United States District Court, D. Arizona
JAMES A. TEILLRORG SENIOR UNITED STATES DISTRICT JUDGE
Pending before the Court is Defendants’ Motion for Leave to Serve Amended Infringement Contentions and Supplement Their Opening Infringement Expert Report to Account for the Court’s Markman Order. (Doc. 226). With discovery concluding and the dispositive motion deadline looming, the Court ordered expedited briefing. (Doc. 229). The parties diligently complied,  and the Court now rules on the motion.
Over two years ago, GoDaddy filed a non-infringement lawsuit against RPost concerning several patents that claim various methods of electronic mail communication. (Doc. 1). After a series of motions to dismiss, the parties’ claim construction briefing was completed in early 2015, and a Markman Hearing was set for March 11, 2015. See (Docs. 76, 114, 117, 119). However, on March 3, 2015, GoDaddy filed a Motion to Stay, effectively delaying the Court’s claim construction for several months. (Doc. 121). After resolving the motion to stay, the Court conducted a Markman Hearing on October 22, 2015. (Doc. 182). The Court issued its Markman Order on January 19, 2016, construing the thirty-seven disputed claim terms across six patents. (Doc. 219). After a two month time extension, discovery concluded on January 29, 2016. (Doc. 190).
On January 28, 2016, RPost filed its motion for leave to amend its infringement contentions and supplement its expert report and requested expedited disposition of the motion. (Doc. 226). Specifically, RPost requested the opportunity to serve amended infringement contentions by February 5, 2016 and serve a supplement to its expert report by February 12, 2016. (Id. at 1). Because GoDaddy needed to review the proposed amended contentions to effectively respond to the motion, the Court required RPost to serve its proposed amended infringement contentions on GoDaddy by February 1, 2016. (Doc. 229). RPost timely served its proposed amendments. (Doc. 237).
II. Legal Standard
RPost’s motion to amend its infringement contentions and supplement its expert report implicates the “good cause” standard of Federal Rule of Civil Procedure (“Rule”) 16 as it requires amending the Court’s Rule 16 Scheduling Order. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Specifically, “[a] schedule may be modified only for good cause and with the judge’s consent.” Fed.R.Civ.P. 16(b)(4).
The Federal Circuit has found that two elements are necessary for a party to meet the “good cause” standard when the party seeks to amend infringement contentions or supplement an expert report: (1) the movant’s diligence in moving to amend and (2) the lack of prejudice to the non-movant. See O2 Micro, 467 F.3d at 1366; Allvoice Developments US, LLC v. Microsoft Corp., 612 F. App’x 1009, 1015 (Fed. Cir. 2015). As to diligence, “[t]he burden is on the movant to establish diligence rather than on the opposing party to establish a lack of diligence.” O2 Micro, 467 F.3d at 1366 (citing Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed. Cir. 2002)).
The “vast majority” of the dispute between the parties is whether RPost can amend its infringement contentions to include a theory of liability that purportedly was not asserted in its preliminary infringement contentions served on November 3, 2014. See (Doc. 244 at 7). Namely, RPost seeks leave to amend its infringement contentions to allege infringement under the Doctrine of Equivalents (“DOE”) for claims that include the term “server.” (Id.) In order to do so, RPost must demonstrate that it was diligent in filing its motion and that GoDaddy will not suffer prejudice.
At the Rule 16 Scheduling Conference, RPost observed that a party’s infringement contentions may require amendment if the Court issued a Markman ruling “on a particular term where the party had advanced a particular construction before the hearing which was not accepted by the Court.” (Doc. 85 at 16). The Court responded to RPost’s concern by expressly authorizing the parties to file a motion for leave to amend should they wish to amend their contentions. (Doc. 85 at 15-16). Notably, the Court did not state that a motion for leave to amend would ultimately be granted. Rather, the Court simply expressed its “preference” that, should a party seek to amend its contentions, filing a motion for leave was the appropriate way to do so.
The Court issued its Markman Order construing the disputed claim terms on January 19, 2016. (Doc. 219). RPost filed its motion for leave to amend on January 28, 2016, within ten days of the Court’s order. (Doc. 226). RPost argues that it should be able to amend its infringement contentions due, in principal part, to the Court’s construction of the term “server.” (Id.) In the alternative, RPost contends that recently discovered “new” evidence ...