In Re: Papst Licensing Digital Camera Patent Litigation - Mdl 1880
Misc. No. 2007-0493
| D.D.C. | Aug 24, 2017Background
- MDL originally concerned patents 6,470,399 and 6,895,449 and ended with a partial final judgment later vacated on appeal.
- Papst asserted two new patents, 8,504,746 and 8,966,144, which were transferred into the MDL in 2015 for inclusion in the ongoing litigation.
- The Ninth Practice and Procedure Order required amendment of invalidity contentions to be granted only for good cause and set a deadline for such amendments.
- Camera Manufacturers claimed a break in the priority chain linking the new patents to the old ones via a ‘778’ application, making the new claims potentially invalid as anticipated.
- Papst denied consent to amendment and questioned the diligence and prejudice aspects before the Court, leading to a formal motion for leave to amend.
- The Court granted the motion, finding sufficient diligence and no undue prejudice, and ordered the amended invalidity contentions to be filed by September 1, 2017.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether there is good cause to amend invalidity contentions under Rule 3-6 | Papst | Camera Manufacturers | Yes; good cause shown for amendment |
| Diligence in seeking amendment after discovering the basis for amendment | Papst | Camera Manufacturers | Camera Manufacturers acted with sufficient diligence |
| Diligence in discovering the basis for amendment | Papst | Camera Manufacturers | Court found the basis discovery diligence satisfactory overall |
| Potential prejudice to Papst from amendment | Papst | Camera Manufacturers | No undue prejudice to Papst; amendment allowed |
Key Cases Cited
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) (good cause and diligence required for amendment under Patent Local Rules)
- Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280 (Fed. Cir. 2000) (considerations of amendment timing and impact on proceedings)