UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT
Plaintiff GEOMATRIX SYSTEMS, LLC v. , Civil No. 3:20cv1900 (JBA)
Defendant ELJEN CORPORATION, April 10, 2023 . RULING ON PLAINTIFF’S MOTION TO AMEND
Markman The Court issued its Order on October 12, 2022 with its constructions of forty-two terms appearing throughout eighteen claims and four patents. Relevant to this motion, the Court rejected Plaintiff’s argument that the terms “spacing connectors” and “separation spacers” needed no construction and ruled instead that DefendMaanrtk’sm parno posed construction of each term as requiring “lines” and “anchors” was correct. ( Order [Doc. # 131].) Plaintiff Geomatrix now seeks to amend its infringement contentions to incorporate the Court’s constructions, but also seeks to add supplemental contentions based on the Court’s construction of “spacing connectors,” which it asserts constitutes good cause for amendment. (Pl.’s Mot. for Leave to Amend [Doc. # 140].) Defendant maintains that amendment would be futile because Plaintiff’s proposed supplemental infringement contentions are “meritless under the Court’s already-existing claim constructions” and di sputeBs atchke gerxoisutnendc e of good cause. (Def.’s Opp’n to Leave to Amend [Doc. # 143].) The Amended Complaint alleged infringement of claims across four patents: the U.S. Patent Nos. 9,174,863 (the “’863 Patent”); 9,650,271 (the “’271 Patent”); 10,065,875 (the “’875 Patent”); and 10,392,278 (the “’278 Patent”). Each of those patents is from the same patent “family” and stem from Patent Application ‘968, which became Patent ‘390 in 2006 (“the 2006 Patent”). The relevant passages of the “Specification” referenced throughout appear Ain. the sCpoeucrifti’csa Mtioanrsk mofa bno tRhu tlhine g2 0 06 Parent and the other patents in the family. Markman During the claim construction process, Defendant requested the construction of, among other terms, “spacing connector” as used in the ‘271 Patent, Claims 1 and 10, and separately requested the construction of the phrase following it, “connected to the first infiltrative channel and connected to the second infiltrative channel.” (Joint Claim Construction Statement [Doc. # 80] at 17, 21.) It also requested construction of the term “separation spacer” as used in the ‘875 Patent, Claim 1, ‘278 Patent, Claims 1, 22, and 33, and of the phrIdas. es that surrounded “separation spacer,” such as “having a length and a first anchor.” ( at 24.) Defendant proposed construing spacing connectors as “at least two lines, each line attached to a pair of anchors, attach ed to adjacent channels respectively,” while it proposed defining a separation spacer as M“aalriknme aanttached to a pair of anchors attached to adjacent channels respectively.” (Def.’s Brief [Doc. # 71] at 13.) The only distinction in the two proposed constructions was the difference in the contemplated number of lines. The Court categorized the disputed terms into groups, one of which is relevant here: Group E, which posed the question of whether the two terms “spacing connector” and “separation spacers” should be “interpreted in light of the Specification’s limited deMscarrikpmtioann of the invention as solely employing lines and anchors connected to the channels.” ( Order at 13.) Because the terms “spacing connectors” and “separation spacers” appear only in the claims of the respective patents, but nowhere in the Specification of any of the patents or anywhere at all in the original 2006 Patent, Defendant argued that the terms should be construed as a “pair of anchors” that are “attached to permeable sheeting on adjacent channels” and also attached to a “line” allowing the channels to be spaced a predetermined aImd.ount in the ground to facilitate the backfilling of the volumes between adjacent channels.”
( at 14.) Defendant’s basis for this argument was a paragraph from the Specification describing one of the embodiments, which read: Additionally, there are a plurality of pairs of anchors 240, attached to the permeable sheeting on adjacent channels. Each pair of anchors 240 is attached to a line 244. The anchors 240 and lines 244 are configured to allow the channels 228, 232, 236 to be spaced a predetermined amount in the ground to facilitate the backfilling of the volumes between adjacent channels 228, 232, 236 with sand, or other backfill. However since the lines 244 are attached to adjacent channels, the channels 228, 232, 236 may be collapsed (i.e. set close together) for shipping. The anchors 240 may be any suitable attaching device, including but not limited to staples, plastic staples, washers. The lines 244 may be any suitable line, including but not limited to nylon line, rope, twine, chain link. To install the disclosed conduit 244, the channels 228, 232, 236 are expanded to the maximum separation distance between them, given the length of the lines 244. Because Plaintiff had sought an effective date for its patents of 2006, thus requiring that the terms be interpreted in light of the 2006 Patent’s contents rather than the later embodiments or claims of the more recent patents, the Court found that “anchors” and lines” language must be used to define “spacing connectors” and “separation spacers” based on the absence of anything else in the 2006 Patent that could be construed as defining those terms. In the chart at the end of its order, the Court included a separate entry for “separation spacer” as used in both the ‘875 Patent, Claim 1, and the ‘278 Patent, Claims 1, 22, and 23, cMonasrtkrmuianng it as “a line connected to a pair of anchors connected to adjacent channels.” ( Order, 32.) It