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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

ASIA VITAL COMPONENTS CO., LTD.,

Plaintiff,

v.

ASETEK DANMARK A/S,

Defendant.

Case No. 16-cv-07160-JST 

ORDER DENYING MOTION TO 

AMEND INVALIDITY CONTENTIONS

Re: ECF No. 127

Before the Court is Plaintiff Asia Vital Components Co., Ltd.’s (“AVC”) motion for leave

to amend invalidity contentions. ECF No. 127. The Court issued a claim construction order on 

January 17, 2018. AVC now seeks to amend its invalidity contentions “to conform them generally 

to the Court’s claim construction order” because the Court’s claim constructions were “different 

from AVC[‘s] previous proposed constructions.” Id. at 3. 

I. LEGAL STANDARD 

Patent Local Rule 3-6 allows amendment “upon a timely showing of good cause.” This 

inquiry “considers first whether the moving party was diligent in amending its contentions and 

then whether the nonmoving party would suffer prejudice if the motion to amend were granted. 

The burden is on the movant to establish diligence rather than on the opposing party to establish 

lack of diligence.” Radware Ltd. v. F5 Networks, Inc., No. C-13-02021-RMW, 2014 WL 

3728482, at *1 (N.D. Cal. 2014) (internal quotation marks and citations omitted). The moving 

party must demonstrate both “(1) diligence in discovering the basis for amendment” and “(2) 

diligence in seeking amendment once the basis for amendment has been discovered.” Positive 

Techs., Inc. v. Sony Elecs., Inc., No. C 11-2226 SI, 2013 WL 322556, at *2 (N.D. Cal. Jan. 28, 

2013). If the moving party was not diligent, there is “no need to consider the question of 
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prejudice.” O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1368 (Fed. Cir. 

2006).

II. DISCUSSION 

Asetek’s first ground for opposing AVC’s motion is that AVC has not been diligent. This 

ground is dispositive of the motion. 

AVC contends that “the Court construed certain claim terms which are different from 

AVC’s proposed interpretation” and “based on the issued claim construction order, AVC has been 

diligent in reexamining the prior art.” ECF No. 127 at 3-4. Asetek argues that AVC “cannot 

establish diligence by asserting an unexpected claim construction because the Court’s 

constructions closely track the parties’ proposals from their joint statement without any material 

modification.” ECF No. 133 at 10. 

Local Patent Rule 3-6 lists “claim construction by the Court different from that proposed 

by the party seeking amendment” as a “[n]on-exhaustive example[] of [a] circumstance[] that may, 

absent undue prejudice to the non-moving party, support a finding of good cause.” However, 

many judges in this district have determined that “where the court adopts the opposing party's 

proposed claim construction, the moving party's diligence, without which there is no good cause, 

is measured from the day the moving party received the proposed constructions, not the date of 

issuance of the Court's claim construction opinion.” Word to Info Inc. v. Facebook Inc., No. 15-

CV-03485-WHO, 2016 WL 6276956, at *4 (N.D. Cal. Oct. 27, 2016), aff'd, 700 F. App'x 1007 

(Fed. Cir. 2017) (internal quotation marks and citation omitted). On the other hand, several courts 

in this district have also “rejected the date-of-disclosure rule and have instead measured diligence 

from the date of the claim construction order.” Id. “While courts in this district have not applied a 

uniform rule, review of all of the cases reveals that, regardless of the rule applied, diligence 

determinations are necessarily fact intensive inquiries and must be determined based on the 

individual facts of each case.” Id.

Courts often follow the “date-of-order” rule when the court adopts its own construction. 

See Word to Info Inc., 2016 WL 6276956, at *4; GPNE Corp. v. Apple Inc., No. 12-CV-02885-

LHK-PSG, 2013 WL 6157930, at *1 (N.D. Cal. Nov. 22, 2013). Here, the Court adopted Asetek’s 
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proposed construction for four terms. See No. 105. The Court adopted AVC’s proposed 

construction for one term. See id. The Court adopted a combination of both parties proposed 

constructions for two terms. 1 See id. As to those two terms, however, the Court will still measure 

AVC’s diligence from the date it received Asetek’s constructions, because the Court did not 

significantly or materially modify the parties’ proposed terms. The Court simply combined parts 

of each party’s proposed constructions. See Word to Info Inc., 2016 WL 6276956, at *5 (finding 

that a modification to a proposed construction was not material because the ultimate construction 

excluded certain language from the proposal “but did not add, alter, or delete any limitations”); 

Swanson v. ALZA Corp., No. C 12-4579 PJH, 2014 WL 4441161, at *2 (N.D. Cal. Sept. 9, 2014)

(noting that deleting a limitation from a proposed construction did significantly modify that 

construction). 

