The opinion of the court was delivered by: The Honorable David O. Carter, Judge
PRESENT: THE HONORABLE DAVID O. CARTER, JUDGE
Julie Barrera N/A Courtroom Clerk Court Reporter
ATTORNEYS PRESENT FOR PLAINTIFF: ATTORNEYS PRESENT FOR DEFENDANT:
None Present None Present
PROCEEDINGS: (IN CHAMBERS): ORDER GRANTING MOTION TO
Before the Court is a Motion to Preclude Etagz from Amending its Infringement Contentions to Add Claims That Were Originally in the Asserted Patent filed by Defendant Quiksilver, Inc. (the "Motion"). The Court finds this matter appropriate for decision without oral argument. Fed R. Civ. P. 78; Local R. 7-15. After considering the moving, opposing, and replying papers, the Court GRANTS the Motion.
Plaintiff and Counter-Claim Defendant Etagz, Inc. ("Plaintiff") filed suit against Defendant and Counter-Claimant Quiksilver, Inc. ("Defendant") asserting willful infringement of Plaintiff's United States Patent No. 6,298,332 ("332 Patent"), entitled "CD-Rom Product Label Apparatus and Method." According to the patent registration, the "primary object" of the 332 Patent is to "provide a compact disc product label providing a link back from the purchaser to the vendor." See Docket 56, Order Granting Motion to Lift Stay. Plaintiff alleged that Defendant violated the 332 Patent when it sold boardshorts that included, as a free giveaway, a surf DVD attached to the shorts. Id. Defendant stopped selling the allegedly infringing boardshorts in 2010 and represents that it has no plans to sell the boardshorts in the future. See Milstein Decl., ¶ 2.
In a May 2010 response to Defendant's interrogatory, Plaintiff alleged that Defendant only infringed Claim 16 of Patent 332. Motion, Exh. E. The fact discovery cut-off in the Scheduling Order was December 17, 2010. On November 22, 2010, a few weeks before the fact discovery cut-off, this Court granted Defendant's Motion to Stay the Case pending the outcome of the PTO's reexamination of the 332 Patent. See Docket 56. Plaintiff did not update its discovery responses at any point to allege the infringement of any other claims in the 332 Patent.
During the PTO reexamination, Claim 16, as well as Claim 11, were rejected and Plaintiff has agreed never to assert those claims against Defendant. See Docket 63, Rule 26(f) Report ("Rule 26(f) Report"), 2. On February 21, 2012, the stay was lifted and the case was returned to active status.
Plaintiff now asserts infringement of Claims 1-10 and 26-28, which have always been in the 332 Patent, but were not originally asserted by Plaintiff, as well as Claims 29, 31, 37, and 47, which are new claims added to the 332 Patent during reexamination. Motion, Exh. J. Defendant now ...