peerless’s motion for summary judgment as to
validity of the patent was moot, and denied Crimson’s motion for summary judgment as to
noninfringment. (Dkt. 330.)
The next day, on October 2, 2013, the court partially reinstated Crimson’s summary
judgment motion as to invalidity (the “October 2 Order”). (Dkt. 331.) In its original motion for
summary judgment of invalidity that Crimson filed on April 5, 2013, Crimson argued the
asserted claims were invalid based on (1) the on-sale bar doctrine; (2) failure to name an
inventor; (3) failure to disclose the best mode; (4) obviousness; and (5) anticipation. (Dkt. 193.)
When the court reinstated Crimson’s invalidity motion in the October 2 Order, it limited
Crimson to arguing invalidity on bases three through five. The court barred Crimson from
asserting bases one and two because Crimson did not properly disclose those bases to Peerless in
its invalidity contentions. (Dkt. 331; see also dkt. 349 ¶¶ 8-10.) The court explained that a party
seeking to amend its final invalidity contentions may do so if it can demonstrate that it acted
diligently and the patentee would suffer no prejudice. (Dkt. 331 at 2.) Crimson made no such
2
showing of good cause for amendment in its April 5, 2013 motion. The court noted that Crimson
had alleged the on-sale bar doctrine in its amended answer but found that did not save the
defense because of Crimson’s obligation to disclose the defense in its invalidity contentions
pursuant to Northern District of Illinois Local Patent Rule 3.1.3 The court further stated that, if
anything, Crimson’s inclusion of the on-sale bar doctrine as an invalidity basis in its amended
answer “filed before it disclosed its invalidity contentions further militates against allowing
Crimson to raise the defense at the present time” because that demonstrated Crimson was
“undoubtedly aware of the defense.” (Id. at 3 n.3 (emphasis in original).) As for invalidity
based on failure to name an inventor, the court explained that this basis did not appear in
Crimson’s initial or supplemental invalidity contentions. Nor did Crimson “offer[ ] any
explanation as to why it did not timely raise [either of] these defenses.” (Id. at 3.) Because
Crimson had put Peerless on notice of the other three invalidity bases (failure to disclose the best
mode, obviousness, anticipation), however, the court determined in its October 2 Order that
Crimson could proceed on those bases in its renewed motion for summary judgment. (Dkt. 331
at 3-4.)
Crimson has moved this court to reconsider its October 2 Order barring it from asserting
the on-sale bar doctrine and failure to name an inventor as bases for invalidity of the ’850 patent.
Crimson argues that it could not have had all necessary information to bring these invalidity
contentions because the contentions were due “prematurely and well before Plaintiff’s (still
anticipated) compliance with Local Patent Rule 2.1[,] which requires Plaintiff to provide, with
3
“Each party asserting invalidity or unenforceability of a patent claim shall serve on all other
parties, no later than the same time that the Final Infringement Contentions are due, ‘Final
Unenforceability and Invalidity contentions[.]’” N.D. Ill. L.P.R. 3.1.
3
specificity, all documents which show public display or offers to sell products using the
invention prior to the patent application.” (Dkt. 349 ¶ 3.) It also argues that Peerless has been
obstinate in its refusal to disclose certain documents in discovery that would have allowed
Crimson to discover those bases. (Dkt. 349 ¶¶ 1-2.) Additionally, Crimson argues that it did not
learn much of the information necessary to formulate these invalidity contentions until the
deposition of Dr. Genady Plavnik (the patent inventor Peerless allegedly failed to name) on May
31, 2013. (Id.) Crimson notes that Peerless had initially subpoenaed this deposition to take
place earlier but cancelled it after Plavnik issued his statement. (Id. at ¶ 13.) Crimson now
requests leave to supplement its invalidity contentions once it completes all necessary discovery
(much of which it asserts Peerless has delayed in providing), and asserts that such leave is
appropriate given various outstanding discovery requests. (Id. at ¶ 35.) In the alternative, if the
court does not grant Crimson leave to supplement its invalidity contentions, Crimson seeks to
have Peerless barred from relying on any date of conception prior to the date of the provisional
patent application that formed the basis of the ’850 patent (October 14, 2005). (Id. at ¶ 36.) It
explains that this remedy would be appropriate because there “must be a consequence for
Plaintiff’s utter disregard for its discovery obligations and the obligation to supplement
discovery responses.” (Id.)
