Emerson Electric Co. v. Suzhou Cleva Electric Applicance Co., Ltd. et al

Filing 217

MEMORANDUM AND ORDER re: 201 MOTION for Leave to Amend Infringement Contentions and Memorandum in Support filed by Plaintiff Emerson Electric Co. motion is GRANTED. Signed by Magistrate Judge Shirley P. Mensah on 12/16/14. (LGK)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

EMERSON ELECTRIC CO.,
Plaintiff,
vs.
SUZHOU CLEVA ELECTRIC
APPLIANCE CO., LTD.,
CLEVA HONG KONG LIMITED,
CLEVA NORTH AMERICA, INC., and
SEARS, ROEBUCK AND CO.,
Defendants.

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Case No. 4:13-CV-01043 SPM

MEMORANDUM AND ORDER
This matter is before the Court on Plaintiff Emerson Electric Co.’s (“Emerson’s”) Motion
for Leave to Amend Infringement Contentions (Doc. 201). For the reasons stated below, the
motion will be granted.
I.

BACKGROUND
This case concerns Emerson’s claims that Defendants manufacture, use, sell, offer to sell,

and/or import various vacuum cleaners that infringe six of Emerson’s patents. On October 25,
2013, Emerson served its Preliminary Infringement Contentions on Defendants pursuant to Local
Rule 3-1(b). On January 29, 2014, Emerson amended those contentions with leave of Court.
(Doc. 94).
On November 7, 2014, Emerson filed the instant motion, seeking leave to amend its
Preliminary Infringement Contentions to identify ten additional vacuum cleaner models that it
alleges infringe the patents at issue in the current suit. Most of these are vacuums that have

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substantially the same configuration and structure as the previously accused units but are sold
under different model numbers or trade names. In addition, one is a model that was previously
accused of infringing the ‘165 patent and is now accused of infringing the ‘083 patent as well.
Emerson states that it only recently learned information through discovery that permitted it to
include these products in its infringement contentions.
II.

DISCUSSION
Under Local Patent Rule 3-8, amendment of patentee’s infringement contentions “may

only be made by order of the Court, upon a showing of good cause.” To show good cause, “a
movant must show that it acted with diligence in promptly moving to amend when new evidence
was revealed in discovery.” ABT Sys., LLC v. Emerson Elec. Co., No. 4:11CV00374 AGF, 2012
WL 6726330, at *1 (E.D. Mo. Dec. 26, 2012). In addition, “the Court must consider whether
permitting an amendment would prejudice the non-moving party.” Id.; see also O2 Micro Int’l,
Ltd. v. Monolithic Power Sys., 467 F.3d 1355, 1367 (Fed. Cir. 2006).
A. Emerson Acted With Diligence in Promptly Moving to Amend
The Court finds that Emerson acted with sufficient diligence in moving to amend its
infringement contentions to support a finding of good cause.
Emerson argues that it could not reasonably have specifically identified every infringing
vacuum prior to conducting substantial discovery in this case. It states that at the outset of the
lawsuit, it made a reasonable attempt to identify all of Defendants’ infringing products, including
inspecting the structural features of vacuums sold by Defendants and studying pictures of
vacuums online. However, Emerson notes that Defendants sell a large variety of vacuums, many
with different structures, features, and specifications; that they offer those vacuums for sale

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through numerous retail outlets and online; and that they sell vacuums at different times of year
under numerous brand names.
Emerson notes that between September 16 and October 31, 2014, Defendants produced
over 150,000 pages of documents in response to discovery requests Emerson had made. Emerson
points to the following information that prompted it to amend its contentions: (1) engineering
drawings Emerson requested in February 2014 that were produced by Defendants in late
September 2014; (2) operator’s manuals Emerson requested in April 2014, which Defendants
failed to produce and which Emerson took substantial steps to find on its own in October 2014
(by searching online and purchasing vacuums just for the manuals);1 and (3) deposition
testimony from the president of Cleva North America, obtained October 13, 2014, that provided
Emerson’s first confirmation that Defendants manufactured and sold Channellock® and
Performax® branded vacuums, which are among the newly accused products.
Defendants argue that Emerson could have identified the newly accused vacuums much
earlier than they did, because the vacuums have been publicly available in retail stores for years
and because Emerson even conducted some performance tests on some of the Channellock® and
Performax® vacuums before filing the lawsuit. However, in light of Emerson’s evidence
showing that it needed the recently discovered information before it could confirm that these
products were both (1) infringing, and (2) manufactured and sold by Defendants, the Court finds
that Emerson has made a sufficient showing that it did not have a basis on which to include those
products in its contentions until the recently produced discovery. The evidence produced by

