Wilco Marsh Buggies and Draglines Inc v. Weeks Marine, Inc.
ORDER AND REASONS that Wilcos Motion to Strike 69 is DENIED, and Weeks Marines Motion to Amend 62 is GRANTED. Weeks Marines Amended Final Invalidity Contentions shall be deemed the operative Final Invalidity Contentions. Signed by Magistrate Judge Janis van Meerveld on 8/2/2022. (caa)
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 1 of 19
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
WILCO MARSH BUGGIES &
SECTION: "J" (1)
JUDGE CARL J. BARBIER
WEEKS MARINE, INC.,
JANIS VAN MEERVELD
ORDER AND REASONS
Before the Court are Weeks Marine, Inc.’s Motion for Leave to Amend Final Invalidity
Contentions or in the Alternative to Strike Certain Infringement Contentions (Rec. Doc. 62) and
Wilco Marsh Buggies & Draglines, Inc.’s Motion to Strike Portions of Weeks Marine’s Reply
Memorandum (Rec. Doc. 69). Because the court finds that Weeks Marine did not violate its order,
the Motion to Strike is DENIED. Because the court finds that Weeks Marine has established good
cause, its Motion to Amend is GRANTED.
This is a patent infringement case against a customer of the manufacturer of the alleged
infringing product: an amphibious vehicle. Wilco is a Louisiana company that specializes in the
design and manufacture of marsh equipment and applications, including amphibious vehicles that
are capable of performing excavation operations in water and on land. At issue in the present
litigation is an amphibious vehicle covered by U.S. Patent No. 6,981, 801 (“‘801 Patent”) that
operates on dry land, soft terrain, or while floating. The vehicle includes a chassis formed by two
interconnected pontoon sections sized such that the chassis and all equipment will float. The
pontoons are fitted with a track system providing propulsion to the vehicle. The chassis contains a
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 2 of 19
plurality of spuds that are deployed to a position extending the below the bottom of the pontoons
to stabilize the vehicle for operations while floating.
According to Wilco, Weeks Marine relied on Wilco’s amphibious vehicles for its
excavation service contracts for years. Then Weeks purchased two amphibious excavators with
spud-equipped supplementary pontoons manufactured by a Malaysian company, EIK Engineering
SDN. BHD. (“EIK Engineering”) through its U.S. Distributor, EIK International Corp. Wilco
alleges that the EIK Engineering “Amphibious Excavator” series vehicles (“EIK Vehicles”)
infringe the ‘801 Patent.
On November 18, 2020, Wilco initiated the present action against Weeks Marine pursuant
to the U.S. Patent Act, as amended by the Leahy-Smith America Invests Act, 35 U.S.C. §1, et seq.
and the Declaratory Judgment Act, 28 U.S.C. §2201 for Weeks Marine’s alleged intentional
infringement and misappropriation of the ‘801 Patent. Wilco alleges that Weeks Marine is
currently using EIK Vehicles and that because the EIK Vehicles practice certain claims of the ‘801
Patent, Weeks Marine is infringing on those claims of the ‘801 Patent. Wilco seeks recovery of
trebled compensatory damages, reasonable attorneys’ fees, interest, and costs, as well as a
preliminary and permanent injunction.
Weeks asserts numerous defenses, including that the ‘801 Patent is invalid because it fails
to satisfy one more of the requirements for patentability. Weeks Marine also asserts a counterclaim
for a declaratory judgment that Weeks Marine has not and does not infringe any valid and
enforceable claim of the ‘801 Patent and that one or more claims of the ‘801 Patent are invalid.
Weeks Marine alleges that its counterclaim presents exceptional circumstances under 35 U.S.C. §
285 and it seeks an award of its reasonable attorneys’ fees.
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In June 2021, the District Court vacated the standard scheduling order that had been issued
in this case and issued patent specific deadlines, including a Markman Hearing1 set for February
9, 2022, and a deadline of 30 days after the court’s Claim Construction Order for the parties to file
their Final Infringement and Invalidity Contentions. Following the Markman hearing, the court
issued its Order and Reasons on claim construction on March 21, 2022. A new scheduling order
was issued and trial is set to begin on January 9, 2023. The deadline to complete discovery is
November 15, 2022. Plaintiff’s expert reports are due September 16, 2022. Although the Final
Infringement and Invalidity Contentions are not in the record, there appears to be no dispute that
those Contentions were timely exchanged on April 21, 2022.
