Cambria Company LLC v. Hirsch Glass Corp.
3:21-cv-10092
| D.N.J. | Sep 12, 2023Background
- Cambria sued Hirsch in Feb 2021 alleging willful infringement of three utility patents and five design patents covering quartz surface products; case transferred to this District and claim construction occurred in Sept. 2022.
- Discovery: Cambria served infringement contentions (July 2021) and amended them (July 2022) narrowing asserted claims and relying on inspected Hirsch slabs and some language from after-acquired "Xie" patents; Hirsch served non-infringement contentions (Aug. 2021; amended Apr. 2022) and later proposed broader amendments (Sept. 2022).
- Hirsch sought (1) a second amendment to non-infringement contentions—introducing many new defenses including an "inherent randomness" theory; (2) to withdraw/qualify admissions to several RFAs (served Feb. 2022, revised July 2022); and (3) to add additional prior-art references to its invalidity contentions for the asserted design patents (served Sept. 2022).
- Cambria opposed the first two requests as untimely, lacking diligence, and prejudicial because Cambria relied on Hirsch's earlier admissions and had narrowed its contentions in reliance; it did not claim prejudice from adding prior art but disputed Hirsch's diligence in locating it.
- Ruling summary: the court denied Hirsch's requests to amend non-infringement contentions and to amend RFA responses (Rule 36(b)) for lack of diligence and prejudice to Cambria; the court granted Hirsch's amendment to invalidity contentions (Local Pat. R. 3.7) because Hirsch showed sufficient diligence in prior-art searching and the amendment posed no appreciable prejudice.
Issues
| Issue | Plaintiff's Argument (Cambria) | Defendant's Argument (Hirsch) | Held |
|---|---|---|---|
| Motion to amend non-infringement contentions (L. Pat. R. 3.7) | Hirsch's new contentions are untimely, lack diligence, and would unfairly expand issues and prejudice Cambria | Amendments respond to Cambria's July 2022 narrowed infringement charts and reflect further investigation of Hirsch's products/processes ("inherent randomness") | Denied — Hirsch lacked diligence; amendments would disrupt schedule and prejudice Cambria |
| Motion to withdraw/qualify admissions to RFAs (Fed. R. Civ. P. 36(b)) | Hirsch reasonably relied on its RFA admissions; withdrawing now would prejudice Cambria, which relied on them in narrowing contentions | Further investigation showed some admissions were inaccurate or not universally true; amendments align with Hirsch's non-infringement contentions | Denied — withdrawal would not promote presentation of merits and would prejudice Cambria |
| Motion to amend invalidity contentions to add prior art (L. Pat. R. 3.7) | Hirsch was not diligent in searching and delayed adding art for ~10 months | Hirsch employed outside search firms early in the case, continued searching, and found additional prior art via discovery and subpoenas | Granted — court found Hirsch's prior-art searches sufficiently diligent and no appreciable prejudice; limited schedule adjustment may be allowed if needed |
Key Cases Cited
- United States v. Branella, 972 F. Supp. 294 (D.N.J. 1997) (district court has broad discretion to permit withdrawal or amendment of admissions under Rule 36)
- Revlon Consumer Prods. Corp. v. L’Oreal S.A., 170 F.R.D. 391 (D. Del. 1997) (two-part inquiry for permitting withdrawal: presentation of the merits and absence of prejudice to the requesting party)
- Coca-Cola Bottling Co. of Shreveport, Inc. v. The Coca-Cola Co., 123 F.R.D. 97 (D. Del. 1988) (prejudice may be shown where party obtaining admission would have difficulty obtaining evidence to prove the matter if admission withdrawn)
- Airco Indus. Gases, Inc. v. Teamsters Health & Welfare Pension Fund, 850 F.2d 1028 (3d Cir. 1988) (contemporaneous, compelling contradictory evidence can justify withdrawal of admissions)
- TFH Publ’ns, Inc. v. Doskocil Mfg. Co., 705 F. Supp. 2d 361 (D.N.J. 2010) (Local Patent Rules aim to crystallize theories early and prevent shifting positions)