MASS Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284 (2008)
`70 Fed.R.Serv.3d 1113
`
`250 F.R.D. 284
`United States District Court,
`E.D. Texas,
`Marshall Division.
`
`MASS ENGINEERED DESIGN, INC.
`and Jerry Moscovitch, Plaintiffs
`v.
`ERGOTRON, INC., Dell Inc., CDW Corporation,
`and Tech Data Corporation, Defendants.
`
`No. 2:06 CV 272.
`|
`May 30, 2008.
`
`[2]
`
`[3]
`
`Synopsis
`Background: Patent holder brought patent infringement
`action against competitors. Defendant counterclaimed
`alleging infringement of its patent for secondary display
`system for computer. Plaintiffs moved for leave to amend
`answer to counterclaim and for leave to serve invalidity
`contentions.
`
`[Holding:] The District Court, Leonard Davis, J., held that
`patent holder was not entitled to amend answer to patent
`infringement claims to include invalidity defense.
`
`4 Cases that cite this headnote
`
`Federal Civil Procedure
`Pretrial Order
`For purposes of rule allowing party to modify
`court's order upon showing of good cause, a
`party's failure to meet a deadline due to mere
`inadvertence is tantamount to no explanation at
`all. Fed.Rules Civ.Proc.Rule 16, 28 U.S.C.A.
`
`3 Cases that cite this headnote
`
`Amended and supplemental
`
`Patents
`pleadings
`Patent holder failed to show good cause for leave
`to modify answer to competitor's infringement
`counterclaims to include invalidity as affirmative
`defense, as would entitle patent holder to amend
`answer; patent holder argued that invalidity
`argument was costly and that patent holder
`did not anticipate constructions adopted by
`court, allowing amendment would prejudice
`competitor and prejudice would not be cured
`by continuance, additional prior art references
`might give rise to new claim construction issues,
`and amendment may require additional research.
`Fed.Rules Civ.Proc.Rule 16(b), 28 U.S.C.A.
`
`9 Cases that cite this headnote
`
`Motions denied.
`
`West Headnotes (4)
`
`[4]
`
`Patents
`Reissue
`US Patent 36,978, US Patent 5,673,170. Cited.
`
`[1]
`
`Federal Civil Procedure
`Pretrial Order
`Court has broad discretion to allow scheduling
`order modifications and considers four factors
`to determine if modification is appropriate: (1)
`the explanation for the party's failure to meet the
`deadline, (2) the importance of what the Court
`is excluding, (3) the potential prejudice if the
`Court allows the thing that would be excluded,
`and (4) the availability of a continuance to cure
`such prejudice. Fed.Rules Civ.Proc.Rule 16, 28
`U.S.C.A.
`
`Attorneys and Law Firms
`
`*285 Max Lalon Tribble Jr., Stephen Frederick Schlather,
`Susman Godfrey, Houston, TX, Deborah J. Race, Otis W.
`Carroll Jr., Ireland Carroll & Kelley, Tyler, TX, Elizabeth
`L. Derieux, Sidney Calvin Capshaw, III, Capshaw Derieux,
`LLP, Longview, TX, Gregory Loren Maag, Conley Rose,
`Houston, TX, Justin Adatto Nelson, Susman Godfrey, LLP,
`Seattle, WA, Robert Christopher Bunt, Robert M. Parker,
`Andrew Thompson Gorham, Charles Ainsworth, Parker Bunt
`& Ainsworth, Tyler, TX, Thomas John Ward Jr., Ward &
`Smith Law Firm, Longview, TX, for Plaintiffs.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
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`MASS Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284 (2008)
`70 Fed.R.Serv.3d 1113
`
`Eric Hugh Findlay, Roger Brian Craft, Ramey & Flock,
`Tyler TX, Kurt J. Niederluecke, Lora Mitchell Friedemann,
`Matthew Graham, Fredrikson & Byron PA, Minneapolis
`MN, Brian Alden Dietzel, Jeffrey Michael Whiting, Marvin
`Craig Tyler, Scott Taylor Morris, Wilson Sonsini Goodrich
`& Rosati PC, Austin TX, Natalie J. Morgan, Wilson
`Sonsini Goodrich & Rosati, San Diego CA, Charles Edward
`Juister, Mark H. Izraelewicz, Thomas L. Duston, Marshall
`Gerstein & Borun, Chicago IL, Stefan V. Stein, Holland &
`Knight, Tampa FL, Ryan Goldstein, Quinn Emanuel Urquhart
`Oliver & Hedges, Los Angeles CA, Samuel Eugene Stubbs,
`Pillsbury Winthrop, Ouston, TX, Casey A. Kniser, Patterson
`Thuente Skaar & Christensen, Minneapolis, MN, Becky
`V. Christensen, O'Connor Christensen & Mclaughlin, LLP,
`Irvine, CA, Edward F. O'Connor, The Eclipse Group, Irvine,
`CA, Guy N. Harrison, Attorney at Law, Longview, TX,
`Andrea M. Augustine, Foley & Lardner, Chicago, IL, David
`J. Moorhead, Nicole M Murray, Richard W. Young, Drinker
`Biddle & Reath, Chicago, IL, for Defendants.
