Opinion
2:22-cv-00398-JRG-RSP
01-11-2024
MOJO MOBILITY, INC, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD.; SAMSUNG ELECTRONICS AMERICA, INC., Defendant.
MEMORANDUM ORDER
ROY S. PAYNE, UNITED STATES MAGISTRATE JUDGE
Before the Court is Defendants Samsung Electronics Co. LTD. and Samsung Electronics America, Inc.'s Motion for Leave to Amend Invalidity Contentions. (Dkt. No. 50.) In its Motion, Samsung requests leave to amend its invalidity contentions to add PCT Publication No. WO 2007/090168 A2. (Id. at 1.)
Under the Local Patent Rules, leave to amend or supplement invalidity contentions may be made “only upon a showing of good cause.” P.R. 3-6(b). The Federal Circuit has stated that “‘good cause' requires a showing of diligence.” O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Diligence includes a party's diligence in discovering the reference: "the critical issue is whether or not [the party seeking to amend] exercised diligence in discovering the prior art.'” Invensys Sys, Inc. v. Emerson Elec. Co., No. 6:12-CV-799, 2014 WL 12598865, at *3 (E.D. Tex. Dec. 3, 2014) (citing Symantec Corp. v. Acronis Corp., 2013 WL 5368053, at *5 (N.D. Cal. Sept. 25, 2013) (internal quotation marks omitted)).
“In the context of untimely amendments to invalidity contentions, the first factor- explanation-requires the amending party to show it was diligent both in discovering and in disclosing the prior art references.” Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-00550-JRG-RSP, Dkt. No. 133, at *3-4 (E.D. Tex. Jan. 17, 2020) (emphasis in original) (collecting cases). A party must “explain why, with reasonable diligence, [it] could not have discovered” the relevant prior art references “prior to the deadline for filing Invalidity Contentions.” Innovative Display Techs. LLC v. Acer Inc., No. 2:13-CV-00522-JRG, 2014 WL 2796555, at *1 (E.D. Tex. June 19, 2014). “A party's failure to provide any adequate justification for its untimely disclosure materially weighs heavily in favor of rejecting the disclosure, and may even be sufficient standing alone to support exclusion.” Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., No. 2:17-CV-00651-JRG, 2019 WL 2267212, at *3 (E.D. Tex. May 28, 2019) (emphasis in original) (collecting cases).
After consideration, the Court concludes that Samsung has shown good cause to amend its invalidity contentions. Accordingly, the Court GRANTS Samsung's Motion.