also construed “separation spacer” within the context of longer phrases, such as construing “separation spacer having a length and a first anchor” as “a line, connectedI dt.o pair of anchors connected to adjacent channels, having a length and a first anchor.” ( ) However, the Court’s order defined “spacing connector” only as part of a longer phrase: Original Text from 271 Patent, Claims 1 | Court’s Construction: and 10: “a first pair of spacing connectors | “a first pair of lines, each line attached to a connecting the first and second infiltrative | pair of anchors, connecting the first and channel, each connector of the first pair of | second infiltrative channel, each connector spacing connectors connected to the first | of the first pair of spacing connectors infiltrative channel and connected to the | connected to the first infiltrative channel second infiltrative channel” and connected to the second infiltrative channel”
B. Plaintiff's Prior Infringement Contention Plaintiff's initial infringement contentions identified the top cardboard edge spacers in certain of Defendant’s products as one variation of infringing “spacing connectors.” An example is shown by the diagram below: a first pair of spacing connectors connecting the first and second infiltrative channel, each “ The Prior Mantis 536-8 Senes includes a first pair of spacing connector of the first pair of spacing connectors connectors (.é., the upper edge spacers) connecting the first connected to the first infiltrative channel and and second infiltrative channel, each connector of the first pair connected to the second infiltrative channel and of spacing connectors connected to the first infittrative Configured to provide a spacing between the first channel and connected to the second infiltrative channel and infiltrative channel and the second infiltrative configured to provide a spacing between the first infiltrative channel, neither connector of the first pair of channel and the second infiltrative channel, neither connector spacing connectors comprising a pipe: of the first pair of spacing connectors comprising a pipe Fal ian = i / p7
First pair of —7 spacing — = connectors VA diemierenerts) Pemieniie a nian □□□
Plaintiff also identified the first, second, and third infiltrative channels that it contends that the spacing connectors were connecting as three adjacent channels, as seen below: | a first, second, and third, infiltrative channel, ane and third _ 7 nfiltrathwe 5 cher:
~ The Prior Mantis 536-8 Series includes a first, second, and third infiltrative channel (Le., & Filter Support Modules (FSMs) for each Mantis 536-8 Series unit.) | GEOMATRIX_00000003.
C. New Proposed Supplemental Contention Plaintiff now seeks to amend its infringement contentions for ‘271 Patent based on the Court’s construction of “spacing connectors” as lines connected to a pair of anchors. Specifically, it identifies the cardboard edge spacers present on certain Defendant products as the “lines,” and identifies the white “retaining bands, alone or in combination with the staples connecting the band” to the cardboard “line,” as the “anchors.” Plaintiff contends that the “first”, “second”, and “third” infiltrative channels as the channels that are connected to the white retaining bands, regardless of sequence, and the “spacing” as any part of the void between the infiltrative surfaces. An example of its new proposed contention regarding Defendant’s products is below:
First pair a ss a . a Na VA / va First pair of =| □□ eee | limes inten lela Loe
infiltrative infiltrative channel channel
Second infiltrative Third infiltrative channel channel
r+ ~—— i > al a ae al □□ : | a ; } |
\ □□ eanhés pn Gece
Second pair Second pair of lines of anchors
Plaintiff further asserts that “even if the cardboard edge spacers and retaining bands/staples do not literally equate to the ‘lines’ and ‘anchors’ referred to in the Court’s construction,” it should be “permitted to amend its infringement contIedn. tions to explain why the Accused Products infringe under the doctrine of equivalents.” ( at 18.) Plaintiff also seeks to “incorporate the Court’s constructions for the ‘wastewater delivery conduit’ and ‘located and configured to maintain a relative position’ terms, but its inSfreien gement theory for those terms will not change by including the Court’s constructions.” ( Pl.’s Mot. at 11, n. 6.) DefeLnedgaanl tS vtoaincdesa rndo objection to those changes. “It is well-settled in this Circuit that the Rule 16(b) ‘good cause’ standard, rather than the more liberal standard of Rule 15(a), governs a moSteieonP atrok aemr ve.n Cdo fliulemdb aiaft ePric tthuer edse Ianddluinse. a district court has set for amending the pleadings.” , 1 204 F.3d 326, 340 (2d Cir. 2000) . Although the District of Connecticut does not have specific patent rules governing amendment of contentions, “many local district court patent rules for amending contentions” allow “moCdelilfCicaastti oTne cohf sa., c LoLuCr tv-i.m Upnoitseedd Sstcahteedsule ‘only for good cause and with the judge's consent.’” , 152 Fed. Cl. 414, 420 (2021). “[B]oth diligence and prejudice are relevant considerations” when determining wMhorepthheorT rtuhset rUeS Ais, L“LgCo ov.d U nciatuesde S”t attoe samend contentions in a patesneet ainlsfor iCnognevmoelvnet, Incacs. ev.. Compaq Computer Corp., , 132 Fed. Cl. 419, 420 (2017); 643 F. Supp. 2d 336, 343 (S.D.N.Y. 2008). Some courts also weigh additional factors, including “the importance of what is to be excluded” aMndid “wtheest a Avtahilleatbicilsi t&y of a continuance and the effect of a delay upon the judicial proceedings.”