LEGAL STANDARD
Federal Rule of Civil Procedure 54(b) states that a court may reconsider an interlocutory
ruling “at any time before the entry of a judgment adjudicating all the claims and all the parties’
rights and liabilities.” Fed. R. Civ. P. 54(b). Motions for reconsideration serve the limited
purpose to correct manifest errors of law or fact or to present newly discovered evidence. See
4
Rothwell Cotton Co. v. Rosenthal & Co., 827 F.2d 246, 251 (7th Cir. 1987). A motion to
reconsider serves an important function where the “court has misunderstood a party, where the
court has made a decision outside the adversarial issues presented to the court by the parties,
where the court has made an error of apprehension (not of reasoning), where a significant change
in the law has occurred, or where significant new facts have been discovered.” Broaddus v.
Shields, 665 F.3d 846, 860 (7th Cir. 2011), overruled on other grounds, Hill v. Tangherlini, 724
F.3d 965 (7th Cir. 2013) (citing Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d
1185, 1191 (7th Cir. 1990)).
Local Patent Rule 3.1 provides that a party asserting invalidity of a claim must serve final
invalidity contentions before the close of discovery. Local Patent Rule 3.4 governs the
amendment of final invalidity contentions and provides that “[a] party may amend its Final . . .
Invalidity Contentions only by order of the Court upon a showing of good cause and absence of
unfair prejudice to opposing parties, made promptly upon discovery of the basis for the
amendment.” N.D. Ill. L.P.R. 3.4; see also O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1366-67 (Fed. Cir. 2006); see generally Judge Matthew Kennelly & Edward D.
Manzo, Northern District of Illinois Adopts Local Patent Rules, 9 J. MARSHALL REV. INTELL.
PROP. L. 202, 216 (2010) (“Parties are not locked irrevocably into their final contentions. To
amend them, however, a party must obtain leave of court on a showing of good cause and the
absence of unfair prejudice to opposing parties.”). Determining whether a party has satisfied the
good cause requirement is within the court’s discretion. See MEMC Elec. Materials, Inc. v.
Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1380 n.5 (Fed. Cir. 2005); Speedtrack, Inc. v.
Endeca Techs., Inc., Nos. 2012-1319, 2012-1402, 524 F. App’x 651, 659 (Fed. Cir. Apr. 16,
5
2013) (Table) (“Decisions enforcing local rules in patent cases are reviewed for an abuse of
discretion.”).
The on-sale bar invalidity contention applies if a patent was “in public use or on sale in
this country more than one year prior to the date the patent application is filed.” See Leader
Techs., Inc. v. Facebook, Inc., 678 F.3d 1300, 1305 (Fed. Cir. 2012) (quoting 35 U.S.C. §
102(b));4 N.D. Ill. L.P. R. 2.3(b)(1) (“Prior art under 35 U.S.C. § 102(b) shall be identified by
specifying the item offered for sale or publicly used or known, the date the offer or use took
place or the information became known, and the identity of the person or entity which made the
use or which made and received the offer, or the person or entity which made the information
known or to whom it was made known.”).
A patent may also be invalid for failure to name an inventor. See Pannu v. Iolab Corp.,
155 F.3d 1344, 1349-50 (Fed. Cir. 1998); N.D. Ill. L.P.R. 2.3(b)(1) (“Prior art under 35 U.S.C. §
102(f) shall be identified by providing the name of the person(s) from whom and the
circumstances under which the invention or any part of it was derived.”).5
ANALYSIS
I.
Motion to Reconsider
Crimson argues that the court should reconsider the October 2 Order because Peerless
has failed and continues to fail to produce documents supporting the on-sale bar doctrine and
4
The Leahy-Smith America Invents Act amended section 102. See Pub. L. 112-29, Sec. 3, 125
Stat. 284 (Sept. 16, 2011). The prior version of section 102 applies to this case as the asserted claims
have effective filing dates before March 15, 2013, which is when the statute took effect. See, e.g., Golden
Bridge Tech., Inc. v. Apple Inc., 937 F. Supp. 2d 504, 516 n.12 (D. Del. 2013).
