Pure Fishing Inc v. Normark Corporation

Filing 195

OPINION AND ORDER denying 155 MOTION to Amend/Correct 60 AMENDED COMPLAINT to the extent it seeks to add a claim under the doctrine of equivalents. (Amended Complaint due by 8/2/2012) Signed by Honorable Cameron McGowan Currie on 7/26/2012. (cbru, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
COLUMBIA DIVISION
PURE FISHING, INC., an Iowa Corporation,

)
)
Plaintiff,
)
)
v.
)
)
NORMARK CORPORATION, a Minnesota
)
Corporation, d/b/a RAPALA,
)
)
Defendant.
)
_________________________________________ )

C.A. No. 3:10-2140-CMC

OPINION AND ORDER

This matter is before the court on motion of Plaintiff, Pure Fishing, Inc. (“PFI”) to amend the
complaint. Dkt. No. 155 (filed June 8, 2012). The motion was granted in most respects by Docket
Text Orders entered July 12, 2012. See Dkt. Nos. 182, 183 (amending Dkt. No. 182). The only
remaining issue is whether PFI should be allowed to amend to add a claim for infringement under
the doctrine of equivalents. Defendant Normark Corporation (“Normark”) opposes this aspect of
PFI’s motion. For the reasons set forth below, the court denies the motion to amend to the extent
it seeks to add a claim under the doctrine of equivalents.
STANDARD
Rule 15 of the Federal Rules of Civil Procedure provides that, with certain exceptions not
applicable here, a party should be allowed to “amend its pleading only with the opposing party’s
written consent or the court’s leave.” Fed. R. Civ. P. 15(a)(2). Leave should, however, “be freely
given when justice so requires.” Id. Applying this rule, the United States Supreme Court has held:
If the underlying facts or circumstances relied upon by a plaintiff may be a proper
subject of relief, he ought to be afforded an opportunity to test his claim on the
merits. In the absence of any apparent or declared reason--such as undue delay, bad
faith or dilatory motive on the part of the movant, repeated failure to cure

deficiencies by amendments previously allowed, undue prejudice to the opposing
party by virtue of allowance of the amendment, futility of amendment, etc.--the leave
sought should, as the rules require, be ‘freely given.’ Of course, the grant or denial
of an opportunity to amend is within the discretion of the District Court, but outright
refusal to grant the leave without any justifying reason appearing for the denial is not
an exercise of discretion; it is merely abuse of that discretion and inconsistent with
the spirit of the Federal Rules.
Foman v. Davis, 371 U.S. 178, 182 (1962). See also Ward Elecs. v. First Commercial Bank, 819
F.2d 496, 497 (4th Cir. 1987) (holding that “a change in the theory of recovery and one prior
amendment of the complaint [were] not sufficient to justify denial of leave to amend under the
principles of Foman” absent some resulting prejudice to the opposing party); Davis v. Piper Aircraft
Corp., 615 F.2d 606, 613 (4th Cir. 1980).
Although Rule 15(a) provides that leave to amend “shall be freely given when justice so
requires,” Rule 16(b) mandates that a court’s scheduling order “may be modified only for good cause
and with the judge’s consent.” The Fourth Circuit has explained the interplay of these two rules as
follows:
Given their heavy case loads, district courts require the effective case management
tools provided by Rule 16. Therefore, after the deadlines provided by a scheduling
order have passed, the good cause standard must be satisfied to justify leave to amend
the pleadings.
Nourison Rug Corp. v. Parvizian, 535 F.3d 295, 298 (4th Cir. 2008). In other words, when the
deadline for amendment has passed, the moving party must first demonstrate good cause under Rule
16(b) before the court will consider whether an amendment is proper under Rule 15(a). Sosa v.
Airprint Sys., Inc., 133 F.3d 1417, 1418 n.2 (11th Cir. 1998) (noting that “when a motion to amend
is filed after a scheduling order deadline, Rule 16 is the proper guide for determining whether a
party’s delay may be excused”); Johnson v. Mammoth Recreations, Inc., 975 F.2d 604 (9th Cir.
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1992) (recognizing that party seeking to amend complaint after date specified in scheduling order
must first show good cause for amendment under Rule 16(b); then if good cause is shown, the party
must demonstrate that amendment is proper under Rule 15).
The “good cause” requirement of Rule 16(b) is unlike the more lenient standard of Rule 15(a)
in that Rule 16(b) “does not focus on the bad faith of the movant, or the prejudice to the opposing
party,” but focuses on the diligence of the party seeking amendment. Dilmar Oil Co., Inc. v.
Federated Mut. Ins. Co., 986 F.Supp. 959, 980 (D.S.C.1997). “Good cause” means that scheduling
deadlines cannot be met despite a party’s diligent efforts. Id. (citing 6A Wright, Miller & Kane,
Federal Practice and Procedure § 1522.1 at 231 (2d ed.1990)). However, “[g]ood cause is not shown
when the amendment could have been timely made.” Interstate Narrow Fabrics, Inc. v. Century
USA, Inc., 218 F.R.D. 455, 460 (M.D.N.C. 2003). If a party was not diligent, the good cause inquiry
should end. Mammoth Recreations, Inc., 975 F.2d at 609.
BACKGROUND
PFI filed this action on August 16, 2010, nearly two years before it filed its present motion.
Dkt. No. 1; see also Dkt. No. 155 (motion to amend filed June 8, 2012). The original complaint
alleged “direct infringement” of two patents, only one of which remains in dispute (the “Cook
Patent”). The complaint did not specify whether PFI intended to prove direct infringement of the
Cook Patent under a theory of literal infringement or under the doctrine of equivalents.
An amended complaint filed on June 14, 2011, asserted essentially the same claim as to the
Cook Patent. Dkt. No. 60. It was not until PFI filed the present motion on June 8, 2012, that it
sought to specify a theory of infringement through the complaint.

