Case 2:21-cv-00040-JRG Document 207 Filed 01/24/22 Page 1 of 4 PageID #: 9565
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:21-CV-00040-JRG
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`(LEAD CASE)
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`CIVIL ACTION NO. 2:21-CV-00041-JRG
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`(CONSOLIDATED CASE)
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`ORDER
`Before the Court is the Defendants’ Motion For Leave To Amend Invalidity Contentions
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`GESTURE TECHNOLOGY PARTNERS,
`LLC,
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`v.
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`HUAWEI DEVICE CO., LTD., HUAWEI
`DEVICE USA INC.,
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Plaintiff,
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`Defendants.
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`Defendants.
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`(Dkt. No. 76) (the “Motion”). In the Motion, Defendants Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc. (“Samsung”) request leave to supplement their Invalidity &
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`Subject-Matter Eligibility contentions (“Invalidity Contentions”). Samsung further informs the
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`Court that Plaintiff Gesture Technology Partners, LLC (“Gesture”) opposes the Motion.
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`Having considered the Motion, the associated briefing, and for the reason stated herein, the
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`Court finds that the Motion should be GRANTED.
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`I.
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`BACKGROUND
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`Gesture filed the above-captioned suit against Samsung on February 4, 2021, alleging
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`infringement of U.S. Pat. Nos. 8,194,924 (the “’924 Patent”); 7,933,431 (the “’431 Patent”);
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`8,878,949 (the “’949 Patent”); and 8,553,079 (the “’079 Patent”) (collectively, the “Asserted
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`Case 2:21-cv-00040-JRG Document 207 Filed 01/24/22 Page 2 of 4 PageID #: 9566
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`Patents”). (Case No. 2:21-cv-41, Dkt. No. 1.) Gesture alleged that Samsung’s smartphones and
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`tablets, including the Samsung Galaxy Note Series, S Series, Z Series, A Series, M Series, Galaxy
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`Tab S7/7+, S6, S5, and S4 products. Samsung served its Invalidity Contentions on Gesture on
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`July 6, 2021 and filed this Motion for leave to serve amended invalidity contentions on September
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`17, 2021.
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`II.
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` LEGAL STANDARD
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`Under the Local Rules of the Eastern District of Texas, leave to amend invalidity
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`contentions “may be made only by order of the court, which shall be entered only upon a showing
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`of good cause.” P.R. 3-6(b). “Good cause,” according to the Federal Circuit, “requires a showing
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`of diligence.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 1366 (Fed. Cir. 2006). The Court
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`weighs multiple factors in determining whether good cause exists for leave to amend invalidity
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`contentions, including but not limited to: (1) the length of the delay and its potential impact on
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`judicial proceedings; (2) The reason for the delay, including whether it was within the reasonable
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`control of the movant; (3) whether the offending party was diligent in seeking an extension of
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`time; (4) the importance of the particular matter; and (5) the danger of unfair prejudice to the non-
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`movant. Allure Energy, Inc. v. Nest Labs, Inc., 84 F. Supp. 3d 538, 540-41 (E.D. Tex. 2015)
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`(quoting Comput. Acceleration Corp. v. Microsoft Corp., 481 F. Supp. 2d 620, 625 (E.D. Tex.
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`2007)).
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`III. ANALYSIS
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`Samsung requests leave to supplement its original invalidity contentions with additional
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`information obtained from third-party subpoenas regarding the TV Controller Using Hand
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`Gestures and Related Interactive Computer Graphics Applications (“MERL”) and 3D Image
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`Control with Hand Gestures, including Control of Molecular Biology Modeling (“MDScope”)
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`Case 2:21-cv-00040-JRG Document 207 Filed 01/24/22 Page 3 of 4 PageID #: 9567
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`prior art systems that it disclosed and charted in its original invalidity contentions. (Dkt. No. 76
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`at 1-2.) Samsung further informs the Court that the supplement does not seek to introduce new
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`theories of invalidity or to alter the substance of existing theories. (Id. at 3.) Rather, Samsung
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`contends that the supplement will merely serve to better explain and clarify for the jury the existing
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`invalidity theories in this case. (Id.) Gesture does not dispute that Samsung’s proposed
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`supplement is limited to “background and support” for systems disclosed in the original
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`contentions. (Dkt. No. 90 at 4.)
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`Samsung argues that it has good cause to supplement its invalidity contentions because it
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`was diligent in obtaining and disclosing the new information to Gesture, the supplement is
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`important to the case as it will provide clarity to the jury regarding Samsung existing invalidity
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`theories, and it will not prejudice Gesture to allow Samsung to supplement the contentions.
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`Regarding diligence and the reason for the delay, Samsung notes that it served the third-party
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`subpoenas on Mitsubishi Electric Research Laboratories, Inc. and the Beckman Institute at the
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`University of Illinois at Urbana-Champaign—the respective creators of the MERL and MDScope
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`systems—roughly eleven weeks before the close of fact discovery. (Dkt. No. 76 at 3.) Samsung
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`also states that it disclosed the new information on MDScope and MERL to Gesture nine days and
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`one day, respectively, after receiving the materials in response to the subpoenas. (Dkt. No. 94 at
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`2.) Gesture responds that Samsung fails to explain why it waited roughly a month after receiving
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`the first new materials to propose its supplement. (Dkt. No. 90 at 3-4.)
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`With regard to prejudice, Samsung contends that Gesture will not be prejudiced by the
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`supplement because it merely adds additional support to prior art systems that were disclosed in
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`the original contentions. (Dkt. No. 76 at ) Gesture responds that it would be prejudiced because
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`Case 2:21-cv-00040-JRG Document 207 Filed 01/24/22 Page 4 of 4 PageID #: 9568
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`of the delay and because the supplement would take effect after the claim construction hearing.
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`(Dkt. No. 90 at 4-5.)
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`Lastly, Samsung argues that the supplement is important to the case because it will provide
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`clarity and further explanation of two prior art systems to the jury. Gesture responds that Samsung
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`has conceded that the supplements are not important because they are “nothing new or unique”
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`and are merely cumulative of existing information. (Dkt. No. 90 at 4.)
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`The Court agrees with Samsung. In this particular situation, Samsung appears to have been
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`diligent in supplementing its contentions. It informed Gesture of the new information in a timely
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`fashion and any delay appears to have been caused by the inevitable time necessary for third parties
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`to respond to subpoenas and the lack of publicly available information regarding the prior art
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`systems. Samsung is also not seeking to introduce new invalidity theories via its supplement and,
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`as a result, the relative lack of prejudice also weighs in favor of granting the Motion. Finally, the
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`Court agrees with Samsung that the ability of the new information to clarify and explain the
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`references disclosed in the original contentions renders it sufficiently important to this case.
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`Gesture’s arguments to the contrary are not persuasive.
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`IV. CONCLUSION
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`For the reasons stated above, the Court hereby GRANTS Defendants’ Motion For Leave
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`To Amend Invalidity Contentions (Dkt. No. 76).
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`____________________________________
`RODNEY GILSTRAP
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 24th day of January, 2022.
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