Opinion
Civil W-21-CV-00727-ADA
08-01-2023
THE TRUSTEES OF PURDUE UNIVERSITY, Plaintiff, v. STMICROELECTRONICS, INC., STMICROELECTRONICS INTERNATIONAL N.V., Defendants.
ORDER DENYING DEFENDANTS' MOTION TO STRIKE
DEREK T. GILLILAND UNITED STATES MAGISTRATE JUDGE
I. BACKGROUND
The present dispute involves Plaintiff's Final Amended Infringement Contentions, which were served two days before the close of discovery and without first seeking leave of Court. Defendants filed a Motion to Strike on May 23, 2023. ECF No. 308. Plaintiff responded and filed a counter motion for leave to amend its infringement contentions on June 8, 2023. ECF No. 320. Defendants filed a reply on June 15, 2023. ECF No. 325. On July 26, 2023, the Court heard oral argument and took the Motion to Strike and the Counter Motion for Leave under advisement. For the reasons explained below, the Court DENIES Defendant's Motion to Strike (ECF No. 308).
The Court's Order Governing Proceedings (“OGP”) defines when a party can amend infringement contentions. The OGP, on which the current scheduling order is based, provides a deadline for parties to file final infringement contentions. In this case, the scheduling order set a deadline of October 13, 2022 for Plaintiff to serve amended pleadings and after which “leave of court [was] required for any amendment to infringement contentions.” ECF No. 144.
In this case, the Court held a hearing on December 29, 2022 that resulted in an additional deadline of February 28, 2023 for Plaintiff to serve amended infringement contentions. ECF No. 308 at 8, 13. Purdue complied with that deadline by providing additional infringement contentions with additional reverse engineer data. ECF No. 320 at 6-7. At the hearing that resulted in the February amendments, Purdue and its expert specifically stated that to evaluate infringement, “You want to look at the distance between the P wells.” ECF No. 246 at 37:6-9. While Defendants' reply brief claims this is a new theory of infringement, it has actually been known since at least December 29, 2022.
II. ANALYSIS
The purpose of infringement contentions is to put a party on notice of the plaintiff's infringement theories. That is what Purdue has done in this case. It has identified the areas of the accused products through scanning electron microscope (SEM) and scanning capacitance microscopy (SCM) images created from reverse engineering the final products and by pointing to lines and areas on Defendants' masks-which are used to create the final products. See ECF No. 325-8 at 16, ECF No. 325-9 at 16, 17; ECF No. 325-10 at 15. Much of the detail contained in Purdue's May infringement contentions is detail often and justifiably reserved for expert reports.
Defendants' complaints about the changed measurements are not new theories of infringement. Purdue did not point to a new region or product to obtain those dimensions. Rather, Purdue relied on the testimony of Defendants' witness-Mr. Saggio-to adjust its point of measurement from one set of microscopic lines in the layers of a GDS mask file to the next, nearby microscopic lines. ECF No. 320 at 8-9. While this results in an adjustment of the dimensions as measured in the GDS mask files-and potentially the finished products-it does not result in a new theory of infringement.
Importantly, Plaintiff's Amended Infringement Contentions do not add new theories, products, or claims to the case. Defendants' complaints about Purdue's May infringement contentions have to do with precisely where within the areas previously identified in Purdue's prior infringement contentions specific measurements are to be taken. ECF No. 308 at 5-7; ECF No. 325 at 4-6. There are no new claims asserted in the May infringement contentions. Neither do those contentions add new legal theories of infringement such as inducement or contributory infringement. The only two products that have new charts are new “representative products”- SCT055HU65G3AG and the Tesla Drive Inverter, which is an ST SRFL die based product. ECF No. 325 at 12. At the hearing, ST clarified that these products are covered by other infringement contentions. The SCT055HU65G3AG was previously included in the chart of representative product SCT040H65G3AG, and the Tesla Drive Inverter was charted because it included ST SRFL die based products that were already charted. Thus, no new products were added to the case as the result of the May infringement contentions.
