Order Granting-in-Part Motion for Leave to Amend Infringement Contentions, Finjan, Inc. v. Blue Coat Systems, Inc., 5:13-cv-03999 (Magistrate Judge Grewal)
A new order from Magistrate Judge Grewal shows why patentees are well-advised to do their homework – including conducting a thorough search for public domain documents describing the defendant's products – before drafting their infringement contentions. Failing to do so could mean that products they could otherwise have accused of infringement by additional patents are off the table, even where documents obtained during discovery provide detailed descriptions of the accused products supporting infringement by the additional patents.
The plaintiff in Finjan v. Blue Coat, which recently sought leave to amend its infringement contentions, learned this the hard way. While it did not seek to add a new patent or accuse a new product, not every accused product was accused of infringing every single patent in its previous infringement contentions. Finjan sought leave to accuse more of the accused Blue Coat products of infringing more of its patents.
Under the Northern District's Patent Local Rules, a plaintiff must show "good cause" to amend its infringement contentions, which generally requires diligence in seeking leave to amend and a lack of prejudice to the defendant. And a key question for establishing diligence is whether the patentee could have used documents in the public domain to support its new infringement contentions.
Unfortunately for Finjan, for two of the new contentions it sought to add, Magistrate Judge Grewal found that documents in the public domain were sufficient to put Finjan on notice of those "new" infringement theories. Finjan argued that its delay in seeking amendment was justified because documents it only recently received from Blue Coat gave it more technical details about the products. But Magistrate Judge Grewal rejected that argument. While the public domain documents Magistrate Judge Grewal identified were perhaps not as detailed as Blue Coat's internal documents, they were detailed enough such that Finjan could have (and should have) made the same connections earlier in the case as were included in its proposed amended infringement contentions.
As to one patent, however, Magistrate Judge Grewal granted Finjan's motion. Public documents gave a "hint" of disclosure of a key claim term. That hint was not enough, however, to fairly put Finjan on notice of the need to add greater disclosure. As to this one patent, there was good cause to allow amendment.
Although in the law ignorance is normally no excuse, ignorance is excusable when a patentee genuinely cannot find certain technical documentation before it files suit. But a patentee who ignores the public domain does so at his peril. He is likely to learn the harsh lesson of ignorantia juris non excusat.
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