`
`MEMORANDUM OPINION AND ORDER
`
`LEONARD DAVIS, District Judge.
`
`Before the Court are Plaintiffs MASS Engineered Design,
`Inc. and Jerry Moscovitch's (collectively “MASS”) Motion
`For Leave to Amend Their Answer to Dell Marketing, L.P.'s
`Counterclaim (Docket No. 279) and MASS's Motion for
`Leave to Serve Invalidity Contentions (Docket No. 281).
`After careful consideration of the parties' written submissions,
`the Court DENIES both of MASS's motions for leave.
`
`MOTION FOR LEAVE TO SERVE
`INVALIDITY CONTENTIONS
`
`Background
`MASS and Jerry Moscovitch (collectively “MASS”)
`allege Ergotron, Inc. (“Ergotron”), Dell Inc. (“Dell”),
`CDW Corporation (“CDW”), and Tech Data (collectively
`“Defendants”) infringe U.S. Patent No. RE 36,978 (the “′978
`patent”). On May 11, 2007, the Court granted Dell Marketing
`L.P.'s (“DMLP”), Dell's indirect subsidiary, motion to
`intervene. DMLP answered MASS's complaint and asserted
`a counter-claim alleging MASS infringed U.S. Patent No.
`5,673,170 (the “′170 patent”). After Dell and DMLP served
`their infringement contentions for the ′170 patent, the Court
`issued a Revised *286 Docket Control Order requiring
`
`MASS to serve its Patent Rule 3–3 invalidity contentions by
`June 6, 2007. MASS did not serve any invalidity contentions.
`A week later, MASS answered DMLP's counterclaim without
`alleging invalidity as an affirmative defense.
`
`On June 15, 2007, the parties exchanged disputed claim terms
`for the ′170 patent. On March 13, 2008, the Court issued its
`claim construction opinion construing disputed terms in the
`′978 and ′170 patents. MASS subsequently moved for leave
`to amend its answer and to serve invalidity contentions.
`
`Applicable Law
`[1]
` [2]
` Federal Rule of Civil Procedure 16(b) allows
`a party to modify the Court's Docket Control Order upon
`a showing of good cause. FED.R.CIV.P. 16. The good
`cause standard requires the party seeking relief to show
`that, despite its exercise of diligence, it cannot reasonably
`meet the scheduling deadlines.
`S & W Enters., L.L.C.
`v. Southtrust Bank of Alabama, 315 F.3d 533, 535 (5th
`Cir.2003). The Court has broad discretion to allow scheduling
`order modifications and considers four factors to determine
`if modification is appropriate: (1) the explanation for the
`party's failure to meet the deadline, (2) the importance of
`what the Court is excluding, (3) the potential prejudice if the
`Court allows the thing that would be excluded, and (4) the
`availability of a continuance to cure such prejudice.
`Id.
`at 536. A party's failure to meet a deadline due to mere
`inadvertence is tantamount to no explanation at all.
`Id.
`
`Analysis
`[3]
` MASS does not claim that it could not meet the Court's
`deadlines but simply that it chose not to meet the deadlines.
`MASS contends that invalidity arguments are costly; thus,
`MASS proposed constructions that focused solely on its non-
`infringement argument. MASS also claims that it did not
`anticipate the Court's “very broad constructions.”
`
`While invalidity arguments may prove to be a costly
`endeavor, this Court's rules oblige MASS to assert such a
`defense early in the litigation if it is going to assert the
`defense at all. MASS, as the original plaintiff, chose this
`forum and thus chose this forum's rules. It cannot pick and
`choose which rules and orders to follow and which to ignore.
`Choosing to avoid potential litigation expenses is not an
`adequate explanation for ignoring this Court's orders.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
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`MASS Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284 (2008)
`70 Fed.R.Serv.3d 1113
`
`Equally unavailing is MASS's explanation that it did not
`anticipate the Court's constructions. This is not a situation
`where the Court issued constructions that greatly differed
`from what the parties proposed. Rather, the Court adopted
`all of DMLP's proposed constructions, without major
`modification. Thus, MASS was on notice of the possibility
`of the Court's constructions from at least the time MASS
`proposed its constructions. MASS's “wait-and-see” approach
`to claim construction is antithetical to the Local Patent Rules.
