Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 1 of 17 PageID #: 2292
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:15-CV-341-JRG-RSP
`
`LEAD CASE
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`JURY TRIAL DEMANDED
`
`Case No. 2:15-CV-342-JRG-RSP
`Consolidated Case
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`
`
`
`
`
`
`
`
`
`RAYTHEON COMPANY,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., et
`al.,
`
`
`Defendants.
`
`
`RAYTHEON COMPANY,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`SONY KABUSHIKI KAISHA, et al.,
`
`
`Defendants.
`
`
`
`
`
`
`RAYTHEON COMPANY’S MOTION FOR LEAVE TO AMEND P.R. 3-1
`INFRINGEMENT CONTENTIONS PURSUANT TO P.R. 3-6 (b)
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 2 of 17 PageID #: 2293
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`
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`I.
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`II.
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`III.
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`IV.
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`BACKGROUND ................................................................................................................ 1
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`LEGAL STANDARD ......................................................................................................... 5
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`ARGUMENT ...................................................................................................................... 6
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`A.
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`B.
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`C.
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`D.
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`The Technical Information Supporting the Amendments Was Not Publicly
`Available ................................................................................................................. 6
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`Importance of the Amended Patent Claims ............................................................ 8
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`These Amendments Do Not Prejudice Defendants ................................................ 9
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`No Continuance is Necessary ............................................................................... 11
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`V.
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`CONCLUSION ................................................................................................................. 12
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`
`
`i
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 3 of 17 PageID #: 2294
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`
`
`TABLE OF AUTHORITIES
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`
`CASES
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`Page(s)
`
`Adrain v. Vigilant Video, Inc.,
`No. 2:10-CV-173-JRG, 2013 WL 1984369
`(E.D. Tex. May 13, 2013) ..........................................................................................................9
`
`Alcon Research, Ltd. v. Apotex Inc.,
`687 F.3d 1362 (Fed. Cir. 2012)............................................................................................8, 10
`
`Alexsam, Inc. v. IDT Corp.,
`No. 2:07-CV-420-CE, 2011 WL 108725
`(E.D. Tex. Jan. 12, 2011) .................................................................................................6, 8, 11
`
`Arbitron, Inc. v. Int’l Demographics Inc.,
`No. 2:06–CV–434, 2009 WL 166555
`(E.D. Tex. Jan. 16, 2009) ...........................................................................................................6
`
`Mobile Telecommunications Techs., LLC v. Leap Wireless Int’l, Inc.,
`No. 2:13-CV-885-JRG-RSP, slip op.
`(E.D. Tex. July 20, 2015) ...........................................................................................................9
`
`Mondis Tech., Ltd. v. LG Elecs, Inc.,
`Nos. 2:07–CV–565–TJW–CE, 2:08–CV–478–TJW,
`2011 WL 2149925 (E.D. Tex. May 5, 2011) .................................................................7, 10, 11
`
`S & W Enters., LLC v. SouthTrust Bank of Ala., NA,
`315 F.3d 533 (5th Cir. 2003) .....................................................................................................6
`
`Thomas Swan & Co. Ltd. v. Finistar Corp. & Fujitsu Network Communications, Inc.,
`No. 2:13-cv-178-JRG, slip op. (E.D. Tex. Aug. 11, 2014) ........................................................8
`
`
`
`ii
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 4 of 17 PageID #: 2295
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`I.
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`INTRODUCTION
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`Pursuant to Patent Rule (“P.R.”) 3-6 (b), Plaintiff Raytheon Company (“Raytheon”)
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`respectfully submits this Motion Seeking Leave to Amend its P.R. 3-1 Disclosure of Asserted
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`Claims and Infringement Contentions (“Infringement Contentions”). Good cause exists for these
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`amendments. These amendments are based on Defendants’ confidential information, obtained
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`through discovery, which was unavailable to Raytheon prior to Raytheon’s P.R. 3-1 deadline and
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`produced well after Defendants’ P.R. 3-4 (a) deadline. The proposed amendments assert
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`additional claims, but do not expand the case with new patents, products or processes. The legal
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`theories that might be potentially precluded or limited if amendment were not permitted are
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`important to capture the full scope of Defendants’ liability. Thus, Raytheon would be prejudiced
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`by their exclusion. On the other hand, Defendants would not be unduly prejudiced by these
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`amendments because Defendants have long been on notice that these additional claims would be
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`part of this case. Moreover, Defendants have already established defenses to these additional
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`claims. Thus, for at least the reasons set forth herein, Raytheon respectfully requests leave to
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`serve the Amended Infringement Contentions and Claim Charts, attached hereto as Exhibits A-
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`D.
