Adrain v. Vigilant Video, Inc. et al
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on 5/13/2013. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
JOHN B. ADRAIN,
VIGILANT VIDEO, INC. and THE CITY
OF PORT ARTHUR, TEXAS,
CASE NO. 2:10-cv-173-JRG
MEMORANDUM OPINION AND ORDER
Pending before the Court is John B. Adrain’s Opposed Motion for Leave to Amend
Disclosure of Asserted Claims and Infringement Contentions (Dkt. No. 121), Defendants’ Joint
Motion for Summary Judgment (Dkt. No. 126), and related briefing. In Adrain’s Motion for
Leave, Plaintiff seeks to amend its infringement contentions to incorporate newly-issued claims in
the reexamined ’669 patent, specifically new claims 30-32, 35-39, and 41-42. After carefully
considering the parties’ written submissions, the Court finds as follows:
FACTUAL AND PROCEDURAL BACKGROUND
This suit was originally filed on May 26, 2010 alleging infringement of U.S. Patent No.
5,831,669 (“the ’669 patent”). Plaintiff’s original infringement contentions asserted claims 1-3 and
6-10 of the ’669 patent. On September 14, 2010, Defendant Vigilant filed a request for
re-examination of the ’669 patent with the USPTO, which was granted. Subsequently, on April 11,
2012, the Court held a Markman hearing and issued a Memorandum and Opinion (Dkt. No. 108)
on July 5, 2012. Thereafter on August 21, 2012, the USPTO issued a re-examination certificate for
the ’669 patent cancelling claim 1, amending claims 2-3 and 7-10 (claims 3 and 10 are determined
to be patentable as dependent on an amended claim), and issuing new claims 30-32, 35-39, and
Plaintiff Adrain filed the present motion to amend its Infringement Contentions on October
17, 2012 to assert claims 6, 30-32, 35-39, and 41-42 against Defendants. If granted leave to amend,
Adrian intends to withdraw assertion of claims 1-3 and 7-10. (Dkt. No. 127, at 1.) Claim 6 was not
subject to reexamination and Plaintiff intends to include it in its amended Infringement
On November 30, 2012, Defendants filed a Joint Motion for Summary Judgment of
Noninfringement in light of the reexamination certificate. Procedurally, discovery closed on
January 31, 2013 and jury selection was scheduled for June 3, 2013. However, due to the Court’s
schedule unrelated to either Motion, the jury selection date has been moved to August 5, 2013.
Local Patent Rule 3-6(b) allows a party to supplement its Infringement Contentions “only
by order of the Court, which shall be entered only upon a showing of good cause.” While the Court
has broad discretion to grant motions to amend, it should consider four factors: (1) the explanation
for the failure to meet the deadline; (2) the importance of the thing that would be excluded; (3)
potential prejudice in allowing the thing that would be excluded; and (4) the availability of a
continuance to cure such prejudice. Arbitron, Inc. v. Int’l Demographics Inc., 2009 WL 166555, at
*1 (E.D. Tex. 2009).
Here, the reexamination certificate issued on August 21, 2012 and Adrian sought to amend
its Infringement Contentions on October 17, 2012. Adrian could not have amended its contentions
to add newly-issued claims before the reexamination certificate issued, and the Court does not find
that the two month interval amounts to an unreasonable delay. Defendant, in its response briefing,
appears to demand a fuller explanation for this amendment, but it is unclear to the Court that
anything further needs to be said. The Court finds that the first factor is met.
Regarding the second factor, Plaintiff contends the newly-issued claims are important
because they do not require the “digital camera” limitation. The originally-asserted dependent
claims were all directly or indirectly dependent on claim 1, which did not contain a “digital
camera” limitation. However, claim 1 was canceled during reexamination and the claims that
depended on claim 1 were amended to depend instead from new claim 51. The new claim 51
contained a “digital camera” limitation and, as a result, that limitation is now imported into the
dependent claims. The importance of the “digital camera” limitation is further evidenced by being
the main basis of Vigilant’s argument in its Motion for Summary Judgment as to why it does not
infringe (Dkt. No. 126). The Court finds the second factor weighs in favor of granting leave to
The third factor concerns potential prejudice to the nonmoving party. In an
element-by-element comparison of the original claim 1 and the newly-issued claim 30, it is clear
that the claims are very similar except for an additional limitation in claim 30 that relates to
infrared cameras. (Dkt. No. 121 at 5.) Additionally, the originally-asserted claims 2-3 and 6-10 are
identical to the newly-issued claims 31-32 and 35-39, except for the latters’ dependence on claim
30 rather than claim 1. (Id. at 5-7.) Considering the similarities, the Court disagrees with Vigilant’s
assertion that these new claims “bear no relationship whatsoever to any of the claims that Plaintiff
has pursued throughout this litigation.” (Dkt. No. 125 at 6.) It is telling, in the Court’s view, that
Vigilant does not point to a single term in the re-examined claims that would necessitate additional
construction. (Dkt. No. 129 at 4.) Plaintiff submits, and the Court agrees, that no new terms need to
be construed from the addition of these claims, and Plaintiff’s infringement theories would remain
the same. (Dkt. No. 121 at 7.) The Court finds the third factor of prejudice to be de minimis, at best,
and as such finds this factor weighs in favor of granting leave to amend.