5
The Leahy-Smith American Invents Act eliminated section 102(f) but, as discussed supra note
4, the prior version of section 102 applies to this case.
6
failure to name an inventor invalidity contentions. Crimson asserts that since it first filed its
summary judgment motion on April 5, 2013, it has been able to depose Plavnik and has obtained
favorable rulings from Magistrate Judge Susan Cox on discovery issues. This new information
that Crimson has received or is waiting to receive will allow it to “fully update its invalidity
contentions.” (Dkt. 349 ¶ 28.) Crimson also argues that its invalidity contentions were “due
prematurely and well before Plaintiff’s (still anticipated) compliance with Local Patent Rule
2.1.”6 (Dkt. 349 ¶ 3.) It alleges that this new information supports the on-sale bar doctrine and
failure to name an inventor invalidity contentions. The on-sale bar doctrine contention is
premised on Crimson’s assertion that Peerless displayed and sold the bracket embodying the
’850 patent in September 2004, which was more than one year before Peerless filed the
application leading to the ’850 patent. The failure to name an inventor contention is based on
Crimson’s argument that the ’850 patent fails to name Dr. Genady Plavnik, Peerless’s Senior
Design Engineer, who averred that he designed figure 3 in the ’850 patent, as an inventor. Both
of these facts, Crimson argues, render the patent invalid.
Crimson does not state, however, that the court has patently misunderstood its position,
made a decision outside the adversarial issues presented, made an error of apprehension, or that
there has been a controlling or significant change in the law. See, e.g., Ramada Franchise Sys.,
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Local Patent Rule 2.1 provides that the parties must exchange Federal Rule of Civil Procedure
26(a)(1) initial disclosures within fourteen days of the defendant filing an answer or other response. It
also provides that a party asserting patent infringement must produce certain documents to the opposing
party, with its initial disclosures including (1) documents concerning “any disclosure, sale or transfer, or
offer to sell or transfer, of any item embodying, practicing or resulting from the practice of the claimed
invention prior to the date of application for the patent in suit[;]” (2) documents concerning the
conception of the patent created on or before the date of the application of the patent in suit; (3)
documents relating to communications with the U.S. Patent Office; and (4) documents concerning
ownership of patent rights. N.D. Ill. L.P.R. 2.1(a).
7
Inc. v. Royal Vale Hosp. of Cinn., Inc., No. 02 C 1941, 2004 WL 2966948, at *3 (N.D. Ill. Nov.
24, 2004). Instead, Crimson asserts multiple ways in which it was unable to know all relevant
facts when it served its supplemental invalidity contentions (which Crimson argues it was
ordered to submit prematurely).7 This is insufficient as a matter of law under Rule 54(b).
For example, Crimson states that it was not aware of the existence of an additional
inventor until it took depositions of Peerless’s inventors and then interviewed and eventually
deposed Dr. Plavnik. (Dkt. 349 ¶ 34.) It does not state when it took the depositions of Peerless’s
other inventors and learned about Plavnik. But in its April 5, 2013 Local Rule 56.1 statement,
Crimson admitted that it learned on December 12, 2012, at the deposition of former Peerless
employee Dugan O’Keene, that the “prior art” brackets shown in the ’850 patent as figures 1 and
2 were designed by “Genady,” i.e., Plavnik. (Dkt. 192 ¶ 2; see also dkt. 191 at 3.) Another
former Peerless employee, William Lan, testified consistently with O’Keene’s statement at his
December 13, 2012 deposition. (Dkt. 192 ¶¶ 3, 5; see also dkt. 191 at 3.) Even had this
information been insufficient to put Crimson on notice of Plavnik’s alleged role, it knew of it at
least by March 4, 2013, when it received Plavnik’s declaration. In it, Plavnik explains that he
“worked on the design, engineering, prototyping and initial production of AV mounts, including
adapter brackets for AV mounts of the type shown in [the ’850 patent].” (Dkt. 349, Ex. E at 3.)
Crimson thus had enough information to allege on April 5, 2013 that Plavnik “is an, if not the
only, inventor of the bracket shown in Figs 3-7 and claimed in P’850.” (Dkt. 192 ¶ 8.)
As for the on-sale bar doctrine, Plavnik’s declaration provided Crimson with information
7
As discussed throughout this opinion, Crimson had the option of amending its “premature”
invalidity contentions upon a showing of good cause.
