United States District Court, N.D. California
DISCOVERY ORDER RE: DKT. NO. 224
MARIA-ELENA JAMES United States Magistrate Judge
Amgen, Inc. and Amgen Manufacturing, Ltd. (collectively,
“Amgen”) sue Defendants Sandoz Inc., Sandoz
International GmbH, and Sandoz GmbH (collectively,
“Sandoz”) for patent infringement. Pending before
the Court is the parties' joint discovery letter brief
regarding Amgen's amendment of its infringement
contentions with respect to Patent No. 6, 162, 472 (the
“'427 patent”). Jt. Ltr., Dkt. No. 224.
Having considered the parties' positions, the relevant
legal authority, and the record in this case, the Court
issues the following order.
'427 patent claims methods of using filgrastim in
combination with a chemotherapeutic agent in patients
undergoing stem cell transplantation. Jt. Ltr. at 1. On
October 15, 2015, and pursuant to Patent Local Rule 3-6,
Amgen served Sandoz with its first amended infringement
contentions. Amgen asserts that Sandoz's filgrastim
product infringes on claims of Amgen's '427 patent.
Id. On August 4, 2016, the presiding judge in this
matter, the Honorable Richard Seeborg, issued an Order
construing the claims of the '427 patent. Order
Construing Claims, Dkt. No. 205. On October 28, 2016, Judge
Seeborg issued a Case Management Order, setting the deadline
for fact discovery as May 10, 2017. Dkt. No. 220.
February 7, 2017, Amgen served Sandoz with its proposed
second amended infringement contentions with redlines showing
the anticipated changes. Jt. Ltr. at 1; see id., Ex.
1 (redlined version of proposed amendment). Sandoz opposes
the amendment, and the parties filed the instant letter on
April 12, 2017.
local patent rules in the Northern District of California . .
. require[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.” O2 Micro
Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1365-66 (Fed. Cir. 2006). To ensure this early
notification, Patent Local Rule 3-1 requires “a party
claiming patent infringement to serve on all parties a
'Disclosure of Asserted Claims and Infringement
Contentions'” no later than fourteen days after the
initial case management conference.
“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.” Slot Speaker Techs., Inc. v. Apple,
Inc., 2017 WL 1278744, at *2 (N.D. Cal. Apr. 6, 2017)
(internal quotation marks omitted). Nonetheless,
“'[a]lthough federal courts are generally lenient
in allowing parties to amend pleadings, such is not the case
with amending preliminary infringement
contentions.'” Karl Storz Endoscopy-Am., Inc.
v. Stryker Corp. (“Karl Storz
III”), 2016 WL 7386136, at *2 (N.D. Cal. Dec. 21,
2016) (quoting Berger v. Rossignol Ski Co., 2006 WL
1095914, at *2 (N.D. Cal. Apr. 25, 2006)).
may amend its infringement contentions “only by order
of the Court upon a timely showing of good cause.”
Patent L.R. 3-6. “Good cause under the local rules is
subject to a two-part inquiry, which considers whether: (i)
the moving party has shown diligence in amending its
contentions, and (ii) the non-moving party will not suffer
undue prejudice.” Collaborative Agreements, LLC v.
Adobe Sys. Inc., 2016 WL 1461487, at *4 (N.D. Cal. Apr.
14, 2016) (internal quotation marks, edits, and footnote
omitted). “Diligence is 'the critical issue' in
the good cause determination.” Karl Storz
Endoscopy-Am., Inc. v. Stryker Corp. (“Karl
Storz II”), 2016 WL 2855260, at *3 (N.D. Cal. May
13, 2016) (quoting Sunpower Corp. Sys. v. Sunlink
Corp., 2009 WL 1657987, at *1 (N.D. Cal. June 12,
2009)). Absent undue prejudice, circumstances that support a
finding of good cause may include, but are not limited to:
(a) A claim construction 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 service ...