1 Unless otherwise indicated, this opinion omits internal quotation marks, alterations, citations, and footnotes in text quoted from court decisions. Sports All. LLC v. Xerox Corp. Takeda Pharm, . NCoo.. 1v9. -SCuVn- 6P0h3a6rWma, 2 G0l2o1b . WFZLE 2906372, at *5 (W.D.N.Y. July 9, 2021) (c iting , 2016 WL 9229318, *4 (D.N.J. 201 6)).D iscussion Markman The parties’ arguments touch on both the substance of the Court’s ruling and on the standard for infringement contention amendment. First, Defendant arMguaersk mthaant Plaintiff’s amendment would be futile because it misconstrues the Court’s prior ruling, and its proposed amendments are not viable under the Court’s construction of the tMearmrk m“sapna cing connector”; Plaintiff, on the other hand, maintains that nothing in the Court’s ruling precludes its new infringement contentions. Second, Defendant argues that Plaintiff fails to show good cause for amendment, and that it will be prejudiced by any amendment; Plaintiff argues that it has been diligent in seeking amendment, and that any prejudice to Defendant can be minimized. Because the question of prejudice turns in part on whether thMe aterkrmm a“nspacing connectors” requires any further construction, possibly through aSeded Iitnito'nl Caol ntrols & M pearosucreeemdienngtss, Cthorep C. ov.u Hrto bneegywinesl lw Initth'l ,t hInec p., arties’ arguments as to futility. No. 512CV1766LEKATB, 2018 WL 11426743, at *4 (N.D.N.Y. May 10, 2018) (finding that the futility of proposed amendments was properly considered in the context of a motion to amend infringement contentAio. nAs)m. endment of the Complaint
Defendant argues that Plaintiff’s amendment of its infringement contentions would be futile because it has not also sought to amend its complaint. However, the cases Defendant cites for this proposition are non-patent cases that do not discuss the interaction between infringement contentions and the complaint, nor the effect of amending one but not the other, and Defendant cites to no case law supporting the proposition that a plaintiff must amend the complaint in order to supplement its contentions. Although very few cases have addressed the issue directly, at least one court has found that a plaintiff is “entitled tZoi troe vLiLsCe ivt.s C tRhJe, oIrnyc .of infringement regardless of whether it sought to amend its complaint.” , No. CV JKB-17-1733, 2017 WL 6388821, at *2 (D. Md. Dec. 14, 2017). Because Defendant fails to explain why the complaint would need amending for Plaintiff to also bring supplemB.e nMtael ainnfirningg oefm “Sepnat ccoinngte Cnotnionnesc, tthoers C”o urt rejects Defendant’s argument. Defendant argues that Plaintiff’s proposed supplemenatdajla cinefnrti ngement contentions are not viable because a “spacing connector” must connect infiltrative channels. (Defendant’s Opp’n [Doc. # 143] at 11-12.) According to the Defendant, the “Court’s analysis clearly shoIdw. ed that it considered a ‘spacing connector’ to be the same thing as a ‘separation spacer.’” ( at 11.) The Court construed a “separation spacer” as “a line connected to a pair of anchors connected to adjacent channels,” and construed both “separation spacer” and “spacing connector” by referencing the passage in the Specification that describes lines and anchors, which also notes that the lines and anchors are “attached to permeable sheeting on adjacent channels.” From this, Defendant maintains that the Court’s Order should be interpreted as applying the definition of “separation spacer” to “spacing connector,” including the requirement of adjacency, and that “[t]he omission of a ‘spacing connector’ entry in the Court’s concluding claim constIrdu.ction chart, separate from ‘separation spacer,’ appears to be an unintentional omission.” ( ) Under its interpretation of the Court’s order, Defendant asserts that Plaintiff’s proposed amended claim infringement contentions would be futile, because their proposed contentions do not show spacing connectors that are connected to adjacent channels. Plaintiff disagrees with Defendant’s characterization of the Court’s order, because while “[t]he claims of the ’271 Patent recite ‘first,’ ‘second,’ and ‘third’ infiltrative channels, [] the claims do not require these infiltrative channels to be adjacent one another.” (Pl.’s Mot. at 9.) Plaintiff points to language in the Specification stating, “the terms ‘first’, ‘second’, and ‘third’, and the like may be used herein to modify elements performing similar and/or analogous functions. These modifiers do not imply a sIpda.tial, sequential, or hierarchical order to the modified elements unless specifically stated.” ( ) Plaintiff also points to the languagae ospf atchien g‘2 71 Patent claims which require spacing connectors to be “configured to provide between the first infiltrative channel and the second infiltrative channel” as open- ended languIadg.e that should be construendo tbroadly, rather than being narrowed by the word “adjacent.” ( ) Because the Court did incorporate the word “adjacent” into the section of the chart in which it construed “spacing connector,” but did use the word “adjacent” when construing “separation spacer” despite Defendant’s proposal to define “sapdajcaincegn cto nnector” as “at least two lines, each line attached to a pair of anchors attached to channels respectivelyo”n,l yP laintiff maintains that the Court “drew a clear distinctionI”d .requiring adjacency for separaMtiaornk mspaanc ers, and not for “spacing connectors.” ( ) Plaintiff contends that the Court’s order “only shows