Different claim construction does not warrant invalidity contention supplement

In Patent Harbor, LLC v. Audiovox Corp., et al. (March 30, 2012), Judge Love (Eastern District of Texas) granted-in-part and denied-in-part Defendants' motion to supplement their invalidity contentions as to three prior art references.  Defendants were permitted to supplement their invalidity contentions as to two prior art systems, but were denied their supplement request as to one prior art patent ("Mills patent"). Defendants' requested supplementation to add the Mills patent on two grounds related to a changed claim construction - "good faith" (P.R. 3-6(a)(2)) and for "good cause" (P.R. 3-6(b)).

In denying the requested supplement for the Mills prior art patent under the "good faith" standard of P.R. 3-6(a) on the basis of a changed construction, the Court explained:

[Patent Rule 3-6(a)] is intended to allow a party to respond to an unexpected claim construction by the court. This does not mean that after every claim construction order, new infringement [or invalidity] contentions may be filed. That would destroy the effectiveness of the local rules in balancing the discovery rights and responsibilities of the parties.

Nike, 479 F. Supp. 2d at 667. ... Thus, Defendants must show that the Court’s construction was so different from the parties’ proposed constructions that amending their ICs is necessary.

(Order at 5).  The Court reasoned that it essentially adopted plaintiff's proposed construction for the term "content video image", except for replacing the word "visual" with "virtual."  Because the claim construction for "content video image" was not so different from the plaintiff's proposed construction, the Court determined that the proposed amended invalidity contention was not warranted.

Next the Court turned to the standard "good cause" factors in evaluating the Mills patent:

1. the reason for the delay and whether the party has been diligent;
2. the importance of what the court is excluding and the availability of lesser sanctions;
3. the danger of unfair prejudice; and
4. the availability of a continuance and the potential impact of a delay on judicial proceedings.

(Order at 3) (relying on Cummins-Allison Corp. v. SBM Co., Ltd. (E.D. Tex. Mar. 19, 2009).

Under the "good cause" standard, the Court was unpersuaded that the "publicly available reference" could not have been located sooner.  Because defendants did not sufficiently explain why the Mills patent was not included in the preliminary invalidity contentions, the diligence factor weighed against Defendants proposed amendment.  The Court further determined that the other factors of importance and prejudice each weighed against the Defendants as well.

For the proposed prior art systems supplements, the Court permitted these proposed supplements, reasoning that

Defendants included some documents regarding these systems in their initial [invalidity contentions] ICs, thus providing Patent Harbor notice of the prior art systems.

(Order at 8).  Further, the Court was not persuaded with plaintiff's attempt to show prejudice based on the proposed supplements as to these prior art systems.

Takeaways - this decision seems to follow the normal pattern.  Unless there is a strong justification for not locating a prior art patent earlier, Courts seem reluctant to permit such a supplement, absent other nuances.  The delay period in locating the prior art and requesting supplementation is often the overriding consideration in assessing diligence.

For the prior art systems, supplementing the contentions to include additional information about these prior art systems seemed to turn on the fact that these weren't newly identified systems, but merely additional documentation about systems identified in the preliminary contentions.  This factored into the lack of prejudice to the plaintiff, and diligence was established because the additional information was uncovered during discovery.