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`II.
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`BACKGROUND
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`Raytheon filed its complaints against Defendants on March 6, 2015, alleging
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`infringement of a single patent, U.S. Patent No. 5,591,678 (the “’678 Patent”). (Dkt. 1; 342
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`Case, Dkt. 1.)1
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`The ’678 Patent, is entitled “Process of Manufacturing a Microelectric Device Using a
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`Removable Support Substrate and Etch-Stop” and issued on January 7, 1997. (See Dkt. 1 at ¶
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`1 Unless preceded by “342 Case,” which refers to the consolidated case, No. 2:15-CV-342-JRG-
`RSP, all references to “Dkt.” refer to docket entries in the lead case, No. 2:15-CV-341-JRG-RSP.
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`
`
`1
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 5 of 17 PageID #: 2296
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`22.) Defendants infringed the ’678 Patent during its term by, inter alia, importing into the
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`United States or offering to sell, selling, or using within the United States, microelectronic
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`devices (e.g., backside-illuminated, or “BSI,” devices) that were made by process(es) covered by
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`the ’678 Patent. (See id. at ¶¶ 24, 33, 42.)
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`Defendants manufactured infringing microelectronic devices using processes covered by
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`the ’678 Patent in foreign countries, including Japan, South Korea and Taiwan. (Declaration of
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`Brian Fahrenbach, “Fahrenbach Decl.” at ¶ 4.) Defendants maintain their infringing processes as
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`confidential. (Id. at ¶ 5.)
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`Raytheon served detailed P.R. 3-1 Infringement Contentions on Defendants on July 16,
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`2015. (Id. at ¶ 6.) With exhibits and annexes, Raytheon’s Infringement Contentions totaled over
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`600 pages. (Id. at ¶ 7.) On that same day, Raytheon also served its P.R. 3-2 document
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`production which totaled over 24,000 pages across the Defendants. (Id. at ¶ 8.)
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`Raytheon’s P.R. 3-1 Infringement Contentions were based on information publicly
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`available to Raytheon, including exemplary specimens of Defendants’ microelectronic devices.
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`(Id. at ¶ 2.) Such publicly-available information allowed Raytheon to reasonably conclude that
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`Defendants infringed certain claims of the ’678 Patent. (Id. at ¶ 2.) However, certain other
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`aspects of Defendants’ infringing processes, covered by the claims Raytheon seeks to add here,
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`could not readily be confirmed based on the publicly-available information. (Id. at ¶ 3.) In order
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`to confirm Defendants’ infringement of these additional claims, Raytheon required access to
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`Defendants’ confidential information. (Id. at ¶ 3.) Raytheon requested such information from
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`Defendants, under whatever protections Defendants deemed necessary, as early as August 2013;
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`however, Defendants steadfastly refused to provide such information during pre-suit licensing
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`negotiations. (Fahrenbach Decl. at ¶¶ 9-10)
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`2
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 6 of 17 PageID #: 2297
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`Raytheon served discovery requests on each Defendant on August 14, 2015. (Fahrenbach
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`Decl. at ¶ 11.) Defendants’ P.R. 3-4(a) technical document productions were due on September
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`17, 2015 (postponed from the default deadline as an accommodation to Defendants) and
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`Defendants’ P.R. 3-3 Invalidity Contentions and P.R. 3-4(b) invalidity document productions
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`were due on October 2 (also postponed as an accommodation to Defendants). (Dkt. 60, DCO, at
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`2.)
