Yuntek International, Inc. v. Xiamen JXD Electronic Commerce Co., Ltd.

Background

Yuntek brought a patent-infringement case concerning pet carriers and its ‘446 Patent. Yuntek alleged that the defendants sold products infringing one or more claims of that patent, including claim 6, and asserted direct and indirect willful infringement.

The parties separately sought to amend their patent infringement and invalidity contentions. Under the Northern District of California’s Local Patent Rules, parties must identify their infringement and invalidity theories early. They may amend those contentions only with the court’s permission and a timely showing of good cause. The court explained that good cause generally requires diligence in discovering the basis for an amendment and diligence in seeking the amendment, along with an absence of prejudice to the opposing party.

Yuntek’s Motion to Amend Infringement Contentions

Yuntek sought amendments in several categories. It wanted to identify additional product reference numbers, add allegations based on communications from 2015, supplement indirect-infringement allegations concerning K&H and downstream customers, and add information about documents and proceedings that became relevant after its original contentions.

The court denied Yuntek’s request to add the 2015 communications to its willfulness allegations because Yuntek acknowledged that it had not remembered those communications and that its counsel had been unaware of them. The court found that this lapse did not satisfy the required showing of diligence.

The court also denied Yuntek’s requests concerning several groups of products. Yuntek conceded that adding the Classy Go and Comfy Go products was technically unnecessary, but still sought to clarify that those products were accused. The court concluded that Yuntek could not claim both that an amendment was unnecessary and that it was necessary, and denied that request.

The court denied requests involving additional model numbers, including DCC1047054&5; DCC1039023&4&5; DCC1039033&4&5; DCC1047054&5; DCC10391; DCC1910; DCC1811; DCC2611; DCC001810; DCC002611; DHCA012033LN; and DHCA012033N1. For some products, the court found that Yuntek had not shown diligence or that the products had not yet been made or sold. For DCC2611, the court concluded that Yuntek was improperly using the amendment motion as a substitute for a motion to compel discovery. For products first sold after the complaint was filed, the court noted that the proper procedure would have been a motion to supplement the complaint, but found that Yuntek had not properly presented such a request.

Defendants’ Motion to Amend Invalidity Contentions

The defendants sought to add references to three other patents to their invalidity contentions. They argued that Yuntek’s changing use of the term “front opening” made the additional references relevant to whether the ‘446 Patent’s technology would have been obvious to a person skilled in the art.

After further discussions, the parties agreed that “front opening” in asserted claims 6, 7, 41, and 54 would have its plain and ordinary meaning. Yuntek argued that this agreement made the defendants’ motion moot. The court agreed that the agreement substantially eliminated the reasons the defendants had given for seeking the amendments. The court was not persuaded that the parties’ prior disputes and the resources spent addressing them independently justified an amendment.

Ruling

Judge Robert M. Illman denied both motions to amend in their entirety. The court concluded that the parties’ showings concerning diligence and the need for the proposed amendments did not establish good cause. The court emphasized that the patent rules balance the development of new information through discovery against the need for certainty and consistency in the legal theories involved in the case.