New Pacer--ORDER DENYING MOTION TO AMEND INVALIDITY CONTENTIONS (Signed By Judge)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
BARCO N.V., a Belgian corporation
Plaintiff,
v.
TECHNOLOGY PROPERTIES LTD., PATRIOT
SCIENTIFIC CORP., and ALLIACENSE LTD.,
Defendants.

ORDER DENYING MOTION TO AMEND INVALIDITY CONTENTIONS

[Re: Docket No. 159]
Plaintiff Barco N.V. (“Barco”) seeks leave to amend its first amended invalidity contentions. The Court having considered the parties’ submissions and oral arguments, the motion will be denied.

I. BACKGROUND

Barco filed the instant action2 on December 1, 2008, seeking a judicial declaration that several patents owned by Defendants Technology Properties Ltd., Patriot Scientific Corp., and Alliacense Ltd. (collectively, “TPL”) are invalid and/or not infringed.3 Subsequently, TPL asserted counterclaims with respect to United States Patent Nos. 5,530,890 (the “’890 patent”), 5,809,336 (the “’336 patent”), and the ’749 patent. Charles H. Moore is a co-inventor of the ’336 patent, the ’749 patent, and the ’890 patent. Runyan Decl., Ex. A. Deposition of Charles H. Moore, (“Moore Depo.”) at 56:15-16. Moore was deposed on November 3, 2010 and November 4, 2010, regarding all three patents. Barco claims that during his deposition, Moore testified to having excluded material information from the ’749 and ’890 patents. Specifically, Barco asserts that Moore admittedly withheld information regarding an arithmetic logic unit (“ALU”) associated with the patents despite the fact that all of the independent claims of the ’749 and ’890 patents include an ALU and describe its interconnections with other elements of the claims. Barco contends that Moore’s failure to include this information violates the enablement and written description requirements of 35 U.S.C. § 112, which provides that: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 35 U.S.C. § 112(1).

II. LEGAL STANDARD

This Court’s Patent Local Rules provide that amendment of invalidity contentions “may be made only by order of the Court upon a timely showing of good cause.” Patent. L.R. 3-6. For purposes of Rule 3-6, “ ‘good cause’ requires a showing of diligence,” and “[t]he burden is on the movant to establish diligence rather than on the opposing party to establish a lack of diligence.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Good cause may exist when there is a “recent discovery of material, prior art despite earlier diligent search” and “recent discovery of nonpublic information.” Patent. L.R. 3-6. In determining whether good cause exists, the Court considers first whether the moving party was diligent in amending its contentions and then whether the non-moving party would suffer prejudice if the motion to amend were granted. This approach allows courts to “balance the right to develop new information in discovery with the need for certainty as to the legal theories.” Golden Hour Data Sys., Inc. v. Health Services Integration, Inc., No. 06-cv-7477 SI, 2008 WL As an example, in its preliminary contentions Barco asserts that claim 1 of the ’749 patent is invalid because it lacks a written description of the claimed “memory extend.” Tarlock
Decl., Ex. B. 3

III. ANALYSIS

The standard with regard to whether a patent is enabled is an objective one. Thus, it is not clear that Moore’s testimony is probative. The enablement requirement of §112(1) tests
whether a person skilled in the art, “after reading the specification, could practice the claimed invention without undue experimentation.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). Determining whether a specification contains an adequate written description requires an “objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). A specification adequately describes an invention when it “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. In light of this principle, it appears that Barco should have been able to assert its lack of enablement theory based on the ’749 and ’890 patent specifications alone. These specifications have been known to Barco for years, and certainly were available to Barco well before it served its preliminary invalidity contentions in April 2009. At that time, Barco chose to challenge other aspects of the written descriptions of the patents-in-suit, but it brought no challenge with respect to the ALU theory it advances now.4 From a legal standpoint, Moore’s testimony is irrelevant. Moreover, a plain reading of the deposition transcript shows that Barco has misconstrued Moore’s testimony. Moore testified in pertinent part as follows:
Q: Mr. Moore, do you believe that someone using the patents in this case as a reference could – someone of reasonable knowledge level could make the ShBoom microprocessor?
A: Not from the information in the patents. . . .
A: Nothing is said about the ALU or how it’s designed or operated.
Moore Depo. at 258:24-259:11. The ShBoom microprocessor is only one example of one of the claimed inventions. It is not evident that Moore was not in possession of the claimed subject matter simply because information that would enable a person skilled in the art to produce the ShBoom microprocessor is missing from the ’749 and ’890 patents. Even if the ShBoom product were coextensive with the claimed inventions, it still is not clear why Barco was not alerted to the ALU issue well before Moore testified. Barco easily could have consulted with engineers or conferred with plaintiffs in the related actions in assessing whether the claimed inventions meet the enablement
requirements of §112.

IV. ORDER

Because Barco has not shown that good cause exists to permit further amendment of its invalidity contentions, the motion to amend is DENIED.

IT IS SO ORDERED.

DATED: September 6, 2011
Signed By JEREMY FOGEL
United States District Judge