3

Specification of PFI’s infringement theory was, instead, provided in compliance with
procedures the parties adopted by agreement. That agreement is embodied in the First Consent
Amended Scheduling Order, which incorporates the Northern District of California Patent Local
Rules (“N.D. Cal. Patent L.R.”). Dkt. No. 33 (entered June 27, 2011). Consistent with those rules,
the schedule set deadlines for the parties to make specified disclosures regarding their infringement
contentions and defenses. Dkt. No. 33 ¶¶ 2(a)-(b). The disclosures required by paragraph 2(a) of the
First Consent Amended Scheduling Order are critical to the present motion because they required
PFI to disclose whether it intended to rely on a literal infringement theory, the doctrine of
equivalents, or both. The deadline for those disclosures was April 15, 2011. This scheduling order
also set deadlines for supplemental disclosures. Most critically here, it set a deadline of thirty days
following claim construction for PFI to “amend and finalize” disclosures required by paragraph 2(a).
Dkt. No. 33 ¶ 4(a).1
In addition, again pursuant to the N.D. Cal. Patent L.R., the First Consent Amended
Scheduling Order established a detailed schedule for disclosures and briefing related to claim
construction. Dkt. No. 33 ¶¶ 2(c)-(h). This schedule anticipated the matter being ripe for hearing
on issues of claim construction by September 19, 2011.
The First Consent Amended Scheduling Order set a May 27, 2011, deadline for amending
pleadings. Dkt. No. 33 ¶ 1. By consent motion filed and order entered on May 27, 2011, the

1

The disclosures required by the N.D. Cal. Patent L.R. are not filed with the court. Normark
has, however, filed some of PFI’s supplemental disclosures as attachments to its opposition
memorandum. PFI also asserts that Normark served supplemental disclosures in May 2012.
4

deadline for amending pleadings was extended to June 10, 2011, without modification of other
deadlines. See Dkt. Nos. 42 (motion), 43 (order).
On June 9, 2011, the parties sought and the court granted an extension of the deadlines for
exchange of claim term constructions and related disclosures, thus extending the deadlines in
paragraphs 2(c)-(d) of the First Consent Amended Scheduling Order. Dkt. Nos. 52 (motion), 53
(order). The parties did not seek extension of the previously expired deadlines set by paragraphs 2(a)
and (b) of the First Amended Scheduling Order. As noted above, paragraph 2(a) set the deadline for
PFI to make initial disclosures as to whether it intended to prove infringement under a literal
infringement theory, the doctrine of equivalents, or both.
The parties, likewise, did not seek extension of the deadline for amending pleadings, which
was set to expire on June 10, 2011, the day after the motion to extend specified deadlines was filed.
PFI did, in fact, file a consent motion to amend on June 10, 2011, which was granted. Dkt. Nos. 54,
59. The amended complaint subsequently filed did not modify the Cook Patent claim in any
significant manner. Dkt. No. 60. Most critically, it did not specify whether PFI intended to prove
its direct infringement claim through a literal infringement theory or through the doctrine of
equivalents, or both.
A number of additional modifications to the claim construction briefing schedule were made
between filing of the amended complaint and completion of briefing on September 28, 2011. These
modifications, like earlier amendments, did not impact the deadlines set by paragraphs 2(a)-(b).
The court construed disputed terms in the Cook Patent by order entered October 26, 2011.
Dkt. No. 83. One disputed term is of particular relevance to the present motion as it relates to the