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`However, as set forth in Raytheon’s recently-submitted Response in Opposition to
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`Defendants’ Motion to Stay Cases Pending Inter Partes Review, Defendants’ discovery conduct
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`has been slow and drawn out, notwithstanding Defendants’ September 17, 2015 deadline under
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`P.R. 3-4, and the fact that the Court’s Discovery Order required prompt and automatic
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`production of all materials supporting Defendants’ claims and defenses. (See Dkt. 109 at 4.)
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`For example, Sony, Samsung, and Apple’s respective productions prior to the September
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`17, 2015 P. R. 3-4(a) deadline largely consisted of marketing materials, i.e. brochures, manuals,
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`flyers and the like, for their microelectronic devices and/or consumer goods containing such
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`devices. (Fahrenbach Decl. at ¶ 10.) Such marketing materials, highlighting features of the
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`finished devices and/or goods, did not reveal the processes by which the devices were made and
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`otherwise failed to satisfy the obligations of P.R. 3-4 (a). (Id. at ¶ 10.) OmniVision did provide,
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`prior to the P.R. 3-4(a) deadline, two high-level process-flow sheets related to two of its
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`processes for manufacturing accused microelectronic devices; however, OmniVision’s P.R. 3-
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`4(a) document production remained deficient in numerous other respects. (Id. at ¶ 10.)
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`As a result of Defendants’ failure to comply with the mandatory disclosure requirements
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`of P.R. 3-4 (a), Raytheon was forced to send detailed letters to each Defendant on October 13,
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`2015, pursuant to Paragraph 9(a) of the Court’s Discovery Order, identifying these and numerous
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`3
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 7 of 17 PageID #: 2298
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`other deficiencies in each Defendant’s document production. (Fahrenbach Decl. at ¶ 12.) In
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`response, the Defendants strenuously resisted Raytheon’s attempts to obtain the P.R. 3-4 (a)
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`documents. (Id. at ¶¶ 13-16.) Defendants also evaded Raytheon’s attempts to meet and confer
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`pursuant to Paragraph 9(a) of the Court’s Discovery Order, frustrating Raytheon’s ability to seek
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`the Court’s assistance. (Id. at ¶¶ 13-14.)
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`Only by threatening Court intervention was Raytheon able to obtain from Defendants
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`some of the highly-relevant P.R. 3-4(a) technical documents, which occurred over a period of
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`several months. For example, it was only after Raytheon engaged the Sony Defendants in an in-
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`person meet-and-confer in November that the Sony Defendants finally produced at least some of
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`the long-overdue P.R. 3-4(a) technical information.2 (Id. at ¶ 17.) Similarly, the Samsung,
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`Apple and OmniVision Defendants reluctantly supplemented their respective, long-overdue, P.R.
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`3-4(a) productions over the course of the next several months—but only after constant prodding
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`by Raytheon.3 (Id. at ¶¶ 19-21.) Now, four months after their P.R. 3-4 deadline, most of the
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`Defendants have now certified that they have substantially completed their document
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`productions pursuant to the January 15, 2016 deadline in the Docket Control Order. (See Dkt.
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`109 at 5 (noting that the Apple and Samsung Defendants had not yet made such a certification as
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`of January 22, 2016). It was not until February 1, 2016, over two weeks after the deadline, and
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`after Raytheon pointed out Samsung’s failure to comply, that the Samsung Defendants finally
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`notified the Court that they had substantially completed their document productions. (Dkt. 113)
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`2 About a week after the in-person meet-and-confer, Sony produced sixty-two (62) Power Point
`presentations, totaling over 2,500 pages, which described certain of its infringing processes.
`(Fahrenbach Decl. at ¶18). More recently, the Sony Defendants dumped over 300,000 pages of
`documents on January 15 and January 22, 2016. (Id. at ¶ 24.)
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` 3
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` Though Defendants slowly supplemented certain aspects of their respective productions over
`the course of the past several months, multiple deficiencies remain to this day. (See Dkt. 109 at
`4.)
