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District Court Strikes Amended Infringement Contentions and Supplemental Expert Report That Were Served without Leave of Court

Wonderland Nurserygoods Co., Ltd.(“Wonderland”) filed a patent infringement action against Thorley Industries, LLC, d/b/a 4MOM (“Thorley”) for infringement of U.S. Patent No. 8,047,609 (the “‘609 Patent”) by the accused mamaRoo device. Pursuant to the Court’s Initial Patent Scheduling Order, Wonderland served its Disclosure of Asserted Claims and Infringement Contentions (“Infringement Contentions”) on Thorley on May 10, 2012, ,and Thorley served its Non-Infringement and Invalidity Contentions on Wonderland on May 24, 2012
The Court held a Markman Hearing on September 27, 2012. On January 11, 2013, after receiving the Revised (and corrected) Claim Construction Chart, the transcript of the Markman Hearing, and the Pre-Hearing and Post-Hearing Briefs, the Court issued a Memorandum Opinion and Claim Construction Order.

After the order was issued, the parties cross-moved for summary judgment and exchanged expert reports for a trial set to begin in late January 2014. On December 26, 2013, without seeking leave of the district court, Wonderland served on Thorley Amended Infringement Contentions, and a Supplemental Expert Report directed at whether the gearing and linkage within the accused mamaRoo device constitute part of the alleged second motion mechanism, a necessary limitation of the patent at issue. Thorley filed a Motion to Exclude Wonderland’s Amended Infringement Contentions and Supplemental Expert Report.

To begin its analysis, the district court noted that “Wonderland also could have sought leave to amend its Infringement Contentions for more than fifteen months, but it has not done so. Even after the parties met and conferred on September 25, 2012 regarding the disputed claim terms, (Docket Nos. 45, 46), the Court held its Markman Hearing on September 27, 2012, (Docket No. 47), and the Court issued its January 11, 2013 Memorandum Opinion on claim construction, (Docket Nos. 58), Wonderland did not seek leave to amend. Nor did it seek leave to amend after the Court’s December 19, 2013 Memorandum Opinion resolving the parties’ motions for summary judgment.”

The district court also fund that “[e]ven had Wonderland sought leave to amend its Infringement Contentions at this late date, the Court finds that allowing the Amended Infringement Contentions would be prejudicial to Thorley. Pursuant to Rule 16, “[a scheduling order] may be modified only for good cause and with the judge’s consent.” FED. R. CIV. P. 16(b)(4). Here, Wonderland presented alternative arguments that a gear and linkage could constitute part of the first motion mechanism throughout its briefing on summary judgment. (Docket Nos. 129 at 14; 140 at 15). However, Wonderland did not present the parallel argument that a gear and linkage could constitute part of the second motion mechanism, (Docket Nos. 129 at 14; 140 at 15), despite its new argument that the second motion mechanism included the coil spring,4 (Docket Nos. 96 at 12, 16, 17, 19; 129 at 9-10).”

As a result, the district court concluded that “Wonderland made a “tactical decision” not to assert alternate “infringement theories” based on the gear and linkage, and this “strategic mistake does not equate to a showing of good cause under Rule 16.”

Turning to the supplemental expert report, the district court also the late submission without leave of court to be improper for several reasons. “Here, Wonderland’s late submission of a new infringement theory via Mr. Drobinski’s December 26, 2013 Supplemental Expert Report was done without leave of the Court. (See Docket No. 177-2). As early as May 1, 2013, Wonderland knew that Thorley’s non-infringement defenses included that “the second motion mechanism of the mamaRoo also includes the motor, gearing, crank, and link.” (Docket No. 81 at 7). The deadline for expert discovery was also May 30, 2013, more than six months prior to the date of the Supplemental Expert Report. (Docket No. 61). Yet even after indicating that it could “seek[] leave to amend its contentions to show infringement based on the components identified by Thorley,” (Docket No. 81 at 7 n.3), Wonderland did not do so. Nor has it shown any good cause for its delay. To that end, the Court grants Thorley’s motion to exclude because Wonderland has neither sought nor received leave to serve amended infringement contentions or supplemental expert reports, or to reopen expert discovery that has been closed for more than six months.”

The district court also found that the late submission would prejudice Thorley given the close proximity to trial and that summary judgment motions had already been decided. “With regard to prejudice, Wonderland’s Supplemental Expert Report is prejudicial to Thorley because it was served on the eve of trial on December 26, 2013, only one day before the initial pretrial filings were due on December 27, 2013, (Docket No. 63), one month before jury selection on January 27, 2014, (id.), and more than six months after the close of expert discovery, (Docket No. 61). In this Court’s estimation, Wonderland is “seeking to amend its infringement contentions in order to make arguments that could have been made before the entry of summary judgment,” which the Federal Circuit has held to be “improper” in a case where the plaintiff attempted to amend infringement claims after the disposition of summary judgment motions.”

Accordingly, the district court granted the motion to exclude the amended infringement contentions and the supplemental expert report.

Wonderland Nurserygoods Co., Ltd. v. Thorley Industries, LLC, d/b/a 4MOM, Case No. 12-196 (W.D. Penn. Jan. 21, 2014)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or