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District Court Denies Motion to Amend Complaint to Add New Patents Even Though Patents Had Not Issued at Time of Original Filing and New Products Had Become Available on the Market

Plaintiff West View Research (“West View”) filed five separate patent infringement complaints on the same date against various automobile manufacturers. Each action asserted a combination of patents, all from the same patent family, for a total of eleven asserted patents. The district ourt consolidated the five for purposes of discovery and claim construction.

As part of the Case Management Order, the district court ordered West View to identify no more than seven claims from each patent to assert against the Defendants. For each asserted claim, the district court ordered West View to provide preliminary infringement contentions.

The district court told West View at the case management hearing that “given the complexity of the matter already, the district court would not consider adding more patents to the cases, particularly if the patents existed prior to the filing of the initial complaints and were related to the asserted patents.” Nonetheless, West View provided alternative contentions that were based on pending motions to file amended complaints in each case to assert four additional patents against the Defendants.

Each of the four previously unasserted patents issued before the filing of the initial complaints, but each is also a continuation of the parent patent to all the patents asserted by West View in the cases. West View argued that it was justified in seeking to add these patents because new products have recently been or are about to be introduced by Defendants which has put them at issue.

The district court disagreed. “It is entirely likely Defendants will continue to introduce new products throughout this litigation. The forward progress of these cases will be repeatedly stalled if Plaintiff introduces a new patent to this litigation in response to each new market entrant. The Court drew a line at the case management conference, which was held five months after Plaintiff filed its complaints, that new patents would not be joined to these actions. Plaintiff may initiate new lawsuits to assert these four additional patents, but the patents will not be added to this action. As the allegedly infringing products have been introduced to the US market only recently, if at all, there is no prejudice to Plaintiff proceeding separately on these four patents.”

The district court did, however, allow West View to add infringement allegations for patents that were already in the case. “The Court finds good cause to allow such amendments. These patents are already subject to the [Case Management Order] and claim construction in this action. It will not enhance efficiency to segregate them into separate actions against a subset of the Defendants.”

In re West View Research, LLC, Case No. 14-CV-2668-CAB (WVG) (S.D. Cal. June 10, 2015)

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