Monode Marking Products, Inc. v. Columbia Marking Tools, Inc.

Filing 120

Memorandum Opinion and Order. The Court finds that Monode has shown good cause to allow an amendment, and allowing the requested amendment would not prejudice the Defendant. Taking into account all of the facts and circumstances, granting leave to amend would best serve the ends of justice. Therefore, Plaintiffs motion is hereby GRANTED. (ECF # 106 ). IT IS SO ORDERED. Judge Donald C. Nugent on 5/7/2021. (M,S)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

MONODE MARKING PRODUCTS,INC.,
Case No.

1:18-CV-16

Plaintiff,
V.

JUDGE DONALD C. NUGENT

COLUMBIA MARKING TOOLS,INC.,
Defendant.

MEMORANDUM OPINION
AND ORDER

This matter is before the court on Plaintiff, Monode Marking Products, Inc.'s("Monode")

Motion for Leave to Amend Infringement Contentions. (ECF #106. Defendant, Columbia Marking

Tools,Inc.("Columbia")filed an Opposition,(ECF #111), and the parties respectively filed a Reply
and Sur-Reply, in favor oftheir positions. (ECF #116,117-1). The matter is now fully briefed and
ready for disposition.

Final infringement contentions are due fifteen days after a claim construction ruling. L.P.R.
3.10(b). A party may amend final contentions"only by order ofthe Court upon a showing of good
cause and absence of unfair prejudice, made in timely fashion following discovery ofthe basis for
such amendment." L.P.R. 3.10(e). Monode claims that an amendment should be allowed because it
timely requested leave to amend after it belatedly received the accused product's somce code, which
is the basis for the amendment. Columbia contends that Monode should not be permitted to amend

its contentions on this basis because it did not diligently pursue its earlier(timely)request for the
source code following Columbia's request for an enhanced protective order. The Court previously
found, however,that Monode's request for the source code was timely issued and relevant to issues
in the case. It further found that Monode was not dilatory in seeking discovery ofthe source code,
and that it was entitled to obtain the code and explore its relevance through expert depositions. (ECF

#95). It would make no sense to permit discovery ofthe code and then prohibit Monode from using
it to support its claims.

Columbia also argues that it will suffer prejudice if an amendment is permitted. Columbia
argues that it would be prejudiced by the amendment because during claim construction it agreed to a
construction ofthe term SIVP posited by Monode, which it would not have agreed to if it had been

aware of Monode's new theory ofinfringement. This claim of prejudice does not withstand scrutiny,
however. Columbia agreed to the construction of SIVP before Monode filed its final infringement
contentions. Therefore, had the final contentions included the requested amendments, it would not
have had any effect on the agreed claim construction because the construction was already
established at the time final contentions were filed. Further, in the Joint Status Report filed on

February 24,2020, after final contentions were due, both parties agreed to extend discovery and
reserved "the right to seek leave to amend its final infringement contentions based on new

information it might leam through the completion ofits fact discovery, subject to any objections the
other party may assert." (ECF #45).

For the reasons set forth above,and based on all ofinformation set forth in the parties' briefs,

the Court finds that Monode has shown good cause to allow an amendment, and allowing the
requested amendment would not prejudice the Defendant. Taking into account all ofthe facts and

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circumstances, granting leave to amend would best serve the ends ofjustice. Therefore, Plaintiffs
motion is hereby GRANTED.(ECF #106). IT IS SO ORDERED.

DONALD C. NUGEMT

UNITED STATES EfeSTRICT JUDGE
Date:

ion

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