United States District Court, N.D. California
ORDER RE: MOTIONS FOR LEAVE TO AMEND, RE: DKT. NOS.
184, 188, 201
ILLSTON United States District Judge.
the Court are three motions: (i) AMD's motion for leave
to file an amended complaint and infringement contentions to
add claims for induced and contributory infringement, Dkt.
No. 184; (ii) LG's motion for leave to amend its
invalidity contentions, Dkt. No. 188; and (iii) AMD's
motion for leave to file a sur-reply, Dkt. No. 201. Pursuant
to Civil Local Rule 7-1(b), the Court finds that this matter
is appropriate for resolution without oral argument. After
careful consideration of papers submitted, the Court hereby
DENIES AMD's motion for leave to amend, GRANTS IN PART
and DENIES IN PART LG's motion for leave to amend, and
DENIES AS MOOT AMD's motion for leave to file a
Advanced Micro Devices, Inc. and subsidiary ATI Technologies
ULC (collectively, “AMD”) filed this patent
infringement suit on March 5, 2014. In the complaint, AMD
accused defendants LG Electronics, Inc., LG Electronics
U.S.A., Inc., and LG Electronics Mobilecomm U.S.A., Inc.
(collectively, “LG”) of infringing nine AMD
patents. Compl. (Dkt. No. 1). LG brought several
counterclaims, asserting, among other things, that AMD
infringes four LG patents, none of which is relevant to these
August 1, 2014, AMD served LG with its Patent Local Rule 3-1
asserted claims and infringement contentions. LG served AMD
with its Patent Local Rule 3-3 invalidity contentions on
October 1, 2014. From February 2015 to August 2016, the Court
stayed this litigation while several of the patents-in-suit
underwent inter partes review (“IPR”).
See Dkt. Nos. 99, 112. About four months after the
Court lifted the stay, AMD sought leave to amend its
infringement contentions to accuse hundreds of additional LG
products, most of them released during the stay. See
Dkt. No. 128. The Court granted AMD's motion, which
expanded the number of unique accused LG products in this
case to over 800 (represented by 73 exemplar claim charts).
Dkt. No. 160.
April 18, 2017, the Court issued a Markman order
construing approximately twenty terms across the various
patents asserted by both parties. Dkt. No. 176. The Court has
not yet set deadlines for close of discovery or a trial date
in this matter. At a recent case management conference, the
Court ordered the parties to meet and confer to divide up
this case, if necessary, for trial.
parties now seek to amend portions of their respective Patent
Local Rule contentions. Consistent with AMD's proposed
amended infringement contentions, AMD also seeks to amend its
complaint to include claims for induced and contributory
infringement. LG requests leave to amend its invalidity
contentions to include additional prior art.
Amendments to Patent Local Rule Contentions
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). 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.” LG Elecs. Inc. v. Q-Lity Computer
Inc., 211 F.R.D. 360, 367 (N.D. Cal. 2002) (citation
Local Rule 3-6 provides,
Amendment of the Infringement Contentions or the Invalidity
Contentions may be made only by order of the Court upon a
timely showing of good cause. 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 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 of the Infringement
N.D. Cal. Patent L.R. 3-6.
moving party has the burden of demonstrating good
cause.” Karl Storz Endoscopy-Am. v. Stryker
Corp., No. 14-0876-RS (JSC), 2016 U.S. Dist. LEXIS
176876, at *7 (N.D. Cal. Dec. 21, 2016). Good cause exists
where the moving party has acted diligently and the opposing
party will not be prejudiced. Id. The moving party
bears the burden of first establishing diligence. O2
Micro, 467 F.3d at 1355; Radware Ltd. v. F5
Networks, Inc., No. 13-02021-RMW, 2014 WL 3728482, at *1
(N.D. Cal. July 28, 2014) (“The burden is on the movant
to establish diligence rather than on the opposing party to
establish lack of diligence.”). Diligence consists of
two steps: “(1) diligence in discovering the basis for
amendment; and (2) diligence in seeking amendment once the
basis for amendment has been discovered.”
Monolithic Power Sys., Inc. v. Silergy Corp., No.
14-1745-VC (KAW), 2015 WL 5440674, at *2 (N.D. Cal. Sept. 15,
2015). “In considering the party's diligence, the
critical question is whether the party could have discovered
the new information earlier had it acted with the requisite
diligence.” Radware, 2014 WL 3728482, at *1.
When the moving party is unable to show diligence, there is
“no need to consider the question of prejudice.”
O2 Micro, 467 F.3d at 1368.
the court finds that the moving party has acted with
diligence, it must then determine whether the nonmoving party
would suffer prejudice if the motion to amend were
granted.” Apple Inc. v. Samsung Elecs. Co.
Ltd, No. 12-0630-LHK (PSG), 2013 WL 3246094, at *1 (N.D.
Cal. June 26, 2013) (internal quotation marks omitted).
“Prejudice is typically found when amending contentions
stand[s] to disrupt the case schedule or other court
orders.” Karl Storz Endoscopy-Am., 2016 U.S.
Dist. LEXIS 176876, at *8. In any case, “[c]ourts have
allowed amendments when the movant made an honest mistake,
the request to amend did not appear to be motivated by
gamesmanship, or where there was still ample time left in
discovery.” Id. (citation and internal
quotation marks omitted).