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`4
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 8 of 17 PageID #: 2299
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`Defendants’ infringing processes, and the technical documents that describe them, are
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`complex and confidential. Upon receipt of these belated documents, Raytheon began analyzing
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`and assessing Defendants’ processes to confirm its pre-suit infringement analysis and determine
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`the full extent to which Defendants’ respective products and processes infringe the additional
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`claims sought to be added by these requested amendments. (Fahrenbach Decl. at ¶ 22.) Upon
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`review of Defendants’ highly-technical materials, Raytheon determined that Defendants’
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`products and processes infringe the following additional claims of the ’678 Patent (hereinafter
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`referred to as the “Additional Claims”):
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`Defendant
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`Additional Dependent Claims
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`Additional Independent Claim
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`Samsung
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`Sony
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`OmniVision
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`Apple
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`2-4 and 6-7
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`2-4
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`2-4
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`2-4
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`11
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`11
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`11
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`Raytheon sent notice to Defendants on January 21, 2015 summarizing its amended
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`infringement findings and notifying Defendants that Raytheon intended to ask the Court for
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`leave to amend Raytheon’s Infringement Contentions. (Id. at ¶ 23). Defendants oppose
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`Raytheon’s Motion for Leave to Amend its Infringement Contentions to assert the Additional
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`Claims.
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`III. LEGAL STANDARD
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`Local Patent Rule 3-6(b) requires that in order for a party to amend its infringement
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`contentions it must seek leave of the Court, and the Court may grant leave only upon a showing
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`of “good cause.” P.R. 3-6(b). The Court has broad discretion when determining what
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`constitutes “good cause” to amend Infringement Contentions. See Alexsam, Inc. v. IDT Corp.,
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`5
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 9 of 17 PageID #: 2300
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`No. 2:07-CV-420-CE, 2011 WL 108725, at *1 (E.D. Tex. Jan. 12, 2011). Generally, in
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`determining whether to grant leave, the Court considers the following: “(1) the explanation for
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`the failure to meet the deadline; (2) the importance of the thing that would be excluded; (3)
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`potential prejudice in allowing the thing that would be excluded; and (4) the availability of a
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`continuance to cure such prejudice.” Id. at *1 (citing Arbitron, Inc. v. Int'l Demographics Inc.,
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`No. 2:06–CV–434, 2009 WL 166555, at *1 (E.D. Tex. Jan. 16, 2009)); see also S & W Enters.,
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`LLC v. SouthTrust Bank of Ala., NA, 315 F.3d 533, 535 (5th Cir. 2003).
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`IV. ARGUMENT
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`Good cause supporting Raytheon’s request to amend its Infringement Contentions exists
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`because the information necessary to enable Raytheon to assert the Additional Claims was not
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`publicly available and was only recently produced by Defendants. Asserting the Additional
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`Claims is highly important to Raytheon’s ability to accuse the full scope of Defendants’
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`infringement and also to defend against Defendants’ validity challenges. The potential prejudice
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`to Defendants is minimal in that the proposed amendments only assert four (4) additional
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`dependent claims, and one (1) independent claim, all directed largely to the same concept:
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`whether the Defendants’ accused processes pattern the etch-stop layer. Raytheon does not seek
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`to add new products or processes to the case. Given the lack of potential prejudice to
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`Defendants, a continuance is not necessary.
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`A.
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`The Technical Information Supporting the Amendments Was Not Publicly
`Available
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`As noted above, Defendants’ are accused of infringing the ’678 Patent by practicing
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`certain patented methods to manufacture microelectronic devices in, inter alia, Japan, South
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`Korea and Taiwan. (Fahrenbach Decl. at ¶ 4.) Defendants maintain the specifics of their
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`accused processes under strict confidentiality protections, and the full extent to which
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`6
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 10 of 17 PageID #: 2301
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`Defendants’ respective products and processes infringe the additional claims sought to be added
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`by these requested amendments could not be confirmed with sufficient certainty from publicly-
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`available information. (Fahrenbach Decl. at ¶ 5.) Therefore, Raytheon required access to
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`Defendants’ confidential technical information in order to determine the full extent to which
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`Defendants’ respective products and processes infringe the additional claims sought to be added
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`by these amendments. (Id. at ¶ 3.)
