FREDA L. WOLFSON, District Judge.
Before the Court are several motions for partial summary judgment in this patent infringement case brought by Plaintiff LMT Mercer Group, Inc. ("LMT"). Defendants Home Tops, LLC ("Home Tops") and Maine Ornamental, LLC, Universal Consumer Products, Inc., and Universal Forest Products, Inc. (collectively "Maine") (collectively, "Defendants") have each filed a motion for partial summary judgment based on the statutory defense of intervening rights. Home Tops has also filed a motion for partial summary judgment arguing that LMT waived its infringement contentions with respect to a specific Home Tops' product. Lastly, LMT has filed a motion for leave to further supplement its infringement contentions. After reviewing the parties' briefing and the record in this patent case, for the following reasons, the Court GRANTS Home Tops and Maine's motions for partial summary judgment on the issue of intervening rights. The Court DENIES Home Tops' motion for summary judgment on the issue of waiver and GRANTS LMT's motion for leave to further supplement its infringement contentions.
The patent that is the subject of this litigation, U.S. Patent No. 6, 722, 637 (the "637 Patent"), was originally filed by Patentees Michael Burkhart and Jeffery Herion on October 10, 2001, and later was assigned first to Stallion Fence Accessories, Denver, Colorado, and presently to LMT. As explained in more detail in my concurrently filed Markman claim construction Opinion, the 637 Patent claims a fence post apparatus for synthetic fence posts, and more specifically, an apparatus to be attached to the top end of a synthetic fence post that may include a light emanating device (the "post cap"). During the Markman proceeding, the parties focused on 10 disputed claim terms or phrases requiring construction, including those relating the way the post cap attached to the fence post.
The patentees were awarded their patent on April, 20, 2004, with the patent now held by LMT. Claiming infringement upon the patent, LMT filed suit against Maine in September 2010, see Civ. No. 10-4615(FLW), Home Tops in December 2010, see Civ. No. 10-6699(FLW), and McFarland Holdings, LLC in January 2011 ("McFarland"). See Civ. No. 10-0539(FLW). Before any meaningful motion practice or discovery, Maine Ornamental initiated ex parte reexamination proceedings of the 637 Patent before the United States Patent and Trademark Office ("USPTO") on March 9, 2011. Pending reexamination, LMT's infringement suits were stayed as to each of the three Defendants. On August 28, 2012, the USPTO issued a reexamination certificate. Thereafter, on September 25, 2012, the stays were lifted, and on December 7, 2012, the three LMT actions against Maine, Home Tops, and McFarland were consolidated for pretrial purposes, including claim construction. On October 11, 2013, a Stipulation and Order of Dismissal with Prejudice was entered for LMT's claims against McFarland. See Civ. No. 11-0539(FLW), Dkt. No. 42. Maine and Home Tops filed Markman briefs, the Court held a Markman hearing on December 4, 2012, and on January 16, 2013, concurrent with the instant Opinion, the Court issued its decision construing the 10 disputed claim terms.
Around the time of the commencement of the Markman phase of the litigation, Maine and Home Tops filed motions for partial summary judgment on the issue of intervening rights on July 3, 2013 and July 23, 2013, respectively, and Home Tops filed a motion for partial summary judgment on the issue of waiver on June 17, 2013. LMT has filed briefs opposing each of these motions. Also, on July 22, 2013, LMT filed a motion for leave to further supplement its infringement contentions against Home Tops, which Home Tops has opposed. These and additional facts will be set forth in more detail as necessary.
II. STANDARD OF REVIEW
A moving party is entitled to judgment as a matter of law where there is no genuine issue as to any material fact. See Fed R. Civ. P. 56(c); Brooks v. Kyler , 204 F.3d 102, 105 n.5 (3d Cir. 2000) (citing Fed R. Civ. P. 56(c); Celotex Corp. v. Catrett , 477 U.S. 317, 323 (1986)); Orson, Inc. v. Miramax Film Corp. , 79 F.3d 1358, 1366 (3d Cir. 1996). The burden of demonstrating the absence of a genuine issue of material fact falls on the moving party. See Taylor v. Phoenixville Sch. Dist. , 184 F.3d 296, 305 (3d Cir. 1999). Once the moving party has satisfied this initial burden, the opposing party must identify "specific facts which demonstrate that there exists a genuine issue for trial." Orson , 79 F.3d at 1366.
