In December 2010, Multimedia Patent Trust (“MPT”) filed a patent infringement action against a number of defendants asserting infringement of a number of patents. Although MPT asserted the 5,500,678 (the “‘678 patent”) against several defendants, as well as other patents against several defendants and Apple, it did not assert the ‘678 patent against Apple. Over a year and a half later and only five months before trial, MPT sought to amend its complaint to include the ‘678 patent against Apple. Apple opposed the motion.
The district court concluded that the motion was not timely based on the following facts, among others: “The record indicates that MPT waited over six months from when it determined that Apple “likely” infringed the ‘678 patent to bring the present motion to amend the complaint. . . . Specifically, MPT had access to Apple’s source code and developed a theory that the code infringes the ‘678 patent, MPT served supplemental infringement contentions on Apple alleging infringement of the ‘678 patent on May 1, 2012. . . . MPT then waited over one additional month to file the present motion to amend its complaint on June 7, 2012. . . . The total delay between MPT developing its theory of infringement and seeking leave to amend its complaint spans more that six months.”
In addition, the district court found that MPT’s late request would prejudice Apple: “In particular, Apple would be unduly prejudiced if MPT’s motion were granted at this late date because MPT has been preparing its infringement case against Apple since at least November of 2011. Expert reports are due on September 14, 2012, and rebuttal expert reports are due shortly thereafter on October 5, 2012. . . . If the Court were to grant MPT leave to amend, MPT and its experts would have more than nine months to prepare their opening expert report on infringement of the ‘678 patent. In contrast, Apple would have less than four months to prepare its non-infringement defenses before its rebuttal expert reports are due in October. As a result, Apple would likely be disadvantaged and unduly prejudiced in preparing its defenses against MPT’s new allegation of infringement of the ‘678 patent.”
The district court also found that the amendment would violate the local patent rules: “Not only does MPT’s broadening amendment to the preliminary infringement contentions run contrary to the Court’s order to narrow and refine the infringement contentions, but MPT’s expanded infringement contentions run afoul of the Patent Local Rules. Specifically, the Patent Local Rules permit amendments to preliminary infringement contentions ‘only upon a showing of good cause.’ Patent L.R.3.7. To shown good cause, MPT is required to demonstrate that it acted with diligence in moving to amend its preliminary infringement contentions. O2 Micro, 467 F. 3d at 1366 (‘The burden is on the movant to establish diligence.) As a result, MPT’s amended infringement contentions violate Patent Local Rule 3.7 and contradict the Court’s order directing MPT to narrow its contentions.”
Accordingly, the district court denied the motion for leave to amend.
Multimedia Patent Trust v. Apple Inc., et al., Case No. 10-CV-2618-H (KSC) (S.D. Cal. July 11, 2012)
The authors of www.PatentLawyerBlog.com 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 SGibson@jmbm.com.