Jenna Spinelle Aug. 12, 2016, 1:05pm

SAN FRANCISCO – The world of patent law is ever changing but a ruling issued last month seeks to put limits on how and when changes can be made.

Susan Illston, U.S. district judge for the Northern District of California, ruled July 6 that technology company Micron was not permitted to update an invalidity contention to add two textbooks and two expired patents.

Invalidity contentions are part of the patent local rules adopted by the Northern District of California in 2001. They stipulate that the accused patent infringer disclose information it plans to use for defense against the claim.

Once an invalidity contention is filed, the Northern District of California’s patent local rule specifies that amendments can be made for newly discovered works in a timely manner and with good cause.

Micron, based in Boise, Idaho, specializes in storage and memory products. The company was the subject of a suit brought by MLC Intellectual Property in August 2014 over alleged infringement of one of its patents. Micron responded with its invalidity contentions in January 2015 and notified MLC of its intent to supplement them in May 2016, which MLC contended was too long after the initial disclosure had been filed.

Illston agreed, ruling that Micron did not satisfy the newly discovered portion of the rule because the items it wanted to add were published in 1973 and 1990, respectively.

Mark Lemley, a professor at Stanford Law School who specializes in patent law, said patent local rules allow for some continuation of activity, but it’s not unlimited.

“The rules have a provision tell us your argument but understanding discovery is ongoing, but people have been pretty aggressive in supplementation,” Lemley told the Northern California Record.

Lemley said Illston’s ruling is indicative of a larger trend designed to send a message to other companies who may be looking to take similar actions.

“I think Northern District judges are increasingly cracking down on parties who ignore their obligations under the patent local rules and trying to put some teeth in this restriction,” Lemley said. “This decision will definitely encourage parties to err on the side of inclusion in listing prior art.”

The ultimate goal may be to force a broader discussion about how and when information should be disclosed.

“It will also force parties to think earlier about what arguments belong in the case at all,” Lemley said.

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