Denial of Motion to Amend Infringement Contentions Precludes Later Suit Addressing Additional Products

The court granted defendant's motion to dismiss plaintiff's second infringement action as a collateral attack on the court's earlier denial of a motion to amend plaintiff's infringement contentions. "[This action] represents a collateral attack on the Court’s order in [the prior action] notwithstanding the order’s silence on the question of whether [plaintiff] would be permitted to accuse the models at issue in a subsequent action. If [this action] were allowed to proceed, the Court would have to consolidate [these actions] in the interest of judicial economy, as both actions involve the same patents and the same accused conduct. If consolidation occurred, then the Court’s order excluding the products at issue from [the prior action] would be negated, and essentially reversed. . . . [Plaintiff's] prejudice arguments are unpersuasive, because [its] current inability to enforce its property rights with respect to the models at issue is the direct result of its own lack of diligence . . . Permitting [plaintiff] to get a second bite at the apple by allowing this action to proceed would contravene the preclusion principles discussed above and would undermine the spirit and purpose of the Patent Local Rules."

Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 3-13-cv-03677 (CAND October 22, 2013, Order) (Tigar, J.)