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Crocs, Inc. v. Effervescent, Inc.

United States District Court, D. Colorado

November 8, 2017

CROCS, INC., Plaintiff,
v.
EFFERVESCENT, INC., HOLEY SOLES HOLDINGS, LTD., DOUBLE DIAMOND DISTRIBUTION, LTD., and U.S.A. DAWGS, INC., Defendants. U.S.A. DAWGS, INC., and DOUBLE DIAMOND DISTRIBUTION, LTD., Plaintiffs,
v.
RONALD SNYDER, DANIEL HART, THOMAS J. SMACH, ANDREW REES, GREGG RIBATT, ANDREW REDDYHOFF, GEORGE B. BOEDECKER, JR., LYNDON HANSON, DONALD LOCOCO, RAYMOND CROGHAN, RONALD FRASCH, MICHAEL MARGOLIS, JEFFREY LASHER, MICHAEL E. MARKS, PRAKASH MELWANI, JOHN P. MCCARVEL, ERIK REBICH, and SARA HOVERSTOCK, Defendants.

          ORDER

          KATHLEEN M. TAFOYA UNITED STATES MAGISTRATE JUDGE

         This matter is before the court on “Dawgs' Motion for Leave to Supplement Its Contentions for the '858 Patent and the '789 Patent” [Doc. No. 507] filed April 3, 2017. “Crocs's Opposition to Dawgs's Motion for Leave to Supplement Invalidity Contentions for the '858 and '789 Patents” was filed on April 24, 2017. [Doc. No. 517.] Defendant Dawgs filed its Reply [Doc. No. 527] on May 8, 2017. The Court issued a claim construction order concerning the '858 patent and the '789 patent on June 27, 2017. [Doc. No. 557.] After claim construction, at this court's behest, the parties filed a “Joint Status Report Concerning Dawgs' Motion for Leave to Supplement Its Contentions for the '858 Patent and the '789 Patent” on August 25, 2017. [Doc. No. 625.] The parties agreed the claim construction order did not change the substance of either side's position on the instant motion.

         Dawgs seeks to supplement its initial invalidity contentions to add two additional shoes it claims as prior art, a different model of the Calzuro Clog manufactured by BIHOS from what is in its initial contentions and a shoe made pursuant to the Thermoshoe Design Registration. Also Dawgs seeks to supplement the explanations in its non-infringement contentions for the '858 patent; supplement its invalidity contentions for the '858 patent to refer to Dawgs' 35 U.S.C. § 112 invalidity positions from its claim construction briefing; further explain its already expressed invalidity positions concerning inventorship to reflect the positions Dawgs has already expressed in its briefing on this issue; and respond to Crocs' argument that Dawgs did not clearly identify “primary” and “secondary” prior art references to the '789 patent. (Mot. at 2-3).

         Crocs objects and claims first that both pieces of prior art at issue were raised in 2006 prior litigation between the parties before the ITC-In the Matter of Certain Foam Footwear, No. 337-TA-567-and therefore Dawgs knew about the shoes before it served its original invalidity contentions. Crocs argues that as those contentions were filed six months previous to the motion, asserting these shoes now is grossly out of time absent a showing of good cause as to why the contentions did not contain the two shoes originally. Further, Crocs claims that the additional provisions proposed by Dawgs constitute “a complete rewrite” of the previous contentions (Resp. at 5) and that given the late nature of the filing, not only has there been no showing of good cause for such a significant overhaul but that at this late date Crocs is prejudiced by the alterations and additions.

         Dawgs submitted a “red-lined”[1] version of the amendments sought at Doc. No. 507-3 (hereinafter “RL Prop. Contentions”).

         LEGAL STANDARDS

         The Local Patent Rules in the District of Colorado require both the plaintiff and the defendant in patent cases to provide early notice of their infringement and invalidity contentions. The Federal Circuit requires parties “to proceed with diligence in amending those contentions when new information comes to light in the course of discovery.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365-66 (Fed. Cir. 2006). The Local Patent Rules seek to achieve this objective by requiring invalidity contentions to be served early in the case to disclose:

(1) An explanation, including the relevant statutory language, of how the item qualifies as prior art;
(2) If anticipation is alleged, identification of each item of prior art and an explanation of how it anticipates the asserted claim;
(3) If obviousness is alleged, identification of each item of prior art or combination of items of prior art, and, separately for each item of prior art or combination of items of prior art, an explanation of how the item or combination of items renders the asserted claims obvious; and
(4) A statement explaining any other grounds of invalidity of any asserted claims D.C.COLO.LPtR 8(b). No later than 28 days after the claim construction order is filed, the parties must serve their final infringement or invalidity contentions. D.C.COLO.LPtR 16. Any invalidity theories not disclosed pursuant to Local Rules 8 and 16 are barred from presentation at trial. D.C.COLO.LPtR 16(b)(2). See also MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-CV-5341-YGR, 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014) (citing Avago Techs. Gen. IP PTE Ltd. v. Elan Microelectronics Corp., 2007 WL 2103896, at *1 (N.D. Cal. July 20, 2007)) (under similar Local Rule).

         The Local Patent Rules specify that in order to amend its invalidity contentions, the party must make a showing of good cause. “If the Final Invalidity Contentions identify additional prior art, the amendment shall be supported by good cause (e.g., discovery of previously undiscovered information or an unanticipated claim-construction ruling) and an accused infringer shall include a separate statement of good cause for any amendment.” D.C.COLO.LPtR 16(b)(3). “A party asserting infringement may seek to exclude an amendment to the Final Invalidity Contentions on grounds that good cause does not exist.” D.C.COLO.LPtR 16(b)(4).

         Notably, Colorado's Local Patent Rules do not directly address a proposed amendment to invalidity contentions that occurs prior to the Final Invalidity Contentions. The Rules contemplate that any additional information, such as new prior art, would be part of the final invalidity contentions, not made by a pre-claim construction motion.

         However, courts in this District have ruled in favor of amendments to infringement and invalidity contentions as soon as new information is discovered. Judge Robert E. Blackburn stated in Wyers Prods.. Grp., Inc. v. Cequent Performance Prods., Inc., ...


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