Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 1 of 6 PageID #: 34005
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`§
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`§
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`§
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`v.
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`HP INC.,
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`Defendant.
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`AX WIRELESS LLC,
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`Plaintiff,
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`CIVIL ACTION NO. 2:22-cv-0279-JRG-RSP
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`MEMORANDUM ORDER
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`Before the Court is Defendants Dell Inc., Dell Technologies Inc., HP Inc., and Lenovo
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`Group Limited’s (“Defendants”) Motion for Leave to Amend Invalidity Contentions. After
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`consideration, the Court GRANTS Defendants’ Motion for Leave to Amend as provided below.
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`I.
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`BACKGROUND
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`Defendants first served their Invalidity Contentions on January 23, 2023. (Mot. at 1.) On
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`March 29, 2023, Ax Wireless sent a letter to defendants detailing alleged deficiencies with
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`Defendants’ Invalidity Contentions and requesting a meet and confer in advance of a motion to
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`strike. (Dkt. No. 108-121.) On May 5, 2023, Defendants responded to Ax Wireless’s letter
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`providing “the Original Invalidity Contentions provided ample and fair notice to Plaintiff of
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`Defendants’ invalidity theories” but agreed to prepare supplemental contentions. (Mot. at 2.) On
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`June 6, 2023 Defendants served proposed amended contentions on Ax Wireless. (Id.) Thereafter
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`the parties disputed the scope and appropriateness of the proposed amendments ultimately
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`resulting in the Defendants’ Motion on July 25, 2023. (Id.)
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`1 The Court cites to the docket of Ax Wireless LLC v. Dell Inc., et al, Case No. 2:22-cv-00277-RWS-RSP (E.D.
`Tex), though the briefing is identical in Ax Wireless LLC v. HP Inc., Case No. 2:22-cv-00279-JRG-RSP (E.D. Tex)
`and Ax Wireless LLC v. Lenovo Group Limited, Case No. 2:22-cv-00280-RWS-RSP (E.D. Tex).
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`1
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`Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 2 of 6 PageID #: 34006
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`II.
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`APPLICABLE LAW
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`“Amendment or supplementation of any Infringement Contentions or Invalidity Contentions . . .
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`may be made only by order of the Court, which shall be entered only upon a showing of good cause.” P.R.
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`3-6(b). “Good cause,” according to the Federal Circuit, “requires a showing of diligence.” O2 Micro Int’l
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`Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Courts in this District routinely
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`apply a four-factor test to determine whether good cause has been shown. See Alt v. Medtronic, Inc., No.
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`2:04-CV-370, 2006 WL 278868, at *2 (E.D. Tex. Feb. 1, 2006) (citation omitted). Those four factors are:
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`(1) the explanation for the failure to meet the deadline; (2) potential prejudice in allowing the thing that
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`would be excluded; (3) the importance of the thing that would be excluded; and (4) the availability of a
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`continuance to cure such prejudice. The burden of proving good cause rests with the party seeking the
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`untimely amendment. Id; S&W Enters., L.L.C. v. SouthTrust Bank of Ala., NA, 315 F.3d 533, 536 (5th Cir.
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`2003)).
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`III. ANALYSIS
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`Ax Wireless does not dispute all amendments, rather the dispute is limited to certain “new
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`theories” Ax Wireless alleges Defendants added in their proposed Amended Contentions. In
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`particular, Ax Wireless contests Defendants’ addition of new prior art citations and internal cross-
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`references particularly where they were added to previously blank limitations. (Opp. at 7-10.) Ax
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`Wireless does not contest Defendants’ addition of a previously omitted chart, removal of “catch-
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`all” obviousness combination, and addition of obviousness combination language to previously
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`blank elements. (Id. at 5.)
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`a. Diligence and Reason for the Delay2
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`2 Defendants utilize a different set of factors than the Court typically considers when presented
`with a motion to amend contentions. The Court will consider the parties’ arguments regarding
`timing of the motion and diligence under this heading, but notes that the factors in §II supra are
`those that the Court finds most relevant in this analysis.
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`2
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`Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 3 of 6 PageID #: 34007
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`Defendants contend “any delay is largely attributable to Defendants’ good-faith efforts to
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`negotiate with Plaintiff to provide non-controversial amendments in response to Plaintiff’s request
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`for supplemental contentions.” (Mot. at 5.) Defendants allege this accounts for the delay between
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`Ax Wireless’s first letter on March 29 and their filing of the instant motion. (Id.) Defendants seem
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`to further blame the initial two months after the service of invalidity contentions on Ax Wireless’s
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`delay in notifying Defendants of alleged deficiencies. (Id. at 6 (“Plaintiff first raised concerns with
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`Defendants’ Original invalidity Contentions on March 29, 2023, two months after Defendants
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`served their original contentions.”).)
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`Defendants argue they were diligent in preparing their proposed amendments. (Id. at7.)
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`Defendants argue the “inadvertent errors” they allege the proposed amendments fix, do not
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`foreclose the possibility of finding diligence. (Id.) Defendants contend “diligence is demonstrated
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`by the months of negotiation with Plaintiff to provide the requested amendments.” (Id. at 8.)
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`Defendants point to the back and forth with plaintiff’s counsel where they proposed different
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`formats for their amendments including offering to replace new targeted citations with cross
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`references to other elements and replacing claim elements defendants combined for the first time
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`in the proposed amendments such that disclosures previously relating to only one element would
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`now appear relating to both with similar internal cross references. (Id. at 9-10.)