8
sufficient to alert Crimson of this invalidity basis in March 2013. Plavnik states in his
declaration that 50 brackets were shipped to Wal-Mart in the fall of 2004. (Dkt. 349, Ex. E at 45.) Crimson was thus able to include this fact in its statement of additional facts it submitted on
April 5, 2013 with its summary judgment motion. (Dkt. 192 ¶ 9.) Crimson also knew from
Plavnik’s declaration that the bracket that is the subject of figure 3 of the patent was on display
at a trade show in September 2004. (Dkt. 349, Ex. E at 4.) Crimson relied on this fact in its
April 5, 2013 motion for summary judgment. (Dkt. 191 at 3.)
Given the evidence that Crimson had supporting the failure to name an inventor and onsale bar doctrine invalidity contentions when it moved for summary judgment on April 5, 2013,
Crimson had all necessary information to move to amend its contentions then. “A motion for
reconsideration is not an appropriate vehicle for relitigating arguments that the Court previously
rejected or for arguing issues that could have been raised during the consideration of the motion
presently under reconsideration.” Fed. Deposit Ins. Corp. v. Mahajan, No. 11 C 7590, 2013 WL
3771419, at *2 (N.D. Ill. July 16, 2013) (emphasis added). Nor is it an appropriate vehicle to
“present evidence that was available earlier.” Caine v. Burge, 897 F. Supp. 2d 714, 717 (N.D.
Ill. 2012) (emphasis added). This motion thus fails because evidence supporting these
contentions was available to Crimson in the spring of 2013 but it did not move to show good
cause to amend its contentions then.
Crimson makes much of the fact that it filed various discovery motions between April
2013 and now, and of Judge Cox’s related rulings. It is true that Judge Cox has admonished
Peerless for some of its discovery practices and that the parties have an ongoing duty to
supplement discovery responses. (See Dkt. 349 ¶¶ 16-25.) But none of this changes the fact that
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on April 5, 2013, when Crimson filed its motion for summary judgment, it knew enough to bring
the on-sale bar and inventor defenses. (See dkt. 191 at 3.) Had Crimson lacked the necessary
information to assert the contentions on April 5, 2013, it would not—and could not—have
asserted them in the first place. Despite this knowledge, Crimson did not show the court good
cause to allow it to update its invalidity contentions. Crimson frames the issue as whether it had
“the additional, specific information[ ] the Court now requires[ ] at the time it served its
supplemental contentions.” (Dkt. 349 ¶ 30.) But that is the precise issue Crimson should have
raised before the court when it moved for summary judgment in April. That Crimson reserved
the right to supplement its invalidity defenses does not excuse its failure to comply with this
court’s local rules, which require that a party assert all invalidity defenses in its final invalidity
contentions. Accordingly, Crimson’s motion to reconsider the court’s October 2 Order is denied.
III.
Request to Amend Invalidity Contentions for Good Cause
To the extent that Crimson is moving to supplement its invalidity defenses in its motion
to reconsider, that motion is denied.8 Crimson asserts that good cause exists to allow it to
supplement its contentions because (1) there are outstanding discovery requests that have not
been answered; and (2) this would not cause Peerless to suffer any prejudice, as Peerless has
information regarding inventorship at its disposal. (Id. at ¶ 35.) In its reply brief, Crimson
8
Although the court will consider the merits of this motion, it notes that a motion to reconsider is
not the proper procedural mechanism for moving to supplement invalidity contentions. While it is true
that the decision on each motion is within the discretion of the district court, see Goldman v. Gagnard,
No. 11 C 8843, 2012 WL 2397053, at *3 (N.D. Ill. June 21, 2012) (citing Finnsugar Bioproducts, Inc. v.
Amalgamated Sugar Co., 244 F. Supp. 2d 890, 891 (N.D. Ill. 2002)); MEMC Elec., 420 F.3d at 1380 n.5,
the court reviews each motion for different factors. The proper motion for Crimson to file in seeking to
assert these contentions is one to amend its final invalidity contentions pursuant to Local Patent Rule 3.4.
