Enroute Systems Corp. v. ArrivalStar SA et al

Filing 26

ORDER denying dft ArrivalStar SA's 23 Motion for Extension of Time by Judge Robert S. Lasnik.(RS)

1
2
3
4
5

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

6
7
8
9
10
11

_______________________________________
)
ENROUTE SYSTEMS CORP.,
)
)
Plaintiff,
)
v.
)
)
ARRIVALSTAR S.A., et al.,
)
)
Defendants.
)
_______________________________________)

No. C11-0451RSL
ORDER DENYING MOTION TO
EXTEND TIME TO SERVE
INFRINGEMENT CONTENTIONS

12
13

This matter comes before the Court on “Defendant ArrivalStar S.A.’s Motion for

14

Relief from Deadline.” Dkt. # 23. Defendant requests an extension of the deadline for stating its

15

preliminary infringement contentions. Defendant argues that an extension is appropriate because

16

(a) the Court’s scheduling order allowed ArrivalStar only fourteen days, including holidays, in

17

which to prepare and serve its preliminary contentions, (b) plaintiff misled ArrivalStar into

18

believing that the case management deadlines were on hold while the parties explored

19

settlement, and (c) denying an extension would severely prejudice ArrivalStar by precluding

20

consideration of its claims on the merits.

21

Pursuant to Fed. R. Civ. P. 16(b)(4), case management deadlines established by the

22

Court “may be modified only for good cause and with the judge’s consent.” The case

23

management order in this case likewise states “[t]hese are firm dates that can be changed only by

24

order of the Court, not by agreement of counsel or the parties. The Court will alter these dates

25

only upon good cause shown . . . .” Dkt. # 22 at 2. None of the arguments raised by ArrivalStar

26

establishes good cause for the requested extension.
ORDER DENYING MOTION TO EXTEND TIME
TO SERVE INFRINGEMENT CONTENTIONS

The Court’s case management order was issued on December 21, 2011, and

1
2
3
4
5
6
7
8
9
10
11
12

required the filing of preliminary infringement contentions on or before January 4, 2012. A two
week period in which to set forth infringement contentions is standard in this district and should
not have come as a surprise to ArrivalStar or its counsel. A similar period is provided by default
in Local Patent Rule 120 in order “to streamline the pre-trail and claim construction process, and
generally to reduce the cost of patent litigation.” Local Patent Rule 101. Courts in this district
expect that a party asserting a claim of patent infringement has, at the time of filing, information
sufficient to support the claim and is therefore prepared to state its infringement contentions
early in the litigation. If, as ArrivalStar weakly suggests in its motion, the intervening holidays
made compliance with the January 4th deadline difficult, ArrivalStar should have filed a timely
motion to extend and set forth the circumstances that established “good cause.” No such motion
was filed, and there is no indication that counsel was unavailable during the relevant period.
Nor did Enroute Systems trick ArrivalStar into non-compliance with the Court’s

13
14
15
16
17
18
19
20
21
22
23

order. The documents submitted in support of ArrivalStar’s motion for relief from deadline do
not support an inference that Enroute Systems acted in bad faith, attempted to fool ArrivalStar,
or otherwise agreed to put this litigation “on hold.” A week after the Court issued its case
management order, ArrivalStar contacted Enroute Systems to see if it was interested in resolving
the litigation quickly. ArrivalStar recounted the history of the dispute and sweetened a
settlement proposal that had been made in December 2010.1 Opposing counsel did not respond
until January 3, 2012, at which point he simply noted that he was hoping to meet with his client
later in the week and would get back to ArrivalStar later. Enroute Systems did not suggest that
settlement was likely or indicate that the litigation deadlines would be held in abeyance. The
infringement contentions were due the next day and yet ArrivalStar made no attempt to negotiate

24
25
26

1

Although ArrivalStar asserts that this communication was in response to a request from
Enroute, there is no evidence to support such an assertion and there is no indication that the alleged
request was in any way misleading.
ORDER DENYING MOTION TO EXTEND TIME
TO SERVE INFRINGEMENT CONTENTIONS

-2-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18

a stipulated extension of the deadline or to seek relief from the Court. If, as ArrivalStar states in
its memorandum, it believed the litigation was “on hold,” that belief was not reasonable given
the nature of the communications, the pending case management deadlines, and the explicit
requirement for judicial consent in both the Federal Rules of Civil Procedure and the case
management order.
Finally, ArrivalStar argues that an extension is appropriate because, without one,
its infringement contentions may not be heard on the merits and ArrivalStar’s litigation position
will be prejudiced. The Court has a strong preference for resolving matters on their merits.
However, a review of the governing rules and case law make clear that parties in federal court
are not free to ignore the deadlines established in a case management order. Rule 16 was
amended in 1983 to require scheduling orders that govern pre-trial as well as trial procedure.
The purpose of the change was to improve the efficiency of federal litigation: leaving the parties
to their own devices until shortly before trial was apparently costly and resulted in undue delay.
Under the new rule, once a case management schedule issues, changes will be made only if the
movant shows “good cause.”
Rule 16(b)’s “good cause” standard primarily considers the diligence of the party
seeking the amendment. The district court may modify the pretrial schedule “if it
cannot reasonably be met with the diligence of the party seeking the extension.”
Fed. R. Civ. P. 16 advisory committee’s notes (1983 amendment) . . . .