that the terms ‘spacing connectors’ and ‘separation spacers’ should include reference to ‘anchors’ and ‘lines,’ not that the two terms must be identical.” (Pl.’s Reply [Doc. # 144] at 2-3.) MaTrhkme Cano urt was asked two overarching questions about spacing connectors as part of the proceedings: “Whether the “spacing connector” and “separation spacer” elements in the ‘271, ‘875, and ‘278 Patents should be interpreted in light of the Specification’s limited descripMtioanrk omfa tnh e invention as solely employing lines and anchors connected to the channels,” ( Order at 13), and “[w]hether the elements of the asserted claims dealing with how the separation spacer/spacing connector inhibit and facilitate movement be construed in light Iodf. the Specification’s description of how the anchors and lines accomplish such action.” ( at 18.) Neither of those questions involved a determination of whether the connectors or spacers needed to be connected or attached to adjacent infiltrative channels. While it might have been a peripheral issue to the extent Defendant’s proposed construction of both spacing connectors and separation spacers nMeaerdkemda tno be connected to adjacent infiltrative channels as part of their definition in its briefing, the parties did not specifically touch on adjacency at oral argument or otherwise indicate that it was a determinative issue for any of the claims, which is why the Court did not address it in its ruling. The Court thus clarifies that it has so far expressed no opinion on whether a “spacing connector” must be lines and anchors connected or attached to adjacent infiltrative channels. The Federal Circuit has held that “district courts may engage in rolling claim construction, in which the court revisits andC oanltoecros, iItns cin. vte. Erpnreertgayt i&on E onfv tthl. eI nctla'li, mL. Cte.rms as its understanding of the technology evolves.” , 460 F.3d 1349, 1359 (Fed. Cir. 2006). Some courts have accordingly considered motions for clarification as part of this “rolling” process of claim construction and issued orders offering clarification of Sae cel aim for which the court used its own construction and which the parties found u, n clear. Robert A. Matthews Jr., “Motions For Clarification of a Claim-Construction Ruling” 1 Annotated Patent Digest § 3:37.50 (March 2023 Update). However, the parties’ briefs focus only on whether the Court’s prior order already decided the issue, rather than on fully briefing the merits of their respective positions, giving the Court no way of knowing whether there might be any further evidence or portions of the claims, specifications, patent applications, or patent prosecution history that might inform the Court’s understanding of the term. As such, the Court does not view its ruling on this motion as an appropriate vehicle to resolve the issue by formally adopting either Plaintiff or Defendant’s proposed constructions. Because the proposed supplemental infringemeMnta croknmtaennt ion and associated doctrine
of equivalent theory are not futile under the Court’s Order, the Court considers now whether tCh.e rGeo iso dgo Coadu csaeu tsoe Atom aemnedn d.
Defendant argues that Plaintiff cannot establish good cause because it “has long known of Eljen’s lines-and-anchors position,” undermining its claim of diligence,M aanrdk mthaant permitting leave to amend would require “reopening of fact discovery and the process,” causing it significant prejudice. (Def.’s Opp’n at 1-2.) The Court addresses each argument in tu1r.n .D iligence and the Reason for Delay “The burden is on the moOv2a Mnti ctroo e Isntta'bl Llitsdh. vd.i Mligoennocleit rhaict hPeorw tehra Sny osn., Itnhce. opposing party to establish a lack of diligence.” , 467 F.3d 1355, 1366 (Fed. Cir. 2006). The movant must show “not only that it prompbtalys ims oved to amend its contentions, bWuitl liaamlsoso nt heaxt r eilt. Hwomase Bdoilnigdehnotl deinrs ’ dLiisqcuoivdeartiinngg Ttrh. ev . Veriz foonr Ciotsm mpcro'npso Isnecd. amendment.” , 2013 WL 12313349, *2 (S.D.N.Y. 2013). “Considerations in determining a party's diligence include additional or unexpected results of discovery, along with the possibility of uCenlalcnatsict iTpeactehds. ,c LoLnCs tvr.u Ucntiiotend o Sf tcalateims terms according to the court's claim construction order.” Markman , 2019 WL 5959571, *5 (Fed. Cl. 2019). The Order was issued on October 12, 2022; Plaintiff notified Defendant of its intent to seek leave to amend its infringement contentions based on the Court’s construction of “spacing connector” within a week, followed up with phone calls and emails. The motion for leave to amend was filed by November 18, 2022, after the parties determined that they would not reach an agreement on the right to amendM. aInr kPmlaainnt iff’s view, its diligence should be measured as the time from the issuance of the Order to the time its mbeofotiroen waMs fairlekdm; aitn m aintains that it did not identify “lines” and “anchors” in its contentions