See, e.g., Sloan Valve Co. v. Zurn Indus., Inc., No. 10 C 204, 2013 WL 622951, at *1 (N.D. Ill. Feb. 20,
2013) (noting that court had granted plaintiff’s properly filed “Motion for Leave to Amend Its Final
Infringement Contentions”)
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further argues that Peerless made no argument that it would be prejudiced should the court grant
Crimson leave to supplement its contentions. (Dkt. 365 at 5.)
To demonstrate good cause to amend invalidity or infringement contentions, a party must
demonstrate that it acted diligently and that the accused infringer would suffer no unfair
prejudice if the moving party were permitted to amend. See O2 Micro, 467 F.3d at 1366-68;
Fujitsu Ltd. v. Tellabs Operations, Inc., Nos. 08 C 3379, 09 C 4530, 2012 WL 5444979, at *7
(N.D. Ill. Mar. 21, 2012). “In showing diligence, the relevant inquiry is not when the party
learned about the information, but when it could have made the discovery.” Sloan Valve Co. v.
Zurn Indus., Inc., No. 10 C 204, 2013 WL 622951, at *2 (N.D. Ill. Feb. 20, 2013) (citing
Thermapure, Inc. v. Giertsen Co. of Ill., No. 10 C 4724, 2012 WL 6196912, at *2 (N.D. Ill. Dec.
11, 2012)). Furthermore, “good cause requires more than a showing that new information has
been revealed in discovery.” Fujitsu, 2012 WL 5444979, at *6. For example, the court in
Fujitsu held that the plaintiff had not established good cause to amend its infringement
contentions in part because it waited to set dates to depose witnesses despite the approaching
discovery deadline. Id.; see also Thermapure, 2012 WL 6196912, at *2.
Crimson has not established good cause to amend its invalidity contentions because its
actions demonstrate a lack of diligence in pursuing these defenses. As already discussed,
Crimson knew by at least the end of 2012 that there was another inventor, a fact it learned
through depositions of O’Keene and Lan. (See Dkt. 192 ¶¶ 2-3, 5; see also dkt. 191 at 3.) Once
it received Plavnik’s statement on March 4, 2013, it had confirmation that Plavnik was also an
inventor of the ’850 patent and that certain brackets at issue had been shipped to Wal-Mart in
2004. (See Dkt. 192 ¶¶ 7-9; dkt. 349, Ex. E at 5.) Nevertheless, Crimson proceeded to file a
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motion for summary judgment without moving to amend its invalidity contentions. It did not
move to amend its contentions until October 18, 2013. That Crimson did not file this motion
between April 11, 2013, when the court denied its motion for summary judgment without
prejudice, and October 2, 2013, when the court reinstated its motion, is understandable. What is
not understandable is that Crimson had the information it gleaned from Plavnik’s deposition for
a full month without filing a motion to amend, and that it then let another 16 days pass in
October before filing its motion for reconsideration. See Sloan Valve, 2013 WL 622951, at *3
(denying plaintiff’s motion to amend infringement contentions for lack of diligence where the
plaintiff filed to amend 12 days after the parties’ agreed stay of proceedings ended).
Crimson argues that it could not have filed this motion any sooner because it lacked
necessary information due to Peerless’s admonishable discovery tactics. Indeed, it notes that
Peerless has produced relevant documents as recently as November 4, 2013. (Dkt. 365 at 3.)
The court certainly does not approve of any alleged delay tactics on Peerless’s part. But
Crimson does not explain why it was able to include the unnamed inventor and on-sale bar
doctrine contentions in its April summary judgment motion but was unable to request leave to
properly add those contentions. Even if it received confirmation of this through discovery
during the summer and fall (and is still awaiting confirmation through discovery that Peerless
has not yet turned over), that is no excuse. “[T]heories of [invalidity] do not need to be
confirmed before [invalidity] contentions may be amended.” Fujitsu, 2012 WL 5444979, at *9
(originally discussing infringement contentions); see also O2 Micro, 467 F.3d at 1366 (“If the
parties were not required to amend their contentions promptly after discovering new information,
the contentions requirement would be virtually meaningless as a mechanism for shaping the
12
conduct of discovery and trial preparation.”). Crimson also makes much of the fact that Peerless
scheduled but then cancelled Plavnik’s deposition, contending that Peerless’s reliance on this
fact is “utter nonsense.” (See dkt. 349 ¶ 31; dkt. 365 at 1 n.1.) But Crimson does not explain
why it did not seek to depose Plavnik earlier, or how its failure to do so demonstrates anything
but a lack of diligence on its part.
