Under some circumstances, party error can excuse late-filed amendments to infringement and invalidity contentions, according to a recent decision by Judge F. Dennis Saylor IV. Approximately five years ago, plaintiff DataTern, Inc. ("DataTern") filed a patent infringement suit against defendant MicroStrategy, Inc. ("MicroStrategy") over a patent claiming a "method for interfacing an object oriented software application with a relational database."Over the course of the case, the parties submitted two proposed scheduling orders.  The first, in 2012, would have set the deadline to amend infringement and invalidity contentions 30 days prior to the Markman hearing. The second, in 2016, would have set this deadline 30 days after receiving the Markman order. The court did not enter either date, but the parties believed it did. MicroStrategy amended its invalidity contentions 31 days before the Markman hearing, which would have been timely under both proposed schedules. Then, DataTern amended its infringement contentions 30 days after receiving the Markman order, which would have been timely under the 2016 proposed schedule. Even though DataTern served its own amended contentions later, it moved to strike MicroStrategy's amended contentions as untimely. The court denied the motion to strike, but explained that both parties were wrong about the scheduling order.

The court noted that there was an error in the docket entry following the 2016 scheduling conference—the docket entry "stated, without qualification, that the 'Court ADOPTED [the] proposed schedule.'" However, "counsel for both sides were present at the conference and surely were aware that [the docket entry] was incorrect." The court faulted both parties for not "call[ing] the error to the attention of the Court," and explained that the scheduling order did not permit either party to amend their infringement or invalidity contentions as a matter of right. The court also pointed out that DataTern—who filed the motion to strike—amended its contentions after MicroStrategy. According to the court, "[i]f DataTern's amended infringement contentions are timely . . . , then MicroStrategy's amended invalidity contentions—filed 195 days earlier—are surely timely."

Despite the mix-up, the court found that both parties' amended contentions were timely "[u]nder the circumstances," because "both parties were apparently under the mistaken impression that the court had adopted the 2016 [proposed scheduling order] in its entirety."

The case is DataTern, Inc. v. MicroStrategy, Inc., et al., No. 11-11970-FDS, pending in the U.S. District Court for the District of Massachusetts. A copy of the decision can be found here.

Amended Contentions Deemed Timely Served Due to Parties' Misunderstanding

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