Industrial Technology Research Institute v. LG Corporation et al

Filing 297

REPORT AND RECOMMENDATIONS of Special Master Objections, if any, to R&R due by 4/13/2015. Signed by Magistrate Judge Joseph A. Dickson on 3/30/2015. (nr, )

INDUSTRIAL TECHNOLOGY
RESEARCH INSTITUTE,

Civil Action No. 12-00949 (ES) (JAD)

Plaintiff,
REPORT AND RECOMMENDATION
OF THE SPECIAL MASTER

v.

LG ELECTRONICS, et al.,
Defendants.

This matter comes before the Special Master upon Plaintiff Industrial Technol

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Research Institute' s ("ITRI") motion for leave to serve amended infringement contentions. A
considering the submissions of the parties, based upon the following, it is the recommendatio
the Special Master that the Court deny ITRI's motion to serve amended infringem nt
contentions.
I. Background

This matter involves a patent infringement complaint filed against Defendants

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Electronics, Inc. and LG Electronics USA, Inc. (collectively "LG") on November 26, 2010 m
the Eastern District of Texas. ITRI filed its original infringement contentions on Septembe 9,
2011, pursuant to the Patent Rules of the Eastern District of Texas. On February 13, 2012,

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matter was transferred to the District of New Jersey. Pursuant to the Patent Rules of this Dist
ITRI served infringement contentions on April 24, 2012.
On July 12, 2013, ITRI filed its prior motion for leave to amend its infringe
contentions. While ITRI's motion was pending, on October 10 and 11, 2013, the Court heard

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parties' respective claim construction arguments. The Court then issued its Markman opinion n
claim construction on January 6, 2014.

Thereafter, on March 7, 2014, ITRI served a letter to LG proposing amendments to its
infringement contentions. At a hearing on April 16, 2014, Magistrate Judge Joseph Dick n
advised ITRI not to file a motion regarding its proposed amendments until he resolved IT
prior motion for leave to amend its infringement contentions. Discovery was then stayed pend g
a settlement conference between the parties. The settlement conference was ultima
unsuccessful and on September 25, 2014, Judge Dickson granted-in-part and denied-inITRI's July 12, 2013, motion for leave to amend its infringement contentions.
On February 19, 2015, ITRI filed its second motion for leave to serve amen d
infringement contentions. This matter is currently before the Court and assigned to

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undersigned for disposition.
II. Discussion

Local Patent Rule 3.7 provides:
Amendment of the Infringement Contentions or the Invalidity
Contentions may be made by order of the Court upon a timely
application and showing of good cause. The application shall
disclose whether the adverse party consents or objects. Nonexhaustive examples of circumstances that may, absent undue
prejudice to the adverse party, support a finding of good cause
include: (a) a claim construction by the Court different from that
proposed by the party seeking amendment; (b) recent discovery of
material prior art despite earlier diligent search; (c) recent
discovery of nonpublic information about the Accused
Instrumentality which was not discovered, despite diligent efforts,
before the service of the Infringement Contention; and (d)
disclosure of an asserted claim and infringement contention by a
Hatch-Waxman Act plaintiff under L. Pat. R. 3.6(f) that requires
response by defendant because it was not previously presented or
reasonably anticipated. The duty to supplement discovery
responses under Fed. R. Civ. P. 26(e) does not excuse the need to
obtain leave of Court to amend contentions.
The ability to amend infringement contentions under Local Patent Rule 3.7 is committed to

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court's discretion. Under the Rule a court's ruling on claim construction may support

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amendment. Id. Consideration of any such proposed amendment must balance the asserted n ed
for the amendment with the purposes and philosophy embodied in the Local Patent Rules.
Local patent rules seek to advance the orderly progression of patent litigation

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requiring the parties "to crystallize their theories of the case early in the litigation and to ad
to those theories once they have been disclosed." Atmel Corp. v. Info. Storage Devices, Inc.,

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C 95-1987 FMS, 1998 WL 775115, *2 (N.D. Cal. Nov. 5, 1998). They are designed to adva ce
the litigation in a timely and efficient manner and make it less expensive. Ra theon Co. v. In

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Sys. Corp., No. 4:07-CV-109, 2008 WL 5378047, at *1 (E.D. Tex. Dec. 23, 2008). In <loin
they reflect a more conservative approach than the rules that govern the amendment of pleadi
generally and aim to prevent the "'vexatious shuffling of positions' that could occur if the pa
are permitted to freely modify their infringement contentions at any point in the action." =Bc.=:e.:..,.:=
v. Rossignol Ski Co., No. C 05-02523 CRB, 2006 WL 1095914, at* 1 (N.D. Cal. Apr. 25, 20 6)
affd, 214 F. App'x 981 (Fed. Cir. 2007)(quoting JSR Corp. v. Tokyo Ohka Kogya Co., 2
U.S. Dist. LEXIS 24959, * 18 (N.D. Cal. Sep. 13, 2001)).
The local patent rules in the Northern District of California require both the plaintiff