The last factor is the availability of a continuance to cure any potential prejudice. For
unrelated reasons, the Court has moved the June 3, 2013 jury selection date to August 5, 2013,
giving the parties two more months until trial. Thus, any potential prejudice to Defendants would
be alleviated by this unrelated extension of time. Accordingly, the Court finds that the fourth factor
also weighs in favor of granting leave.
After weighing each of the four factors, the Court finds that Plaintiff has shown good cause
to amend its infringement contentions.
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
In the Motion for Summary Judgment (Dkt. No. 126), Defendants essentially seek the
Court to find that (i) it does not infringe the originally-asserted dependent claims that now depend
from claim 51 in the reexamined ’669 patent, and (ii) the intervening rights doctrine precludes
Plaintiff from claiming damages prior to August 21, 2012, the date the reexamination certificate
was issued. As the Court has granted Plaintiff leave to amend its Infringement Contentions, none
of the newly-asserted claims depend from claim 51.1 Accordingly, Defendants’ first request is
moot and the Court consequently turns to the issue of intervening rights.
The doctrine of intervening rights is codified in 35 USC § 252 and “originated as a defense
Claim 6 still exists as originally issued, including its dependence from the canceled claim 1 and original claim 2. See
§ MPEP 2260.01.
against patents modified through reissue procedures.” Marine Polymer Technologies, Inc. v.
Hemcon, Inc., 672 F.3d 1350, 1361 (Fed. Cir. 2012). Two types of intervening rights exist: (1)
absolute intervening rights are “intervening rights that abrogate liability for infringing claims
added to or modified from the original patent if the accused products were made or used before the
reissue,” and (2) equitable intervening rights, which are “intervening rights that apply as a matter
of judicial discretion to mitigate liability for infringing such claims even as to products made or
used after the reissue if the accused infringer made substantial preparations for the infringing
activities prior to reissue.” Id. at 1361-62. The doctrine has since been extended to the context of ex
parte and inter partes reexaminations. Id. After a patent emerges from reexamination, absolute
and equitable intervening rights are available “to the same extent provided in the reissue statute,
but only with respect to ‘amended or new’ claims in the reexamined patent.” Id. However, the
doctrine of intervening rights applies only where a claim’s scope has been substantively changed.
Id. at 1362.
As the Court has granted Plaintiff leave to amend its Infringement Contentions, Plaintiff
now asserts infringement of claims 6, 30-32, 35-39, and 41-42 of the ’669 patent. Each of those
claims, with the exception of claim 6, was added during reexamination and contains an additional
limitation relating to an infrared camera that did not exist in the original ’669 patent. Therefore,
this new limitation constitutes a substantive change, and the doctrine of intervening rights applies
to claims 30-32, 35-39, and 41-42.
The record is clear that claim 6 was not subject to the reexamination proceeding. Under
MPEP § 2260.01, the content of the canceled base claim is to be read as a part of the confirmed or
allowed dependent claim. The fact that claim 1 was canceled and claim 2 was amended during
reexamination does not alter the application of MPEP § 2260.01, so claim 6 still exists as
originally issued. As such, the doctrine of intervening rights does not apply to claim 6 because it is
neither amended nor new.
Accordingly, the Court finds that the doctrine of intervening rights precludes recovery of
damages prior to August 21, 2012 for claims 30-32, 35-39, and 41-42, but not for claim 6 of the
’669 patent. The inception date for recovery of damages, if any, for claim 6 of the ’669 patent shall
be governed by 35 U.S.C. § 286.
Having considered the parties arguments, the Court finds Plaintiff has shown good cause to
amend its Infringement Contentions. For the reasons set forth above, Plaintiff’s Motion for Leave
GRANTED-IN-PART as to the application of the doctrine of intervening rights as to claims
30-32, 35-39, and 41-42 of the ’669 patent, as set forth above, but such Motion for Summary
Judgment is DENIED in all other respects.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 13th day of May, 2013.
UNITED STATES DISTRICT JUDGE
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