the order was issued because its position was that those terms did not limit the meaning of “spacing connectors,” and that there was “no need” to identify channels other than the two adjacent ones as the “first” and “second” infiltrative channels, because the cardboard edge spacers connected all of the infiltrative channels. (Pl.’s Mot. at 7.) Plaintiff maintains that it would have been “burdensome and a substantial waste of resources for GeomatMriaxr tkom aamne nd its contentions for each of Eljen’s proposed claim constructions” prior to the Order given the number of claims that Defendant sought to construe, because it believed the Court would reject Defendant’s proposed constructions, and because the Court did ultimately reject many of Defendant’s proposed constructions. (Pl.’s Reply [Doc. # 144] at 9-10.) In support, Plaintiff cites to a nuMmabrekrm oafn cases and local patent rules that measure diligence from the time after an adverse Order is issued, including the Local Patent Rules for the EasCteerllnC aDsits tTreiccth so.f, LTLeCx avs. aUnndit efodr S tthaete Ms iddle District of North Carolina, (Pl.’s Mot. at 22), and , 152 Fed. Cl. 414, 417 (2021), where plaintiff sought to amend its contentions after the Court’s claim construction order was issued. The court there recognized “a split view in other jurisdictions regarding whether a moving party's diligence should be measured from the issuance of a claim construction order or from service of claim construction briefs” and that “there is no clear rule in any jurisdiction—including the Court of Federal Claims and the RCFC patent rules—thaItd g.overns tCheell ctiamsteframe for measuring a party's diligence afteMr aa rcklamiman c onstruction order.” at 425. ultimately rejected requiring that a ruling be “unexpected or unforeseeable” for it to constitute good cause, and instead applied the standard that “the measurement of dIidli.gence starts from a claim construction order that is different from a party’s proposal.” Cellcast Holmberg v. United States,
However, the rationale on which relied came from No. 14-cv-284, Docket No. 85 (Fed. Cl. Dec. 5, 2016), in which the court held that diligence should be measured from the claim construction order because a different construction would makCee iltl Craesats, onable for the party to “dig deeper than [it] had previously.” Under this reading of diligence should start from a claim construction order different from a party’s proposal, but not if the party has already had the opportunity to “dig deep” on the issue and otherwise had every reason to expect that the courtH’so almdobpetrigo’sn of a different construction would give riOs2e tMoi tchroe, new infringement contention. reasoning also aligns with the holding in 467 F.3d at 1367, where the Federal Circuit found a lack of diligence when Plaintiff “had reason to know of” Defendant’s theory of the product when it received a data sheet identifying a component critical to its theory of the product in Defendant’s initial disclosures, but waited until after the claim constructionId h. earing and three months after depositions to serve proposed amended contentions. There, the Federal Circuit rejected Plaintiff’s arguments that it had needed the benefit of the depositions and further time to develop its theory because Plaintiff failed to explaiInd .w hy it could not have diligently developed the theory in the amended contentions sooner. Although the Second Circuit has not spokeCne ollnc athste issuBea, uosthche r& c oLuormtsb f rIonmc. wv.i tVhiitna mthiins cHieracultiht have taken a different position than in . In , Inc., No. 13-CV-6498, 2015 WL 13574308, at *3 (W.D.N.Y. Sept. 29, 2015), the parties were engaged in a very similar dispute: the plaintiff urged that the term “approximately” was clear and did not need to be construed by the court, while the defendant argued that “approximately” should be construed to limit the range for a particular ingredient in a disclosed supplement. In that instance, however, the result was reversed; the court sided wIdi. th plaintiff, finding that “approximately” had its ordinary meaning of “reasonably close to.” The defendant subsequently sought to amend its invalidity contentions. The court held that while the claim construction in its order was “different” than the one urged by defendant seeking to amend its invalidity contentions, that alone did not establish good cause because “[a] party in a patent dispute cannot stick its head in the sand so as to be able to claim diligence by Mdealirbkemraatnely waiting until after claim terms are formally coInds. trued by the Court in a written decision to revise their invalidity contentions.” Instead, the court determined that diligence should be measured from the point at which from the defendant should have known that their amendments would be needed if the Court endorsed the claim construction views urged by the other side, such as “the day the moving party received the proposed constructions” or the time the party “became awaIdre. of the risk that [the court] could adopt [the opposing party’s] proposed constructions.” Defendant relies on this same rationale to argue that Plaintiff has not been diligent because it has long known about both the lines-and-anchors construction of “spacing connectors” based on a letter sent to Plaintiff’s counsel on June 8, 2017, where Defendant responded to Plaintiff’s letter accusing it of infringement by arguing that “[t]he fatal flaw in your theory of potential infringement is that it relies upon an impermissible broadening of the scope of the recited ‘spacing connectors’ as being far more than ‘lines’ and ‘anchors’ disclosed in the 2006 CIP.” (Def.’s Opp’n at M19a;r Dkmefa.’sn Opp’n, Exh. A.) Defendant also points to Plaintiff’s counsel’s arguments at the hearing that the lines-and-anchors construction was being proposed “for the purpose of creating noninfringement positions” as evidence that Plaintiff understood the potential consequences of the Court adopting the Defendant’s construction to its own infringemenMta croknmteannt ions, but nevertheless chose not to seek leave to amend prior to the issuance of the Order. (Def.’s Opp’n at 5-6.) Rather than being diligent, Defendant asserts that “Geomatrix has long known about the lines-and- anchors” issue but chose to “tak[e] its chances with the Court on whether it would agree with Eljen on that issueId” .rather than proposing alternative infringement theories to prepare for