On June 20, 2022, Weeks Marine filed the present motion seeking to amend its Final
Invalidity Contentions to include newly discovered prior art—the amphibious vehicle MudMaster
and several printed publications relating thereto—or, in the alternative, to strike Wilco’s Final
Infringement Contentions to the extent they raise new allegations that Weeks Marine’s use of the
Remu Oy “Big Float” amphibious excavator infringes on the ‘801 patent even though Wilco’s
complaint does not mention the Remu Oy vehicles and Wilco has not sought leave to amend its
Weeks Marine argues that it has shown good cause to amend its Final Invalidity
Contentions. It submits that it was diligent in conducting a search for prior art because EIK hired
a professional firm to conduct a search in 2019 and the results were provided to Weeks Marine.
The firm did not discover the MudMaster. Weeks Marine submits that from the outset of this
The court, and not the jury, must construe the meaning of the claims in the patent itself. Markman v. Westview
Instruments, Inc., 517 U.S. 370, 372 (1996) (“[T]he construction of a patent, including terms of art within its claim,
is exclusively within the province of the court.”). A court may construe the claims based on the submissions of the
parties or may hold what is known as a Markman hearing to take evidence on the construction of the claims. See 1
Annotated Patent Digest § 3:16.
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litigation, it engaged in diligent efforts to locate non-patent prior-art literature, which resulted in
the discovery of the Clark 1983 publication on May 2, 2022, and, thereafter, the Parchure 1996
publication. Weeks Marine subsequently obtained additional information through David Binkley
of DredgeMasters International, Inc. (“DMI”), the manufacturer of the MudMaster, and has
included Binkley’s declaration in support of its motion.
Weeks Marine further argues that the amendment is important because it is highly relevant
to the validity of the ‘801 patent in light of the MudMaster’s use of a ladder frame in lieu of a
center hull section—it appears to argue that this qualifies as a chassis. Weeks Marine submits that
if the amendment is not allowed, there is a risk of inconsistent rulings because its invalidity
contentions in the related Texas litigation2 include reference to the MudMaster. It argues that
Wilco will not be prejudiced because the case is in the early stages.
Upon Weeks Marine’s filing of the motion for leave, Wilco filed a motion to continue the
submission date, arguing that it should be allowed to receive responses to the discovery requests
it had sent regarding Weeks Marine’s diligence. The court held a status conference to discuss the
briefing schedule, at which time Weeks Marine expressed that an extended continuance would put
the resolution of its motion for leave that much closer to the pretrial deadlines. Weeks Marine
noted that Wilco had already scheduled the deposition of Binkley in the Texas litigation against
HHM. Weeks also argued that diligence was of minimal importance because of the other factors
weighing in favor of its motion. When asked whether Weeks opposed the continuance because it
Wilco filed a patent-infringement suit against an EIK subsidiary in the Western District of Texas in 2019, but this
suit was dismissed because the court found the subsidiary was not an alter ego of EIK. Wilco Marsh Buggies &
Draglines, Inc. v. EIK Engineering SDN.BHD., No. 6:19-cv-0565. Wilco filed a patent-infringement suit against EIK
in the Western District of Texas in 2020, but has not been able to serve EIK. Wilco Marsh Buggies & Draglines, Inc.
v. EIK Engineering SDN.BUD., No. 6:20-cv-0570. And in February 2021, Wilco filed a patent-infringement suit in
the Southern District of Texas against Houston Heavy Machinery, LLC (“HHM”), which also allegedly used EIK
amphibious excavators that infringe on the ‘801 Patent. Wilco Marsh Buggies & Draglines, Inc. v. Houston Heavy
Machinery, LLC, No. 4:21-cv-0616. HHM is represented by the same attorneys as Weeks Marine. Wilco did not
oppose HHM’s motion to amend its Preliminary Invalidity Contentions to include the MudMaster in late May 2022.
