On September 21, 2018, Chief Judge Lynn issued a decision (available here) in Commscope Technologies v. Dali Wireless that provides important guidance on amendment of patent infringement contentions. The decision ruled on Defendants’ motion to strike Plaintiff’s second and third amended infringement contentions.
On January 13, 2017, Plaintiff served its preliminary infringement contentions; on December 19, 2017, the Court issued its claim construction order; on January 18, 2018, Plaintiff served its second amended infringement contentions (within thirty days from the claim construction order) (the parties disputed whether these were timely); and on January 26, 2018, Plaintiff served its third amended infringement contentions (the parties agreed these were untimely). Defendant moved to strike the second and third amended infringement contentions, arguing that both were untimely and vague.
The Local Patent Rules generally allow amendment to infringement contentions to be made only with leave of court, and must be based on a showing of good cause and diligence. A narrow exception exists: “[i]f a party claiming patent infringement believes in good faith that the presiding judge’s claim construction ruling so requires, that party may serve final infringement contentions without leave of court that amend the party’s preliminary infringement contentions . . . within 30 days from the date the presiding judge’s claim construction ruling is filed.”
Chief Judge Lynn found that a proposed amendment to an infringement contention is made in good faith only if the movant can show that the claim construction adopted by the court was unexpected or unforeseeable. Under this standard, the adoption of an opposing party’s claim construction is not sufficient to support the movant’s claim that it was surprised by the court’s ruling. The Court wrote:
Here, [Plaintiff] does not contend that the claims construction adopted by the Court were unexpected. Therefore, [Plaintiff] does not satisfy the good faith requirement of Misc. Order No. 62 ¶ 3-6(a), and was required to seek leave to amend before serving the Second or Third Amended Infringement Contentions. [Plaintiff] did not seek leave to amend before filing the Second or Third Amendment Amended Infringement Contentions. Therefore, [Plaintiff]’s service of the Second and Third Amendment Amended Infringement Contentions did not comply with the Local Patent Rules, and was untimely.
The Court also found the second and third amended infringement contentions deficient for failure to give adequate notice:
The Court finds that the Second and Third Amended Infringement Contentions . . . do not sufficiently give notice of the theory of infringement put forward by [Plaintiff] regarding the ’521 patent. Misc. Order No. 62 ¶ 3-1(a)(3) requires [Plaintiff] to provide charts that identify specifically and in detail where each element of each claim is within the accused product. Here, the examples provided by [Defendant] sufficiently prove that [Plaintiff] did little more than copy-and-paste language from [Defendant]’s product literature and the Court’s claim constructions into the charts included in the Second and Third Amended Infringement Contentions. Although the use of language from product literature is permitted, this type of copy-and-paste procedure is insufficient to identify specifically and in detail where each element of each claim is within the accused product.
After consideration of the leave-to-amend factors, the Court allowed the Plaintiff leave to amend the infringement contentions.