Latest docket entry. Letter from Blank Rome to the Court and all Counsel of Record. Total bitch-slap to the Defense. I love it.
Dear Judge Falk:
We represent Plaintiff, StrikeForce Technologies, Inc. (“StrikeForce”) in the above-captioned cases and write in response to Defendants’ letter dated November 17, 2017, seeking leave to amend their invalidity contentions. StrikeForce opposes Defendants’ request to amend their invalidity contentions because they have failed to meet the requirements of L. Pat. R. 3.7. L. Pat.R. 3.7 requires that Defendants make a timely application and show good cause for the amendment. Defendants have shown neither.
Defendants acknowledge they learned about these two new prior art references shortly after they were served by a defendant (Entrust) in another case, in another court (E.D. Va.). It is not surprising that Defendants’ letter is vague regarding when specifically they learned about these new references—Defendants admitted to StrikeForce they learned about these references in July 2017—four months ago. Ex. 1, Defendants’ November 13, 2017 Email to StrikeForce.
Defendants thus waited four months before seeking to amend their contentions. By Defendants’ own admission, Exhibits D and E to their supplemental contentions are copies of the same charts provided to Defendants by Entrust. Thus, there is no excuse for Defendants to have waited four months before seeking leave to amend. This Court has routinely found a delay of four months to be untimely for the purposes of L. Pat. R. 3.7 and denies those motions. See Antonious v. Nike, Inc., No. 2:11-CV-06327, 2015 WL 6122457, at *4 (D.N.J. Oct. 15, 2015) (“Notwithstanding the fact that the Documents were discovered, or should have been discovered by January 2015, the Trust waited an additional four months to bring its motion to amend. This delay does not amount to timeliness.”); Warner Chilcott Co., LLC v. Mylan Inc., No. 3:13-CV-06560, 2015 WL
3630970, at *8 (D.N.J. June 10, 2015) (finding a delay of 76 days lacked diligence, and further noting that “ he Court would be hard pressed to find such unexplained delay acceptable in any case”); Jazz Pharm., Inc. v. Roxane Labs., Inc., No. 2:10-CV-06108, 2012 WL 3133943 (D.N.J.
July 30, 2012), aff'd, 2013 WL 785067 (D.N.J. Feb. 28, 2013) (denying motion for leave to amend Local Patent Rule disclosures where the defendant located prior art in September and delayed filing its motion until the following February); Horizon Pharma AG v. Watson Labs., Inc.-Florida, No. 1:13-CV-05124, 2015 WL 12850575, at *3 (D.N.J. Feb. 24, 2015) (finding that a six-week delay between discovering the basis for an amendment and moving to amend invalidity contentions was not diligent).1
Defendants also reference the denial of their IPR petitions by the PTAB as somehow justifying their delay in seeking leave to amend. More to the point, Defendants believed that their IPR petitions were going to be granted. And for some reason, Defendants believed they were justified in doing nothing with these new references until some later undefined date. Contrary to
Defendants’ expectations, the PTAB wholly rejected both of Defendants’ IPR petitions. Then, with their invalidity case suddenly in tatters, Defendants sought to assert these additional prior art references. As this Court has already demonstrated, Defendants cannot justify their lack of diligence in seeking to amend their contentions on the filing of an IPR petition. Warner Chilcott Co., 2015 WL 3630970, at *8. In other words, the pending IPR petitions did not excuse Defendants from complying with the Local Patent Rules.2
Tellingly, Defendants do not cite any opinion from the District of New Jersey to support their IPR excuse. Instead, they rely on a single Northern District of California case. See generally Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260 (N.D. Cal. May 13, 2016). The facts in that case, however, are very different than those in this case. In Karl Storz, the defendant delayed seeking to amend its invalidity contentions until a stay was lifted; a stay that was granted based solely on the filing of an IPR petition. That court, unlike this Court, routinely grants motions to stay based solely on the filing of an IPR petition. Thus, the defendant in that case had a reasonable expectation that its motion to stay would be granted. That is in stark contrast to this Court, which routinely denies motions to stay based merely on the filing of an IPR petition. See Derma Sciences, Inc. v. Manukamed Ltd., No. 3-12-CV-03388, 2013 WL 6096459, *1 (D.N.J. July 18, 2013) (denying defendants’ preinstitution
motion to stay); Straight Path IP Group, Inc., v. Vonage Holdings Corp., et al., No. 2-14-CV-00502 (D.N.J Aug. 28, 2014) (denying pre-institution motion to stay as premature); Medac Pharma, Inc. et al. v. Antares Pharma, Inc. et al., No. 1-14-CV-01498 (D.N.J. July 17, 2014) (denying pre-institution motion to stay with leave to re-file after institution decision is rendered); Depomed Inc. v. Purdue Pharma L.P., No. 3-13-CV-00571, D.I. 84 (D.N.J. July 9, 2014) (denying pre-institution motion to stay as premature); Power Survey, LLC v. Premier Util. Servs., LLC, 124 F. Supp. 3d 338, at 339 (D.N.J. Mar. 18, 2015) (denying pre-institution motion to stay as premature). Thus, unlike the defendant in Karl Storz, the Defendants in this case had
no reasonable expectation that the case would be stayed based solely on their IPR petition. And indeed, the case has not been stayed. In sum, Defendants cannot point to their failed IPR petition as an excuse for their delay in seeking to amend their invalidity contentions.
