Oxygenator Water Technologies, Inc. v. Tennant Company

Background

Tennant Company appealed a nondispositive order by Magistrate Judge Hildy Bowbeer. The order denied Tennant’s motion for permission to supplement its invalidity contentions concerning Oxygenator Water Technologies, Inc.’s patents. Invalidity contentions are a party’s required disclosures identifying why it contends that a patent is invalid.

After the court issued its claim-construction order on August 18, 2021, Tennant sought to add arguments under 35 U.S.C. § 112. Tennant asserted that the court’s constructions of several patent terms created issues involving indefiniteness, lack of written description, and failure to meet the enablement requirement. Tennant also sought to supplement its invalidity grounds concerning the Wikey reference and two patents identified in the opinion as the ’092 and ’665 patents.

The motion was Tennant’s third request to amend its invalidity contentions. Tennant argued that it acted diligently because it moved within 14 days of the claim-construction order and could not have predicted the court’s constructions earlier. Magistrate Judge Bowbeer denied the motion, finding that Tennant had not shown good cause because it knew about the underlying issues as early as January 2020 and did not move to amend until after the claim-construction order.

Issue and standard of review

The district court treated Tennant’s appeal as challenging both the denial of permission to amend the invalidity contentions and, in effect, the request to modify the scheduling order. The court reviewed the magistrate judge’s nondispositive ruling under the “clearly erroneous or contrary to law” standard. Under that standard, a finding is clearly erroneous only when the reviewing court is firmly convinced that a mistake was made; a decision is contrary to law when it fails to apply or misapplies relevant law or procedural rules.

Court’s reasoning

The scheduling order stated that Tennant could amend its claim chart only by agreement of the parties or by obtaining court permission for good cause. Oxygenator did not agree to the amendment, so Tennant was required to demonstrate good cause.

The court rejected Tennant’s argument that the scheduling order allowed amendment without a showing of good cause merely because Tennant requested permission within the specified time. The provision allowing Tennant to request permission to amend contentions related to a claim term did not eliminate the separate good-cause requirement.

The court also agreed with Magistrate Judge Bowbeer that Tennant had not acted diligently. Tennant did not dispute that it knew about the issues underlying its motion as early as January 2020, but it waited until after the claim-construction order to seek amendment. Because the lack of diligence was enough to establish that good cause was absent, the court did not decide whether the proposed amendments would have caused unfair prejudice.

Disposition

Judge Eric C. Tostrud overruled Tennant’s objections and affirmed Magistrate Judge Bowbeer’s October 25, 2021 order. The opinion therefore left in place the denial of Tennant’s motion to amend its invalidity contentions.