`Allowing such an approach would completely abrogate the
`purpose of the Patent Rules, which is to effectuate an orderly
`and efficient pretrial process.
`STMicroelectronics, Inc.
`v. Motorola, Inc., 307 F.Supp.2d 845, 849 (E.D.Tex.2004)
`(Davis, J.). Such a policy would encourage future accused
`infringers to propose narrow constructions focused on non-
`infringement while sidelining potential invalidity defenses
`until the Court issues its claim construction opinion. Such
`gamesmanship is not tolerated in this Court, and the
`Court's rules are intended to avoid this type of chicanery.
`Accordingly, this factor heavily weighs against finding good
`cause.
`
`The exclusion of invalidity contentions is highly important as
`exclusion would prohibit MASS from asserting an invalidity
`defense. This factor weighs in favor of finding good cause;
`however, it also underscores MASS's inadequate explanation
`for failing to plead its “highly important” affirmative defense
`on time.
`
`Allowing MASS leave would prejudice DMLP. MASS argues
`that DMLP was, or should be, aware of most of the asserted
`prior art as DMLP listed much of the prior art in its own
`invalidity contentions for the ′978 patent. However, this
`argument underscores the prejudice to DMLP as MASS
`incurred the benefit of timely and complete *287 prior art
`disclosures early on in the litigation, a benefit of which MASS
`deprived DMLP. Also, the additional prior art references
`may give rise to new claim construction issues. Extensive
`additional research may also be needed, requiring DMLP
`to secure additional experts. Thus, allowing the invalidity
`contentions would be highly prejudicial to DMLP. This factor
`weighs against finding good cause.
`
`Although trial is still six months away, a continuance would
`most likely not cure DMLP's prejudice. Unlike the typical
`case of amending invalidity contentions, MASS is seeking
`to add a previously undisclosed defense. The late addition of
`invalidity contentions would require DMLP to shift its trial
`strategy from not only infringement but also to defending the
`
`′170 patent's validity. While enough time and resources will
`eventually cure any prejudice, this would not contribute to a
`just and speedy determination of the merits. This factor is at
`most neutral in finding good cause.
`
`Furthermore, the Court will not reward MASS for its
`gamesmanship. The Local Patent Rules “exist to further
`the goal of full, timely discovery and provide all parties
`with adequate notice and information with which to litigate
`their cases, not to create supposed loopholes through which
`parties may practice litigation by ambush.”
`Finisar Corp.
`v. DirecTV Group, Inc., 424 F.Supp.2d 896, 901 (quoting
`IXYS Corp. v. Advanced Power Tech., Inc., 2004 WL
`1368860 *3 (N.D.Cal. June 16, 2004)). Allowing MASS
`to serve its untimely invalidity contentions would open the
`floodgates for other accused infringers to circumvent the
`Local Patent Rules, thereby completely nullifying Patent Rule
`3–3.
`
`MASS has not shown good cause for granting leave;
`accordingly, the Court DENIES MASS's motion.
`
`MOTION FOR LEAVE TO AMEND ANSWER
`
`As the Court denied MASS's Motion for Leave to Serve
`Invalidity Contentions, MASS's Motion for Leave to Amend
`Its Answer is futile. As noted above, MASS is prohibited
`from introducing evidence of invalidity because MASS
`failed to timely serve its invalidity contentions. See FED.
`R. CIV. P. 37(b)(2)(A)(ii) (“[the court may prohibit] the
`disobedient party from supporting or opposing designated
`claims or defense, or from introducing designated matters in
`evidence”). Thus, MASS would be unable to prove the issue
`of invalidity.
`
`Furthermore, the same reasoning discussed above weighs
`against granting MASS leave to amend its answer to include
`an invalidity defense. The Court will not reward MASS for
`its dilatory tactics. Accordingly, the Court DENIES MASS's
`Motion for Leave to Amend.
`
`CONCLUSION
`
`For the aforementioned reasons, the Court DENIES MASS's
`motions for leave (Docket Nos. 279 and 281).
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Exhibit 2017
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`MASS Engineered Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284 (2008)
`70 Fed.R.Serv.3d 1113
`
`All Citations
`
`250 F.R.D. 284, 70 Fed.R.Serv.3d 1113
`
`End of Document
`
`© 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2020 Thomson Reuters. No claim to original U.S. Government Works.
`
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`Exhibit 2017
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