United States District Court, N.D. California, San Jose Division
ORDER GRANTING-IN-PART MOTION FOR LEAVE TO AMEND INFRINGEMENT CONTENTIONS
(Re: Docket No. 68)
PAUL S. GREWAL, Magistrate Judge.
A little over a year ago, Plaintiff Finjan Inc. brought this suit against Defendant Blue Coat Systems, Inc. for infringement of six of its patents. In its initial infringement contentions, Finjan accused ten specific Blue Coat products and services but did not accuse all ten of infringing all six patents. Instead, certain products and services were accused of infringing certain patents, but not others. With the benefit of various Blue Coat documents revealed during discovery, Finjan now seeks leave to amend its contentions to accuse more of the Blue Coat products and services of infringing more of the patents. Because most of the "new" information in the documents relied on by Finjan is, in fact, not so new, the court grants leave to amend to Finjan, but only in part, as set out below.
Patent cases are hard enough-and expensive enough-when the issues in dispute are fixed. When issues shift, or worse, grow in number, a case can become unmanageable for all concerned. And so our court's local patent rules "require parties to crystallize their theories of the case early in litigation and to adhere to those theories once they have been disclosed." This crystallization takes the form of contentions about infringement, invalidity and the like.
A party may amend its contentions "only by order of the Court upon a timely showing of good cause." Good cause requires a showing both diligence and lack of prejudice to the other side. In measuring diligence, the relevant question is when the moving party could have learned an amendment was necessary, not when it did. If the moving party cannot establish its diligence, there is "no need to consider the question of prejudice."
Finjan is the assignee of United States Patent Nos. 6, 804, 780, 7, 058, 822, 7, 647, 633, 6, 154, 844, 6, 965, 968 and 7, 418, 731. Pursuant to Patent L.R. 3-1, Finjan served infringement contentions that accuse various Blue Coat products and services as follows:
Over the next several months, Blue Coat produced over 100, 000 pages of documents in response to Finjan's demands. These documents included functional specifications, feature design documents, research reports, functional and operational overviews, developer's guides, requirements documents and technical overviews. A substantial portion were marked with the highest confidentiality designation under the stipulated protective order. Blue Coat also made public a number of other documents describing how the accused products and services work.
Citing what it claims is new information in the disclosures, Finjan proposed that Blue Coat stipulate that Finjan may amend its contentions. Under its proposal, Finjan would amend as follows:
WebPulse Service additionally infringes claims 1-18 of the '780 Patent, claims 1-3 and 9-11 of the '822 Patent and claims 1-14 of the '633 Patent;
the Content Analysis System additionally infringes claims 1-18 of the '780 Patent and claims 1, 4, 5, 7, 11-14, 17, 18, 20 and 22 of the '731 Patent; and the Malware Analysis Appliance additional infringes claims 1-18 of the '780 Patent, claims 1, 3-8, 11, 12, 15-17, 19, 21-23 and 41-44 of the '844 Patent, claims 1, 6, 7, 9, 10, 13, 23, 26, 32 and 33 of the '968 Patent and claims 1, 4, 5, 7, 11-12, 14, 17, 18 and 20 of the '731 Patent.
Blue Coat responded that all of the information relied on by Finjan was available to Finjan long ago, and so no amendment at this stage was warranted.
Finjan then brought this motion for leave to amend. Finjan notes that it does not seek to add any new patents, products or theories to the case. Finjan also notes that it did not delay in bringing the motion and that with many months ...