Not every issue of fact will be sufficient to defeat a motion for summary judgment; issues of fact are genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248 (1986). Further, the nonmoving party cannot rest upon mere allegations; he must present actual evidence that creates a genuine issue of material fact. See Fed R. Civ. P. 56(e); Anderson , 477 U.S. at 249 (citing First Nat'l Bank v. Cities Serv. Co. , 391 U.S. 253, 290 (1968)). In conducting a review of the facts, the non-moving party is entitled to all reasonable inferences and the record is construed in the light most favorable to that party. See Pollock v. American Tel. & Tel. Long Lines , 794 F.2d 860, 864 (3d Cir. 1986). Accordingly, it is not the Court's role to make findings of fact, but to analyze the facts presented and determine if a reasonable jury could return a verdict for the nonmoving party. See Brooks , 204 F.3d at 105 n.5 (citing Anderson , 477 U.S. at 249); Big Apple BMW v. BMW of N. Am., Inc. , 974 F.2d 1358, 1363 (3d Cir. 1992).
A. Home Tops' Waiver Motion
Home Tops moves for partial summary judgment on the narrow issue of whether LMT has a viable claim of infringement against Home Tops' Solar Polaris Deck Light product (the "Polaris Light"). In support of its motion, Home Tops recites the following procedural history and facts attending the instant litigation, which are undisputed on this motion for summary judgment unless otherwise noted.
On December, 22, 2010, LMT filed its patent infringement complaint against Home Tops, specifically identifying the Polaris Light as one of the products accused of infringing the 637 Patent. See Complaint ¶ 10. As required by Local Patent Rule 3.1,  LMT then served its Disclosure of Asserted Claims and Infringement Contentions ("Original Disclosure") on Home Tops on December 14, 2012, which also included a claim chart that identified the Polaris Light as one of the Accused Instrumentalities of Defendant Home Tops for Claims 11, 12, 15, 16, 20, 21, and 23 of the 637 Patent. Subsequently, LMT served Home Tops with a Supplemental Disclosure of Asserted Claims and Infringement Contentions ("First Supplemental Disclosure") on January 29, 2013. See Dkt. No. 62-6. In the First Supplemental Disclosure, LMT stated that: "The Supplemental Infringement Contentions are herein supplemented at the request of Defendant, and hereby supersedes the Infringement Contentions." See id. The First Supplemental Disclosure identified almost all of the same products as the Original Disclosure, but did not identify the Polaris Light as one of Home Tops' Accused Instrumentalities.
At this point, the parties consented to and entered into court-ordered mediation. See Dkt. No. 51. According to the parties' briefing, during the mediation period, LMT sought to further amend its infringement contentions, and during discussions with Home Tops, it was made clear that Home Tops would not consent to any amendment that, inter alia , would again include the Polaris Light product. In any event, LMT subsequently moved on March 8, 2013 for leave to supplement its infringement contentions without including the Polar Light as one of the Accused Instrumentalities ("Second Supplemental Disclosure"). See Dkt. No 38. Home Tops did not oppose this motion, which was granted by the magistrate judge on August 2, 2013. See Dkt. No. 49.
According to LMT, around the time of the filing of the March 8, 2013 motion, but prior to the opening of the fact-discovery period, LMT was in the process of investigating whether another solar lamp post cap product, called Magena Star, which LMT understood to be similar or identical to the Polaris Light, was being manufactured by Home Tops and/or distributed for sale by a third party after being constructed from the Polaris Light. See Decl. of Christopher R. Kinkade, Esq., dated July 22, 2013 ("Kinkade Decl."), ¶¶ 3-10. After discussed with this Home Tops regarding the Magena Star product, and after receiving and reviewing the Magena Star product in mid-March 2013, LMT communicated to Home Tops its belief that the Magena Star product was infringing on the 637. Id. On March 21, 2013, Home Tops served its responsive invalidity and non-Infringement Contentions, without explicit reference to the Polaris Light or Magena Star. With the March 8 motion still pending, on June 17, 2013, Home ...