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TFH Publications, Inc. v. Doskocil Manufacturing Co.

April 5, 2010


The opinion of the court was delivered by: Arpert, M.J.



This matter comes before the Court on a Motion by Plaintiff TFH Publications, Inc. ("Plaintiff" or "TFH") for Leave to Amend its Local Patent Rule 3.1 Infringement Contentions [dkt. entry no. 23]. Defendant Aspen Pet Products, Inc. ("Defendant" or "Aspen")*fn1 opposed the Motion and TFH filed a reply. The Court having reviewed the papers submitted and considered the matter pursuant to Federal Rule of Civil Procedure 78. For the reasons stated herein, Plaintiff's Motion is granted.


On September 26, 2008, TFH filed suit against Aspen, asserting infringement of its U.S. Patent No. 6,159,516 ("the '516 patent") entitled "Methods of Molding Edible Starch", based upon Aspen's continued marketing and production of the Booda(r) Bone product line. See generally TFH.'s Compl.

On October 22, 2009, the Court issued a Scheduling Order setting November 30, 2009 as the deadline for TFH to serve its Disclosure of Asserted Claims and Infringement Contentions pursuant to L. Pat. R. 3.1 and January 15, 2010 as the deadline for Aspen to serve its Invalidity Contentions pursuant to L. Pat. R. 3.3. On November 30, 2009, TFH served its Disclosure of Asserted Claims and Infringement Contentions. On January 11, 2010, the Court extended the deadline for Aspen to serve its Invalidity Contentions to February 4, 2010. On January 20, 2010, Aspen advised TFH that it would limit its Invalidity Contentions to certain claims and elements of claims of the '516 patent because TFH did not include certain claims of the '516 patent in its Rule 3.1 Disclosures. (Pl.'s Br. at 2-3.) On January 27, 2010, TFH provided Aspen with a proposed Amended Disclosure and explained that the fact that elements of some claims, as well as several dependent and certain independent claims were inadvertently omitted from its November 30, 2009 Infringement Contentions. Id. at 3. Aspen objected to TFH's attempted revision of its Infringement Contentions and on February 4, 2010 served its Rule 3.3 Invalidity Contentions, based on TFH's November 30, 2009 disclosure. As a result, on February 4, 2010 TFH filed the instant Motion to Amend its Infringement Contentions.

A. TFH's Arguments in Support of the Motion to Amend

TFH argues that it should be permitted to amend its Rule 3.1 Disclosure of Asserted Claims and Infringement Contentions because (1) the omission of certain claims from the initial Rule 3.1. Disclosure was through simple inadvertence and oversight; (2) an amendment will not create any delay since litigation is still at an early stage; and (3) the additional claims are either dependant claims based on those already disclosed or are sufficiently similar to those previously disclosed and, thus, Aspen will not be prejudiced. Id. at 1 and 4. TFH notes that it filed the instant Motion very early in the litigation and emphasizes that the Local Patent Rule Disclosures are in their infancy, the parties have not exchanged discovery demands and the Markman briefing is still months away. Id. at 5-6. Additionally, TFH argues that the prompt correction of its oversight will not create any procedural delay in this matter. Id. at 6. TFH asserts that the case law does not support Aspen's position that two months after service of initial contentions is an impermissible length of time to first raise the omission of some claims. (Pl.'s Reply at 6) (citing Gen. Atomics v. Axis-Shield ASA, 2006 WL 2329464, at *1 (N.D. Cal. Aug. 9, 2006)).

