Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 1 of 5
`United States District Court
`Southern District of Texas
`ENTERED
`November 28, 2018
`David J. Bradley, Clerk
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`Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 2 of 5
`Case 3:16—cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 2 of 5
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`amends its preliminary infringement contentions in response to the Court’s claim
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`construction order. Sandbox argues in response that Local Patent Rule 3-6(c)(1) requires
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`any amended invalidity contentions to be “responsive to” the amended infringement
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`contentions and that Grit’s amended invalidity contentions are not sufficiently responsive
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`to fall within the ambit of the rule (Dkt. 295 at p. 1).
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`There seems to be little authority—and none that is binding on this Court——
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`addressing exactly how to evaluate whether amended invalidity contentions are
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`responsive enough to amended infringement contentions to be permissible under Local
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`Patent Rule 3-6(c)(1). It is not even clear that the amended invalidity contentions need to
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`be responsive to the amended infringement contentions. The plain language of the rule
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`does not include a responsiveness requirement, and the Court has found both well-
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`reasoned authority imposing a responsiveness requirement and well-reasoned authority
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`rejecting one.l Compare Industrial Print Technologies, LLC v. O’Neil Data Systems, Inc,
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`2018 WL 398745, at *4 (ND. Tex. Jan. 11, 2018) (“[T]here must be a nexus between the
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`defendant’s proposed amendments and the plaintiff’s amendments”) with Fresenius
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`Medical Care Holdings, Inc. v. Baxter International, Inc., 2005 WL 2043047, at *1 (N.D.
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`Cal. Aug. 24, 2005) (“To read such subjective requirements into the Patent Local Rules
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`would cause an expansion of the type of motion practice that these Rules were intended
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`to curtail.”).
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`‘ The available authority consists of other districts’ examinations of materially identical local
`patent rules. To the Court’s knowledge, no judge in the Southern District of Texas has addressed
`the question of whether Local Patent Rule 3-6(c)(1) contains a responsiveness requirement.
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`2/5
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`Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 3 of 5
`Case 3:16—cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 3 of 5
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`Given the procedural history of this case and related proceedings and the unsettled
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`state of the law interpreting Local Patent Rule 3-6(c)(1), the Court will allow Grit to
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`amend its
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`invalidity contentions because the record does not show that Grit’s
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`amendments will cause prejudice to Sandbox. Throughout this case, the Court has given
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`the parties, all of whom are very ably represented, sufficient latitude to develop and
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`present
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`the facts and their contentions to the greatest extent possible within the
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`boundaries of fairness and equity. With regard to the challenged amended invalidity
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`contentions, Grit has cited and extensively discussed the Wietgrefe, Hurst, and Luharuka
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`patents in a related inter partes review proceeding (“IPR”) since, at the latest, March of
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`2018; and it served Dr. Wooley’s supplemental report on Sandbox three weeks before Dr.
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`Wooley’s deposition. Irrespective of whether the amended invalidity contentions would
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`satisfy a responsiveness requirement,
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`the record does not show that allowing those
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`amended contentions to stand would permit the sort of ambush litigation that the Local
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`Patent Rules and the Federal Rules of Civil Procedure were designed to prevent.
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`The expert opinions
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`Sandbox also contends that Dr. Wooley improperly supplemented his opinions
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`regarding the purported priority date of two prior art references (Harris ‘554 and Harris
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`‘809). Grit responds by arguing that Sandbox suddenly changed its position on the
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`question of whether
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`the Harris
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`references constituted prior art, necessitating a
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`supplemental report by Dr. Wooley to address what had previously been an undisputed
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`issue.
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`3/5
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`Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 4 of 5
`Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 4 of 5
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`The Court will allow the supplementation because the record does not show that
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`the supplementation will cause prejudice to Sandbox. Under Federal Rule of Civil
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`Procedure 37(c)(1), a party that fails in its disclosure obligations under Federal Rule of
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`Civil Procedure 26 cannot use the undisclosed “information or witness to supply evidence
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`on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is
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`harmless.” Because this particular discovery matter is not unique to patent law, Fifth
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`Circuit law governs, Micro Chemical, Inc. v. Lextron, Inc, 317 F.3d 1387, 1390—91 (Fed.
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`Cir. 2003), and the Fifth Circuit leaves the question of whether a failure to disclose is
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`substantially justified or harmless “to the district court’s sound discretion.” Brennan’s
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`Inc. v. Dickie Brennan & Co. Inc, 376 F.3d 356, 375 (5th Cir. 2004). Here, Grit served
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`Dr. Wooley’s supplemental
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`report on Sandbox three weeks before Dr. Wooley’s
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`deposition; and the record reflects that, in the IPR proceeding in March of 2018, Grit
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`presented opinions regarding the Harris priority dates that were identical to the opinions
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`challenged here. Moreover, Dr. Wooley’s original expert report extensively discusses the
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`Harris patents as being prior art relevant to the patents at issue in this case. Sandbox
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`received adequate information about Dr. Wooley’s supplemental contentions soon
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`enough to render harmless any failure by Grit to comply with Rule 26. See Brennan’s
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`Inc, 376 F.3d at 375 (upholding the district court’s decision to allow an expert to offer
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`opinions at trial based on undisclosed supporting data when the opposing expert was
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`already familiar with the data at issue); Woodworker’s Supply, Inc. v. Principal Mutual
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`Life Insurance Co., 170 F.3d 985, 993 (10th Cir. 1999) (cited in Brennan’s) (upholding
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`the district court’s decision not to prevent the plaintiff from presenting evidence at trial
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`4/5
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`Case 3:16-cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 5 of 5
`Case 3:16—cv-00012 Document 210 Filed in TXSD on 11/28/18 Page 5 of 5
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`on a previously undisclosed theory of damages where the defendant knew the numbers on
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`which the calculations were based).
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`Sandbox’s request that the Court strike certain of Grit’s supplemental invalidity
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`contentions and expert opinions (Dkt. 295) is DENIED.
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`SIGNED at Galveston, Texas, on
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`1:}W Q?
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`, 2018.
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`flaw/fie;3141%
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`3, JR.
`GEORGE C.
`UNITED STATES DISTRICT JUDGE
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`5/5
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