Order Denying Plaintiff's Motion to Amend Infringement Contentions, Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844-JST
Both Shakespeare's Henry IV and Sherlock Holmes famously
uttered "The game is afoot!" Each had a slightly
different meaning when doing so, but when both famous characters
exclaimed that now iconic statement, they meant that some sort of
hunt was still in progress – and in Sherlock Holmes'
case, that was a hunt for the truth. Interpreting the Northern
District's Patent Local Rules in Icon-IP Pty Ltd. v.
Specialized Bicycle Components, Inc., Judge Jon S. Tigar might
have elected to modify the Bard's and Sir Arthur Conan
Doyle's literary monikers to read "The game is afoot, as
long as you remain diligent!" Perhaps not as elegant, but from
a legal standpoint it's quite accurate. And Sherlock Holmes, at
least, would likely applaud such attempts to hold Plaintiffs to
their Local Rule obligations—indeed, he was on record
in The Sign of the Four as indicating he never
made "exceptions," since "exceptions disprove the
rule."
As any local patent attorney knows, the Northern District's Patent Local Rules require parties to set forth their preliminary infringement contentions early in litigation. A party can later move to amend those contentions, but only upon a timely showing of good cause, such as a recent discovery of prior art or nonpublic information that was not previously discovered despite an earlier diligent search. It was this last requirement that Judge Tigar ruled plaintiff Icon-IP Pty Ltd. had flaunted when it attempted such an amendment.
In Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Icon originally alleged that 33 of defendant Specialized's bicycle seats infringed two of its patents. Icon later moved to add 53 additional seats to its infringement contentions. The court refused all but four of the proposed amendments on the ground that Icon could have discovered relevant information about the seats and included them in its contentions "by conducting a meaningful investigation of Specialized's website."
Over a year later, Icon once again moved to amend its contentions, this time to accuse 12 other bicycle seats. Icon argued it was diligent in accusing these new seats because it was diligent in serving discovery requests pertaining to the seats. It argued that Specialized impermissibly delayed responding to the requests, and that this delay prevented Icon from earlier amending its contentions. Specialized responded that all of the relevant information about the seats had been available on its website for over a year. In fact, Specialized pointed out that Icon's counsel admitted to utilizing Specialized's website to obtain information about some of the seats. Specialized also responded that it had not failed to produce discovery as Icon alleged; rather, it had objected to Icon's requests to produce documents regarding seat models that Icon had not accused of infringing, and had alerted Icon to the availability of the requested information on its website.
Given these facts, Judge Tigar concluded that Icon's entire diligence argument hinged on the notion that Specialized's impermissible delay in responding to discovery requests prevented it from conducting its infringement analysis sooner. He found this argument unpersuasive for two reasons. First, Icon did not explain why it never moved to compel discovery if the requested documents were in fact necessary for it to perform an infringement analysis. Second, and more importantly, Icon did not dispute that all of the necessary information had been available on Specialized's website for over a year. Thus, he found that Icon was not diligent in seeking an amendment, and consequently denied the motion.
While the Patent Local Rules don't require use of a magnifying glass like that wielded by Sherlock Holmes, they do require a diligent and meaningful pre-infringement contention investigation. Where's a good place to start? Perhaps try the accused infringer's website.
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