that eventuality. ( ) Cellcast BauschT &h Leo Cmobu,r t declines to adopt the standard and instead adopts the one used in under which Plaintiff has not been diligent in seeking to amend. Plaintiff was “well aware” prior to serving infringement contentions that Defendant was relying on a lines-and-anchors construction of the term “spacing connector,”B gaouinscgh a &ll tLhoem wb,a y back to Defendant’s articulation of its position in the June 2017 letter. 2015 WL 13574308, at *3. To the extent Plaintiff may argue that the Court’s construction of “spacing connector” was not literally identical to Defendant’s proposed construction, thus making it “surprising,” the Court rejects that argument; the only difference is that the word “adjacent” was in Defendant’s proposed construction but not in the Court’s, which can hardly be considered surprising or even unfavorable to the Plaintiff given that its position is and has been that “spacing connector” does not require adjacency. The relevant terms of the definition here—the application of the “lines” and “anchors” language to “spacing connector—was a potential construction known to Plaintiff since 2017. The consequences of a ruling in Defendant’s favor were “readily apparent” to Plaintiff’s “experienced patent lawyers long ago[;]” nevertheless, rather than preemptively amending, it adopted a “wait and see” approach to avoid what it determined would beI da. substantial waste of resources based on its confidence that the Court would take its side. at *3-4. Permitting amendment would reward such a strategy and is inconsistent with the “philosophy behind amending claim charts,” which “is decidedly conseIdrvative and designed 2 to prevent the ‘shifting sands’ approach, to a party’s contentions.” . Plaintiff made its
2 Defendant also argues that Plaintiff should be estopped from seeking to amend its infringement contentions because at the prefiling conference Plaintiff sought before amending its complaint, Plaintiff’s counsel said “[w]e don’t want to be presenting the Court with claims and claim construction and then have a process where [Defendant] later choice as a matter of litigation strategy, and it must now live with the consequences of that choice. The same considerations apply in equal force to Plaintiff’s proposed supplemental amendment to include a “doctrine of equivalents” infringement theory. (Pl.’s Mot. at 18-19.) Plaintiff relies on language in its initial infringement contentions that it “asserts infringement under the doctrine of equivalents to the extent that the differences between any Infringing Eljen Products and any claim limitation are insubstantial” to claim that it reserved its right to add a doctrine of equivalents theory. (Pl.’s Mot. Exh. I. [Doc. # 140-10].) However, courts have repeatedly held that conclusory invocations of the doctrine that lack substantive supporting information do nSoet ep, reo.gv.i dRea zgooro Ud ScAa uLsLeC tvo. DamGLe nGdro fuopr, tLhted purpose of bolstering those conclusory assertions. , ., 2022 WL 44627, *5– *8 (D.N.J. 2022) (denying leave to amend to include a doctrine of equivalents theory because its “repetitive invocation of the doctrine throughout the insferein aglesmo ent contentions does not change the fact the assertion was merely conclusory”); Robert A. Matthews, Jr., “Doctrine of equivalents and structural equivalents infringement contentions—Reserving right to later assert doctrine of equivalents”, 1 Annotated Patent Digest § 2:38.50 (“[g]enerally, courts will not give credence to a patentee's attempt, in its infringement contentions or elsewhere, to unilaterally ‘reserve the right’ to later assert infringement under the doctrine of equivalents.”) Plaintiff offers no explanation of why it could not have We just want to make sure that both parties have fully d isclosed their positions and their defenses. disclose[s] defenses and we have to come back and revisit those. Then we narrow and go into claim construction.” (Prefiling Conference Tr. [Doc. # 58] at 8, 22) (emphasis added.) While this was not an explicit commitment not to seek amendment to its infringement contentions, Plaintiff’s counsel’s comment demonstrates a clear understanding of the prejudice that could be caused by a “shifting sands” approach in which the parties theories’ changed after claim construction. asserted this specific doctrine of equivalents theory until now other than the justifications asserted and rejected above. Plaintiff’s lack of diligence alone is grounds to deny its motion to add supplemental infringement contentions. However, there is a second independent reason to deny the motion to amend: the prejudice that amendment would cause Defendant is too great to justify. 2. Prejudice “Factors to consider when determining whether prejudice exists include whether the non-moving party has been genuinely surprised or harmed, . . . whether discovery would be reopened, . . . the effect of amendments on the construction of claim terms, . . . and wRheettuhrenr eMxapiel,r Itnsc h. avv. Ue nstitaekde Sdt oautets comprehensive positions with respect to claim construction.” a. Markm, a1n5 2P Froedce. Celd. i4n5g5s, 459 (2021).