Under the “date-of-disclosure” rule, AVC’s obligation to diligently pursue amendment was 

triggered on August 18, 2017 when Asetek disclosed its proposed claim constructions to AVC. 

ECF No. 133 at 6, 11. AVC did not file its motion for amendment until May 18, 2018 – nine 

months after Asetek initially disclosed its proposed constructions. ECF No. 127. AVC has not

been diligent. See Word to Info Inc., 2016 WL 6276956, at *6 (collecting cases where courts have 

found that a three to fourth month delay in amending contentions is not diligent). 

Even if the Court had found it was proper for AVC to wait until the Court’s claim 

construction order before seeking amendment, it would still find that AVC was not diligent. The 

Court issued its claim construction order on January 17, 2018. ECF No. 105. AVC did not 

provide its proposed amendments to Asetek until April 11, 2018 and did not file the instant motion 

until May 18, 2018. ECF Nos. 137; 133 at 6. While there might be cases in which taking four 

months to file a motion for amendment shows diligence, that is not the case here: as discussed 

above, the Court’s constructions were not new to the parties and as AVC concedes, the 

 

1 AVC proposed that “substantially circular passageway” should be construed as “passage with a 

circular exterior” while Asetek proposed “generally circular opening.” ECF No. 105 at 8. The 

Court construed the term as “generally circular passageway.” Id. at 9. The Court used this 

construction to construe “substantially circular passageway positioned on the horizontal wall” as 

“generally circular passageway positioned on the horizontal wall.” Id. at 10-11. 
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amendments are not based on newly discovered prior art. ECF No. 134 at 6. See Twilio, Inc. v. 

TeleSign Corp., No. 16CV06925LHKSVK, 2018 WL 732723, at *6 (N.D. Cal. Feb. 6, 2018)

(finding that two to three months was not diligent when “the term is not new and the art is not 

newly discovered”); Verinata Health, Inc. v. Sequenom, Inc., No. C 12-00865 SI, 2014 WL 

789197, at *3 (N.D. Cal. Feb. 26, 2014) (finding that Sequenom filed to establish diligence after 

waiting almost three months to file a motion to amend invalidity contentions after the court’s 

claim construction order); EON CorpIP Holdings LLC v. Aruba Networks Inc., No. 12-CV-01011-

JST, 2013 WL 6001179, at *2 (N.D. Cal. Nov. 12, 2013) (“Three months is beyond whatever time 

should have been required to prepare these amendments, especially where the Court's claim 

construction order adopted constructions that did not substantially differ from those that 

Defendants had been urging for nearly a year.”).

AVC contends that it was diligent because it provided the claim construction to its experts 

on February 1, 2018, and arranged a meeting with the experts on March 22, 2018. ECF No. 134 at 

7-8. AVC does not adequately explain why it waited two weeks to provide the claim construction 

order to the experts and almost another two months to arrange a meeting, especially given that 

AVC knew that the court might adopt some of Asetek’s proposed constructions “and in light of 

the fact that under the Local Rules a party generally has only 45 days from receipt of the patentee's 

infringement contentions to prepare and serve its invalidity contentions.” Verinata Health, WL 

789197, at *3 (citing N.D. Cal. Pat. L.R. 3–3). In short, even when measuring from the date of the 

Court’s claim construction order, AVC has not established diligence. 

Because AVC cannot establish diligence, the Court need not address prejudice. O2 Micro,

467 F.3d at 1368 (“Having concluded that the district court could properly conclude that O2 Micro 

did not act diligently in moving to amend its infringement contentions, we see no need to consider 

the question of prejudice.”). 

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AVC’s motion to amend its invalidity contentions is denied. 

IT IS SO ORDERED.

Dated: June 25, 2018

______________________________________

JON S. TIGAR

United States District Judge