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believed no discovery was necessary or whether it would prefer to respond to the discovery on a
fast track, Weeks responded that it questioned whether it could respond to the discovery without
disclosing work product. This suggested to the court that a discovery battle would follow the
discovery responses. Wilco argued that diligence was of critical importance and expressed a
concern that Weeks Marine would try to attach evidence of diligence to its reply memorandum
because it had failed to provide evidence of diligence with its motion and that Wilco would be
prejudiced. Weeks Marine agreed that it would prefer to be limited in its ability to present evidence
in reply than to further delay its motion for leave. The court granted a short continuance to allow
time for Wilco to prepare its opposition memorandum and ordered that “Weeks Marine shall not
be allowed to submit additional evidence of its diligence in reply.” (Rec. Doc. 66).
In opposition to the motion for leave to amend, Wilco argues that Weeks Marine cannot
establish good cause for the late amendment most importantly because it has not shown its
diligence. It further argues that Weeks Marine has failed to show the importance of the amendment.
It says that based on its preliminary examination, the new “prior art” is cumulative of one or more
prior art references that Weeks Marine already relies on. It insists that if the amendment would be
allowed, it would be severely prejudiced because of the additional third party discovery that would
need to be done and because the claim construction hearing has been withheld without Wilco
having the benefit of knowing about the MudMaster.
Wilco further argues that there is no risk of inconsistent findings in the Texas litigation
because Weeks Marine is not a defendant there and Wilco has provided an unconditional covenant
not to sue Weeks Marine in the Texas litigation. Finally, Wilco argues Weeks Marine’s
“alternative” motion to strike is improper—it is not really in the alternative because Weeks
Marine’s proposed amended invalidity contentions are unrelated to Wilco’s addition of allegations
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regarding the Remu Oy equipment. In any event, Wilco insists its inclusion of those allegations in
the Infringement Contentions without amending the complaint is appropriate because the fact that
a different manufacturer’s name appears on the devices being used by Weeks Marine does not
make them exempt from Wilco’s claims.
In reply, Weeks Marine argues that it has been diligent and that Wilco knows it. It submits
that it was diligent in obtaining the results of the professional prior art search conducted on behalf
of EIK. It disclosed this in its June 2019 Preliminary Invalidity Contentions. It points out that the
MudMaster is non-patent prior art, which is notoriously hard to find. It submits that Wilco is well
aware of Weeks Marine’s continued internet searches for prior art because in October 2021 Weeks
Marine disclosed that it had discovered the Wilco 2000 Vehicle on archived versions of Wilco’s
website. Apparently Wilco denied knowing anything about the vehicle in January 2022, but Weeks
Marine obtained affidavits from the Internet Archive in March 2022 authenticating the Wilco 2000
Vehicle. Weeks Marine says it never stopped searching and discovered the MudMaster two weeks
after serving its Final Invalidity Contentions when it located a reference to it in a 1983 technical
report using a full text search of over 35 million texts on the Internet Archive that itself yielded
ten thousand results. Weeks argues that it acted diligently when it discovered the MudMaster by
promptly getting in touch with DMI and its Vice President David Binkley, obtaining technical
reports and brochures, and submitting a FOIA request to the United States Army Corps of
Engineers for authentic copies of the Clark 1983 report and the Parchure 1996 report (which
Weeks Marine found two weeks after it located the 1983 report). Weeks notified Wilco of the prior
art on May 19, 2022. Weeks adds that some of the delay in the hearing of this motion is Wilco’s
own fault in failing to respond to Weeks’ requests for consent to the amendment despite its lack
of opposition to a similar amendment in the Texas litigation against HHM.
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Weeks further argues that the MudMaster prior art is so important it intends to move for
summary judgment. It says that the voluminous charts attached to its motion demonstrate in
granular detail how the MudMaster prior art anticipates and renders obvious the specific claims of
the ‘801 patent.3 Weeks argues that there is no undue prejudice to Wilco, pointing out that Wilco
has already subpoenaed Binkley of DMI for a deposition to be held on August 4, 2022, in the
Texas litigation.4 It argues that it does not matter that the claim construction hearing has already
been held because claim construction is an objective task and Wilco should not be able to change
its claim construction based on prior art. Weeks argues that no continuance will be required, noting
that Wilco’s rebuttal expert report is not due until October 17, 2022.
