IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

LUFKIN DIVISION

TYCO HEALTHCARE GROUP LP AND §

UNITED STATES SURGICAL CORP., §
§
Plaintiffs, § Civil Action No. 9:09-CV-176
§
v. §
§ JUDGE KEITH F. GIBLIN
APPLIED MEDICAL RESOURCES CORP., §
§
Defendant. §

ORDER GRANTING DEFENDANT’S MOTION TO STRIKE

Plaintiff Tyco Healthcare Group LP filed suit against Defendant Applied Medical Resources

Corp. claiming infringement of United States Patent Nos. 5,304,143, 5,685,854, 5,603,702,

5,895,377, and 5,542,931.1 Applied now moves to strike Tyco’s Amended Infringement Contentions

and the supplemental expert report of William Dubrul, on the grounds that the deadlines for

submitting amended contentions and expert reports is long past, and Tyco lacks good cause to

amend.

I. Background

A timeline of events is instructive:

December 22, 2006 Deadline for Tyco’s Infringement Contentions. See Doc. #
35.

1
After a dispute over subject matter jurisdiction based on the ownership of the patents-in-
suit, the original case involving Tyco and Applied, 9:06-cv-151, was dismissed, while the co-
pending case filed by both Tyco and United States Surgical Corp. against Applied, 9:09-cv-176.
involving the same facts and patents, was permitted to proceed to trial. Certain motions filed in
9:06-cv-151 and pending when that case was closed, including the instant motion, were re-urged
in 9:09-cv-176.

1
March 15, 2007 The court grants Tyco’s motion for leave to supplement its
Infringement Contentions. See Doc. # 61.

July 2, 2007 Claim construction hearing held.

May 23, 2008 Deadline for parties to designate expert witnesses on issues
for which that party bears the burden of proof and to provide
expert witness reports. Tyco serves Mr. Dubrul’s report on
Applied at this time. See Doc. # 103.

June 20, 2008 Deadline for parties to designate expert witnesses on issues
for which that party does not bears the burden of proof and to
provide expert witness reports. Applied serves its rebuttal
report on Tyco at this time. See Doc. # 103.

August 8, 2008 Dispositive motions deadline. Tyco filed its motion for
summary judgment as to infringement of claim 6 of the ‘702
patent. See Docs. # 138, 143.

September 10, 2008 Applied requests supplemental construction of certain claim

terms by letter brief. See Doc. # 169.

October 24, 2008 Amended Scheduling Order entered, setting trial for July 8,
2009. See Doc. # 181.

November 18, 2008 Court’s claim construction order is entered. See Doc. # 184.

June 30, 2009 Court’s supplemental claim construction order, construing

certain terms requested by Applied in September 2008, is
entered. See Doc. # 219.

July 1, 2009 Applied files its motion to dismiss the case based on lack of
subject matter jurisdiction, on the theory that Tyco lacks
standing because it does not own the patents-in-suit. See Doc.
# 223.

July 7, 2009 In light of Applied’s pending motion to dismiss, the court

continued the Final Pre-Trial Conference until January 6,
2010, with trial to follow on January 11, 2010. See Doc. #
231.

July 30, 2009 Tyco serves Amended Infringement Contentions without

leave of court.

2
 August 29, 2009 Tyco serves the supplemental report of Mr. Dubrul.

September 8, 2009 Applied files a letter brief seeking leave to file a supplemental
motion to strike the Amended Infringement Contentions and
Mr. Dubrul’s supplemental report. See Doc. # 233. The court
granted leave to do so on September 25, see Doc. # 235, and
Applied filed the instant motion on October 2, 2009. See
Doc. # 236.

II. Discussion

A. Applicable Law

Under Patent Rule 3-6, a party can amend its Infringement or Invalidity Contentions in one

of two ways: (1) without leave no later than thirty days after service of the court’s claim construction

order “[i]f a party claiming patent infringement believes in good faith that the Court’s Claim

Construction Ruling so requires,” P.R. 3-6(a)(1), or (2) with leave of court, upon a showing of “good

cause,” P.R. 3-6(b).

P.R. 3-6(b) incorporates Fed. R. Civ. P. 16(b)’s “good cause” requirement.

STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845, 849 (E.D. Tex. 2004). To

determine whether late filed infringement contentions should be allowed, the court must consider

the kinds of factors identified as important in deciding whether infringement contentions should be

excluded. See O2 Micro International Limited v. Monolithic Power Systems, 467 F.3d 1355, 1366

(Fed. Cir. 2006); Computer Acceleration Corp. v. Microsoft Corp., 481 F. Supp. 2d 620, 625 (E.D.

Tex. 2007). A non-exclusive list of factors considered by courts includes:

1. The danger of unfair prejudice to the non-movant;

2. The length of the delay and its potential impact on judicial proceedings;

3. The reason for the delay, including whether it was within the reasonable control of
the movant;

3
 4. The importance of the particular matter, and if vital to the case, whether a lesser
sanction would adequately address the other factors to be considered and also deter
future violations of the court’s scheduling orders, local rules, and the federal rules of
procedure; and

5. Whether the offending party was diligent in seeking an extension of time, or in

supplementing discovery, after an alleged need to disclose the new matter became
apparent.

B. Analysis

1. Whether service of Amended Infringement Contentions without leave was

appropriate

It is undisputed that Tyco did not ask for permission to serve amended Infringement

Contentions, rather, Tyco argues that the amendment was based on its “good faith” belief that the

court’s June 30, 2009 supplemental claim construction order “so required.” This Order clarifies

certain issues raised by Applied in September 2008, and, when necessary, further construes terms.

At issue here are the terms “the end portions of the guard members being substantially flexible

relative to the remaining portions of the guard members to effectively minimize force required to

advance the elongated object through the guard members” in claim 6 of the ‘377 patent and “end

portion dimensioned to reduce the force” in claim 6 of the ‘702 patent.

Tyco suggests that the court’s June 30 Order requires amendment because the court’s

constructions are very different from the constructions Tyco proposed, and used to prepare its

Infringement Contentions, in early 2007. However, the term “the end portions of the guard members

. . . .” in claim 6 of the ‘377 patent was construed in the court’s November 18, 2008 Markman Order,

see Doc. # 184, and the June 30, 2009 Order merely clarified the previous construction of the term:

the phrase “the end portions of the guard members being substantially flexible relative
to the remaining portions of the guard members to effectively minimize force“ means just
that: the end portion of the guard member is substantially flexible, relative to the rest of the

4
 guard member, in such a way that reduces the force required to advance an elongated object
through the valve housing.

Doc. # 219, at p. 18.

Tyco’s suggestion that it was surprised when the court adopted the plain, straightforward

meaning of the term as supported by the specification and claim language, rather than Tyco’s

strained reading that the minimization of force is caused by the flexibility of the entire guard

member, is somewhat difficult to credit. The court discussed, at length, in its June 30, 2009

supplemental order why Tyco’s reading of this claim phrase is clearly contrary to the claim language

and specification.

P.R. 3-6(a)(1) is:

intended to allow a party to respond to an unexpected claim construction by the court. This
does not mean that after every claim construction order, new infringement contentions may
be filed . . . A party cannot argue that because its precise proposal for a construction of a
claim term is not adopted by the court, it is surprised and must prepare new infringement
contentions.

Nike, Inc. v. Adidas America Inc., 479 F. Supp. 2d 664, 667-68 (E.D. Tex. 2007). Tyco suggests that

the Nike standard is inapplicable where, as here, the court adopted a construction wholly different

from the one Tyco utilized to prepare its December 2006 and March 2007 Infringement Contentions.

However, for the reasons already discussed in both this and the June 30 Orders, the court’s opinion

is that Tyco’s proposed construction was completely without basis in the claims and specification,

and that all the June 30 Order did was clarify the court’s previous construction slightly.

Therefore, because Tyco could not have had a reasonable basis to believe its construction,

or a similar construction, would be adopted, the June 30, 2009 Order cannot serve as a basis for

amendment under P.R. 3-6(a)(1).