Defendant asserts that if “spacing connectors” was not construed to require adjacency, and the terms “first,” “second,” and “third,” in conjunction with M“asprkamcianng connectors” were also not construed to require adjacency, then it will seek further proceedings to Mreasroklmvea tnhose issues if the motion to supplement is granted. Plaintiff argues that no further proceedings are needed to consider the question of adjacency, and that there is no undue prejudice to Defendant because it cannot “complain that it was in any way shorted on the claim construction process” given the number of terms it submitted for construction, and its lack of success on those terms. (Pl.’s Mot. at 23.) Whether Defendant had the opportunity to submit proposed claim constructions prior to the current motionn ehwas nothing to do with whether it would need further claim construction as a result of infringement contentions, particularly when as Defendant observes, the Plaintiff’s proposed amendments do more than simply incorporate the Court’s 3 constructions into existing contentions. As Defendant argues, Plaintiff’s proposed contentions instead require Plaintiff “to fundamentally shift its identification of many other elements of the Mantis system,” which in turn raises issues such as whether “first,” “second”, and “thirdM” maruksmt ainnd icate adjacent channels or not, an issue not raised or before the Court at the prior hearing. (Def.’s Opp’n at 13.) Particularly notablneo its that Plaintiff relies on the Specification to suggest that “first,” “second,” and “third” need be given their “plain meaning” of three things each following immediately aMftearr kthmea ont her. This is a 180-degree reversal from Plaintiff’s strenuous insistence during the briefing that all the words in each of the patents should be given their plain meaning. In other words, Plaintiff is, as Defendant argues, “implicitly acknowledging that additional claimId .c onstruction analysis is necessitated by Geomatrix’s evolved infringement contentions.” ( at 13-14.) And because Plaintiff never referenced the Specification passage explaining that Mfiarsrtk,m seacno nd, and third infiltrative channels are not necessarily sequential during the proceedings, Defendant cannot be reasonably expected to have anticipated the new contentions Plaintiff now proposes such that it should have requested construction of the terms. Defendant’s awareness that Plaintiff asserted that the cardboard edge spacers were spacing connectors in several of its infringement contentions does not mitigate any prejudice to Defendant, because Plaintiff neither identified the straps and staples as “anchors” nor did it identify non-adjacent channels as the “first,” “second,” and “third” channels such that Defendant could be considered on notice. Thus, Defendant has been prejudiced both because it has been “genuinely surprised” by Plaintiff’s new contentions and because it was deprived
3 Defendant voices no objection to the proposed amendments that merely incorporate the Court’s construction for the terms “wastewater delivery conduit” and “located and configured to maintain a relative position” terms into its existing contentions in order to reflect the correct language and without changing the substance of those contentions, and the Court grants leave to amend for that purpose. Markman
of the opportunity to pursue constructions of the relevant terms during the process; the only way to cure that prejudice would be to conduct another round of claim construction,S weeh iRcdh. wWhidileen leimr, iLteLdC, vw. iRllo ibmerpto Hse. Fbiontkhe a& c Soostn sa,n Idn ca., delay that also prejudices 4 the parties. 579 F. Supp. 3d 345, 355 (N.D.N.Y. 2022) (finding prejudice when “new contentions would very likely require additional claim constructions before the issues related to infringement can be litigated, resulting in adbd.i tiRonea-Ol tpimenei nangd D eixscpoevneser yfo r both parties.”) Plaintiff contends that there is no additional fact discovery Defendant can identify that it would have taken, and that it has agreed to allow Defendant to depose Fred Grasso (Plaintiff’s patent prosecution counsel) and David Potts (inventor of the ‘271) on any “legitimate” question raised by the resolution of the motion if it is permitted to amend, thus mitigating any potential prejudice. (Pl.’s Mot. at 24-25.) Plaintiff further represents that the parties have “agreed to postpone the service of technical expert reports and technical expert depositions” until resolution of this motion to avoid duplicative expert work or expense. (Pl.’s Mot. at 17.) However, Defendant asserts that it was deprived of the opportunity to consider the photographs and documents that were attached to Plaintiff’s motion, including the opportunity to question witnesses on them, or to produce discovery to Plaintiff for its defense such as materials demonstrating that the “straps” identified as anchors are meant only for shipping of the product, and that they are not “connected” to the channels. (Def.’s Opp’n at 16-17.) Defendant also points out that the reason the two depositions remain open is not because of Plaintiff’s generosity, but because Plaintiff was sanctioned for discovery
4 Defendant also contends that a number of other claims will also need construction, including “anchors,” “pairs,” “staples,” and “spacing.” misconduct and was required to make the witnesses available for questioning on wrongfully withheld documents. (Def.’s Opp’n at 17.) Defendant further notes that while some expert discovery has been postponed, expert discovery on damages has already begun on the operative infringement contentions, including the exchange of reports and the completion of three expert depositions, at Ildea. st one of which would also need to be re-opened if the Plaintiff’s motion is granted. ( at 17-18.) At a minimum, if the Court allows amendmMenatr okfm tahne infringement contentions, it will need to engage in further claim construction and proceedings and allow for some limited further discovery. Both will cause further delay, and cause prejudice both in the form of time expended and costs to Defendant. The cause of the prejudice lies solely on Plaintiff’s shoulders, because as discussed above, Defendant was not on notice of the possibility of this new infringement contention, and thus could not have prepared for it by seeking either discovery or further claim constructions prior to the close of those periods in the case timeline. Because Plaintiff failed to carry its burden in showing both its diligence and a lack of prejudice to Defendant, it has failed to show good cause to amend, and its motion to amend its infriDng. emenOtt hcoenrt Iesnstuioenss f owri tChl anreiwfi csautpiopnle m ental contentions is denied. Plaintiff also raises two additional points for clarification; Defendant takes no position on Plaintiff’s requests for clarification in substance. 1. “Attached”
