Unicorn Energy AG v. Tesla, Inc.

Background

Unicorn Energy AG asked the court to overturn part of Magistrate Judge Susan van Keulen’s nondispositive pretrial order. The earlier order had granted in part and denied in part Unicorn’s motion to amend its patent-infringement contentions. Unicorn sought relief from the portions denying amendments concerning three categories: Megapack 2, the Powerwall+ Bundle, and a third category involving redacted product and technical details, including a communication-interface theory.

The proposed amendments followed Tesla’s later document and information productions. Unicorn filed its amendment motion on the last day of fact discovery, after the parties had begun exchanging expert reports. Judge van Keulen found that the proposed changes were late, that Unicorn had not acted diligently because it could have sought some information earlier, and that Tesla would be prejudiced by the amendments.

Legal standard

The court explained that it could reverse a magistrate judge’s nondispositive pretrial order only for “clear error,” meaning a definite mistake in the factual or legal decision. Patent Local Rule 3-6 also permits amendments to infringement contentions only upon a timely showing of good cause. Courts first consider whether the party seeking amendment acted diligently; if it did not, the inquiry may end without granting leave to amend.

Court’s analysis

For the Megapack 2 theory, the court found no clear error in Judge van Keulen’s conclusions that the amendment presented a new theory and that Unicorn could have sought the necessary information earlier. The court also found no clear error in the finding of prejudice because the case was already well into expert discovery. The court stated that a lack of diligence alone justified denying leave to amend.

For the Powerwall+ Bundle, the court found no clear error in determining that Unicorn had not identified the product with the specificity required by the patent rules. The court also found no clear error in determining that Tesla would face prejudice from additional damages discovery and expert analysis. Again, the court stated that the lack of diligence alone justified denying the amendment.

For the remaining category, the court rejected Unicorn’s arguments that its proposed changes were tied to existing contentions and did not present a new theory. The court concluded that the amendments relied on recently disclosed evidence that Unicorn could have sought earlier and that Judge van Keulen therefore did not clearly err in finding the amendments prejudicial and denying them.

Disposition

The court denied Plaintiff Unicorn’s Motion for Relief from Magistrate Judge Susan van Keulen’s Nondispositive Pretrial Order, ECF No. 291. The opinion does not state that this motion was denied with or without prejudice.