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`However, as noted above, Defendants improperly withheld such materials until recently,
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`delaying and frustrating Raytheon’s ability to amend its Infringement Contentions. (Id. at ¶¶ 17-
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`21.) Only after receiving Defendants’ highly-technical, and confidential, information has
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`Raytheon been in a position to confirm Defendants’ infringement of the Additional Claims and
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`promptly seek amendment of its infringement contentions. (Id. at ¶¶ 22-23.)
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`The Court has found that good cause exists to allow amendment of infringement
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`contentions under P.R. 3-6 when, for example, the patentee develops new infringement theories
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`based on the accused infringer’s discovery. See Mondis Tech., Ltd. v. LG Elecs., Inc., Nos. 2:07–
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`CV–565–TJW–CE, 2:08–CV–478–TJW, 2011 WL 2149925, at *2 (E.D. Tex. May 5, 2011).
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`Like Raytheon, the patentee in Mondis only received the discovery necessary to assert additional
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`infringement theories after sending several letters requesting additional discovery regarding the
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`accused products. Id.
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`In this case, Defendants failed to timely comply with P.R. 3-4(a). (Fahrenbach Decl. at ¶
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`10.) Raytheon had to send multiple letters, hold several conference calls, threaten Court
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`intervention, and demand in-person meet-and-confers with Defendants before receiving the
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`technical discovery necessary to determine infringement of the Additional Claims. (Id. at ¶¶ 12-
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`21.) Notwithstanding Defendants’ failure to comply, Raytheon diligently pursued the discovery
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`7
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 11 of 17 PageID #: 2302
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`it required from Defendants and diligently sought leave to supplement its contentions upon
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`confirming that Defendants’ secret processes infringe the Additional Claims. (Fahrenbach Decl.
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`at ¶¶ 22-23.) Thus, good cause exists for Raytheon to amend its contentions to assert the
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`Additional Claims.
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`B.
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`Importance of the Amended Patent Claims
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`The claims of the ’678 Patent that Raytheon seeks to add by the requested amendment are
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`important. It is axiomatic that a patentee’s ability to assert the full panoply of its patent rights is
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`important. Indeed, the Additional Claims allow Raytheon to pursue “an alternative means to
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`prove infringement.” See Thomas Swan & Co. Ltd. v. Finistar Corp. & Fujitsu Network
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`Communications, Inc., No. 2:13-cv-178-JRG, slip op. at 4 (E.D. Tex. Aug. 11, 2014) (D.I. 167).
`
`Most of the new claims (Claims 2-4 and 6-7) are dependent claims, which by virtue of
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`being necessarily narrower than the independent claims already in the case, will not expand the
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`scope of Raytheon’s assertions against Defendants. See Alcon Research, Ltd. v. Apotex Inc., 687
`
`F.3d 1362, 1367 (Fed. Cir. 2012) (“It is axiomatic that a dependent claim cannot be broader than
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`the claim from which it depends … A dependent claim narrows the claim from which it
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`depends.”) However, inclusion of these narrower claims is important because they provide
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`Raytheon with additional defenses against the onslaught of validity challenges brought by the
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`Defendants.
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` Moreover, the Additional Claims, which focus on additional microelectronic device
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`fabrication options, are necessary and important to capture a more full and complete scope of
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`Defendants’ infringement. If Raytheon were not able to assert the Additional Claims, it might be
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`unfairly deprived of the opportunity to accuse the full scope of Defendants’ infringement. See
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`Alexsam, 2011 WL 108725 at *2 (“If the Court denies Plaintiff's motion, Plaintiff will never be
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`able to assert these [additional] claims or seek damages against these products in the future.
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`8
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 12 of 17 PageID #: 2303
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`Accordingly, excluding Plaintiff's proposed amendments would have a significant impact on the
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`substance and scope of Plaintiff's claim against Defendant.”).
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`Thus, because these Additional Claims are important to capture the full scope of
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`Defendants’ liability and provide alternative means for Raytheon to recover, this factor weighs in
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`favor of allowing Raytheon to supplement its infringement contentions.
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`C.
