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`Case 3:17-cv-01394-H-NLS Document 267 Filed 08/24/18 PageID.16194 Page 1 of 7
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`THE REGENTS OF THE UNIVERSITY
`OF CALIFORNIA; and BECTON,
`DICKINSON and COMPANY,
`
`Plaintiffs,
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 17-cv-01394-H-NLS
`
`ORDER GRANTING DEFENDANTS’
`MOTION FOR LEAVE TO AMEND
`THEIR INVALIDITY
`CONTENTIONS
`
`[Doc. No. 216.]
`
`v.
`AFFYMETRIX, INC.; and LIFE
`TECHNOLOGIES CORP.,
`
`Defendants.
`
`
`On July 18, 2018, Defendants Affymetrix, Inc. and Life Technologies Corp. filed a
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`motion for leave to amend their invalidity contentions. (Doc. No. 216.) On August 13,
`2018, Plaintiffs the Regents of the University of California, Becton, Dickinson and
`Company, Sirigen, Inc., and Sirigen II Limited filed a response in opposition to
`Defendants’ motion. (Doc. No. 262.) On August 17, 2018, the Court took the matter under
`submission. (Doc. No. 263.) On August 20, 2018, Defendants filed a reply. (Doc. No.
`265.) For the reasons below, the Court grants Defendants’ motion for leave to amend their
`invalidity contentions.
`///
`///
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`1
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`17-cv-01394-H-NLS
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`UC Ex-2005
`Thermo Fisher v. UC Regents
`IPR2018-01368
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`

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`Case 3:17-cv-01394-H-NLS Document 267 Filed 08/24/18 PageID.16195 Page 2 of 7
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`Background
`On July 10, 2017, Plaintiffs Regents and Becton, Dickinson filed a complaint for
`patent infringement against Defendants Affymetrix and Life Technologies, alleging
`infringement of U.S. Patent No. 9,085,799, U.S. Patent No. 8,110,673, and U.S. Patent No.
`8,835,113. (Doc. No. 1, Compl.) On September 8, 2017, Defendants filed an answer to
`Plaintiffs’ complaint. (Doc. No. 37.)
`On October 6, 2017, the Court issued a scheduling order. (Doc. No. 55.) On
`November 20, 2017, the Court denied Plaintiff Becton, Dickinson’s motion for a
`preliminary injunction without prejudice. (Doc No. 69.) On November 30, 2017, the Court
`issued an amended scheduling order. (Doc. No. 76.)
`On February 7, 2018, the Court granted the parties’ joint motion for leave for
`Plaintiffs to file a first amended complaint and to modify the scheduling order. (Doc. No.
`100.) On February 9, 2018, Plaintiffs filed a first amended complaint: (1) adding Sirigen
`and Sirigen II as additional Plaintiffs and adding claims that Defendants’ products infringe
`four Sirigen patents: U.S. Patent No. 9,547,008, U.S. Patent No. 9,139,869, U.S. Patent
`No. 8,575,303, and U.S. Patent No. 8,455,613; (2) adding infringement allegations against
`additional accused products; and (3) adding allegations of induced infringement against
`Defendants. (Doc. No. 101, FAC.)
`On February 23, 2018, the Court issued a second amended scheduling order. (Doc.
`No. 105.) On March 26, 2018, the Court issued a claim construction order, construing
`disputed claim terms from the ’799 patent, the ’673 patent, and the ’113 patent. (Doc. No.
`138.) On May 1, 2018, the Court granted Defendants’ motion for summary judgment of
`non-infringement of the ’799 patent. (Doc. No. 170.) On May 14, 2018, the Court denied
`Defendants’ motion for summary judgment of non-infringement of the ’673 patent and the
`’113 patent. (Doc. No. 183.)
`By the present motion, Defendants move pursuant to Patent Local Rule 3.6(b)(3) to
`amend their invalidity contentions. (Doc. No. 216-1.) Specifically, Defendants seek to
`amend their invalidity contentions for the ’673 patent and the ’113 patent to add two
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`Case 3:17-cv-01394-H-NLS Document 267 Filed 08/24/18 PageID.16196 Page 3 of 7
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`additional prior references, the Yang reference and the Hou reference, and to clarify their
`contentions as to the “AF750APC” reference. (Id. at 1; see Doc. No. 217, Watson Decl.
`Ex. A.)
`
`Discussion
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`Legal Standards
`I.
`Patent Local Rule 3.3 require a party opposing a claim of patent infringement to
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`serve on all parties its “Invalidity Contentions” within 60 days after being served with the
`“Disclosure of Asserted Claims and Infringement Contentions.” Patent Local Rule 3.6(b)
`provides:
`As a matter of right, a party opposing a claim of patent infringement may
`serve “Amended Invalidity Contentions” no later than the completion of claim
`construction discovery. Thereafter, absent undue prejudice to the opposing
`party, a party opposing infringement may only amend its validity contentions:
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` . .
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`3. upon a timely motion showing good cause.