19

Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992). See also Zivkovic v.

20

S. Cal. Edison Co., 302 F3d 1080, 1087-88 (9th Cir. 2002) (where plaintiff failed to

21

“demonstrate diligence in complying with the dates set by the district court,” good cause was not

22

shown). Prejudice to the moving party, standing alone, does not supply the necessary “good

23

cause.” Johnson, 975 F.2d at 609 (“Although the existence or degree of prejudice to the party

24

opposing the modification might supply additional reasons to deny a motion, the focus of the

25

inquiry is upon the moving party’s reasons for seeking modification. . . If that party was [sic]

26

not diligent, the inquiry should end.”) (emphasis added).
ORDER DENYING MOTION TO EXTEND TIME
TO SERVE INFRINGEMENT CONTENTIONS

-3-

1
2
3
4
5
6

In Johnson, plaintiff sought an extension of time in which to add as a party the
actual owner of the ski resort at which plaintiff was injured. The incorrectly-named party moved
for summary judgment after the joinder cut-off date had passed. The district court granted the
dispositive motion and declined to allow plaintiff to amend his complaint. The Ninth Circuit
reviewed the discovery record and found that the named defendant had not hidden relevant facts
or attempted to mislead plaintiff regarding the real parties in interest.

10

The burden was upon [plaintiff] to prosecute his case properly. He cannot blame
[the named defendant] for his failure to do so. The simple fact is that his attorneys
filed pleadings and conducted discovery but failed to pay attention to the responses
they received. That is precisely the kind of case management that Rule 16 is
designed to eliminate. It is one of the reasons that the district courts have been
forced to assume the burdens of case management themselves.

11

Id. at 610. In the absence of reasonable diligence in complying with the case management

12

deadlines, plaintiff could not establish good cause for the requested modification. The fact that

13

plaintiff lost his claim (i.e., suffered substantial legal prejudice) was not a substitute for the

14

necessary good cause. Applying the analysis in Johnson to this case means that, having failed to

15

show that it acted with reasonable diligence, ArrivalStar’s potential inability to pursue its claim

16

of infringement does not establish good cause for the requested extension.

7
8
9

17

There is no question that this is a harsh result for defendant. However, the policy

18

judgments that prompted the adoption of Rule 16(b) serve the larger interests of judicial

19

efficiency and economy, not just the interests of individual litigants. In addition, there is a clear

20

trend among appellate courts to focus the Rule 16(b)(4) analysis on the movant’s diligence,

21

rather than competing claims of prejudice. See Oravec v. Sunny Isles Luxury Ventures, L.C.,

22

527 F.3d 1218, 1232 (11th Cir. 2008) (the “good cause” standard “precludes modification [of the

23

scheduling order] unless the schedule cannot be met despite the diligence of the party seeking

24

the extension.”); O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1367-68

25

(Fed. Cir. 2006) (because the movant had not acted diligently in seeking an extension of the

26

infringement contention deadline, there was “no need to consider the question of prejudice to the
ORDER DENYING MOTION TO EXTEND TIME
TO SERVE INFRINGEMENT CONTENTIONS

-4-

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16

non-movant”); Rahn v. Hawkins, 464 F.3d 813, 822 (8th Cir. 2006) (“The primary measure of
good cause is the movant’s diligence in attempting to meet the order’s requirements.”);
O’Connell v. Hyatt Hotels of Puerto Rico, 357 F.3d 152, 155 (1st Cir. 2004) (“Indifference by
the moving party seals off this avenue of relief irrespective of prejudice because such conduct is
incompatible with the showing of diligence necessary to establish good cause.”) (internal
quotation marks and alterations omitted); Zivkovic, 302 F.3d at 1087 (“If the party seeking the
modification was not diligent, the inquiry should end and the motion to modify should not be
granted.”) (internal quotation marks omitted); Parker v. Columbia Pictures Indus., 204 F.3d 326,
340 (2nd Cir. 2000) (“[A] finding of ‘good cause’ depends on the diligence of the moving
party.”). But see Leary v. Daeschner, 349 F.3d 888, 906-09 (6th Cir. 2003) (considering both
the moving party’s diligence and prejudice to the opposing party when evaluating a motion to
extend a case management deadline). Where diligence, and therefore good cause, have not been
shown, the district court runs the risk of reversal should it ignore the requirements of Rule 16(b).
See Sherman v. Winco Fireworks, Inc., 532 F.3d 709 (8th Cir. 2008) (reversing jury verdict in
favor of defendant on newly-added preemption defense where amendment was not justified by
good cause).

17
18
19
20
21
22
23
24

For all of the foregoing reasons, the Court finds that ArrivalStar has not shown
good cause for failing to meet the infringement contention deadline. Its motion for an extension
of that deadline is therefore DENIED pursuant to Fed. R. Civ. P. 16(b).
Dated this 28th day of March, 2012.

A
Robert S. Lasnik
United States District Judge

25
26
ORDER DENYING MOTION TO EXTEND TIME
TO SERVE INFRINGEMENT CONTENTIONS

-5-