5
 2. Whether “good cause” exists to permit the amendment and supplemental report
nevertheless

a. The danger of unfair prejudice to Applied

The prejudice to Applied at this point is great. By the time Tyco served its Amended

Infringement Contentions and supplemental expert report, the discovery and dispositive motions

deadlines had long since passed. Although Tyco argues that Applied could have conducted its own

testing and re-deposed Mr. Dubrul, Applied should not have to do so at this late date. This factor

weighs against permitting amendment and supplementation.

b. The length of the delay and its potential impact on judicial proceedings

As already noted, Tyco did not provide the Amended Infringement Contentions until long

after the applicable deadlines had passed. Even crediting Tyco’s argument that the amendment was

necessary after the court’s June 30, 2009 supplemental claim construction order, Tyco still waited

one month—the very last day it could amend under P.R. 3-6(a)(1)—to provide its amended

contentions to Applied. Mr. Dubrul’s report was not provided for two months, until August 29,

2009. Re-opening discovery, as Tyco suggests, was not feasible at that point, as trial was set for

January 2010. This factor also weighs against permitting amendment and supplementation.

c. The reason for the delay

Tyco’s only reason for the amended contentions is that the amendment was necessary after

the court’s June 30, 2009 supplemental claim construction order. The court has already rejected that

argument, and again notes that Tyco did not provide its Amended Infringement Contentions and

supplemental expert report to Applied until one and two months, respectively, after the June 30

6
supplemental claim construction. This factor also weighs against permitting amendment and

supplementation.

d. The importance of the amendment and report

Tyco appears to suggest that it will suffer great prejudice if the Amended Infringement

Contentions and supplemental expert report are excluded, because without them, it cannot assert the

‘702 and ‘377 patents. The court agrees that this would be a substantial penalty.

However, any argument that Tyco’s amended contentions are important or somehow essential

to its case is somewhat undercut by the fact that, even after the June 30 Order, Tyco was apparently

still prepared to go to trial on July 8, 2009 with its original contentions. Although Applied filed a

motion to dismiss for lack of subject matter jurisdiction on July 1, 2009, the court did not rule on this

motion until July 7. Until the July 7 Order, trial was set to begin on July 8. Nevertheless, Tyco did

not amend its infringement contentions during this time, nor indicate to the court that any such

amendment would be forthcoming.

It is also of note that, despite the fact that Applied requested supplemental claim construction

in September 2008, and the parties fully briefed their respective positions on the claim construction

issues in separate briefs as well as summary judgment papers, Tyco never sought to amend its

Infringement Contentions or submit a report from Mr. Dubrul with further testing in light of

Applied’s proposed construction until after the court’s June 30 Order. If the issue of whether force

is minimized by the flexibility of the guard members’s end portion or the guard member in its

entirety was as important as Tyco suggests, Tyco should have anticipated the possibility that the

court would rule against it—especially in light of the near-indefensibility of Tyco’s position—and

7
 sought to amend its contentions and expert reports accordingly.2 Tyco failed to do so until after the

supplemental claim construction order was issued. This factor does weigh somewhat in favor of

allowing amendment and supplementation.

e. Whether Tyco was diligent in submitting the Amended Contentions and

supplemental report

As already discussed, the court does not find that Tyco was diligent in submitting its

Amended Infringement Contentions or supplemental expert report. This factor weighs against
.
permitting amendment and supplementation.

3. Conclusion

After careful analysis, the court finds that consideration of the above five factors favors

striking the Amended Infringement Contentions and Mr. Dubrul’s expert report.

IT IS THEREFORE ORDERED that Defendant Applied Medical Resources Corp.’s Motion

to Strike [Doc. # 236] is GRANTED. The court will strike Tyco’s July 30, 2009 Amended

Infringement Contentions and Mr. Dubrul’s August 29, 2009 supplemental expert report.

SIGNED this the 22nd day of February, 2010.

____________________________________
KEITH F. GIBLIN
UNITED STATES MAGISTRATE JUDGE

2
The court rejects Tyco’s suggestion that Mr. Dubrul’s supplemental report is proper
under Fed. R. Civ. P. 26(e), because experts have a duty to supplement after a court’s claim
construction. Tyco’s argument omits a key word found in Rule 26(e)(1)(A): “timely.” Under the
facts of this case, it is not timely to supplement an expert report two months after the claim
construction order in question.