Finally, Weeks provides further explanation of its “alternative” motion to strike. It argues
that using infringement contentions to expand the complaint is improper and that if this court
cannot find good cause for Weeks’ amendments, it should similarly find no good cause for Wilco’s
attempt to expand the pleadings in April 2022 through its Final Infringement Contentions.
Wilco responded to the reply memorandum by filing a motion to strike. It argues that
Weeks Marine has violated the court’s order precluding the submission of evidence of diligence
in reply. Wilco argues that although submitted in the form of attorney argument, all of the
circumstances and information presented by Weeks Marine amounts to evidence and not a legal
response. It insists that Weeks is in open contempt of the court’s order during the status conference
and asks that the diligence related portions of the reply be stricken and Wilco be awarded its
The proposed amendment supplements and does not restate the existing Final Invalidity Contentions. The charts
span nearly 500 pages.
Weeks Marine notes that Wilco agreed at the status conference with the undersigned to set a briefing schedule for
this motion that the deposition would count for both cases.
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In opposition to the motion to strike, Weeks Marine submits that it was not its intent to
circumvent the court’s order. It represents that it believed the court sought to protect Wilco from
any surprise that would be caused by additional evidence coming to light via the reply
memorandum. It notes that it produced its discovery responses early—one day before Wilco’s
opposition memorandum. It submits that it thought it was proper to include information in its reply
memorandum that was already of record and known to Wilco, such as the discovery of the Wilco
2000 Vehicle. To the extent the court determines that Weeks Marine violated the court’s order, it
asks the court not to issue sanctions because it did not engage in a clear affront to the court’s
authority. It notes that its reply memorandum included a footnote explaining that Weeks Marine
did not believe the presentation of facts known to Wilco violated the court’s order but that if it did,
the presentation should be considered a proffer.
In reply, Wilco argues that Weeks Marine should prohibited not only from presenting
evidence in reply, but also from presenting new arguments. It points out that some of the discovery
referenced by Weeks Marine was produced in the Texas action. It insists that Weeks Marine failed
to meet its burden of establishing diligence and that it is trying to circumvent the court’s order. It
questions why Weeks did not include this information in its motion if it already had it. Further,
Wilco argues that the Texas case is irrelevant. It says that other than having the same counsel as
in this case, the cases are completely unrelated. It argues that anything related to EIK is irrelevant
to this lawsuit.
At oral argument, the court asked Wilco what it might have done differently had it had
more time following Weeks Marine’s discovery responses to file its opposition. It argued that it
would have probed the things that were not said: it pointed out that Weeks Marine has not provided
any information about what led them to go look for these publicly available documents. It suspects
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that Weeks Marine renewed its search following the court’s claim construction ruling. Wilco also
argued that Weeks Marine failed to support its argument that non-patent information is difficult to
find with any evidence. It argued that the primary prejudice it would suffer results from the lack
of time to respond to the new invalidity contentions.
The parties also revealed that Wilco had cancelled the August 4, 2022, deposition of
Binkley. Its counsel represented that Wilco had made a business decision to stop pursuing the
Texas litigation. Indeed, it filed a motion to dismiss that case on July 21, 2022, four days after it
moved to strike Weeks Marine’s reply memorandum. Thus, it argued, there is no risk of an
inconsistent verdict. Weeks Marine responded that it believes Wilco’s decision to stop the Texas
case represents the importance of the MudMaster as prior art.
Law and Analysis
1. Motion to Strike Reply and Hold Weeks Marine in Contempt
“Contempt is committed when a person ‘violates an order of a court requiring in specific
and definite language that a person do or refrain from doing an act.’” Matter of Baum, 606 F.2d
592, 593 (5th Cir. 1979) (quoting Baumrin v. Cournoyer, 448 F. Supp. 225, 227 (D. Mass. 1978)).
“The judicial contempt power is a potent weapon which should not be used if the court's order
upon which the contempt was founded is vague or ambiguous.” Id.
