Judge Saylor granted in part and denied in part Abiomed’s motion to strike Maquet’s second supplemental non-infringement contentions. Maquet, who asserted patent infringement counterclaims, sought to add a claim under 35 U.S.C. § 271(f), which prohibits the export of all or a substantial portion of a patented invention for assembly abroad. Judge Saylor struck this part of the contentions, finding that Maquet’s counterclaims did not refer to 271(f) and made no factual allegations from which a 271(f) claim could be inferred, and thus Maquet should follow the requirements of F.R.C.P. 15. Judge Saylor refused to strike portions of the second supplemental contentions that added new infringement contentions concerning the “guide mechanism” term. He noted that, through inadvertence, his scheduling order did not literally prevent the service of supplemental contentions, and accepted Maquet’s assertion that the amendment was based on “newly adduced” evidence not previously available to it. Maquet further assured the Court that the amendment narrows the asserted claims and “elaborates and refines” their infringement theory. He did ban any further amendment of the infringement contentions.
Judge Saris denied defendant NetApp’s motion for leave to amend and supplement its invalidity contentions for failure to demonstrate good cause as required by the local rules. NetApp, who was sued separately from Lenovo and EMC but whose case was joined, failed to connect its proposed amendment to the claim construction ruling, and waited a year between discovering the new prior art and seeking to amend. Given this, and that fact discovery is now complete and expert disclosures are imminently due, Judge Saris determined that the case “is aging and needs resolution.”