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`Ax Wireless responds that Defendants do not show diligence in part by entirely ignoring
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`the initial two months after they served their original contentions and by failing to show how it
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`took from March 29 to June 6 to correct “inadvertent errors.” (Mot. at 11.)
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`The Court finds this factor weighs somewhat against granting the motion. Defendants
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`corrected “inadvertent errors” some four months after their service of invalidity contentions. While
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`“inadvertent errors” may explain Defendants’ initial failure to include its proposed amendments
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`3
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`Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 4 of 6 PageID #: 34008
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`in their contentions, it is not clear why it took four months. “Good-faith negotiations” only account
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`for so much when the Court would expect “inadvertent errors” could be corrected fairly quickly.
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`Thus the Court finds that the Defendants failed somewhat in their diligence.
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`b. Potential Prejudice
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`Defendants argue plaintiff will suffer no “unfair prejudice” because 1) the proposed
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`amendments present no new prior art references or combinations; 2) Ax Wireless was on notice of
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`the proposed amendments; and 3) Ax Wireless requested the proposed amendments. (Mot. at 12.)
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`Defendants further argue that because Ax Wireless has sufficient time to respond to the proposed
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`amendments there is little prejudice. (Id. at 13-14.) Defendants contend the Court has permitted
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`experts to rely on citation to previously disclosed prior art where the specific citation was not
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`expressly identified in the contentions. (Id. at 13 n.3.) Thus, Defendants suggest Ax Wireless is
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`not prejudiced because even without the proposed amendment, defendants’ case would proceed
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`the same regardless. (See id.)
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`Ax Wireless contends the proposed amendments add new invalidity theories, turning what
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`were only obviousness combinations into anticipation theories. (Opp. at 14.) Ax Wireless notes
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`Defendants confirm a “blank” element was an indication that the element would be addressed
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`under §103. (Sur-Reply at 2 (citing Mot. at 4).) Ax Wireless further contends that as this case has
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`been pending for over a year, it is prejudiced by such a late amendment. (Opp. at 14.)
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`Defendants respond that they had previously asserted anticipation theories rather than
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`merely obviousness combinations. (Reply at 1 (citing language in its claim charts asserting the
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`reference anticipated claims).)
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`The Court finds Ax Wireless is not unduly prejudiced by the proposed amendments.
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`Defendants’ motion was filed more than four months prior to the close of fact discovery and Ax
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`4
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`Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 5 of 6 PageID #: 34009
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`Wireless has identified no unique prejudice beyond needing to address additional invalidity
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`contentions. As such while this does prejudice Ax Wireless, such prejudice is minimal.
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`Throughout their motion, Defendants contend that Ax Wireless requested the proposed
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`amendments, but do not document such a request. Defendants content “Defendants provide
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`Plaintiff with their amended contention about two months after Plaintiff requested the
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`amendments.” (Mot. at 5.) A threat to file a motion to strike contentions as deficient is not the
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`same as a request to serve new contentions. Defendants should be more accurate with their
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`representations to the Court.
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`c. Importance of the Matter
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`Defendants contend this factor favors their motion as the amendments are important
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`“because they address most, if not all, of the purported deficiencies upon which the Plaintiff
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`contends the contentions should be struck.” (Mot at 11.) Defendants further contends importance
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`“because [the amendments] help explain and clarify how Defendants prior art either anticipates or
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`renders obvious the alleged inventions of the Asserted Patents.” (Id.)
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`Ax Wireless argues that it is the role of the original invalidity contentions to provide the
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`clarity Defendants suggest their proposed amendments provide. (Opp. at 13.) Further, Ax Wireless
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`contends Defendants’ importance argument conflicts with their prejudice argument in that “either
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`the amendments are limited, clarifying, and unprejudicial, or they are important.” (Id.)
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`The Court agrees with Ax Wireless that Defendants’ importance argument is somewhat at
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`odds with their prejudice arguments. Further, Ax Wireless is also correct that Defendants’
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`prejudice arguments suggest these amendments have no importance. In particular, if it is
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`Defendants’ opinion that they can support the invalidity expert’s report with or without
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`amendment, as it appears to be, (Mot. at 13 n.3), then these amendments are less important.
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`5
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`Case 2:22-cv-00279-JRG-RSP Document 99 Filed 12/11/23 Page 6 of 6 PageID #: 34010
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`However, Ax Wireless’s arguments too are somewhat inconsistent between the prejudice
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`and importance factors. Ax Wireless contends the proposed amendments disclose new invalidity
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`theories. (Opp. at 7.) Disclosure of invalidity theories is important as this is the entire purpose of
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`such contentions. The mere fact that Defendants should have included such theories in their
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`original invalidity contentions does not minimize their importance.
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`The Court finds the proposed amendments are important as they disclose and clarify
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`contested invalidity theories.
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`d. Availability of Continuance
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`Ax Wireless contends continuance is unnecessary and Defendants do not address this
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`factor. The Court finds this factor is neutral.
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`IV.
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`CONCLUSION
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`As the proposed amendments are important and do not unduly prejudice Ax Wireless and
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`Defendants were not dilatory, the Court therefore GRANTs Defendants’ Motion (Dkt. No. 63).
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`6
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