United States District Court, D. New Jersey
JOSE L. PISANO, District Judge.
Presently before the Court is a motion by Actavis Elizabeth LLC and Actavis LLC ("Defendants") to amend their invalidity contentions with respect to U.S. Patent No. 6, 635, 280 (the "280 patent"). Specifically, Defendants seek to supplement their Invalidity Contentions with respect to their allegations that the asserted claims in the 280 patent are invalid as indefinite. The Court held oral argument on the motion on May 5, 2014. For the reasons below, Defendants' motion is denied.
In their Invalidity Contentions to the 280 patent dated August 24, 2012, Defendants state that the asserted claims of the 280 patent are invalid as indefinite "because the claim limitation is of a size exceeding the pyloric diameter in the fed mode' is indefinite." Murata Decl. Ex. 4 at 169. The contention continues to generally state that
[t]he term is not one that is readily understood as having a defined meaning by one of ordinary skill in the art. The 280 patent also does not sufficiently explain how one of ordinary skill in the art is to determine whether a particular dosage form satisfies the claim limitation.
On April 11, 2014, the last day of expert discovery, Defendants deposed Plaintiff's expert, Dr. Gary Annunziata. As characterized by Defendants, Dr. Annunziata testified that he could not identify what specific dimensions would be "a size exceeding the pyloric diameter in the fed mode" as required by the 280 patent claims. See Def. Br. 4-5.
On April 14, 2014, during a conference call with the Magistrate Judge, Defendants informed Plaintiff and the Court that it would like to move to supplement their invalidity contentions to include the information obtained from Dr. Annunziata's deposition in support of its contention that the 280 patent is invalid as indefinite. On April 15, 2014, Defendants served their Supplemental Invalidity Contentions on Plaintiff and asked whether Plaintiff intended to object to a motion to amend the contentions. On April 17, 2014, Plaintiff advised that it intended to object. This motion followed. See D.I. 288 (filed April 22, 2014).
Trial of this matter is scheduled to begin on May 12, 2012.
This district's Local Patent Rules permit contentions to be amended "by order of the Court upon a timely application and showing of good cause." Local Patent Rule 3.7. Pursuant to Rule 3.7, a court may permit a party to amend its invalidity contentions provided the following three elements are established: (1) the moving party makes a timely application to the court; (2) there is good cause for the amendment; and (3) there is no undue prejudice to the adverse party. Jazz Pharmaceuticals, Inc. v. Roxane Laboratories, Inc., No. 10-6108, 2012 WL 3133943 at *2 (D.N.J. July 30, 2012). The rule provides a "non-exhaustive" list of examples of circumstances that may support a finding of good cause including:
(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; (c) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contention; (d) disclosure of an infringement contention by a Hatch-Waxman Act party asserting infringement under L. Pat. R. 3.6(g) that requires response by the adverse party because it was not previously presented or reasonably anticipated; and (e) consent by the parties in interest to the amendment and a showing that it will not lead to an enlargement of time or impact other scheduled deadlines.
Local Patent Rule 3.7. In addition, "courts have also considered other factors in determining whether good cause exists: (1) the reason for the delay, including whether it was within the reasonable control of the party responsible for it; (2) the importance of what is to be excluded;
(3) the danger of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay on judicial proceedings." LMT Mercer Group, Inc. v. Maine Ornamental, ...