United States District Court, N.D. California
ORDER GRANTING DEFENDANT'S MOTION FOR LEAVE TO AMEND ITS INVALIDITY CONTENTIONS
SUSAN ILLSTON, District Judge.
A motion by defendant Ariosa Diagnostics, Inc. ("Ariosa") for leave to amend its invalidity contentions is currently scheduled for hearing on April 25, 2014. Pursuant to Civil Local Rule 7-1(b), the Court determines that this matter is appropriate for resolution without oral argument and VACATES the hearing. For the reasons set forth below, the Court GRANTS Ariosa's motion for leave to amend its invalidity contentions.
This is a patent infringement action. Plaintiffs Verinata Health, Inc. and the Board of Trustees of the Leland Stanford Junior University (collectively "Verinata") accuse Ariosa's HarmonyTM Prenatal Test of infringing claims 1-7 and 9-12 of U.S. Patent No. 8, 296, 076 ("the '076 patent") and claims 1-16 and 18-30 of U.S. Patent No. 8, 318, 430 ("the '430 patent"). Docket No. 40, Third Amended Complaint; Docket No. 103-1, Gindler Decl. Ex. 3.
The present action was filed on October 25, 2012. Docket No. 1. On January 2, 2013, Verinata served its infringement contentions. Docket No. 117-1, Gindler Decl. Ex. 4. These contentions alleged only literal infringement and did not contain any allegations of infringement under the doctrine of equivalents. See id. On March 22, 2013, Ariosa served its invalidity contentions.
On February 12, 2014, Verinata filed an unopposed motion to amend its infringement contentions. Docket No. 112. In the motion, Verinata argued that good cause for amendment existed in light of newly discovered nonpublic information that was contained in Ariosa's January 6, 2014 supplemental interrogatory responses. Id. On February 25, 2014, the Court granted Verinata's motion to amend its infringement contentions. Docket No. 114. On March 10, 2014, Verinata served the amended infringement contentions, which contained three added allegations of infringement under the doctrine of equivalents. Docket No. 117-1, Gindler Decl. Exs. 5-7.
By the present motion, Ariosa moves for leave to amend its invalidity contentions to add new contentions related to the enablement and written description requirements in 35 U.S.C. § 112 in response to Verinata's new doctrine of equivalents infringement allegations. Docket No. 117.
Patent Local Rule 3-3 requires a party opposing a claim of patent infringement to serve on all parties its "Invalidity Contentions" within 45 days after being served with the patentee's "Disclosure of Asserted Claims and Infringement Contentions." Patent Local Rule 3-6 provides that amendment of the invalidity contentions "may be made only by order of the Court upon a timely showing of good cause." "The local patent rules in the Northern District of California... requir[e] both the plaintiff and the defendant in patent cases to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery. The rules thus seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories." O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006); see also Atmel Corp. v. Information Storage Devices, 1998 U.S. Dist. LEXIS 17564, at *7 (N.D. Cal. Nov. 4, 1998) ("Unlike the liberal policy for amending pleadings, the philosophy behind amending claim charts is decidedly conservative, and designed to prevent the shifting sands' approach to claim construction.").
To make a satisfactory showing of good cause, a party seeking to amend its invalidity contentions must show that it "acted with diligence in promptly moving to amend when new evidence is revealed in discovery." O2 Micro, 467 F.3d at 1363. "The party seeking to amend its contentions bears the burden of establishing diligence." CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009) (citing O2 Micro, 467 F.3d at 1366-67). If the moving party is able to establish diligence, the Court should then consider prejudice to the non-moving party in determining whether to grant leave to amend. See O2 Micro, 467 F.3d at 1368; CBS Interactive, 257 F.R.D. at 201.
Patent Local Rule 3-6 provides
Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include:
(a) A claim construction by the Court different from that proposed by the ...