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`The Federal Circuit has explained that patent local rules such as these “requir[e] both
`the plaintiff and the defendant in patent cases to provide early notice of their infringement
`and invalidity contentions, and to proceed with diligence in amending those contentions
`when new information comes to light in the course of discovery. The rules thus seek to
`balance the right to develop new information in discovery with the need for certainty as to
`the legal theories.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
`1365–66 (Fed. Cir. 2006). “In contrast to the more liberal policy for amending pleadings,
`‘the philosophy behind amending claim charts is decidedly conservative, and designed to
`prevent the “shifting sands” approach to claim construction.’” Verinata Health, Inc. v.
`Ariosa Diagnostics, Inc., 236 F. Supp. 3d 1110, 1113 (N.D. Cal. 2017).
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`To establish “good cause” under Patent Local Rule 3.6(b)(3), the moving party must
`demonstrate that it “has acted diligently and the opposing party will not be prejudiced.” Id.
`(“‘[T]he moving party bears the burden of demonstrating good cause.’”); see O2 Micro,
`
` .
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`Case 3:17-cv-01394-H-NLS Document 267 Filed 08/24/18 PageID.16197 Page 4 of 7
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`467 F.3d at 1355. “‘[T]he diligence required for a showing of good cause has two subparts:
`(1) diligence in discovering the basis for amendment; and (2) diligence in seeking
`amendment once the basis for amendment has been discovered.’” Karl Storz Endoscopy-
`Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260, at *3 (N.D.
`Cal. May 13, 2016). Further, in the context of a motion for leave to amend contentions,
`“[p]rejudice is typically found when amending contentions stand to disrupt the case
`schedule or other court orders.” Id.; see WhatsApp Inc. v. Intercarrier Commc’ns, LLC,
`No. 13-CV-04272-JST, 2014 WL 12703766, at *4 (N.D. Cal. Sept. 3, 2014).
`II. Analysis
`A. Diligence
`Defendants have demonstrated that despite their current need to amend their
`contentions to add two recently discovered prior art references, they were diligent in their
`previous prior art searches. On May 15, 2018, Defendants served Plaintiffs with their
`second amended invalidity contentions regarding the ’673 patent, the ’113 patent, and the
`’799 patent. (Doc. No. 217, Watson Decl. ¶ 9, Ex. H.) Less than two weeks prior,
`Defendants also served Plaintiffs with their initial invalidity contentions regarding the ’008
`patent, the ’869 patent, the ’303 patent, and the ’613 patent. (Id. ¶ 8, Ex. G.) These
`invalidity contentions spanned 247 pages and included 107 prior art references and
`numerous claim charts. (Id. Exs. G, H.) The thoroughness of Defendants’ prior invalidity
`contentions demonstrates their diligence. See Karl Storz Endoscopy-Am., 2016 WL
`2855260, at *4 (“[Defendant’s] initial invalidity contentions themselves belie a finding that
`its search was not diligent: they included over 500 prior art references among the 31 claim
`charts and 400 additional pages of analysis addressing [plaintiff]’s claims. It strains
`credulity to imagine that [defendant] was not diligent in uncovering and evaluating this
`many references.”).
`In addition, Defendants’ diligence in preparing their prior invalidity contentions is
`underscored by the number of patents and claims at issue in this case. In the present action,
`Plaintiffs allege infringement of over a hundred patent claims. (Doc. No. 101, FAC ¶¶ 54,
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`61, 72, 84, 93, 104, 111.) Courts “have found good cause to amend invalidity contentions
`due to the large scope of the initial prior art search” based on the number of claims being
`asserted in the action. Karl Storz Endoscopy-Am., 2016 WL 2855260, at *5; see, e.g.,
`Network Prot. Scis., LLC v. Fortinet, Inc., No. C 12-01106 WHA, 2013 WL 1949051, at
`*2 (N.D. Cal. May 9, 2013).
`Further, Defendants were diligent in moving to amend their contentions. Defendants
`became aware of the Hou and Yang references sometime after May 15, 2018, during the
`time when they were preparing their IPR petitions. (Doc. No. 217, Watson Decl. ¶ 11.)
`Defendants gave Plaintiffs notice of their intent to move for leave to amend their
`contentions to include these two references on July 11, 2018, and Defendants filed the
`present motion on July 18, 2018, about two months later. (Doc. No. 217, Watson Decl. ¶
`12; Doc. No. 216.) The less than two months period between the time Defendants
`discovered the references at issue and the time Defendants gave Plaintiffs notice of their
`intent to amend their invalidity contentions is reasonable and establishes Defendants’
`diligence in seeking leave to amend.1 See Karl Storz Endoscopy-Am., 2016 WL 2855260,
`at *7 (finding diligence where the defendant moved for leave to amend within two months
`of discovering the references at issue and within one month of filing its IPR petition);
`Radware Ltd. v. F5 Networks, Inc., No. C-13-02021-RMW, 2014 WL 3728482, at *2
`(N.D. Cal. 2014) (“[U]nder these particular facts, three months’ delay in moving for leave
`to amend does not undermine [defendant’s] diligence.”).
