Case 1:16-cv-02690-AT Document 121-20 Filed 08/05/16 Page 1 of 4
`Case 1:16-cv-02690-AT Document 121-20 Filed 08/05/16 Page 1 of 4
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`Exhibit G
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`Case 1:16-cv-02690-AT Document 121-20 Filed 08/05/16 Page 2 of 4
`Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd., Slip Copy (2016)
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`2016 WL 3854700
`Only the Westlaw citation is currently available.
`United States District Court,
`E.D. Texas, Sherman Division.
`
`Imperium IP Holdings (Cayman), Ltd.
`v.
`Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., Samsung Telecommunications
`America, LLC, and Samsung Semiconductor, Inc.
`
`CIVIL ACTION No. 4:14-CV-371
`|
`Signed 03/28/2016
`
`Attorneys and Law Firms
`
`David Michael Saunders, S. Desmond Jui, Sruli Yellin,
`Fisch Sigler LLP, San Jose, CA, Jeffrey Saltman, Jennifer
`K. Robinson, John T. Battaglia, Roy William Sigler, Alan
`Michael Fisch, Fisch Sigler LLP, Washington, DC, Silvia
`Jordan, Fisch Sigler LLP, New York, NY, for Imperium
`IP Holdings (Cayman), Ltd.
`
`Jesse J. Jenner, Alexander Ernest Middleton, Steven
`Marc Balcof, Christopher John Harnett, Kevin John
`Post, Matthew Richard Shapiro, Steven Pepe, Ropes &
`Gray LLP, New York, NY, Allen Franklin Gardner,
`Gillam & Smith LLP, John Frederick Bufe, Michael
`E. Jones, Potter Minton, a Professional Corporation,
`Tyler, TX, Clyde Moody Siebman, Siebman Burg Phillips
`& Smith LLP, Sherman, TX, Courtney Marie Cox,
`Samuel Lawrence Brenner, Scott Stephen Taylor, Ropes
`& Gray LLP, Boston, MA, Rebecca R. Carrizosa,
`Ropes & Gray, East Pala Alto, CA, for Samsung
`Electronics Co., Ltd., Samsung Electronics America,
`Inc., Samsung Telecommunications America, LLC, and
`Samsung Semiconductor, Inc.
`
`MEMORANDUM OPINION AND ORDER
`
`AMOS L. MAZZANT, UNITED STATES DISTRICT
`JUDGE
`
`*1 Pending before the Court is Defendants' Motion
`for Leave to Amend Invalidity Contentions (Dkt. #107).
`After reviewing the relevant pleadings, the Court finds
`that the motion should be denied.
`
`BACKGROUND
`
`Plaintiff filed suit against Defendants on June 9,
`2014, asserting patent infringement (Dkt. #1). On
`March 12, 2015, Defendants served their invalidity
`contentions (Dkt. #107, Ex. A). On June 12, 2015,
`Defendants informed Plaintiff that they intended to
`amend
`their
`invalidity contentions
`to
`incorporate
`invalidity contentions submitted in IPR proceedings
`commenced by Defendants on May 21-22 (Dkt. #107 at
`p. 2). Plaintiff opposed this amendment and Defendants
`filed the current motion for leave to amend on July 8, 2015
`(Dkt. #107). Plaintiff filed a response on July 27, 2015
`(Dkt. #113). Defendants filed a reply on August 6, 2015,
`and Plaintiff filed a sur-reply on August 17, 2015 (Dkt.
`#119, #124).
`
`LEGAL STANDARD
`
`Under the Local Rules for the Eastern District of Texas,
`Appendix B Patent Rules, leave to amend invalidity
`contentions “may be made only by order of the court,
`which shall be entered only upon a showing of good
`cause.” P.R. 3-6(b). ‘Good cause,’ according to the
`Federal Circuit, “requires a showing of diligence.” O2
`micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467
`F.3d 1355, 1366 (Fed. Cir. 2006). The court weighs
`multiple factors in determining whether good cause exists,
`including, but not limited to:
`
`1. The length of the delay and its potential impact on
`judicial proceedings;
`
`2. The reason for the delay, including whether it was
`within the reasonable control of the movant;
`
`3. Whether the offending party was diligent in seeking
`an extension of time, or in supplementing discovery,
`after an alleged need to disclose the new matter
`became apparent;
`
`4. The importance of the particular matter, and if
`vital to the case, whether a lesser sanction would
`adequately address the other factors to be considered
`and also deter future violations of the court's
`scheduling orders, local rules, and the federal rules of
`civil procedure; and
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:16-cv-02690-AT Document 121-20 Filed 08/05/16 Page 3 of 4
`Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd., Slip Copy (2016)
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`5. The danger of unfair prejudice to the non-movant.