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Emerson states that it used the engineering drawings in conjunction with the operator’s manuals
to confirm infringement, because many of the operator’s manuals specifically reference drawing
numbers corresponding to the engineering drawings.
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Emerson also suggests that any delay may have been caused at least in part by Defendants’ slow
responses to discovery requests rather than by Emerson’s lack of diligence.
Once Emerson obtained the relevant information, it is clear that Emerson acted with
reasonable diligence in amending its contentions. Emerson sent its amended infringement
contentions to Defendants for their consent on October 17, 2014—just four days after the
deposition of Cleva North America’s president and just a few weeks after receiving the relevant
documentary evidence. Defendants opposed the proposed amendments on October 29, 2014, and
Emerson filed its motion for leave to amend on November 7, 2014. This timeline shows
diligence on Emerson’s part. See, e.g., Brandywine Commc’ns Techs., LLC v. AT&T Corp., No.
12-2949-CW, 2014 WL 1569544, at *15-*16 (N.D. Cal. April 18, 2014) (granting leave to
amend infringement contentions to include additional infringement theory where the plaintiff
served its amended infringement contentions on the defendants one week before the close of fact
discovery and less than two weeks after discovering information through third-party depositions
and 38,000 pages of documents produced by the defendants).
B. Defendants Will Not Be Prejudiced by the Amendment
The Court also finds that Defendants will not be prejudiced by this amendment. Emerson
states that the structural features of the newly accused products are, for purposes of the
infringement analysis, identical to the products previously identified. Emerson has submitted
photographs, descriptions, and part numbers that support that assertion. In addition, the claim
charts attached to Emerson’s proposed amended contentions appear to be substantively identical
to the previously filed claim charts, except for the inclusion of the newly accused model names
alongside the previously accused model names in the chart headings. Emerson argues that
because the structures in the new products are materially identical to those in the previously

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accused products, the proposed amendments will have no effect on Defendants’ invalidity or
non-infringement positions, and Defendants can simply adopt the same positions taken with
respect to the vacuums previously accused.
Defendants assert generally that the inclusion of the new products in the infringement
contentions “effectively would return this case to last October” and would force Defendants to
study the newly accused products to identify any new claims requiring construction and any
additional counter-infringement and invalidity contentions. However, Defendants do not
challenge Emerson’s argument or evidence that the newly accused products are structurally
identical to the previously identified products in all material ways, nor do they explain how the
inclusion of such products would necessitate significant additional investigation or discovery
related to infringement or invalidity.
After reviewing the parties’ briefs and the attachments thereto, the Court is persuaded
that the newly accused products are, in all material respects, structurally identical to those in the
previously accused products; that the amended contentions do not assert any new theories of
infringement or add any new claims that require construction; and that the amended contentions
will not require Defendants to perform significant additional investigation or discovery related to
infringement or invalidity. These facts distinguish this case from the cases relied on by
Defendants, in which courts found that defendants would be prejudiced by amended contentions
that included new infringement theories, newly accused features, and/or accusations related to
new patent claims. See Unwired Planet, LLC v. Apple Inc., No. 13-cv-4134-VC, 2014 WL
5396735, at *4 (N.D. Cal. Oct. 23, 2014) (concluding that amended contentions that added new
infringement theories against newly accused features and technologies would likely be unduly
prejudicial because the defendant “would likely be required to produce discovery for the newly-

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accused features, and Apple would likely be required to develop invalidity theories in response
to the new infringement contentions”); ABT Sys., LLC v. Emerson Elec. Co., 2012 WL 6726330,
at *1-*2 (E.D. Mo. Dec. 26, 2012) (refusing to permit amendment of infringement contentions to
include contentions that products infringed on particular patent claims where plaintiff’s counsel
had previously stipulated that those claims were not part of their infringement contentions).
Both parties do acknowledge that Defendants will need to update their financial
production to include the newly accused products. However, in light of the limited nature of this
additional production and the fact that fact discovery has not yet closed, the Court finds that this
will not cause significant prejudice to Defendants.
Accordingly,
IT IS HEREBY ORDERED that Emerson’s Motion for Leave to Amend Infringement
Contentions (Doc. 201) is GRANTED.
Dated: December 16, 2014.
/s/ Shirley Padmore Mensah
SHIRLEY PADMORE MENSAH
UNITED STATES MAGISTRATE JUDGE

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