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Genentech, Inc v. Pennsylvania

September 16, 2011


The opinion of the court was delivered by: Lucy H. Koh United States District Judge


On August 10, 2011, Plaintiff, Genentech, Inc. ("Genentech") moved for relief from an order by Magistrate Judge Grewal denying Plaintiff's Motion to Amend Invalidity Contentions.

See Mot. for Relief from Magistrate's Order, ECF No. 293; Order Granting-in-part and Denying-21 in-part Genentech's Mot. to Amend Invalidity Contentions ("July 27 Order"), July 27, 2011, ECF 22

No. 285. Genentech sought leave from Magistrate Judge Grewal to amend two of its invalidity 23 contentions related to its existing written description and non-enablement defenses. Genentech 24 sought to amend its contentions to include two alleged frauds on the United States Patent and 25

Trademark Office regarding the efficacy of U.S. Patent No. 6,733,752 (the '752 Patent). The Court 26 set forth a detailed description of Genentech's allegations in its Order Granting Leave to Amend 27

Complaint and will not do so here. See ECF No. 238. Magistrate Judge Grewal denied Genentech's motion to amend its invalidity contentions because he found that Genentech knew about the facts supporting the theory of invalidity at least four months prior to seeking leave to amend. Therefore, Judge Grewal concluded, Genentech was not diligent in seeking leave to 2 amend, and could not establish good cause as is required pursuant to Local Patent Rule 3-6. See 3

July 27 Order, ECF No. 285. 4

5 judge's non-dispositive pretrial order only if it is "clearly erroneous or contrary to law." Fed. R. 6 Civ. P. 72(a). Genentech has conceded that the facts are not in dispute and that the Magistrate 7 Judge's ruling was not "clearly erroneous." See Mot. for Relief from Magistrate's Order at 1, ECF 8 No. 293. Instead, Genentech argues that the following ruling by Judge Grewal is contrary to law: 9 Pursuant to Federal Rule of Civil Procedure 72, a district judge may set aside a magistrate "No exception [to the diligence requirement] is provided simply because a further amendment 10 might be justified after a claim construction is issued. Genentech's failure to seek leave to amend 11 its invalidity contentions at or around the time it moved to add its inequitable conduct allegations falls short of this standard." See July 27 Order at 3, ECF No. 285. 13 4 the Court upon a timely showing of good cause." Pat. L.R. 3-6. The Federal Circuit has 15 interpreted the "good cause" requirement of the local patent rules as requiring "a showing that the 16 party seeking leave to amend acted with diligence in promptly moving to amend when new 17 evidence is revealed in discovery." O2 Micro Int'l Ltd v. Monolithic Power Systems, Inc., 467 F.3d 18

1355, 1363 & 1366 (Fed. Cir. 2006). Only if the moving party is able to show diligence may the 19 court consider the prejudice to the non-moving party. See CBS Interactive, Inc., 257 F.R.D. at 201; 20 see also Acer, Inc. v. Technology Properties Ltd., 2010 WL 3618687, *3 (N.D. Cal. Sept. 10, 2010) 21

("[The moving party] must demonstrate good cause, an inquiry that considers first whether the 22 moving party was diligent in amending its contentions and then whether the non-moving party 23 would suffer prejudice if the motion to amend were granted. . . . If [the moving party] was not 24 diligent, the inquiry should end."). 25

26 to law. Genentech admittedly had the relevant evidence in its possession when it sought leave to 27 file an amended complaint, but waited four months after that to file its motion to amend its 28 invalidity contentions. Genentech's only justification for its delay is that Genentech anticipated it

Patent Local Rule 3-6 allows the parties to amend invalidity contentions "only by order of

Given the facts in this case, the Court does not find that Judge Grewal's order was contrary would have to amend its invalidity contentions after the Court's claim construction order, and thus 2 waited until after the Court issued its order to amend all at once. Genentech concedes, however, 3 that the proposed invalidity contentions at stake here were not necessitated by or affected by the 4

Court's claim construction order. Thus, the relevant case law does not compel a contrary result 5 than the one reached by Judge Grewal. Because the Court ...

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