Judge: John Love
Holding: Motion for Leave to File Amended Infringement Contentions GRANTED
The issue of when infringement or invalidity contentions may be amended under the local patent rules is an evergreen one here behind the pine curtain (as are out of control metaphors) and this order from Judge Love yesterday afternoon is the latest word on the subject.
The procedural history is complex, but necessary. It goes something like this:
- Plaintiff Eon sues defendants, including Alcatel-Lucent USA, Inc. ("ALU").
- Plaintiff serves infringement contentions v. 1.0, accusing four ALU products.
Meanwhile, back at the courthouse, Judge Love allows targeted discovery after which the parties could file letter briefs seeking permission to file summary judgment on direct infringement issues. Shortly after that discovery took place ...
- Eon files an amended complaint, and a motion for leave to amend its infringement contentions against ALU to v.2.0, which this time accuses 76 products.
- ALU opposes the motion for leave, asserting that the contentions were factually insufficient under the patent rules, and in any even, the plaintiff had not shown the required "good cause" for the amendment.
Back at the courthouse again, at a November 28, 2011 hearing on the motion, the Court ordered Eon to provide ALU with amended infringement contentions (v.2.1 - the difference will be important later) that articulated how each particular ALU product is used in an infringing network in accordance with Local Patent Rule 3-1(b)-(c). Then,
- Eon served its amended contentions in compliance with the Court’s Order, this time accusing 96 products in PIC v. 2.1.
- ALU filed an opposition to the amended contentions, again arguing that the contentions were factually insufficient under the patent rules, and in any even, the plaintiff had not shown the required "good cause" for the amendment itself, or for the additional 20 products.
Judge Love's opinion indicated that while he thought v. 2.0 of the contentions did not satisfy the local rule re: specificity, he thought that v. 2.1 did. Here's what the Court had to say about the role of infringement contentions:
Infringement contentions are not intended to require a party to set forth a prima facie case of infringement and evidence in support thereof. While infringement contentions must be reasonably precise and detailed . . . to provide a defendant with adequate notice of the plaintiff’s theories of infringement, they need not meet the level of detail required, for example, on a motion for summary judgment on the issue of infringement because infringement contentions “are not meant to provide a forum for litigation on the substantive issues.”
Realtime Data, 2009 WL 2590101, at *5. "Nevertheless," the Court held, "a party may not rely on vague conclusory language or simply mimic the language of the claims," citing Davis-Lynch, Inc. v. Weatherford Int’l, No. 6:07-cv-559, 2009 WL 81874, at *2 (E.D. Tex. Jan. 12, 2009). (Ed. note: there are more Davis-Lynch opinions running around the Tyler courthouse than I can keep track of - and they're all full of useful stuff - so be sure which opinion you're citing to).
So what are the standards for amending? Glad you asked. Judge Love explains that leave to amend is required when a plaintiff seeks to amend or supplement the contentions, and a plaintiff must show good cause. P.R. 3-6. When determining whether to grant leave to amend, the Court considers: 1) the explanation for failure to meet the deadline; 2) the importance of the thing that would be excluded; 3) the potential prejudice in allowing the thing that would be excluded; and 4) the availability of a continuance to cure such prejudice.
In this opinion, Judge Love compares the v.2.1 contentions to the v.2.0 contentions, and determines that "with the understanding that there may be some gaps in the contentions due to an apparent lack of discovery," they are sufficient.
ALU has not shown why such a description is so deficient that it does not serve the notice role of infringement contentions. ALU may disagree with the substance of Eon’s contentions, but this is not the stage for Eon to marshal evidence to prove its infringement theory. Patent Rule 3-1 is not meant to create unfair or unrealistic expectations on either party. In deciding the sufficiency of infringement contentions, the Court balances defendants’ need for notice as to the plaintiff’s infringement theory with the realities of the accused systems, methods, and apparatuses. Here, while not making any substantive determination, the Court recognizes the difficulties in identifying a named, discrete network where there is a complicated infringement theory depending on interrelated discovery from multiple direct and indirect infringers. Under the technological framework presented here, the Court is not persuaded that Eon’s description concerning ALU products runs afoul of the purpose of P.R. 3-1. With these considerations in mind, the Court finds that Eon’s contentions satisfy the Court’s November 28, 2011 Order and P.R. 3-1 because they provide sufficient detail to put ALU on notice as to how to litigate its case.
Okay, so they're sufficient - but is there "good cause" to permit the amendment? Yes and no. Judge Love concluded that Eon did have good cause to amend its contentions to add the new products in v. 2.0. But v. 2.1 included twenty additional products which were not in Eon’s previous proposed amended contentions (v. 2.0) that were the subject of the original Motion. "These products were not subject to the Court’s November 28, 2011 Order," Judge Love concluded, "and Eon has provided no excuse or justification for its delay in including these products in its amended contentions. As a result, the Court ORDERS Eon to remove reference to the twenty new products ... and to serve ALU with these modified contentions by January 30, 2012.