The Regents of the University of Michigan v. Leica Microsystems Inc.

Background

The Regents of the University of Michigan sought permission to amend its infringement contentions—its required statements identifying how the accused products allegedly infringe its patent claims—to include Leica Microsystems Inc.’s next-generation Stellaris microscope platform. Michigan served its original infringement contentions in March 2020. The Stellaris platform was not launched until late April 2020, and the case was stayed in early July 2020 while an inter partes review was pending. After the stay was lifted, Leica refused to provide discovery about Stellaris on the ground that the products were not covered by Michigan’s original contentions. Michigan then sought leave to amend.

Parties’ Arguments and Legal Standard

Patent Local Rule 3-6 permits amendment of infringement contentions by court order upon a timely showing of good cause. The court explained that the good-cause inquiry considers the moving party’s diligence and any prejudice to the opposing party. Diligence includes both discovering the basis for amendment and seeking amendment after discovering it. Although diligence is important, the court may allow an amendment even without diligence if the opposing party would not be prejudiced.

Leica argued that Michigan was not diligent because Stellaris products had been advertised before the stay, yet Michigan waited three months after the stay was lifted to seek amendment. Leica also argued that the amendment would prejudice it by making the case more complicated and requiring additional infringement and damages analyses.

Ruling

Judge William H. Orrick granted Michigan’s motion for leave to amend. He found that Michigan was adequately diligent. The court considered the short period between disclosure of the Stellaris platform and the stay, during which Michigan sought discovery about the products, not excessive. The court also found no prejudice to Leica. Requiring additional work, by itself, did not constitute prejudice, and the case remained at an early stage with no fact-discovery or expert-discovery cutoff and no case schedule other than a claim-construction hearing set for January 12, 2024. The order therefore granted leave to add the Stellaris platform products to Michigan’s infringement contentions.