Because Crimson failed to satisfy the first prong of Local Patent Rule 3.4’s test, the court
need not delve into whether Peerless would suffer prejudice if Crimson were allowed to amend
its invalidity contentions now. See O2 Micro, 467 F.3d at 1368-69 (“Having concluded that the
district court could properly conclude that [the patent holder] did not act diligently in moving to
amend its infringement contentions, we see no need to consider the question of prejudiced to [the
accused infringer].”); see also Fujitsu, 2012 WL 5444979, at *7. Thus, to the extent that
Crimson’s motion for reconsideration contains within it a motion to amend its invalidity
contentions, or a motion for leave to amend once it completes discovery, that motion is denied.
IV.
Validity of Local Patent Rule 3.4
Crimson argues that local patent rules should not trump Federal Rule of Civil Procedure
26(e). In particular, Crimson takes issue with Local Patent Rule 3.4, providing that a party
wishing to amend its invalidity contentions may only do so “by order of the Court upon a
showing of good cause and absence of unfair prejudice to opposing parties, made promptly upon
discovery of the basis for the amendment.” N.D. Ill. L.P.R. 3.4. The rule expressly provides that
a party’s “duty to supplement discovery responses does not excuse the need to obtain leave of
court to amend contentions.” Id. Federal Rule of Civil Procedure 26(e) provides that a party has
a continuing obligation to supplement disclosures and responses if the party learns that a
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disclosure or response is incomplete or incorrect. Fed. R. Civ. P. 26(e).
Crimson’s argument fails for three reasons. First, Crimson waived this argument by not
making it until the motion for reconsideration. See, e.g., Frietsch v. Refco, Inc., 56 F.3d 825,
828 (7th Cir. 1995). Second, and relatedly, this was an argument that Crimson could and should
have made in the first instance; Crimson presents no new evidence, change in the law, manifest
error, or any other ground that would allow it to make this argument only now. See, e.g.,
Rothwell, 827 F.2d at 251. Third, not only does Crimson fail to point to any case in support of
this argument, but it cites cases that support rule’s validity. See O2 Micro, 467 F.3d at 1365-68
(upholding validity of Northern District of California local patent rule requiring good cause to
amend infringement or invalidity contentions based on new material revealed in discovery, and
affirming district court’s decision that party had not demonstrated good cause to amend
contentions); Fujitsu, 2012 WL 5444979, at *4 (“[T]here is nothing in the Federal Rules that
prohibits a local rule requiring the early disclosure of infringement contentions or requiring
amendments to contentions to be filed with diligence.”). In fact, the Federal Circuit recently
affirmed a decision denying leave to amend infringement contentions based on a local rule
resembling Local Patent Rule 3.4. See Kruse Tech. P’ship v. Volkswagen AG, --- F. App’x ----,
2013 WL 5526526, at **9-10 (Fed. Cir. Oct. 8, 2013). Application of the rule is appropriate.
V.
Alternative Relief
Finally, Crimson requests that if it is not allowed to supplement its invalidity contentions,
Peerless be barred from relying on any date of conception prior to October 14, 2005, i.e., the date
of the provisional patent application that formed the basis of the ’850 patent. (Dkt. 349 ¶ 36.)
Provided that Peerless complies with all of Magistrate Judge Cox’s discovery rulings and
14
produce documents as required, this request is unnecessary. The court denies this motion
without prejudice at this time.
ORDER
Crimson’s motion (dkt. 349) to reconsider the court’s ruling of October 2, 2013 (dkt.
331) is denied. To the extent that Crimson’s motion is one to amend its invalidity contentions
now or at the close of discovery, that motion is denied. Crimson’s motion for alternative relief is
denied without prejudice. Crimson may proceed on its theories of the following three invalidity
contentions: (1) failure to disclose the best mode; (2) obviousness; and (3) anticipation. The
parties shall follow the briefing schedule for Crimson’s summary judgment motion as laid out at
the motion hearing on October 24, 2013. (Dkt. 360.) The hearing date of December 5, 2013 is
stricken.
Date: November 27, 2013
_____________________________
U.S. District Judge Joan H. Lefkow
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