Verinata Health, Inc. v. Ariosa Diagnostics, Inc.
236 F. Supp. 3d 1110
N.D. Cal.2017Background
- Plaintiffs Illumina and Verinata assert two patents (the ’430 and ’794) against Ariosa’s Harmony Prenatal Test (sequencing-based and newer microarray-based versions) in consolidated patent litigation.
- The Court had previously issued claim constructions, stayed the case for IPR appeals, then lifted the stay and set fact/expert discovery and trial deadlines.
- After the stay was lifted, Illumina served infringement contentions (Sept. 30, 2016) directed to the microarray Harmony test and included some DOE theories.
- Ariosa served supplemental noninfringement contentions (Nov. 22, 2016) with extensive, updated positions.
- Illumina moved to amend its infringement contentions (Jan. 6, 2017) to add four additional doctrine-of-equivalents (DOE) theories in response to Ariosa’s supplemental contentions.
- The Court denied Illumina’s motion under Patent Local Rule 3-6 for failure to show good cause and diligence in discovering and timely asserting the new DOE theories.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Illumina showed good cause under Patent L.R. 3-6 to amend infringement contentions to add DOE theories | Illumina: Ariosa’s extensive/supplemental noninfringement contentions revealed new information and unexpected positions that justify adding DOE theories | Ariosa: Illumina knew or should have known the bases for DOE theories from prior discovery (sequencing version) and failed to act diligently | Denied — Illumina failed to identify new nonpublic information disclosed by Ariosa and did not show it acted diligently; thus no good cause |
| Whether service of supplemental noninfringement contentions alone justifies amendment | Illumina: service of Ariosa’s 26-page supplemental noninfringement contentions was the triggering event | Ariosa: supplemental contentions do not supply new nonpublic information; plaintiff should have asserted theories earlier | Held that supplemental noninfringement contentions alone do not justify amendment absent new nonpublic information and diligence; court need not reach prejudice because diligence lacking |
Key Cases Cited
- O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355 (Fed. Cir. 2006) (moving party must show diligence and good cause to amend patent contentions under local rules)
- LG Elecs., Inc. v. Q-Point Computer, Inc., 211 F.R.D. 360 (N.D. Cal. 2002) (local patent rules are conservative to prevent shifting theories; claim chart amendments restricted)
- Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121 (N.D. Cal. 2006) (contentions must crystallize theories early and parties must adhere to them)