District Court Denies Request to Change Expert Date Based on Change in Defense Counsel

February 21, 2017

Plaintiff Genes Industry, Inc. ("Genes") filed a patent infringement action against Defendant Custom Blinds and Components, Inc. ("Custom"). The patent discloses a winding wheel for use on window coverings. Custom filed a motion to continue its expert report deadlines from November 28, 2016 to February 10, 2017, and to continue the expert discovery cut-off date from December 16, 2016 to May 17, 2017.

In reviewing the request, the district court noted that "Defendant retained a new counsel way back in early November and the Court ordered the attorney substitution on November 17, 2016. This was 11 days before Defendant's expert reports were due. Defendant's counsel states that it took significant time to review the case after receiving the file on November 19, 2016. For some reason, Defendant's counsel waited until just two days before Defendant's expert reports were due before attempting to enter a stipulation with Plaintiff's counsel to extend expert report deadlines. Plaintiff's counsel declined this attempt because the Court's previous order granting an extension of expert report deadlines had stated in capital letters that 'no further continuances [would] be granted without a further very strong showing of good cause.'"

In opposing the motion, Genes asserted that it should be denied because Custom could not establish good cause for the delay. Genes contended that Custom deliberately delayed in meeting its expert disclosure deadline to save expenses hoping the case would settle, stating that the delay in serving expert reports was deliberate because (1) Defendant waited until two days before its expert report deadline to confer about a stipulation to extend the deadline, (2) Defendant hadn't previously done any expert discovery, (3) Defendant waited until after the December mediation, when the case didn't settle, before raising this issue with the Court, and (4) Defendant didn't tell Plaintiff that it had even retained an expert.

According to the district court, Custom's main response "to all of this is that its new counsel, after reviewing the case, has decided 'having an expert witness is crucial to the success of this case.'"

The district court was not impressed, explaining that the "Court has already continued the expert discovery deadlines twice in this case and the only reason Defendant's counsel asks for yet another continuance is that Defendant's counsel is new to the case. But Plaintiff shouldn't bear the consequence of decisions made by Defendant's previous counsel to delay retention of an expert. The delay in retaining an expert may have been a purposeful choice that's often indicative of a weak case. Defendant has not shown sufficient good cause for the Court to modify the scheduling order and grant a third continuance of expert discovery deadlines."

Accordingly, the district court denied the motion to extend the expert report deadline based on new counsel.

Genes Industry, Inc. v. Custom Blinds and Components, Inc., Case No. SACV 1500476 AG (Ex)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.