Plaintiff did not need to amend its contentions. Because Purdue did not add any new theories to the case, it could have added this additional information to its expert reports. Infringement contentions are intended to put a party on notice of the theories of infringement and streamline discovery. See Pisony v. Commando Constructions, Inc., 6:17-CV-00055-ADA, 2020 WL 4934463, at *4 (W.D. Tex. Aug. 24, 2020). Infringement contentions do not require a plaintiff to prove their case. Realtime Data L.L.C. v. NetApp, Inc., No. 6:16-cv-00961, 2017 WL 4844254, at *1 (E.D. Tex. Oct. 26, 2017). Expert reports, however, may include additional evidence not found in the infringement contentions without changing the theories of infringement. Pisony, 2020 WL 4934463, at *4 Realtime Data L.L.C., 2017 WL 4844254, at *1. However, courts have struck theories of infringement that were disclosed for the first time in expert reports. See, e.g., Howmedica Osteonics Corp. v Zimmer, 822 F.3d 1312, 1324-25 (Fed. Cir. 2016) (concluding district court did not abuse its discretion in applying local patent rules to preclude theory that was not disclosed in infringement contentions); Baltimore Aircoil Co. v. SPX Cooling Techs. Inc., Civ. No. CCB-13-2053, 2016 WL 4426681, at *15 (D. Md. Aug. 22, 2016) (granting motion to strike portions of expert report regarding infringement under doctrine of equivalents that was not disclosed in infringement contentions);Trading Techs. Int'l, 2014 WL 4477932, at *3-4, *5 (striking doctrine of equivalents argument in expert report and precluding reliance on theories and evidence related to stricken portions where infringement contentions addressed only literal infringement). “The threshold question in deciding whether to strike an expert report is whether the expert has permissibly specified the application of a disclosed theory or impermissibly substituted a new theory altogether.” Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2016 WL 612907, at *1 (N.D. Cal. Feb. 16, 2016). This creates an incentive for parties to over-amend infringement contentions out of fear of having them later struck from expert reports. That seems to be the case here. But, as Purdue did not add claims, products, or legal theories to this case, but rather clarified its previously disclosed theories based on recently acquired deposition testimony, the Court holds that Purdue's May amended infringement contentions were unnecessary and leave to amend was not required.
It is therefore unnecessary to address the good cause factors, but weighing such factors would favor granting leave to amend the contentions. “The tests for determining whether to allow a party to supplement infringement contentions and for determining whether to strike infringement contentions are essentially the same.” WSOU Investments LLC v. OnePlus Tech. (Shenzhen) Co., Ltd., 2022 WL 174517, at *2 (W.D. Tex. Jan. 18, 2022) (quoting Davis-Lynch, Inc. v. Weatherford Int'l, Inc., No. 6:07-CV-559, 2009 WL 81874, at *3 (E.D. Tex. Jan. 12, 2009)). Courts consider “(1) the reason for the delay and whether the party has been diligent; (2) the importance of what the court is excluding and the availability of lesser sanctions; (3) the danger of unfair prejudice; and (4) the availability of a continuance and the potential impact of a delay on judicial proceedings.” Id. There was arguably little delay between the deposition on which the amendments were based. While the parties dispute whose fault it was that Mr. Saggio was deposed late in discovery or what Purdue could have gleaned from analyzing the layers of the GDS mask files and process steps produced by defendant, the fact remains that Purdue relied on the testimony of Mr. Saggio to create the updated May amended infringement contentions. Purdue was dilatory in seeking leave to amend, however, as it served the contentions and only sought leave in its response to Defendant's Motion. While this seriously weakens Purdue's good cause argument, it does not undercut it in light of the other factors.
The evidence included in the May amended infringement contentions is certainly important and would undoubtably have otherwise appeared in expert reports, as it identifies with greater specificity the precise measurements that Purdue contends demonstrate infringement. Moreover, Defendants were unable to articulate any specific prejudice, such as additional witnesses or documentary evidence they would need to uncover, if the Court were to grant leave to amend. Defendants' inability to identify potential prejudice with specificity reinforces the determination that no new infringement theories were added to the case. Finally, neither party requested a continuance as an alternative remedy, which the Court takes to mean that none is necessary. When these factors are considered, Purdue has demonstrated good cause for granting leave to amend its infringement contentions.
III. CONCLUSION
For the foregoing reasons, the Court DENIES Defendants' Motion to Strike (ECF No. 308) and GRANTS Purdue's request for leave to amend its infringement contentions (ECF No. 320).