Chief Judge Connolly requires that the parties to his cases provide fairly detailed infringement and invalidity contentions early in the schedule, and requires a showing of good cause for any amendments to those contentions.
The question of what constitutes "good cause" is fact-specific, but Judge Connolly's form scheduling order does provide some helpful guidance:
Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include (a) recent discovery of material prior art despite earlier diligent search and (b) recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.
Recently, the plaintiff in Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF moved to amend its infringement contentions. The motion was referred to Magistrate Judge Fallon.
The plaintiff (Volterra) had initially accused a broad set of products in its complaint, but served an amended complaint and discovery responses that limited its contentions to defendant Monolithic's 48V-1V Power Solution and "any other substantially similar products."
Through subsequent discovery, Volterra obtained non-public information a previously unaccused products - the NVIDIA Power Solution, and sought to amend its contentions to include the NVIDIA product.
Judge Fallon found that Volterra had been diligent in seeking discovery on the NVIDIA product and seeking to amend its initial contentions (served October 14, 2020):
Since September 2020, Volterra served discovery requests seeking to establish the identity fo additional accused products and obtain evidence on products substantially similar to the accused 48V-1V. . . . Monolithic's production of technical documents and communications regarding the NVIDIA Power Solution did not materialize until April and May 2021. . . . The production of these documents represents the kind of "recent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions" that is contemplated by the scheduling order.
Although Monolithic did produce some technical information about the NVIDIA product soon after the initial contentions in late 2020, Judge Fallon explained that "it did not provide the level of technical detail necessary for Volterra to satisfy its obligations under the scheduling order," to provide detailed, limitation-by-limitation contentions.
Judge Fallon also found that amendment would not prejudice Monolithic because (1) plaintiff had provided notice that the NVIDIA product was accused as far back as September 2020, and (2) Monolithic had failed to explain how accusation of the NVIDIA product constituted a "new theory" that would require additional claim construction.
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