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meaning of “about” in the phrase “within the range from about 110E C to about 150E C.” PFI had
argued for a construction which would allow a significant variance at the upper end of the range.
Normark, by contrast, argued for a very narrow construction, allowing only a one degree variance.
The court rejected both constructions, concluding that “about” meant “approximately” and that the
record provided did not support a more specific definition. Dkt. No. 83 at 6.
The court has granted two general extensions of the scheduling order since construing the
disputed terms in the Cook Patent.2 Dkt. No. 110 (Second Amended Scheduling Order entered
December 20, 2011); Dkt. No. 118 (Third Amended Scheduling Order entered February 1, 2012).
In their joint motion to amend the scheduling order filed on December 20, 2011, the parties noted
that the deadlines set by paragraphs 1-3 of the First Consent Amended Scheduling Order had passed
and did not require extension. Thus, the Second Amended Scheduling Order did not modify the
already expired deadline for filing amended pleadings (set by Dkt. No. 33 ¶ 1) or for initial
disclosures of claim and infringement contentions (set by Dkt. No. 33 ¶ 2(a)). It did, however, extend
the deadline for PFI to supplement its claim and infringement contentions (as required under
paragraph 2(a) of the First Amended Scheduling Order) to January 13, 2012. Dkt. No. 110 ¶ 2.
The Third Amended Scheduling Order noted that the deadline set by paragraph 2 of the
Second Amended Scheduling Order (the deadline for PFI to amend its claim and infringement
contentions) had “passed and need not be modified.” By contrast, it extended Normark’s deadline
to amend and finalize its invalidity contentions to February 13, 2012. This scheduling order also

2

As noted above, various individual deadlines in the First Consent Amended Scheduling
Order were modified by docket text order before the Second Amended Scheduling Order was
entered.
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required both sides to serve their expert witness reports on April 23, 2012, and allowed the parties
until May 21, 2012, to identify and serve reports of responsive experts. It also established a June 22,
2012, discovery deadline.
On April 20, 2012, the court extended limited deadlines including the expert witness
disclosure deadlines to May 7, 2012 (primary experts) and June 6, 2012 (responsive experts). Dkt.
Nos. 127 (motion), 128 (docket text order). The court did not, however, extend the ultimate
discovery deadline.
On May 16, 2012, Normark filed a motion to amend its Answer and Counterclaims. Dkt. No.
138. The motion indicated that the purpose was to add specific factual allegations learned in
discovery, and to remove allegations which had not been found to be supported. The motion certified
that PFI had been consulted and did not oppose the motion. Dkt. No. 138 at 2. The motion was
granted based on the absence of opposition. Dkt. No. 139.
The present motion to amend the complaint was filed on June 8, 2012. Dkt. No. 155. The
motion and supporting memorandum (Dkt. No. 155-3) address the bases for certain of the proposed
amendments including the addition of an express claim for willful infringement and elimination of
an abandoned cause of action. There is no mention of PFI’s splitting of the previously asserted direct
infringement claim into two separate causes of action, one alleging literal infringement and the other
alleging infringement under the doctrine of equivalents.3

3

The First Amended Complaint set out a single, three-paragraph cause of action for “Direct
Infringement of the [Cook] Patent.” Dkt. No. 60 ¶¶ 13-15. The allegations in this cause of action
do not reference either literal infringement or the doctrine of equivalents. The proposed second
amended complaint sets out three separate causes of action for infringement of the Cook Patent:
literal infringement; infringement under the doctrine of equivalents; and willful infringement.
7

