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Zest IP Holdings, LLC v. Implant Direct MFG, LLC

United States District Court, S.D. California

January 31, 2014

IMPLANT DIRECT MFG, LLC et al., Defendants.


GONZALO P. CURIEL, District Judge.

Pending before the Court is Defendants Implant Direct Mfg. LLC, Implant Direct LLC, and Implant Direct International's (collectively, "Defendants") Motion for Partial Reconsideration or Alternatively, Renewed Motion to Amend Invalidity Contentions; and Further Motion to Amend Invalidity Contentions. (Dkt. No. 306.) Defendants seek reconsideration of the Court's October 16, 2013 Order granting in part and denying in part Defendants' Motion to Amend Invalidity Contentions (Dkt. No. 301, "October 16, 2013 Order"). The motion for partial reconsideration or renewed motion has been fully briefed. (Dkt. Nos. 314, 316.)

Pursuant to Civil Local Rule 7.1(d)(1), the Court finds the matter suitable for adjudication without oral argument. Having reviewed the parties' briefs and relevant legal authority, the Court hereby DENIES Defendants' motion for reconsideration and renewed motion to amend invalidity contentions and DENIES WITHOUT PREJUDICE Defendants' motion to further amend invalidity contentions.


As set forth in this Court's October 16, 2013 Order, this is a patent and trademark infringement action for dental attachment products. (See Dkt. No. 1.) In the First Amended Complaint, Plaintiffs Zest IP Holdings, LLC and Zest Anchors, LLC (collectively, "Plaintiffs") allege that the marketing and sale of the GoDirect and GPS products (the "Accused Products") by Defendants infringes Plaintiffs' patent and trademark rights. (Dkt. No. 13, "FAC, " at 12-13.) The patents at issue are U.S. Patent No. 6, 030, 219 ("the 219 Patent") and U.S. Patent No. 6, 299, 447 ("the 447 Patent"). (Id.) Plaintiffs also allege Defendants infringed Plaintiffs' registered marks "ZEST" and "LOCATOR" without Plaintiffs' authorization, resulting in trademark infringement. (Id. at 13.) Plaintiffs allege several additional federal and state law claims, including false designation of origin, false advertising, unfair business practices, and unfair competition. (Id. at 13-17.)

On April 1, 2011, Plaintiffs served Preliminary Infringement Contentions upon Defendants. (Dkt. No. 107-2.) On May 6, 2011, Defendants served Plaintiffs with Preliminary Invalidity Contentions. (Dkt. No. 230-3[1]; Dkt. No. 252-1 at 24.) Defendants' Preliminary Invalidity Contentions identify three items of prior art claimed to anticipate or render obvious the 447 Patent contested claims: U.S. Patent No. 6, 203, 325 ("the Honkura 325 Patent"); U.S. Patent No. 3, 656, 236; and European Patent Application No. EP 0 891 750 A1. (Dkt. No. 252-1 at 24-42.) Defendants' Preliminary Invalidity Contentions identified no items of prior art that anticipated or rendered obvious the 219 Patent asserted claims. (Id.)

On July 25, 2012, Plaintiffs filed a motion to amend their infringement contentions to add a revised version of the accused products, which included a new GPS male. (Dkt. No. 107.) On April 4, 2013, the Court granted Plaintiffs' motion to file amended infringement contentions to add the revised version of the accused products. (Dkt. No. 202.)

On May 17, 2013, Defendants notified the Court that it would seek leave to amend Defendants' invalidity contentions. (Dkt. No. 217, "Joint Status Report, " at 5.) On May 29, 2013, during a case management conference and hearing, Defendants indicated to Magistrate Judge Gallo intention to file amended invalidity contentions. (Dkt. No. 228.) During that hearing, Magistrate Judge Gallo agreed that Defendants could file a motion to amend invalidity contentions by June 21, 2013. (Id. at 56:20.) On June 21, 2013, Defendants filed a motion to amend or correct invalidity contentions pursuant to Patent Local Rule 3.6(b). (Dkt. No. 230.) The motion was fully briefed. (Dkt. Nos. 252, 297.)

On October 16, 2013, the Court granted in part and denied in part Defendants' motion to amend or correct Defendants' invalidity contentions. (Dkt. No. 301, "October 16, 2013 Order.") Specifically, the Court granted Defendants' motion to add one prior art reference[2] to Defendants' invalidity contentions and denied Defendants' motion as to the other twenty nine requested prior art references. (Id. at 11-20.)

By the present motion, Defendants move this Court to partially reconsider the October 16, 2013 Order, requesting leave to amend Defendants' invalidity contentions to add four of the twenty nine previously rejected art references. (Dkt. No. 308 at 1.) Defendants further move for leave to add eight additional prior art references that were not included in Defendants' prior motion to amend invalidity contentions. (Id.)

In support of the motion for reconsideration, Defendants have filed a proposed amended chart as Exhibit A to Defendants' Proposed Second Amended Invalidity Contentions, (Dkt. No. 306-13), providing much more detail than the proposed amended chart submitted as Exhibit A to Defendants' Proposed [initial] Amended Invalidity Contentions filed with their initial motion to amend invalidity contentions, (Dkt. No. 230-5). In addition, Defendants separately filed, and the Court has considered, the prosecution histories of the 219 and 447 patents. (Dkt. No. 322.) On January 15, 2014, Defendants filed an ex parte motion to strike Plaintiffs' opposition brief to the present motion for reconsideration, on the ground that Plaintiffs' counsel used 13.5-point font instead of the required 14-point font in violation of Civil Local Rule 5.1(a) and the Court's October 11, 2013 Order reminding the parties to heed Civil Local Rule 5.1(a), (Dkt. No. 294). Plaintiffs' counsel has submitted a declaration attesting to his use of 14-point font to write the brief in question. (Dkt. No. 347.) Defendants have responded, submitting six exhibits. (Dkt. No. 355.) The Court DENIES the motion to strike and reminds Defense counsel that signing and filing a motion with this Court certifies that the motion is not presented for any improper purpose. Fed.R.Civ.P. 11(b).


A. Motions for Reconsideration

A motion for reconsideration is "appropriate if the district court is provided with (1) newly discovered evidence; (2) clear error or manifest injustice, or (3) if there is an intervening change in controlling law." School Dist. No. 1J, Multnomah County, Or. v. AcandS, Inc. , 5 F.3d 1255, 1263 (9th Cir. 1993). Whether to grant or deny a motion for reconsideration is within the sound discretion of the district court. Navajo Nation v. Norris , 331 F.3d 1041, 1046 (9th Cir. 2003) (citing Kona Enters., Inc. v. Estate of Bishop , 229 F.3d 887, 883 (9th Cir. 2000)). Although the court may reconsider and amend a previous order under Federal Rules of Civil Procedure 59(e), "the rule offers an extraordinary remedy, to be used sparingly in the interests of finality and conservation of judicial resources.'" Kona Enters., Inc. v. Estate of Bishop , 229 F.3d 877, 890 (9th Cir. 2000) (quoting 12 James Wm. Moore et al., ...

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