United States District Court, N.D. California
DR. JAMES M. SWANSON, Plaintiff,
ALZA CORPORATION, Defendant.
ORDER DENYING PLAINTIFF'S MOTION FOR LEAVE TO AMEND INVENTORSHIP AND INVALIDITY CONTENTIONS
PHYLLIS J. HAMILTON, District Judge.
The motion of plaintiff Dr. James M. Swanson for leave to amend his inventorship and invalidity contentions came on for hearing before this court on September 3, 2014. Dr. Swanson appeared by his counsel Robert Yorio and Michael Adelsheim, and defendant ALZA Corporation ("ALZA") appeared by its counsel George Pappas and Kurt Calia. Having read the parties' papers and carefully considered their arguments and the relevant legal authority, the court DENIES the motion as follows and for the reasons stated at the hearing.
In the April 25, 2014, Order Construing Claims, the court construed the term "[in a manner that achieves] a substantially ascending methylphenidate plasma drug concentration over a period of about [x] hours following said administration" as meaning "a profile in which the plasma concentration of methylphenidate generally rises over approximately [x] hours." See April 25, 2014, Order at 13-17, 29.
Dr. Swanson had proposed that the term be construed as "an effect time profile similar to three doses of immediate release methylphenidate given approximately every 4 hours for approximately 12 hours per day." ALZA had proposed that the term be construed as "a substantially ascending methylphenidate plasma drug concentration over a period of approximately [x] hours, but may include a slight dip."
The construction adopted by the court generally followed ALZA's proposed construction, except that it substituted "generally rises" in place of ALZA's proposed "substantially ascending" (which simply replicated the words of the claim term); and omitted the proposed limitation "may include a slight dip, " which ALZA argued it had inserted based on a portion of the specification. The court found "no support in the claim language for adding the limitation can include a slight dip, '" and furthermore, concluded that "substantially ascending" meant that the plasma drug concentration would "substantially" or "generally" or "approximately" rise, but might also briefly descend (though it would not necessarily do so). See April 25, 2014 Order at 13-15.
Now Dr. Swanson seeks leave to amend his inventorship contentions and his invalidity contentions. He argues that because the construction determined by the court was not advocated by either party, he should be permitted leave to amend. He contends that he was been diligent in seeking leave to amend because he had no reason to know of the need for amendment until April 25, 2014.
A. Legal Standard
The Patent Local Rules provide that a party may supplement or amend its invalidity or infringement contentions only by order of the court "upon a timely showing of good cause." Patent L.R. 3-6.
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 order by the Court different from that proposed by the party seeking amendment;
(b) Recent discovery of material, prior art despite earlier diligent search; and
(c) Recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the ...