Normark filed a memorandum opposing PFI’s motion to the extent it sought to add claims
for willful infringement and infringement under the doctrine of equivalents. Dkt. No. 175. The
court allowed PFI to add the willful infringement claim over Normark’s objection, leaving only the
doctrine of equivalents for further briefing.4 See Dkt. Nos. 182, 183. Normark argues that PFI
should not be allowed to add a claim under the doctrine of equivalents because PFI failed to disclose
its intent to proceed on this theory, either in its initial disclosures or in any supplement to those
disclosures. Dkt. No. 177 at 5-6. Normark noted, inter alia, that N.D. Cal. Patent L.R. 3.1 required
PFI to “specify whether infringement is literal or based on the doctrine of equivalents.” Id. at 5
(quoting N.D. Cal. Patent L.R. 3-1 and related case law). It also cites case law which explains that
this requirement “is designed to require the parties to crystallize their theories of the case early in the
litigation and to adhere to those theories once they have been disclosed.” Id. (citing Network
Caching Tech., LLC v. Novell, Inc., 2003 WL 21699799 at *4 (N.D. Cal., March 21, 2003).).
Normark argues that no new facts have been developed which would justify addition of this
theory so late in the litigation. It also notes that PFI has had many opportunities to disclose reliance
on the doctrine of equivalents if it believed such a theory to be supported. Dkt. No. 177 at 6. As
Normark explains, discovery closed on June 22, 2012, fourteen days after PFI’s motion to amend was
filed and before Normark’s response was due. Normark asserts that neither party addressed the
doctrine of equivalents in their experts’ reports and related discovery. Id. at 7. It also notes that,
during the deposition of Normark’s expert, “PFI asked . . . whether [Normark’s expert] had been

4

Normark objected to amendment to assert a willful infringement claim solely on the
grounds of futility, not based on untimeliness. PFI, moreover, proffered recently discovered
evidence which arguably supported a claim for willful infringement and was not merely duplicative
of earlier evidence. See infra at 12.
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asked to analyze infringement under the doctrine of equivalents, and [the expert] testified that he had
not.” Id. Normark argues that these collective circumstances demonstrate that it would be unduly
prejudicial to allow PFI to amend at this late date.
Incorrectly believing that the reply deadline had already expired without a reply being filed,
the court initially addressed PFI’s motion by order entered July 12, 2012. Dkt. No. 182. Despite the
absence of a reply, the court granted PFI’s motion with respect to all proposed amendments other
than the addition of the claim under the doctrine of equivalents. Dkt. Nos. 182. Noting that PFI had
not addressed the addition of a claim under the doctrine of equivalents in its opening memorandum,
and the absence of a reply, the court initially denied this aspect of PFI’s motion. This ruling was,
however, withdrawn as the deadline for filing a reply had not expired. Dkt. No. 183.
In its subsequently filed reply, PFI argues that information recently acquired during discovery
justifies its amendments.5 PFI relies, in particular, on recent depositions and document disclosures
that reveal that, at certain times, Normark’s supplier processed fishing line using a temperature
clearly within the Cook Patent’s specified temperature ranges (that is, below 150E C) while, at
others, it used temperatures arguably falling outside of the literal limit. Thus, PFI argues that
“evidence came to light unexpectedly that confirmed that Normark was infringing literally and, at
a different time period, pursuant to the doctrine of equivalents.” Dkt. No. 190 at 8. PFI also notes

5

The factual section of the reply addresses both facts relevant to the willful infringement
claim and the claim under the doctrine of equivalents. Only the latter is relevant here given that the
court has already allowed PFI to add a willful infringement claim.
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that Normark has made relatively recent amendments to its invalidity contentions (on May 22, 2012).
Id. at 8 n.7.6
PFI concedes that it did not disclose that it was relying on the doctrine of equivalents in its
disclosures under the N.D. Cal. Patent L.R. at any time prior to filing its motion to amend, even
though it was required to do so. Dkt. No. 190 at 8 n.7.7 It states that it did make these disclosures
prior to filing its reply, but does not provide a date these disclosures were made. Id. PFI does not
otherwise address the N.D. Cal. Patent L.R. requirements or purpose, thus leaving Normark’s
characterizations of these rules unchallenged.
Finally, PFI argues that there is no prejudice to Normark because there is no “new claim” and
the delay in discovering supporting facts resulted from “Normark’s delayed production of documents
. . . combined with inconsistencies between the documents and Normark’s narrative interrogatory
responses.” Id. at 10 (arguing “The method and timing of producing the information used by

6

The invalidity contentions are served, not filed. The court is not, therefore, aware of their
content or filing dates except to the extent filed as an attachment to a motion (and PFI has not
provided any such documents). The court does, however, note that the Third Amended Scheduling
Order extended Normark’s deadline for amending and finalizing its invalidity contentions to
February 13, 2012. Dkt. No. 118. Whether or not Normark made belated disclosures in May 2012,
PFI has not lodged a timely objection to such disclosures.
7