The order at issue here required that “Weeks Marine shall not be allowed to submit
additional evidence of its diligence in reply.” It was issued as a compromise. Wilco wanted more
time to conduct discovery into Weeks Marine’s diligence. Weeks Marine wanted to proceed with
minimal delay. Had additional time been provided for the discovery to play out, Weeks Marine
would not have been limited in how it could address its diligence further in reply. Weeks Marine
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ultimately responded to the discovery prior to Wilco’s deadline to oppose—albeit only the day
Weeks Marine did not submit any evidence in support of its arguments in reply. However,
it did raise new facts—without supporting affidavits—regarding its discovery of the Wilco 2000
and the fact that it found the MudMaster through a search of the Internet Archive. It also raised
for the first time the argument that non-patent prior art is difficult to find. The court notes that it is
not uncommon for parties to address one or more of the factors in support of amending the
scheduling order in more detail in reply in response to a challenge in opposition. But in the face of
the court’s order, the inclusion of additional information arguably crossed the line.
However, the court finds Weeks Marine is not in contempt of court considering the actual
text of the order in the minute entry—which prohibits only additional evidence, considering the
compromise circumstances under which the order was issued, and considering that Weeks Marine
provided its discovery responses in advance of Wilco’s opposition deadline.
The court also declines to strike Weeks Marine’s reply. In addition to the aforementioned
reasons, Wilco did not indicate that it would have done anything differently with regard to the
arguments raised by Weeks Marine in its reply had it had more time. It would have questioned
whether Weeks had been searching continuously and if not, when and why it restarted its search.
But Wilco has had the opportunity to point out that Weeks Marine did not provide answers to such
questions. And it had access to the new factual information presented by Weeks Marine before it
filed its opposition. The court finds it has not been prejudiced. The court will not strike Weeks
Marine’s Reply Memorandum.
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 11 of 19
2. Standard to Amend Invalidity Contentions
The District Court modified its scheduling order to set the deadline for the filing of Final
Invalidity and Infringement Contentions. That deadline has now passed. The parties agree that
when a party seeks to amend a scheduling order to make an out of time filing, that party must show
“good cause.” Fed. R. Civ. Proc. 16(b)(4); see S&W Enterprises, L.L.C. v. SouthTrust Bank of
Alabama, NA, 315 F.3d 533, 536 (5th Cir. 2003) (“We take this opportunity to make clear that
Rule 16(b) governs amendment of pleadings after a scheduling order deadline has expired.”); see
also Reliance Ins. Co. v. Louisiana Land & Expl. Co., 110 F.3d 253, 257 (5th Cir. 1997)). “The
good cause standard requires the ‘party seeking relief to show that the deadlines cannot reasonably
be met despite the diligence of the party needing the extension.’” S&W Enterprises, L.L.C., 315
F.3d at 535 (quoting 6A Charles Alan Wright et al., Federal Practice and Procedure § 1522.1 (2d
ed. 1990)); see O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir.
2006) (holding that diligence must be considered in determining whether good cause exists to
amend infringement contentions). In determining whether good cause has been shown, courts
consider four factors: the explanation for the failure to comply with the deadline, the importance
of the amended filing, the potential prejudice in allowing the amended filing, and the availability
of a continuance to cure such prejudice. See Reliance, 110 F.3d at 257.
No party has cited any reported case in the Fifth Circuit addressing the untimely
amendment of invalidity contentions. The unreported cases that the parties have shared with the
court demonstrate that—much like in the context of a pleading amendment—the analysis of
whether good cause has been established is a case specific inquiry.
In one unreported case out of the Eastern District of Texas, the court found the defendant’s
“apparent lack of diligence” weighed against allowing an out of time amendment of its invalidity
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contentions where the defendant began its search for prior art upon receipt of the plaintiff’s
infringement contentions, but it did not subpoena IBM for the IBM Simon material that it sought
to add to its invalidity contentions until two months later—just days before its invalidity
contentions were due. Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00493-JRG-RSP, 2019 U.S.