`Plaintiffs argue that Defendants could not have been diligent in their previous prior
`art searches because the Hou and Yang references were both published in major journals
`in the relevant field and both references are cited in “Huang (2004),” a reference that was
`included in Defendants’ initial December 15, 2017 invalidity contentions. (Doc. No. 262
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`1
`Plaintiffs criticize Defendants for failing to state the precise date on which they discovered the
`Yang and Hou references. (Doc. No. 262 at 6-7, 11.) But regardless what that specific date was, it is
`undisputed that it was less than two months between the date of discovery and the date Defendants notified
`Plaintiffs of their intent to amend their contentions, a reasonable period of time.
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`at 7-8.) But other courts have rejected similar arguments, particularly in a case such as
`this, where the defendant is facing an enormous number of a claims and a correspondingly
`enormous number of relevant prior art references. See Karl Storz Endoscopy-Am., 2016
`WL 2855260, at *5 (“[T]he mere possibility that [defendant] might have discovered the
`references earlier does not defeat its diligence.”). “Unsuccessful prior art searches,
`standing alone, do not demonstrate an absence of diligence.” Network Prot. Scis., 2013
`WL 1949051, at *2. In sum, Defendants have demonstrated that they were diligent in
`discovering the prior art references at issue and moving to amend to include them in their
`contentions.
`B.
`Prejudice
`Turning to the prejudice, here, Defendants have demonstrated that Plaintiffs would
`not be prejudiced by amendment of the invalidity contentions. This action is currently in
`the middle of the discovery and claim construction stages of the case. A claim construction
`hearing on the ’008 patent, the ’869 patent, the ’303 patent, and the ’613 patent is scheduled
`for August 31, 2018. (Doc. No. 105 at 14.) Initial expert reports are not due until
`November 9, 2018, and the close of fact and expert discovery is not until January 24, 2019.
`(Id. at 14-15.) The pretrial motion cutoff is not until February 14, 2019, and the trial date
`is scheduled for May 14, 2019. (Id. at 15-16.) “Therefore, [Plaintiffs] will not be
`prejudiced by amendment of the invalidity contentions because ‘there is still ample time
`left in the discovery period.’” Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. C 12-
`05501 SI, 2014 WL 1648175, at *3 (N.D. Cal. Apr. 23, 2014) (finding no prejudice where
`the fact discovery deadline was four months away, the expert discovery deadline was seven
`months away, and the trial date was ten months away).
`Further, Defendants’ proposed amended invalidity contentions would not pose a risk
`to any of the above discovery and motion deadlines or the Court’s trial schedule. “Courts
`have found no prejudice where, as here, the proposed amendments did not pose a risk to
`discovery and motion deadlines or the trial schedule.” Karl Storz Endoscopy-Am., 2016
`WL 2855260, at *7.
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`In addition, the Court rejects Plaintiffs’ contention that they will suffer prejudice if
`the Court grants Defendants’ motion because they will be forced to spend additional time
`analyzing and responding to the amended contentions. (See Doc. No. 262 at 13.) Plaintiffs
`will have to spend additional time analyzing and responding to the prior art references at
`issue regardless of whether Defendants amend their invalidity contentions because those
`references are already at issue in the co-pending IPR proceedings. Moreover, a complaint
`that amendment of the contentions would cause Plaintiffs “to perform more work than it
`would have to perform otherwise . . . is not prejudice.” Karl Storz Endoscopy-Am., 2016
`WL 2855260, at *9; see Trans Video Elecs., Ltd. v. Sony Elecs., Inc., 278 F.R.D. 505, 510
`n.2 (N.D. Cal. 2011) (“Generally, the issue is not whether the defendant would be required
`to engage in additional work in response to newly amended claims.”). In sum, Defendants
`have demonstrated that the proposed amendments to their invalidity contentions would not
`prejudice Plaintiffs.2
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`Conclusion
`For the reasons above, the Court grants Defendants’ motion to amend their invalidity
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`contentions. The Court orders Defendants to serve their amended invalidity contentions
`on Plaintiffs within seven (7) days from the date this order is filed.
`IT IS SO ORDERED.
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`DATED: August 24, 2018
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`MARILYN L. HUFF, District Judge
`UNITED STATES DISTRICT COURT
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`2
`The Court notes that even if it assumed that Defendants were not diligent, the lack of any prejudice
`at all to Plaintiffs from the proposed amendments would lead to Court to exercise its discretion and still
`grant Defendants’ motion for leave to amend their invalidity contentions. See Karl Storz Endoscopy-Am.,
`2016 WL 2855260, at *3 (“[T]he court retains discretion to grant leave to amend even in the absence of
`diligence so long as there is no prejudice to the opposing party.”); see Twilio, Inc. v. TeleSign Corp., No.
`16CV06925LHKSVK, 2017 WL 3581186, at *4 (N.D. Cal. Aug. 18, 2017).
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