Original Defendant’s Court’s Construction Plaintiff’s Markman proposal proposed clarification attached a first pair of spacing At least two lines, a first pair of lines, aco nfinrestc tepdair of connectors each line attached to a each line to a lines, each line connecting the first pair of anchors pair of anchors, to a and second attached to adjacent connecting the first pair of anchors, infiltrative channel, channels respectively, and second infiltrative connecting the each connector of the attached to the first channel, each first and second first pair of spacing infiltrative channel connector of the first infiltrative connectors and attached to the pair of spacing channel, each connected to the first second infiltrative connectors connected connector of the infiltrative channel channel to the first infiltrative first pair of and connected to the channel and spacing second infiltrative connected to the connectors channel second infiltrative connected to the channel” first infiltrative channel and connected to the second Markman infiltrative channel” During the process, the Plaintiff took issue with Defendant’s proposed replacement of the terms “connected” with “attached,” asserting that “connected” both should be iMntaerrkpmreatne d based on its plain meaning and that it had a different meaning from attached. ( Order at 14.) The Court aIgdr. eed and said that it “will not replace” the word “connected” with the word “attached.” ( at 17.) However, the Court’s construction for ‘271 Patent, Claims 1 and 10, uses the word “attached” in the first part of the phrase but “connect” in the others, as bolded above. Plaintiff contends that this is a typographical error. The Court’s construction as written is correct. The Court left in place the word “connect” or “connecting” wherever it was used in the claim originally; the word “attached” as used in the Court’s construction is not a replacement, but an addition that comes directly from the Specification language which it used to construe “spacing connector” as “lines” and “anchors” that were “attached” to either each other, the permeable sheeting, or the channels. “Attacheda”t tiasc ahlisnog more appropriate given the Specification’s definition of anchors as “any suitable device.” (emphasis added.) There is no further need for correction or clarification. 2 . “Pairs” Original Court’s Construction Plaintiff’s proposed clarification Claim 1 Claims 1 and 10: Claim 10: : a first pair of spacing a first pair of lines, each “a first line, the first line connected connectors connecting the first line attached to a pair of to a pair of anchors, connecting the and second infiltrative channel, anchors, connecting the first and second infiltrative each connector of the first pair first and second channel, the first spacing of spacing connectors infiltrative channel, each connector connected to the first connected to the first connector of the first pair infiltrative channel and connected infiltrative channel and of spacing connectors to the second infiltrative channel” connected to the second connected to the first and “a second line, the second line infiltrative channel and infiltrative channel and connected to a pair of anchors, configured to provide a spacing connected to the second connecting the second and third between the first infiltrative infiltrative channel” infiltrative channel, the second channel and the second spacing connector connected to the infiltrative channel, neither second infiltrative channel and connector of the first pair of connected to the third infiltrative sCplaaicmin g1 0connectors comprising channel” a pipe : A first spacing connector connecting the first and second infiltrative channel, the first spacing connector connected to the first infiltrative channel and connected to the second infiltrative channel and configured to provide a spacing between the first infiltrative channel and the second infiltrative channel Plaintiff notes that while Claim 1 referenced “pairs” of spacing connectors, Claim 10 did not; nevertheless, the Court described a “pair” of lines connected to a “pair” of anchors in its construction of both Claim 1 and Claim 10. The Court clarifies that Claim 10 should not reference “pairs” of lines and anchors, but that it should retain the word “attached” based on the discussion above, and re-construes Claim 10 as follows: “a first line, the first line attached to a pair of anchors, connecting the first and second infiltrative channel, the first line and pair of anchors connected to the first infiltrative channel and connected to the second infiltrative channel” and “a second line, the second line attached to a pair of anchors, connecting the second and third infiltrative channel, the second line and pair of anchors connected to the second infiltrative channel and connected to the third iCnofinltcrlautsivioen c h annel.” Plaintiff’s motion to amend [Doc. # 140] is GRANTED in part to permit it to “incorporate the Court’s constructions for the ‘wastewseaete sru dperlaiv ery conduit’ and ‘located and configured to maintain a relative position’ terms,” n.3, but is DENIED as to its request to supplement its infringement contentions with a new infringement contention and related doctrine of equivalents theory. The motion for clarification is GRANTED in part and DENIED in part as detailed above. IT IS SO ORDERED.
_____________/s/_______________________________
Janet Bond Arterton, U.S.D.J.
Dated at New Haven, Connecticut this 10th day of April 2023