Dist. LEXIS 206856, at *3-4 (E.D. Tex. Dec. 2, 2019). Nonetheless, the court granted the
defendant leave to supplement its invalidity contentions because it found the material important
and that the prejudice to the plaintiff would be minimal because the IBM Simon system was one
prior art reference and because defendant had notified plaintiff of the IBM subpoena, disclosed the
IBM Simon system in its original invalidity contentions, and provided the supplemental invalidity
charts the same day it received the IBM production. Id. at *4-6. The court found that a continuance
would not likely be necessary because months remained before claim construction and fact
discovery would close and that, in any event, a continuance could be granted if needed. Id. at *6.
In another unreported Eastern District of Texas case, the court denied defendants’ request
to amend their invalidity contentions to add four new references to prior art three months after the
deadline to file invalidity contentions. Innovative Display Techs. LLC v. Acer Inc., Civil Action
No. 2:13-cv-00522-JRG, 2014 U.S. Dist. LEXIS 83196, at *7 (E.D. Tex. June 19, 2014). The
defendants argued that despite their exhaustive efforts to locate prior art, they had only discovered
the four new references in the month and a half before seeking to amend. Id. at *4. The court
found that the fact that it took the defendants “more time beyond the original deadline to find these
new arts, in and of itself, is no excuse for a late supplementation.” Id. at *5. The court also found
that defendants’ conclusory assertion of importance was insufficient where the defendants had
failed to explain the subject matter of the four new arts or how they would render the particular
patent invalid. Id. at *6. Finally, the court found the plaintiff would be prejudiced because the
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motion for leave to amend had been filed only two months prior to the claim construction hearing.
Id. at *7. The court explained that “[a]lthough the Court does not base its claim construction on
invalidity contentions, the parties' claim construction positions as a practical matter would be
influenced by the scope and combination of the specific prior arts disclosed in invalidity
contentions.” Id. Thus the court found the plaintiff would be prejudiced in having to spend more
time and resources to modify its existing claim construction. Id.
In contrast, the Northern District of Texas found good cause for an amendment to
defendant’s invalidity contentions three months after the deadline and shortly after the filing of
claim construction briefs but before the deadline for plaintiff’s claim construction response. Maxell
Ltd. v. Apple Inc., No. 5:19-CV-00036-RWS, 2020 U.S. Dist. LEXIS 257203, at *5 (E.D. Tex.
Feb. 24, 2020). The court found good cause “despite the relatively slight importance of the
amendment and length of time between the initial invalidity contentions and amendment,” because
of the defendant’s “diligence and excusable delay, as well as the as the lack of unfair prejudice to”
the plaintiff. Id. at *12. In considering the delay in discovery of the prior art, the court noted that
the defendant had hired an intellectual property law firm to conduct a prior art search and that the
defendant argued that it had been difficult to identify the new prior art because it was a product
that was sold twenty years earlier and because it was physical prior art—unlike patents and
technical publications—there had been no database cataloguing such products and their
characteristics. Id. at *6. Ultimately, a technical analyst working for defendant found a German
website published by an individual camera enthusiast that contained information relating to old
models of digital cameras. Id. at *3-4. From there, the analyst identified the Casio Camera as
potentially relevant and searched available technical information and product literature to identify
a product manual describing its technical features. Id. at *4. The court found the delay in discovery
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of the prior art “can be expected even by a party conducting a proper investigation” and found the
delay to be excusable. Id. at *7. The court recognized “some prejudice” to plaintiff because leave
to amend was sought after its preliminary election of claim terms and just before its deadline to
file its initial claim construction brief, but the court found this prejudice alleviated because plaintiff
had notice of the prior art prior to its responsive briefing and the Markman hearing and because
plaintiff did not allege any specific claim construction arguments that would be affected by the
supplemental invalidity contentions. Id. at *11.
In an unreported case out of the Northern District of California, the court divided the
“diligence” inquiry into two phases, “1) diligence in discovering the basis for amendment; and (2)
diligence in seeking amendment once the basis for amendment has been discovered.”
