United States District Court, N.D. California
ORDER RE: JOINT DISCOVERY LETTER [DOCKET NO. 190]
DONNA M. RYU, Magistrate Judge.
Before the court is a joint discovery letter submitted by Plaintiff Synopsys Inc. and Defendant Mentor Graphics Corp, in which Mentor seeks leave to amend its invalidity contentions based on the recent Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., ___ U.S. ___, 134 S.Ct. 2120 (2014). [Docket No. 190.]
The court held a hearing on August 28, 2014. After the hearing, the parties submitted supplemental briefing. [Docket Nos. 252, 253.] For the reasons stated below and at the hearing, Mentor's request for leave to amend its invalidity contentions is denied.
The factual allegations of the complaint and the background of this patent case have been described elsewhere. See Docket Nos. 114, 138, 154. Mentor served its original invalidity contentions on June 6, 2013. [Docket No. 114 at 2.] Mentor now seeks leave to add to its invalidity contentions indefiniteness arguments against Claim 1 of the 841 patent and Claims 1-2 and 8-9 of the 488 patent (collectively, the "Claims at issue"). Mentor's original invalidity contentions did not include indefiniteness arguments against these claims, but Mentor contends that there is good cause to permit amendment because these arguments were previously unavailable but are now viable after the Supreme Court's June 2, 2014 decision in Nautilus.
A. Legal Standards
1. Section 112 ¶ 2
In order to be valid, a patent claim must "particularly point [ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 ¶ 2 (2006). "For a claim to comply with section 112, paragraph 2, it must satisfy two requirements: first, it must set forth what the applicant regards as his invention, ' and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently definite.'" Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000). The purpose of the so-called definiteness requirement is "to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). A lack of definiteness renders invalid the patent or any claim in suit. 35 U.S.C. § 282(2)(3).
2. Amendment to Invalidity Contentions
The local rules of the Northern District of California require parties to define their theories of patent infringement and invalidity early on in the course of litigation. O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006); Patent L.R. 3-3 (Invalidity Contentions). The local rules require "each party opposing a claim of patent infringement... [to] serve on all parties its "Invalidity Contentions, " which shall contain... [any grounds of invalidity based on] indefiniteness under 35 U.S.C. § 112(2)...." Patent L.R. 3-3.
"In contrast to the more 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." Positive Techs., Inc. v. Sony Elecs., Inc., No. C. 11-2226-SI, 2013 WL 322556 at *2 (N.D. Cal. Jan. 28, 2013) (quotation and citation omitted). Thus this district's Patent Local Rules permit parties to amend their infringement and invalidity contentions "only by order of the Court upon a timely showing of good cause." See Patent L.R. 3-6. "By requiring the non-moving party to show good cause, Local Rule 3-6 serves to balance the parties' rights to develop new information in discovery along with the need for certainty in legal theories at the start of the case." Open DNS, Inc. v. Select Notifications Media, LLC, No. C-11-5101 EJD (HRL), 2013 WL 2422623 at *2 (N.D. Cal. June 3, 2013) (citing O2 Micro, 467 F.3d at 1366).
In determining good cause, the court considers a party's diligence in moving to amend when new information is discovered. See O2 Micro, 467 F.3d at 1366; Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2014 WL 491745 at *4 (N.D. Cal. Feb. 5, 2014) (citation omitted). "The good cause requirement does not require perfect diligence. Although hindsight is often 20/20, ' identifying and evaluating prior art can be difficult, and new information learned in discovery can lead a party to understandably reevaluate evidence found earlier." Id. at *4. Indeed, the Patent Local Rules specifically acknowledge the possibility that a party may need to supplement invalidity contentions with information found during discovery. See 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 [a]ccused [i]nstrumentality which was not discovered, despite diligent efforts, before the service of the [i]nfringement [c]ontentions.").
The moving party bears the burden of establishing diligence. See O2 Micro, 467 F.3d at 1366. Where the moving party is unable to show diligence, there is "no need to consider the question of prejudice, " see id. at 1368, although a court in its discretion may elect to do so, see, e.g., Dynetix Design Solutions Inc. v. ...