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`These Amendments Do Not Prejudice Defendants
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`These amendments would not unduly prejudice Defendants. These amendments add no
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`new patents, parties, products or accused processes to the case. Defendants have been on notice
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`of Raytheon’s potential assertion of these claims against them since at least as early as July 16,
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`2015 when Raytheon alerted Defendants of their potential infringement of the Additional Claims
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`in its original Infringement Contentions. (Fahrenbach Decl. at ¶¶ 6 and 25.) The Additional
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`Claims insert no new terms requiring construction by the Court, as virtually all of the terms in
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`the Additional Claims are present in previously-asserted claims. In fact, Defendants were on
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`notice that Raytheon sought construction of the Additional Claims as early as October 23, 2015.
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`(See id. ¶ 26.) Moreover, Defendants’ petitions for inter partes review and P.R. 3-3 Invalidity
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`Contentions already purport to fully address these Additional Claims. (See id. at ¶¶27-8.)
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`The new claims that Raytheon seeks to add are similar to the claims already in suit,
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`lessening the likelihood that Defendants would be prejudiced by their addition to the case. See
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`Adrain v. Vigilant Video, Inc., No. 2:10-CV-173-JRG, 2013 WL 1984369, at *2 (E.D. Tex. May
`
`13, 2013) (finding that the assertion of a new, similar independent claim presented de minimis
`
`burden because of its similarity to the currently-asserted claims).
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`Moreover, as noted above, most of the claims Raytheon seeks to add are dependent
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`claims, which
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`likewise
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`lessens
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`the potential burden on Defendants.
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` See Mobile
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`Telecommunications Techs., LLC v. Leap Wireless Int'l, Inc., No. 2:13-CV-885-JRG-RSP, slip
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`
`
`9
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`

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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 13 of 17 PageID #: 2304
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`op. at 1-2 (E.D. Tex. July 20, 2015) (D.I. 165). Indeed, Defendants were long ago accused of
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`infringing Claim 1, from which Claims 2-4 depend, and therefore, Defendants have already
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`begun preparing at least non-infringement defenses that would be applicable against these new
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`claims. See Alcon Research, Ltd., 687 F.3d at 1367.
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`Raytheon also seeks to add dependent Claims 6-7 against the Samsung Defendants only.
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`These claims have long been asserted against the other Defendants and, indeed, Defendants’
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`jointly-submitted P.R. 3-3 Invalidity Contentions already purport to address these claims.
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`(Fahrenbach Decl. at ¶ 27.) Samsung’s infringement of these claims is based on Samsung’s
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`importation of Sony devices and goods containing Sony devices. (Id. at ¶ 29.) Thus, at least
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`Sony has presumably already prepared non-infringement defenses against these claims and may,
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`on information and belief, be under an obligation to indemnify Samsung for infringement related
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`to the Sony devices.
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`In addition, Defendants have already jointly participated in searching for and submitting
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`over 80 invalidity references that they allege are applicable to the ’678 Patent. (Id. at ¶ 27.).
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`From these, at least the Sony Defendants have picked 23 references that they believe are fully
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`sufficient to invalidate all claims of the ’678 Patent, including all of the Additional Claims, filing
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`two separate petitions for inter partes review (“IPR”). (Id. at ¶ 28.) Moreover, the non-Sony
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`Defendants have indicated that they would file their own IPRs, confirming that they too believe
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`their 80-reference arsenal is sufficient to address all asserted claims in the ’678 patent, including
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`Claims 2-4, 6-7 and 11. (See Dkt. 109 at 8-9). Thus, Defendants are not prejudiced by the
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`addition of these claims. See Mondis, 2011 WL 2149925 at *2. Indeed, Defendants have just-
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`recently promised this Court that these parallel IPR proceedings will “simplify the issues in these
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`cases (if not entirely eliminate them)” because the Patent Office “has instituted IPR with respect
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`10
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 14 of 17 PageID #: 2305
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`to all claims of the ’678 patent — the sole patent asserted in both cases . . . .” (Dkt. 93 at 1
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`(emphasis added).)
