UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA
November 2, 2010
PROTECTCONNECT, INC., PLAINTIFF AND COUNTERDEFENDANT,
LEVITON MANUFACTURING CO., INC., ET AL., DEFENDANTS AND COUNTERCLAIMANTS.
The opinion of the court was delivered by: Hon. Michael M. Anello United States District Judge
ORDER RE: PLAINTIFF'S EX PARTE APPLICATION TO MODIFY SCHEDULING ORDER [Doc. No. 104]
On October 28, 2010, Plaintiff and Counterdefendant ProtectConnect, Inc. submitted an ex parte application to modify the Scheduling Order that issued on August 18, 2010. [See Doc. Nos. 79, 104.] Defendant and Counterclaimant Leviton Manufacturing Co., Inc. and its subsidiary EZE Rough System, Inc. (collectively "Leviton") filed an opposition to ProtectConnect's ex parte request on October 29, 2010. [Doc. No. 105.] Defendants and Counterclaimants Pass & Seymour, Inc. and Cablofil, Inc. also filed an opposition to ProtectConnect's application on October 29. [Doc. No. 106.] For the reasons set forth below, the Court GRANTS ProtectConnect's ex parte application.
On April 12, 2010, ProtectConnect initiated this action against Leviton, Pass & Seymour, Cablofil (collectively, "Defendants") and others, alleging infringement of various patents. [Doc. No. 1.] Defendants answered the complaint on June 7, 2010, asserting several counterclaims against ProtectConnect. [Doc. Nos. 37, 39.] ProtectConnect answered the counterclaims on August 2, 2010. [Doc. Nos. 63, 64.] On August 13, 2010, the parties participated in a case management conference. [Doc. No. 79.] Thereafter, Magistrate Judge Skomal issued a Scheduling Order, which in relevant part, sets forth the following deadlines:
Preliminary Invalidity ContentionsOctober 26, 2010
Exchange of Proposed Claim Constructions and EvidenceNovember 9, 2010
Exchange of Responsive Claim Constructions and Extrinsic EvidenceNovember 23, 2010
Joint Claim Construction Chart, Worksheet and Hearing StatementDecember 7, 2010
Completion of Claim Construction DiscoveryJanuary 4, 2011
Opening Claim Construction BriefsJanuary 18, 2011
Responsive Claim Construction BriefsFebruary 1, 2011
Claim Construction HearingFebruary 28, 2011
On September 13, 2010, ProtectConnect submitted a motion for leave to file a First Amended Complaint ("FAC") to add Patent No. 7,762,838 ("'838 Patent"), issued on July 27, 2010. [Doc. No. 93.] ProtectConnect's motion was set for hearing on November 8, 2010. [Id.] However, on October 25, 2010, the parties submitted a Joint Motion requesting the Court to continue the hearing for 90 days until February 7, 2011. [Doc. No. 102.] The same day, the Court granted the parties' Joint Motion. [Doc. No. 103.] At the time the Court granted the parties' Joint Motion, it was unaware that ProtectConnect had also asked Defendants to stipulate to postponing the above deadlines and Defendants declined.
On October 28, ProtectConnect filed the pending ex parte application to modify the above-listed dates in the Scheduling Order. [Doc. No. 104.] Defendants timely opposed ProtectConnect's request. [Doc. Nos. 105, 106.] ProtectConnect argues the above dates should be modified because it has filed a petition with the United States Patent and Trademark Office ("USPTO") requesting a certificate of correction for the '838 Patent, which has been granted, but ProtectConnect expects "it will take a number of additional weeks before the certificate of correction is published and becomes an official part of the '838 Patent." [Doc. No. 104, p.3.] Through the certificate of correction, ProtectConnect seeks to add a "grandparent application" that was inadvertently omitted from the "patent's chain of priority." [Id. at p.2.] Defendants assert ProtectConnect's failure to include that priority claim is fatal to the validity of the '838 Patent. [Doc. No. 105, p.4.] Thus, Defendants contend ProtectConnect's motion for leave to file a FAC which adds the '838 Patent is without merit, and "it is a waste of resources to delay the present case on the mere chance that the '838 patent may be added." [Id. at p.1; see also Doc. No. 106, p.2.]
Defendants have also filed a request for reexamination of the '838 Patent "detailing the reasons why the claims of the '838 patent that ProtectConnect intends to assert are invalid over certain prior art references." [Doc. No. 105, p.1; see also Doc. No. 106, p.2-3.] Defendants further assert ProtectConnect's request to modify the Scheduling Order should be denied because it was not diligent in seeking the certificate of correction nor submitting its motion for leave to file a FAC. [Doc. Nos. 105.] Moreover, the parties have already exchanged their infringement and invalidity contentions in accordance with the Patent Local Rules. [Id. at p.5.] According to Defendants, the desired continuance is unwarranted and considerations of judicial economy weigh in favor of allowing the case to proceed to claim construction as originally scheduled.