Positive Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226 SI, 2013 U.S. Dist. LEXIS 11271, at *8
(N.D. Cal. Jan. 28, 2013). It found the defendants had shown reasonable diligence in both phases
where defendants provided a detailed timeline showing they made reasonable efforts to discover
the new art, where defendants argued that their renewed effort to search for prior art was prompted
by representations of plaintiff in its opening brief and by the court’s claim construction order
disagreeing with one of the defendants’ proposed constructions. Id. The court rejected plaintiff’s
suggestion that the defendant “must identify all relevant prior art references that may become
relevant to all possible claim constructions.” Id. at *10. The court also found that defendants had
timely disclosed the new information to plaintiff. Id. at *11. Apparently, the plaintiff did not
challenge the relevance of the newly discovered art, whether the request was motivated by
gamesmanship, or whether it would be prejudiced. Id. The court granted the defendants’ motion
for leave to amend their invalidity contentions, finding no prejudice to the plaintiff because the
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request had been made well before the discovery deadline and that amendment would advance the
fair resolution of the case. Id. at *11-12.
In another unreported case in the Northern District of California, the court found the
defendant had established good cause to amend its final invalidity contentions to add newly
discovered prior art where the defendant had described its various investigation efforts in detail,
had communicated with the plaintiff about its continued search for prior art, and had promptly
produced the new references to the plaintiff, even where there had been an eight month delay
between its discovery of the new prior art and when it sought leave to amend. Fujifilm Corp. v.
Motorola Mobility LLC, No. 12-cv-03587-WHO, 2014 U.S. Dist. LEXIS 15006, at *10 (N.D. Cal.
Feb. 5, 2014). The court found this time not insignificant, but concluded that “on balance, if there
was any unjustified delay, it was not prejudicial.” Id. The court noted that “the good cause
requirement does not require perfect diligence.” Id. at *12-13. The court found unpersuasive the
plaintiff’s argument that it would be prejudiced by the amendment because the claim construction
order had already issued, but allowed the plaintiff to explain whether and why supplemental claim
construction would be necessary. Id. at *18-19. The court noted that the case was in the early
stages of discovery with six months until the discovery deadline and over eight months until initial
and rebuttal expert reports were due. Id. at *19.
3. Analysis of Four Factors Here
a. Explanation for Delay (Diligence)
Weeks Marine relied primarily on the prior art search of a professional firm that had
searched both patent and non-patent databases. Nonetheless, Weeks continued to search for nonpatent prior art. These searches yielded the discovery of the Wilco 2000 Vehicle—which it
disclosed to Wilco in October 2021—and the MudMaster in May 2022, the latter, shortly after the
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deadline to file Final Invalidity Contentions. Weeks Marine submits that non-patent prior art,
which cannot be found in patent databases, is difficult to find. Wilco did not agree with this
characterization, but it did not present a basis for arguing otherwise. Further, once the first
publication referencing the MudMaster was located, Weeks Marine quickly obtained additional
information and informed Wilco of its discovery and its intention to amend its Final Invalidity
Contentions on May 19, 2022, less than a month after the deadline.
Although Weeks Marine has not argued or provided evidence to show that it continuously
searched for non-patent prior art from the time the lawsuit was filed, the court finds that its efforts
to locate the new prior art and to bring the new prior art to Wilco’s attention amount to sufficient
diligence. And that is enough. Perfect diligence is not required. Fujifilm, 2014 U.S. Dist. LEXIS
15006, at *10. The court finds the diligence factor weighs slightly in favor of allowing the
The parties dispute the importance of the proposed amendment. While it is difficult for the
court to assess the importance at this stage, the extensive description and charts provided by Weeks
Marine indicates that there is at least a plausible basis for its assertions. And this distinguishes the
present case from Innovative Display, where the defendant relied on conclusory assertions of
importance. 2014 U.S. Dist. LEXIS 83196, at *6. Weeks Marine believes the prior art is so
significant it will support a forthcoming motion for summary judgment. It also argues that the
MudMaster will be easier for the jury to understand. On this point, the court agrees. To the
untrained eye of a non-expert such as the undersigned, the MudMaster appears to bear similarities
to the ‘801 Patent. Importantly, regardless of the merits of Weeks Marine’s invalidity contentions
based on the MudMaster, the jury is more likely to reach a just result with all the evidence before
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 17 of 19
it than if the MudMaster were excluded. To the extent the MudMaster is cumulative of other prior
art as Wilco argues, the parties may address whether certain evidence should be excluded on that
basis as they prepare for trial. The court finds that the importance of the proposed amendment
weighs in favor of allowing it.5
The potential prejudice here has two components: whether Wilco will have enough time
to conduct necessary discovery and whether the fact that claim construction has already occurred
The court finds no prejudice on the discovery prong. Wilco has already begun conducting
discovery because the MudMaster was incorporated into the Texas litigation. The deposition of
Binkley was set to occur on August 4, 2022. In addition to the fact that Wilco itself cancelled the
deposition, there is no reason to believe that it could not be rescheduled. Wilco’s rebuttal expert
reports will not be due until October 17, 2022. The discovery deadline is December 13, 2022.