`
`Allure Energy, Inc. v. Nest Labs, Inc., 84 F.Supp.3d 538,
`540-41 (E.D. Tex. 2015) (quoting Computer Acceleration
`Corp. v. Microsoft Corp., 481 F.Supp.2d 620, 625 (E.D.
`Tex. 2007)).
`
`ANALYSIS
`
`Defendants argue that they have good cause for amending
`their invalidity contentions as there was no delay and
`amendment would not impact the timeline of the case,
`the timing of the proposed amendment was appropriate
`considering Defendants' efforts to identity and analyze
`prior art in a crowded technology space, Defendants
`were diligent in providing and supplementing discovery, a
`lack of prejudice to Plaintiff, and the overall importance
`of aligning the invalidity contentions in the IPR and
`the current proceeding (Dkt. #107 at pp. 3-5). Further,
`Defendants contend their amendments may be served
`without leave of court based on the Court's claim
`construction order (Dkt. #105) under P.R. 3-6(a)(2)(B).
`
`*2 Plaintiff argues
`that Defendants have not
`provided proposed amended contentions, forcing Plaintiff
`to speculate about
`the particular reverences and
`combinations that they might be seeking to assert (Dkt.
`#124 at p. 2). Further, Plaintiff contends that Defendants
`make no showing as to the reason for its delay or why
`a reasonably diligent search would not have yielded the
`new references (Dkt. #113 at p. 7). Plaintiff argues that
`Defendants' amendment is prejudicial, not just based
`on the time in regards to trial or discovery, but based
`on having already submitted claim-construction briefings
`and the Court having already ruled on claim construction
`(Dkt. #113 at p. 12).
`
`The Court finds that Defendants have not demonstrated
`diligence or shown good cause to amend. Defendants do
`not provide an adequate explanation for why they did
`not include the proposed references and combinations
`in the original invalidity contentions. The Court is
`not particularly interested in the parties' disagreement
`regarding if or when Defendants began following the
`Imperium I case. It is more relevant that Defendants
`have not explained why, with reasonable diligence, they
`could not have discovered the proposed references prior to
`the deadline for filing invalidity contentions. Defendants
`
`contend that the technology space to which the patents-
`in-suit belong is complex and crowded (Dkt. 107 at p. 4).
`The Court, however, is not convinced that the level of
`complexity justifies a late amendment in this case.
`
`Defendants argue that bringing in additional references
`asserted in IPR proceedings is important for expeditious
`and cost-effective resolution of this case (Dkt. 107 at p. 5).
`However, the Court does not find that the references, as
`presented to the Court, are so important to the asserted
`causes of action such that late amendment is warranted.
`It is somewhat difficult to completely consider the
`importance of the proposed amendment as Defendants
`did not provide the exact proposed amended contentions
`to the Court.
`
`The Court finds, contrary to Defendants' protestations,
`that there is prejudice to Plaintiff in allowing Defendants
`to amend their contentions. Even if the Court had been
`able to rule on this motion on the very day of its
`filing, July 8, 2015, this motion comes well after both
`the June 10, 2015, Claim Construction Hearing and the
`Court's June 16, 2015, Order on Claim Construction
`(Dkt. #105). It is clear that amendments to invalidity
`contentions after parties have disclosed and argued for
`their claim constructions positions is prejudicial. See
`Innovative Display Techs. LLC v. Acer Inc., 2014 U.S.
`Dist. LEXIS 83196, at *6-7 (E.D. Tex. June 19, 2014)
`(“Although the Court does not base its claim construction
`on invalidity contentions, the parties' claim construction
`positions as a practical matter would be influenced by the
`scope and combination of the specific prior arts disclosed
`in invalidity contentions.”)
`
`Weighing the clear prejudice and Defendants' failure to
`demonstrate diligence against the potential importance
`of the amendment, the Court does not find good cause
`to allow a late amendment to Defendants' invalidity
`contentions.
`
`CONCLUSION
`
`It is therefore ORDERED that Defendants' Motion for
`Leave to Amend Invalidity Contentions (Dkt. #107) is
`hereby DENIED.
`
`SIGNED this 28th day of March, 2016.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:16-cv-02690-AT Document 121-20 Filed 08/05/16 Page 4 of 4
`Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd., Slip Copy (2016)
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`All Citations
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`Slip Copy, 2016 WL 3854700
`
`End of Document
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`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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