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`Raytheon submits that these new claims do not present any additional terms that should
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`require construction. However, if the Court determines that any new terms require construction,
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`the terms in the new claims could be incorporated into the current claim construction schedule or
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`addressed at another appropriate juncture as the Court sees fit. See Alexsam, 2011 WL 108725 at
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`*2 (holding that construction of any additional terms may be handled at the pre-trial conference).
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`Further, to the extent there is any prejudice, Defendants’ caused it with their delayed
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`discovery. See Mondis, 2011 WL 2149925 at *2 (“Perhaps most important to this Court is that
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`to the extent TPV is prejudiced at all by this late amendment, this prejudice was caused by TPV's
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`failure to perform its discovery obligations in a reasonable manner.”). As noted above, Raytheon
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`was only able to seek amendment of its contentions after extracting overdue discovery from the
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`Defendants. Thus, like the defendant in Mondis, any prejudice that Defendants may now claim
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`is of their own making. See id.
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`Thus, because there is very little (if any) prejudice to Defendants from the addition of the
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`Additional Claims to the case, this factor weighs heavily in favor of allowing Raytheon’s
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`requested amendment.
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`D.
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`No Continuance is Necessary
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`As demonstrated above, Raytheon’s amendments do not significantly expand the scope of
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`the case and Defendants have already developed defenses to these new claims. Moreover,
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`Defendants have just filed a paper asserting that “[t]hese cases are still at an early stage . . .
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`[m]ost of the significant work, including substantive expert discovery and summary judgment
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`motions, remains to be completed.” (Dkt. 93.) Though Raytheon disagrees with the premise of
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`this statement—that these cases should be stayed pending Defendants’ serial IPR practice—the
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 15 of 17 PageID #: 2306
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`statement at least appears to confirm that Defendants should have more than sufficient time to
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`address these Additional Claims within the confines of the current case schedule. Accordingly,
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`this factor weighs heavily in favor of granting Raytheon’s Motion to Amend its Infringement
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`Contentions.
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`V.
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`CONCLUSION
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`For at least the reasons set forth above, good cause supporting amendment exists in light
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`of the highly-technical and confidential nature of Defendants’ infringing processes, Defendants’
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`long-overdue supplementation of their P.R. 3-4 (a) document productions and Defendants’ tardy
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`production of documents pursuant to the Court’s Discovery Order. Whereas Raytheon would be
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`highly prejudiced by being potentially foreclosed from alleging the full scope of Defendants’
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`infringement, Defendants would suffer relatively little (if any) prejudice. Raytheon, therefore,
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`respectfully requests that the Court grant Raytheon’s motion to amend.
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 16 of 17 PageID #: 2307
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`Respectfully submitted,
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`By: /s/ William E. Davis, III
`William E. Davis, III
`Texas State Bar No. 24047416
`THE DAVIS FIRM P.C.
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`Telephone: (903) 230-9090
`Facsimile: (903) 230-9661
`E-mail: bdavis@bdavisfirm.com
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`Of Counsel
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`Thomas J. Filarski
`Stanley A. Schlitter
`Daniel S. Stringfield
`Brian Fahrenbach
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: (312) 577-1300
`Email: tfilarski@steptoe.com
`Email: sschlitter@steptoe.com
`Email: dstringfield@steptoe.com
`Email: bfahrenbach@steptoe.com
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`Attorneys for Plaintiff
`Raytheon Company
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`13
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`Dated: February 3, 2016
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`Case 2:15-cv-00341-JRG-RSP Document 114 Filed 02/03/16 Page 17 of 17 PageID #: 2308
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). As such, this document was served on all counsel who are
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`deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed. R.
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`Civ. P. 5(d) and Local Rule CV-5(d) and (e), all other counsel of record not deemed to have
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`consented to electronic service were served with a true and correct copy of the foregoing by
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`email, on this the 3rd day of February, 2016.
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`/s/ William E. Davis, III
`William E. Davis, III
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`CERTIFICATE OF CONFERENCE
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`The undersigned certifies that counsel has complied with the meet and confer
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`requirement in Local Rule CV-7(h), and that this motion is opposed.
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`/s/ William E. Davis, III
`William E. Davis, III
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`14