Under Rule 16(b)(4), a scheduling order "may be modified only for good cause with the judge's consent." To establish good cause, the moving party must demonstrate it acted diligently in managing the case and seeking the desired amendment. Masterpiece Leaded Windows Corp. v. Joslin, 2009 U.S. Dist. LEXIS 43586 *6-7 (S.D. Cal.) (citing Johnson v. Mammoth Recreations, 975 F.2d 604 (9th Cir. 1992)). "Although the existence or degree of prejudice to the party opposing the modification might supply additional reasons to deny a motion, the focus of the inquiry is upon the moving party's reasons for seeking modification." Id. at *6.
Here, ProtectConnect preemptively seeks to extend certain claim construction deadlines by approximately 90 days. All parties have an interest in the efficient and timely resolution of the pending action. However, the parties and the Court alike also have an interest in avoiding duplicative motion practice and claim construction proceedings.
ProtectConnect diligently submitted its motion for leave to file a FAC on September 13, 2010 as permitted by the Scheduling Order. The parties agree the proposed FAC attempts to add a new patent-the '838 Patent-to this action. The '838 Patent currently is under review by the USPTO not only to determine whether a certificate of correction should issue to allow ProtectConnect to add an inadvertently omitted grandparent application from the patent's chain of priority, but also for reexamination initiated by Defendants. On October 25, 2010, the parties agreed to postpone the hearing on ProtectConnect's motion for leave to amend for approximately 90 days, until February 7, 2011, by which time the USPTO is expected to complete its review.*fn1
Defendants, however, declined ProtectConnect's request to also continue the related claim construction dates in the Scheduling Order, as they are understandably "eager to reach the merits of this case." [Doc. No. 105, p.5; see also Doc. No. 106, p.3-4.]
Defendants urge the Court to deny ProtectConnect's ex parte application because ProtectConnect was not diligent in seeking the certificate of correction from the USPTO, and the '838 Patent is unlikely to become a part of this action. However, whether ProtectConnect will ultimately be allowed to amend its complaint to add the '838 Patent is not currently before the Court. By agreement, the parties agreed to postpone the Court's decision on this issue until early February 2011. Nevertheless, given the possibility that a new patent, which is potentially similar to the existing patents at issue, might be added to this action in February, the Court is hesitant to proceed through the claim construction process until the scope of the action has been definitively decided.
Postponement of the claim construction deadlines is further warranted in light of the fact that Defendants filed a request for reexamination of the '838 Patent. If the USPTO invalidates the '838 Patent, ProtectConnect's motion for leave to filed a FAC will likely be moot. Conversely, if the USPTO affirms its issuance of the '838 Patent, and/or issues ProtectConnect its requested certificate of correction, this additional patent could potentially be included in the instant action. Regardless of the outcome, however, the USPTO is poised to take action that has the potential to affect the scope of this action. The Court is therefore disinclined to begin the time-intensive claim construction process until it issues an order on ProtectConnect's motion for leave to amend, and the fate of the '838 Patent is decided. The Court recognizes the case may be delayed "for naught" if the '838 Patent is ultimately excluded from this action. However, given the relative brevity of the requested continuance, ProtectConnect's compliance with the existing Scheduling Order, and the judicial resources that risk being wasted through duplicative claim construction proceedings, the Court finds good cause exists to amend the Scheduling Order deadlines as follows:
EventExisting DeadlineNew Deadline
Preliminary Invalidity ContentionsOctober 26, 2010February 18, 2011*fn2
Exchange of Proposed Claim Constructions and EvidenceNovember 9, 2010March 4, 2011
Exchange of Responsive Claim Constructions and Extrinsic EvidenceNovember 23, 2010March 18, 2011
Joint Claim Construction Chart, Worksheet and Hearing StatementDecember 7, 2010April 1, 2011
Completion of Claim Construction DiscoveryJanuary 4, 2011April 29, 2011
Opening Claim Construction BriefsJanuary 18, 2011May 13, 2011
Responsive Claim Construction BriefsFebruary 1, 2011May 27, 2011
Claim Construction HearingFebruary 28, 2011July 11, 2011
For the reasons set forth above, the Court GRANTS ProtectConnect's ex parte application to amend the above deadlines in the Court's Scheduling Order issued August 18, 2010. All terms, conditions and dates in the Scheduling Order not specifically modified above shall remain in full force and effect.
IT IS SO ORDERED.