PFI refers to the N.D. Cal. Patent L.R. only once in either of its memoranda. This
reference, found in PFI’s reply, concedes “that the parties are bound by the Disclosure and Asserted
Claims and Infringement Contentions as set forth in the Northern District of California Patent Local
Rule 3-1, which required Pure Fishing to specify whether the infringement it alleges is literal or
based on the doctrine of equivalents.” Dkt. No. 189 at 7. PFI explains that “[a]s the existence of
this local rule . . . implies, historically, plaintiffs in patent cases have not been required to specify
whether their cause of action for direct infringement was based on literal infringement or
infringement pursuant to the doctrine of equivalents.” Id. n.6.
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Normark prevented [PFI] from confirming and explaining the specific nature of Normark’s
infringement.”
PFI does not directly counter Normark’s claim of prejudice based on the absence of expert
testimony. Instead, it refers to certain aspects of fact discovery, noting that the focus of Normark’s
discovery has been on its invalidity defense and that Normark itself is in control of evidence relating
to the alleged infringement.
DISCUSSION
I.

Timeliness
The parties, without prompting from the court, elected to proceed under the Northern District

of California’s Patent Local Rules (N.D. Cal. Patent L.R.). The adopted rules required PFI to
disclose, inter alia, whether it was relying on the doctrine of equivalents. The deadline for initial
disclosures expired on April 15, 2011. The deadline for supplementation, initially set for thirty days
after the court issued its claim construction, was later extended to January 13, 2012.
PFI did not disclose an intent to rely on the doctrine of equivalents prior to expiration of the
original or extended deadlines. To the extent PFI now seeks to add a distinct claim under the
doctrine of equivalents, it is seeking to cure this failure to serve timely disclosures as required under
agreed procedures. It is also seeking a belated amendment of the pleadings, the deadline for which
expired on June 10, 2011, almost a year before the present motion was filed.
The court considers these two timeliness deficiencies together. As both of the underlying
deadlines were set by scheduling order, PFI must show good cause for the delay before the court

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considers whether PFI has made the necessary showing under Rule 15. See, e.g., Johnson v.
Mammoth Recreations, Inc., 975 F.2d 604 (9th Cir. 1992).
As with Normark’s motion to amend its answer and the unopposed aspects of PFI’s motion
to amend the complaint, the court normally grants motions to amend pleadings, even when they are
filed belatedly, where they are not opposed. The court also generally grants belated motions to
amend where there is a showing of good cause for the delay (under both Fed. R. Civ. P. 15 and 16)
or the amendment is not opposed based on untimeliness. To the extent PFI sought to add a claim
for willful infringement, its motion was granted on both of these bases: (1) recent disclosures in
discovery supported a finding of good cause for the delay in asserting willful infringement; and (2)
Normark did not oppose the addition of this claim based on delay.8
The proposed amendment to add a claim for infringement under the doctrine of equivalents
does not meet either criteria: it is opposed on grounds of unjustified delay, which delay Normark
argues would cause undue prejudice. There is, moreover, no showing of good cause for the delay
as explained below, whether the delay is evaluated under Rule 15 or 16.
From the outset of this litigation, Normark has taken the position that its products do not
infringe the Cook Patent because they are manufactured using temperatures outside the range
specified in the patent, even allowing for use of the term “about” in describing the temperature range.
Normark’s position and related arguments during the claim construction phase of the proceedings
put PFI on notice that it might need to rely on the doctrine of equivalents. The court’s construction
8

Normark opposed this aspect of the motion mainly on grounds that the amendment would
be futile. The court found this argument better reserved for summary judgment. Though not
discussed in the docket text order, the court found some justification for the delay in this amendment
due to recent discovery combined with the absence of opposition on the basis of delay.
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of the term “about” to mean “approximately” and rejection of both side’s proposed constructions,
likewise, gave notice that PFI might need to rely on the doctrine of equivalents.9 Critically, the
court’s construction was issued by order in October 2011.
Given the parties’ agreement to follow the N.D. Cal. Patent L.R., this repeated notice
obligated PFI to disclose its intent to rely on the doctrine of equivalents, whether through amended
disclosures or amendment of the complaint. At the very latest, PFI should have known that it was
likely to rely on the doctrine of equivalents on October 26, 2011, when the court issued its order
construing the disputed terms in the Cook Patent. At that time, the schedule provided PFI thirty days
after claim construction to serve supplemental disclosures under the N.D. Cal Patent L.R. A later
consent motion resulted in extension of this deadline to January 13, 2012. PFI has offered no
explanation as to why it would not have been aware of the potential need to proceed under the
doctrine of equivalents on or before January 13, 2012.
As noted above, PFI concedes that it did not amend its N.D. Cal. Patent L. R. disclosures to
reveal reliance on the doctrine of equivalents by this deadline. It did not even do so before filing its
June 8, 2012 motion to amend the complaint which was filed days-short of a year after the deadline
for amending pleadings and six months after the deadline for supplemental disclosures under the
N.D. Cal. Patent L.R. Allowing amendment of the complaint under these circumstances would not

