United States District Court, E.D. Texas, Sherman Division
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE.
before the Court is Defendants' Motion for Leave to
Supplement Their Invalidity Contentions with Additional
Information Concerning the Originally Disclosed Envoy Prior
Art (Dkt. #244). After reviewing the relevant pleadings, the
Court denies Defendants' motion.
October 14, 2016, Defendants moved for leave to supplement
their P.R. 3-3 invalidity contentions with two prior art
references as well as evidence surrounding the design
operation of a prior art automated dispensing cart
(hereinafter “Envoy”) and related software (Dkt.
#109). Defendants contended their supplement would include
additional details regarding the Envoy machine, which was
disclosed in their initial invalidity contentions served on
May 27, 2016. On January 19, 2017, the magistrate judge, on
referral, issued an order denying Defendants' motion for
leave (Dkt. #146). The magistrate judge stated:
Defendants characterize much of their proposal as mere
supplementation of detail that would not functionally impact
their case or require Plaintiff to make alterations to its
case. The Court encourages the parties to discuss the
Proposed Amended Invalidity Contentions in this light. The
Court, while denying leave regarding the Proposed Amended
Invalidity Contentions, could, nonetheless, consider an
agreed proposal from the parties to add additional detail to
(Dkt. #146 at p. 13). On February 2, 2017, Defendants filed a
motion to reconsider the magistrate's order (Dkt. #158).
The Court denied Defendants' motion to reconsider because
“Defendants neither establish[ed] the magistrate judge
committed any manifest errors of law in its prior decision
nor demonstrate[ed] good cause to amend. Instead, Defendants
request the Court to reconsider its decision without directly
challenging the Court's analysis.” (Dkt. #236 at p.
5). The Court acknowledged “if Defendants' still
believe a limited set of amendments adding detail would not
functionally impact the case or require Plaintiff to alter
its cause, then they should, by motion, present those
proposed amendments to the Court and put forth good cause for
leave to amend” (Dkt. #236 at pp. 5-6).
April 20, 2017, Defendants filed the present motion for leave
to supplement their invalidity contentions (Dkt. #244). On
May 4, 2017, Tech Pharmacy filed a response (Dkt. #254). On
May 11, 2017, Defendants filed reply (Dkt. #259). On May 18,
2017, Tech Pharmacy filed a sur-reply (Dkt. #260).
the Local Rules for the Eastern District of Texas, Appendix B
Patent Rules, leave to amend invalidity contentions
“may be made only by order of the court, which shall be
entered only upon a showing of good cause.” P.R.
3-6(b). “Good cause, ” according to the Federal
Circuit, “requires a showing of diligence.”
O2 Micro Int'l Ltd. v. Monolithic Power Sys.,
Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). “The
burden is on the movant to establish diligence rather than on
the opposing party to establish a lack of diligence.”
Court weighs multiple factors in determining whether good
cause exists, including, but not limited to:
1. The length of the delay and its potential impact on
2. The reason for the delay, including whether it was within
the reasonable control of the movant;
3. Whether the offending party was diligent in seeking an
extension of time, or in supplementing discovery, after an
alleged need to disclose the new matter became apparent;
4. The importance of the particular matter, and if vital to
the case, whether a lesser sanction would adequately address
the other factors to be considered and also deter future
violations of the Court's scheduling orders, local ...