Next, TFH argues that its amendments to its Disclosures will not prejudice Aspen "because the amendments do not identify or allege infringement by any new apparatus or device of [D]efendant's; do not identify a different infringing product; and do not raise new infringement theories." (Pl.'s Br. at 6.) TFH also argues that it is disingenuous for Aspen to claim unfair surprise and prejudice when Aspen has denied infringing any claim of the '516 patent and gave "the impression that it had already begun an analysis of both invalidity and infringement." (Pl.'s Reply at 4.) TFH further argues that its "amendment merely clarifies the contentions already asserted, of which [D]efendant was fully aware." (Pl.'s Br. at 7.) For instance, TFH notes that while it has added claims 2 and 3 in its proposed amended disclosure, "[b]oth claims 2 and 3 are dependent claims in that they refer to and further limit claim 1." Id. TFH also notes that the only additions that claims 2 and 3 bring are two further limiting terms that will not materially change Aspen's responsibilities in defending this case. Id. TFH further notes that it identified both further limiting terms, "vented barrel injection molding machine" and "vented mold", among its list of proposed claim terms for the Court to construe. Therefore, the content of the parties' future Markman briefing will not be altered. Id. TFH also explains that the remaining "dozen or so new terms identified by [D]efendant are plain, unambiguous and self-defining, such as 'said water content', 'cooling', and 'molded starch/water product'" and as such "[t]here can be no legitimate dispute over the definition of terms like these." (Pl.'s Reply at 5.) TFH further explains that the parties' exchange of preliminary proposed constructions of claim terms on February 19, 2010, demonstrates that "the terms identified in the '516 patent, which are substantially similar to those [D]efendant cites as being newly added by TFH's proposed amendment, are largely self-defining, and have ample support in the language of the patent and specification." Id.

TFH contends that "the instrumentality of [D]efendant's infringement remains the same with respect to all of the additional claims in comparison to those previous[ly] disclosed." (Pl.'s Br. at 8.) Therefore, TFH argues, because "the essential infringing device has not been changed by TFH's amendments . . . Defendant cannot legitimately claim surprise or prejudice by the addition of the inadvertently omitted claims." Id. Ultimately, TFH contends that the nature of its infringement contentions are not materially or substantively changed by its amendments because "the added disclosures are either dependent on those already asserted, or sufficiently mimic those already disclosed, that [D]efendant's pending invalidity contentions will be essentially the same as they would be without TFH's revision of its Rule 3.1 disclosure." Id. at 9.

B. Aspen's Arguments Opposing the Motion to Amend

Aspen opposes TFH's Motion for Leave to Amend its Local Patent Rule 3.1 Infringement Contentions arguing that TFH's delay in amending its infringement contentions is undue and that Aspen will suffer significant prejudice if TFH's proposed amendments are allowed. Aspen asserts that "[i]f a party provides deficient or changing preliminary infringement contentions, the defendant 'is unable to crystallize its non-infringement and invalidity theories and the parties are hindered in identifying what claim terms need construction." (Aspen's Opp'n Br. at 8-9) (quoting Connectel, LLC v. Cisco Sys., Inc., 391 F.Supp.2d 526, 528 (E.D.Tex. 2005)). Therefore, Aspen maintains, "Rule 3.1. is designed to avoid 'vexatious shuffling of positions that could occur if parties are permitted to freely modify their infringement contentions at any point in the action.'" Id. at 9 (quoting Berger v. Rossignol Ski Co., Inc., 2006 WL 1095914, at *3 (N.D.Cal Apr. 25, 2006)).

Moreover, Aspen argues that it will be prejudiced if TFH is permitted to circumvent the Local Patent Rules by making a "mid-stream change of course on its Infringement Contentions . . . because allowing TFH to modify its Infringement Contentions months after providing them, would force Aspen Pet to undertake an incredible amount of additional expensive legal work redoing its Infringement Contentions, that would have been done much more efficiently the first time." Id. at 9. Specifically, Aspen notes that contrary to the position TFH takes in its Motion, it seeks to add eighteen additional asserted claims to its Infringement Contentions that increase the complexity of the case. Id. Further, Aspen notes that it has already spent a considerable amount of time and money preparing its R.3.3 Invalidity Contentions in reliance upon TFH's November 30, 2009 Infringement Contentions.*fn2 Id. at 10. In addition, Aspen points out that the schedule for claim construction will be delayed should the Court permit TFH to file its proposed Amended Disclosures that include eighteen additional claims of which at least thirteen are distinct claims. Id. at 10-11.

Further, Aspen argues that TFH fails to offer good cause to permit its proposed Amended Infringement Contentions; thus, the Court must deny the instant Motion regardless of whether Aspen would be prejudiced (which it contends it will be). Id. at 11. Aspen observes that the Federal Circuit distinguishes the standard to modify R. 3.1 contentions by holding that "unlike the 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." Id. at 12 (citing Genetech, Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed.Cir. 2002)). In this regard, Aspen argues that contrary to TFH's factually and legally baseless assertions, a "simple inadvertence and oversight" does not provide a basis for finding good cause to permit amendment to a plaintiff's ...

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