Defendants also fail to demonstrate they performed a diligent search in the first instance, as required by L. Pat. R. 3.7. The two prior art references Defendants seek to add are not new. The Chapman reference, for example, is fourteen (14) years old and the Ruddle reference is twentyfive (25) years old. Both were within the public domain for decades at the time Defendants
performed their searches. Indeed, even a cursory prior art search using the “Find Prior Art” feature of Google Patents and a few common terms from the asserted patent reveal both of these references near the top of the search results. Ex. 2, Prior Art Search 1; Ex. 3, Prior Art Search 2.
The fact that these references were so easily identifiable using common search terms appearing in the asserted patent confirms that Defendants did not originally perform a diligent search, otherwise they would have been identified long ago. Thus, Defendants have failed to establish their original search was diligent.
Lastly, Defendants devote much of their argument to the issue of undue prejudice, even inserting it into their arguments regarding their own diligence. But, as this Court has frequently held, the question of undue prejudice is considered only if the party seeking leave to amend has already
met the threshold requirement of diligence under L. Pat. R. 3.7. See, e.g., Merck Sharp & Dohme Corp. v. Sandoz, Inc., No. 3:12-CV-03289, 2014 WL 997532, at *7 (D.N.J. Jan. 6, 2014), aff'd, 2014 WL 1494592 (D.N.J. Apr. 16, 2014) (“If the moving party has not shown its diligence in finding the new information or seeking leave to amend, the court does not even reach the issue of whether the proposed amendment would prejudice the non-moving party.”); AstraZeneca AB v. Dr. Reddy's Labs. Inc., No. 3:11-CV-02317, 2013 WL 1145359, at *3 (D.N.J. Mar. 18, 2013) (“ he Court may only consider prejudice to the non-moving party if the moving party is able to demonstrate diligence.”). Because Defendants fail to meet their burden of showing their initial search was diligent and that their application to amend was timely once they did learn of these references, the Court need not consider undue prejudice to the non-moving party.
For the foregoing reasons, Defendants’ request to amend their invalidity contentions should be denied.
We are available should Your Honor need anything further. Thank you for Your Honor’s
courtesies.
Respectfully submitted,
/s Jonathan M. Korn
Jonathan M. Korn
Dear Judge Falk:
We represent Plaintiff, StrikeForce Technologies, Inc. (“StrikeForce”) in the above-captioned cases and write in response to Defendants’ letter dated November 17, 2017, seeking leave to amend their invalidity contentions. StrikeForce opposes Defendants’ request to amend their invalidity contentions because they have failed to meet the requirements of L. Pat. R. 3.7. L. Pat.R. 3.7 requires that Defendants make a timely application and show good cause for the amendment. Defendants have shown neither.
Defendants acknowledge they learned about these two new prior art references shortly after they were served by a defendant (Entrust) in another case, in another court (E.D. Va.). It is not surprising that Defendants’ letter is vague regarding when specifically they learned about these new references—Defendants admitted to StrikeForce they learned about these references in July 2017—four months ago. Ex. 1, Defendants’ November 13, 2017 Email to StrikeForce.
Defendants thus waited four months before seeking to amend their contentions. By Defendants’ own admission, Exhibits D and E to their supplemental contentions are copies of the same charts provided to Defendants by Entrust. Thus, there is no excuse for Defendants to have waited four months before seeking leave to amend. This Court has routinely found a delay of four months to be untimely for the purposes of L. Pat. R. 3.7 and denies those motions. See Antonious v. Nike, Inc., No. 2:11-CV-06327, 2015 WL 6122457, at *4 (D.N.J. Oct. 15, 2015) (“Notwithstanding the fact that the Documents were discovered, or should have been discovered by January 2015, the Trust waited an additional four months to bring its motion to amend. This delay does not amount to timeliness.”); Warner Chilcott Co., LLC v. Mylan Inc., No. 3:13-CV-06560, 2015 WL
3630970, at *8 (D.N.J. June 10, 2015) (finding a delay of 76 days lacked diligence, and further noting that “ he Court would be hard pressed to find such unexplained delay acceptable in any case”); Jazz Pharm., Inc. v. Roxane Labs., Inc., No. 2:10-CV-06108, 2012 WL 3133943 (D.N.J.