While Wilco would have liked more time to prepare, the court notes that it has been on notice of
the new prior art since May 2022. It waited weeks to respond to Weeks Marine’s request for
consent to the filing—and considering that Wilco did not oppose the amendment in the Texas case
against HHM, the court does not find it unreasonable that Weeks Marine awaited a reply,
especially when the local rules require the moving party to indicate whether any party opposes its
The court notes that at the time the Motion for Leave to Amend was filed, the risk of inconsistent verdicts between
this and the litigation in Texas against HHM was also a concern: what if the Texas court found the ‘801 patent invalid
based on the MudMaster and the court here considered the patent without the MudMaster and found the patent valid?
But after the Motion for Leave was filed and shortly before filing its opposition memorandum, Wilco signed a
covenant not to sue and later moved to dismiss its case against HHM. Like Weeks Marine, the court questions whether
this could be an indication of the importance of the MudMaster. Ultimately, though, the court concludes the risk of
inconsistent verdicts no longer bears on the importance factor.
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 18 of 19
motion. The court concludes that Wilco will not be prejudiced in preparing its response to the new
The court next addresses prejudice arising from the presentation of new prior art following
the claim construction ruling. At oral argument, Wilco conceded that claim construction occurs
independently of invalidity contentions, but pointed out that as a practical reality, counsel always
has invalidity contentions in mind when they argue claim construction. Two of the Northern
District of Texas cases cited by the parties in this matter found that the disclosure of prior art after
claim construction will prejudice the plaintiff. Innovative Display, 2014 U.S. Dist. LEXIS 83196,
at *7; Maxell, 2020 U.S. Dist. LEXIS 257203, at *11. In Innovative Display, the prejudice factor
weighed against allowing the amendment. But in Maxell, the court found the prejudice minimal
where defendant had the prior art before its response to the defendant’s claim construction
argument was due.
Here, however, the court’s scheduling order allowed Final Invalidity Contentions to be
filed 30 days after the claim construction order. Thus, the same potential prejudice resulting from
a post-claim-construction addition would have occurred even if Weeks Marine’s addition of the
MudMaster had been timely. And Wilco cannot now argue that the addition of new invalidity
contentions would have been improper in April 2022 when it added new infringement contentions
related to the Remu machine in its April 2022 Final Infringement Contentions. The court finds this
prejudice does not weigh against allowing the post-deadline amendment.
d. Availability of a Continuance
The district court controls whether a continuance would be allowed. Here, it appears that
no continuance will be necessary.
Case 2:20-cv-03135-CJB-JVM Document 75 Filed 08/02/22 Page 19 of 19
e. Conclusion Regarding Amendment
Having found that all factors weigh in favor of allowing the amendment, the court finds
that Weeks Marine has established good cause to amend the scheduling order to allow its out-oftime amendment to its Final Invalidity Contentions.
For the foregoing reasons, Wilco’s Motion to Strike (Rec. Doc. 69) is DENIED, and Weeks
Marine’s Motion to Amend (Rec. Doc. 62) is GRANTED. Weeks Marine’s Amended Final
Invalidity Contentions shall be deemed the operative Final Invalidity Contentions.
New Orleans, Louisiana, this 2nd day of August, 2022.
Janis van Meerveld
United States Magistrate Judge
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