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the defendant "to provide early notice of their infringement and invalidity contentions, an to
proceed with diligence in amending those contentions when new information comes to ligh m
the course of discovery." 02 Micro Int'l, Ltd. v. Monolithic Power Sys., 467 F3d. 1355, 13 51366 (Fed. Cir. 2006). "The rules thus seek to balance the right to develop new informatio m
discovery with the need for certainty as to the legal theories." Id. "The same policy ration es
motivate this district's Local Patent Rules[.]" Hoffmann-La Roche Inc. v. Orchid Chemical &
Pharmaceuticals Ltd., 07-CV-4582-SRC MAS, (D.N.J. 2011)

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In Copper Innovations Group., LLC v. Nintendo Co., No. 2:07CV1752, 2012

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628465, at *1 (W.D. Pa. Feb. 27, 2012), affd, 505 F. App'x 959 (Fed. Cir. 2013), the Dist ct
Court struck the plaintiffs amended infringement contentions that were served soon after
Court's Markman hearing. Although the local patent rule permitted an amendment if made i
timely fashion, asserted in good faith and without purpose of delay," the Court found
"consideration of any such proposed amendment must balance the asserted need for
amendment with the purposes and philosophy embodied in the Local Patent Rules." Id. at *2.
In this matter, ITRI alleges that the contentions submitted in its post-Mar
amendment are identical to the infringement contentions served almost a year ago except they o
not include the products for which Magistrate Judge Dickson denied leave. ITRI further alle es
that its post-Markman amendment does not add new products, new components of the accu
products, or new claims, but rather seeks to incorporate the Court's claim construction
additional evidence concerning the same products, components, and claims in light of th
constructions. Finally, ITRI maintains that its amended infringement contentions are necess
because the Court adopted constructions that were in some instances different than th e
proposed by ITRI.
Although Local Patent Rule 3. 7 states that a claim construction by the Court differ nt
from that proposed by the party seeking amendment may support an amendment to
infringement contentions, ITRI has failed to demonstrate why the Court's claim construct n
necessitates it to serve amended contentions. As ITRI maintains that its amended infringem t
contentions merely seek to incorporate the Court's claim construction and additional eviden e,
ITRI has failed to demonstrate to the Court that there is good cause to permit its post-Mar
amended contentions.
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Furthermore, permitting ITRI to proceed with its amended infringement contenti ns
would conflict with the policies underlying the Local Patent Rules in this District. This ma er
has been pending since November 2010, and has been before this Court since September 2
After nearly four years of litigation in this District, the parties are finally nearing the end of

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discovery phase of litigation. If this Court were to grant leave for ITRI to amend its pa
infringement contentions, judicial proceedings will be further delayed. The Local Patent R
are designed to promote the orderly progression of litigation and prevent the shifting of positi
late in litigation. See LG Electronics Inc. v. Q-Lity Computer, Inc., 211 F.R.D. 360 (N.D.

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2010). Allowing ITRI to amend its infringement contentions at this point in time will t us
undermine the policies and concerns underlying the Local Patent Rules in this jurisdicti n.
Infringement contentions serve as substitutes for interrogatories, but they also act as
forms of pleading that disclose the parties' theories of their case and thereby shape discovery
the issues to be determined at trial. Apple Inc. v. Samsung Electronics Co., No. 12-CV-06
LHK PSG, 2013 WL 3246094, at *3 (N.D. Cal. June 26, 2013). If the Court were to allow I

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to amend its infringement contentions discovery will need to be extended and this case
unnecessarily drag on for a prolonged period of time. "The liberalization of local patent r
was not intended to displace the very purposes for having such rules." Co

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LLC v. Nintendo Co., No. 2:07CV1752, 2012 WL 628465, at *2 (W.D. Pa. Feb. 27, 2012) af d,
505 F. App'x 959 (Fed. Cir. 2013).
Consequently, it is the opinion of the Special Master that ITRI has failed to show g

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cause to serve amended infringement contentions and further that the policies underlying
District's Local Patent Rules will not be served by allowing ITRI to file amended infringem nt
contentions at this late stage.
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III. Conclusion
For the foregoing reasons, it is the recommendation of the Special Master that IT

's

post-Markman motion for leave to file amended infringement contentions be denied.
Respectfully Submitted,

cc:

Honorable Ester Salas, U.S.D.J
Honorable Joseph A. Dickson, U.S.M.J.
Vincent E. McGeary, Esq.
Michael Shore, Esq.
David Morris, Esq.
Donald A. Robinson, Esq.
Leda Wettre, Esq.

SO ORDERED
---.!!_:__.~r:ph

A. Dickso

Josepr1 A. Dickson, U.S.

Date:o\'da\\S

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