9

As noted in the Opinion and Order construing the disputed terms, Normark asked the court
to construe “about” to allow for a deviation of no more than one degree beyond the listed upper
temperature of 150E. Dkt. No. 83 at 2. PFI, in contrast, argued alternatively that no construction
was necessary or that the range should be construed to allow temperatures beyond 150E “that are
within 10E C of the yarn’s melting point.” Id. at 2-3. In rejecting the latter construction, the court
noted that PFI’s “interpretation could encompass temperatures so far beyond 150E that they could
not be considered within an ‘approximate’ range under even the most generous interpretation.” Id.
at 3.
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only violate the scheduling order but would work an end-run around the procedures the parties
adopted by agreement. At the least, this reinforces the need for a showing of good cause for the
belated disclosures.
PFI has not, however, offered any reasonable explanation for its delay in disclosing that it
intended to rely on the doctrine of equivalents. To the extent recent discovery discussed by PFI
relates to a claim under the doctrine of equivalents, it is not significantly different from information
previously available. What does appear to be new is evidence of literal infringement, but this is not
the amendment at issue. In sum, the court finds no justification for the extreme delay in seeking the
amendment (to the eve of the close of discovery). This delay is of particular concern where, as here,
the parties agreed to specific procedures designed to flesh out the claims and theories of relief early
in the proceedings, including a specific requirement to disclose whether PFI was relying on the
doctrine of equivalents. The court does not, therefore, find good cause for the extreme delay in
asserting a claim under the doctrine of equivalents. This conclusion is true under both the more
stringent Rule 16 standard, which does not require a showing of prejudice, and the more liberal Rule
15 standard, which does. See supra at 1-3 (discussing standards).
II.

Prejudice
Normark has identified at least one specific area of prejudice, the absence of expert testimony

directed to the doctrine of equivalents. PFI does not offer any contrary argument or evidence (for
example, argument that expert testimony is neither necessary nor helpful). Instead, it notes that
Normark has knowledge of the underlying facts and control over related evidence. Knowledge of
facts and control over factual evidence would not, however, alleviate the need for or usefulness of
expert testimony. Thus, PFI’s arguments are not persuasive.
14

In light of Normark’s effectively uncontroverted argument regarding expert testimony, the
court concludes that it would be prejudicial to allow the amendment for several reasons. First,
allowing the case to proceed without reopening at least expert discovery would be unfair to Normark
because it would be denied the opportunity to obtain or offer expert testimony relevant to the
doctrine of equivalents. Alternatively, allowing the amendment and reopening discovery would be
prejudicial because it would delay resolution of this already-two-year-old case and add to the
expense of the litigation.10 Finally, allowing this much-belated amendment to circumvent the
requirement to make disclosures under N.D. Cal. Patent L.R. would deny the parties the benefit of
their bargain in agreeing to apply those rules.
III.

Futility

For purposes of this order, the court assumes without deciding that adding a claim under the
doctrine of equivalents would not be futile.
CONCLUSION
PFI’s extreme and unjustified delay in seeking to assert a claim under the doctrine of
equivalents, coupled with the resulting prejudice to Normark due to the need either to proceed
without expert testimony on the issue or to reopen expert discovery causing delay and undue
expense, persuade the court that it should deny PFI’s motion to the extent it seeks to add a claim
under the doctrine of equivalents. This conclusion is further supported by the parties’ agreement to
abide by the N.D. Cal. Patent L.R. which required early disclosure of any intent to rely on the

10

The current schedule for motions and other pretrial procedures will result in a trial-ready
date in January 2013, assuming the court is able to resolve dispositive motions soon after they are
fully briefed. Dkt. No. 194 (Fourth Amended Scheduling Order entered July 18, 2012). If discovery
is reopened, even for limited purposes, the matter would likely be delayed by several months.
15

doctrine of equivalents. PFI is directed to file its amended complaint, including only those
amendments allowed by Dkt. No. 182, within seven days of entry of this order.
IT IS SO ORDERED.
s/ Cameron McGowan Currie
CAMERON MCGOWAN CURRIE
UNITED STATES DISTRICT JUDGE
Columbia, South Carolina
July 26, 2012

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