July 30, 2012), aff'd, 2013 WL 785067 (D.N.J. Feb. 28, 2013) (denying motion for leave to amend Local Patent Rule disclosures where the defendant located prior art in September and delayed filing its motion until the following February); Horizon Pharma AG v. Watson Labs., Inc.-Florida, No. 1:13-CV-05124, 2015 WL 12850575, at *3 (D.N.J. Feb. 24, 2015) (finding that a six-week delay between discovering the basis for an amendment and moving to amend invalidity contentions was not diligent).1
Defendants also reference the denial of their IPR petitions by the PTAB as somehow justifying their delay in seeking leave to amend. More to the point, Defendants believed that their IPR petitions were going to be granted. And for some reason, Defendants believed they were justified in doing nothing with these new references until some later undefined date. Contrary to
Defendants’ expectations, the PTAB wholly rejected both of Defendants’ IPR petitions. Then, with their invalidity case suddenly in tatters, Defendants sought to assert these additional prior art references. As this Court has already demonstrated, Defendants cannot justify their lack of diligence in seeking to amend their contentions on the filing of an IPR petition. Warner Chilcott Co., 2015 WL 3630970, at *8. In other words, the pending IPR petitions did not excuse Defendants from complying with the Local Patent Rules.2
Tellingly, Defendants do not cite any opinion from the District of New Jersey to support their IPR excuse. Instead, they rely on a single Northern District of California case. See generally Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-CV-00876-RS (JSC), 2016 WL 2855260 (N.D. Cal. May 13, 2016). The facts in that case, however, are very different than those in this case. In Karl Storz, the defendant delayed seeking to amend its invalidity contentions until a stay was lifted; a stay that was granted based solely on the filing of an IPR petition. That court, unlike this Court, routinely grants motions to stay based solely on the filing of an IPR petition. Thus, the defendant in that case had a reasonable expectation that its motion to stay would be granted. That is in stark contrast to this Court, which routinely denies motions to stay based merely on the filing of an IPR petition. See Derma Sciences, Inc. v. Manukamed Ltd., No. 3-12-CV-03388, 2013 WL 6096459, *1 (D.N.J. July 18, 2013) (denying defendants’ preinstitution
motion to stay); Straight Path IP Group, Inc., v. Vonage Holdings Corp., et al., No. 2-14-CV-00502 (D.N.J Aug. 28, 2014) (denying pre-institution motion to stay as premature); Medac Pharma, Inc. et al. v. Antares Pharma, Inc. et al., No. 1-14-CV-01498 (D.N.J. July 17, 2014) (denying pre-institution motion to stay with leave to re-file after institution decision is rendered); Depomed Inc. v. Purdue Pharma L.P., No. 3-13-CV-00571, D.I. 84 (D.N.J. July 9, 2014) (denying pre-institution motion to stay as premature); Power Survey, LLC v. Premier Util. Servs., LLC, 124 F. Supp. 3d 338, at 339 (D.N.J. Mar. 18, 2015) (denying pre-institution motion to stay as premature). Thus, unlike the defendant in Karl Storz, the Defendants in this case had
no reasonable expectation that the case would be stayed based solely on their IPR petition. And indeed, the case has not been stayed. In sum, Defendants cannot point to their failed IPR petition as an excuse for their delay in seeking to amend their invalidity contentions.
Defendants also fail to demonstrate they performed a diligent search in the first instance, as required by L. Pat. R. 3.7. The two prior art references Defendants seek to add are not new. The Chapman reference, for example, is fourteen (14) years old and the Ruddle reference is twentyfive (25) years old. Both were within the public domain for decades at the time Defendants
performed their searches. Indeed, even a cursory prior art search using the “Find Prior Art” feature of Google Patents and a few common terms from the asserted patent reveal both of these references near the top of the search results. Ex. 2, Prior Art Search 1; Ex. 3, Prior Art Search 2.
The fact that these references were so easily identifiable using common search terms appearing in the asserted patent confirms that Defendants did not originally perform a diligent search, otherwise they would have been identified long ago. Thus, Defendants have failed to establish their original search was diligent.
Lastly, Defendants devote much of their argument to the issue of undue prejudice, even inserting it into their arguments regarding their own diligence. But, as this Court has frequently held, the question of undue prejudice is considered only if the party seeking leave to amend has already
met the threshold requirement of diligence under L. Pat. R. 3.7. See, e.g., Merck Sharp & Dohme Corp. v. Sandoz, Inc., No. 3:12-CV-03289, 2014 WL 997532, at *7 (D.N.J. Jan. 6, 2014), aff'd, 2014 WL 1494592 (D.N.J. Apr. 16, 2014) (“If the moving party has not shown its diligence in finding the new information or seeking leave to amend, the court does not even reach the issue of whether the proposed amendment would prejudice the non-moving party.”); AstraZeneca AB v. Dr. Reddy's Labs. Inc., No. 3:11-CV-02317, 2013 WL 1145359, at *3 (D.N.J. Mar. 18, 2013) (“ he Court may only consider prejudice to the non-moving party if the moving party is able to demonstrate diligence.”). Because Defendants fail to meet their burden of showing their initial search was diligent and that their application to amend was timely once they did learn of these references, the Court need not consider undue prejudice to the non-moving party.
For the foregoing reasons, Defendants’ request to amend their invalidity contentions should be denied.
We are available should Your Honor need anything further. Thank you for Your Honor’s
courtesies.
Respectfully submitted,
/s Jonathan M. Korn
Jonathan M. Korn
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