United States District Court, W.D. Louisiana
TOTAL REBUILD, INC.
PHC FLUID POWER, L.L.C.
RULING AND ORDER
A. JACKSON JUDGE
the Court is PHC Fluid Power, L.L.C.'s Motion to
Strike (Doc. 243) Total Rebuild, Inc.'s third
supplemental infringement contentions. For the reasons that
follow, the Motion (Doc. 243) is
dispute arises from PHC Fluid Power's sale of a device
that Total Rebuild contends infringes one of its patents. PHC
Fluid Power's motion presents the question whether Total
Rebuild can, without leave of Court, amend infringement
contentions that have shaped over two years of litigation.
The Court holds that it cannot.
three years ago, Total Rebuild sued PHC Fluid Power for
infringing a patent on a "safety system for testing
high-pressure devices." (Doc. 1). Over two years ago,
Total Rebuild served PHC Fluid Power with infringement
contentions, which explained how-in Total Rebuild's
view-PHC Fluid Power's systems infringed Total
Rebuild's patent. (Doc. 71-5). Total Rebuild twice
supplemented its contentions. (Docs. 85-31, 189-10). Its
contentions targeted systems using pumps or pump systems
within an explosion-proof safety
housing. (Docs. 71-5, 85-31, 189-10).
months ago, Total Rebuild tried to expand its contentions.
(Doc. 232-2). So it served PHC Fluid Power with a third set
of supplemental infringement contentions. (Id.). In
them, Total Rebuild takes a new position: it contends that a
system using pumps or pump systems outside an
explosion-proof safety housing can infringe its patent.
(Id. at pp. 10-12).
Fluid Power moves to strike these contentions on the ground
that Total Rebuild belatedly disclosed them. (Doc. 243).
Total Rebuild opposes. (Docs. 253, 256-2). It does not
dispute that its latest contentions "vastly expand"
its claims or that it failed to serve the contentions until
December 2018. (Id.). It instead contends that its
supplementation was timely because the Court has not adopted
the proposed scheduling order (Doc. 162-1) and local rules
allow it to amend its contentions as late as 30 days after a
claim-construction ruling. (Doc. 253 at pp. 2-3).
Court has adopted the Local Patent Rules of the United States
District Court for the Eastern District of Texas for
management of this case. (Doc. 50). Those rules prohibit a
party from amending contentions without first obtaining leave
of court. See Local Patent Rule 3-6(b). But the
rules contain an exception allowing a party to amend
contentions without leave if the party "believes in good
faith" that a claim-construction ruling "so
requires." See Local Patent Rule 3-6(a).
interpreting the exception hold that it "applies only if
the claim construction order results in an unexpected
construction." IDB Ventures, LLC v. Charlotte Russe
Holdings, Inc., __F.Supp.3d __, 2018 WL 6830058, at *6
(E.D. Tex. Dec. 28, 2018). That interpretation squares with
the purpose of infringement-contention deadlines: "[t]o
ensure that parties formulate their infringement and
invalidity theories early in the case and not make
eleventh-hour alterations in their positions, subjecting
their opposing party to additional delay, expense, and
potential prejudice. Id. at *8.
Rebuild did not obtain the Court's leave before serving
PHC Fluid Power with its latest contentions. (Docs. 253,
256-2). Yet it argues that its supplementation complies with
Local Patent Rule 3-6(a). Not so. Because the Court has not
made a claim-construction ruling, Local Patent Rule 3-6(a)
does not apply. Total Rebuild cannot argue that it
"believe[d] in good faith" that a yet-to-be-issued
claim-construction ruling required it to supplement its
contentions. See Local Patent Rule 3-6(a). The Court
therefore finds that Total Rebuild's supplementation
violates Local Patent Rule 3-6.
decide if it should strike the contentions, the Court
considers (1) the danger of unfair prejudice, (2) the length
of Total Rebuild's delay, (3) the reason for the delay,
(4) the importance of the third supplemental contentions, and
(5) Total Rebuild's diligence. See Computer
Acceleration Corp. u. Microsoft Corp., 503
F.Supp.2d 819, 822 (E.D. Tex. 2007).
unfair-prejudice factor supports striking the contentions.
Total Rebuild does not dispute that its new contentions would
"vastly expand" its claims and thus require PHC
Fluid Power to revise its defenses. (Doc. 253 at p. 6). The
parties tailored two years of discovery and motion
practice-including eight depositions, three motions to
compel, two motions for summary judgment, and four motions in
limine-to theories of infringement Total Rebuild now seeks to
length-of-delay, reason-for-delay, and diligence factors also
support striking the contentions. Total Rebuild aims to
supplement its contentions more than three years after it
sued and more than two years after it served its first
infringement contentions. (Docs. 1, 71-5). And it
asserts-without support-that it could not supplement its
contentions until recently because PHC Fluid Power
"delayed, obfuscated, and restricted [its] access to
usable discovery." (Doc. 253 at p. 6). This is not the
first time Total Rebuild has accused PHC Fluid Power of
misconduct without supporting the accusation; it also did so
in its briefing on a motion to continue. (Doc. 152-2 at p.
4). In its ruling on that motion, the Court found that the
accusation lacked support and warned the parties that