Papst Licensing GmbH & Co., KG v. Apple, Inc.

RESPONSE in Opposition re Opposed MOTION For Leave to Amend Claim Election and Infringement Contentions with regard to Samsung Defendants

E.D. Tex.December 6, 2018

TIN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION Papst Licensing GmbH & Co. KG, Plaintiff, v. Apple Inc., Defendant. Civil Action No. 6:15-cv-1095-RWS (LEAD CASE) Papst Licensing GmbH & Co. KG, Plaintiff, v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Defendants. Civil Action No. 6:15-cv-1102-RWS (CONSOLIDATED CASE) JURY TRIAL DEMANDED SAMSUNG’S OPPOSITION TO PLAINTIFF’S MOTION (DKT. 736) FOR LEAVE TO AMEND CLAIM ELECTION AND INFRINGEMENT CONTENTIONS Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Samsung”) oppose Papst Licensing GmbH & Co. KG’s (“Papst”) Motion for Leave to Amend Claim Elections and Infringement Contentions (“Motion”). Dkt. 736. As discussed in Samsung’s concurrently-filed Opposition to Plaintiff’s Motion to Lift Stay Temporarily for A Limited Purpose, this Court should deny Papst’s request to lift the stay of this matter. However, if the Court lifts the stay, it should prohibit Papst from amending its claim elections (and adding new products) because doing so would violate the Local Rules of this District Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 1 of 16 PageID #: 421750 - 2 - and this Court’s [Model] Order Focusing Patent Claims and Prior Art to Reduce Costs (“Model Order”) without good cause. The Local Rules and Model Order require a patentee to give notice of all its infringement theories and accused products early to set the parameters of the litigation and, after sufficient discovery, require all parties to narrow their cases to “final” elections of claims and prior art. Papst knew when it elected its claims that IPRs were pending and that some claims might survive the IPRs and some might not. With that knowledge, Papst made its informed election of 16 claims, knowing that decision was “final.” Papst knowingly elected four claims of the ’746 patent that were subject to instituted IPRs, and knowingly did not elect claim 14, which was not. If the Court allows Papst to re-do its elections now, it is inviting parties in every other patent case in this District to ask permission to re-do their elections based on what happens later in IPRs (or even later in litigation). “Final” elections would no longer be final. This would frustrate one of the main tools the Court uses to keep its docket manageable. Papst agreed to this process and cannot now claim that it is being denied due process. Papst cannot show good cause why it should be allowed to deviate from the practices of this Court. I. RELEVANT BACKGROUND The following timeline is informative when evaluating Papst’s requested relief:  November 30, 2015: Papst initiates these lawsuits in this Court.  June 20, 2016 (Dkt. 70): The parties jointly propose a Docket Control Order (“DCO”) following the Model Order; Papst serves its infringement contentions; and IPR petitions begin being filed against Papst’s patents.  August 24, 2016: Samsung serves its invalidity contentions.  November 8, 2016 (Dkt. 168): Papst files a motion requesting that the preliminary election of claims be stricken from the DCO given how many terms the parties asked the Court to construe. Papst asks that there only be a single claim election, which will occur after issuance of the claim construction order. Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 2 of 16 PageID #: 421751 - 3 -  November 18, 2016 (Dkt. 173): The Court denies Papst’s motion to strike the preliminary election of claims from the DCO.  January 3, 2017 (Dkt. 204): Samsung files an opposed motion to stay pending the outcome of the IPRs.  February 10, 2017 (Dkt. 238): Papst files a motion to amend the DCO to switch the final election of asserted claims from March 14, 2017 to April 4, 2017.  March 7, 2017 (Dkt. 275): The Court issues claim construction order.  March 14, 2017: Papst serves its final election of claims. Papst elects the following 16 claims as to Samsung: o ’399 patent: 1, 2, 15; o ’449 patent: 1, 17; o ’746 patent: 6, 7, 10, 17; o ’144 patent: 16, 41, 83, 86; and o ’437 patent: 15, 18, 45.  April 4, 2017 (Dkt. 321): Close of fact discovery.  April 21, 2017 (Dkt. 321): Final Election of Asserted Prior Art. Opening expert reports due.  June 16, 2017 (Dkt. 370): Close of expert discovery.  June 20, 2017: The parties file dispositive and Daubert motions.  September 12, 2017: Hearing on dispositive motions.  November 13, 2017: Originally scheduled trial date; continued sua sponte by the Court.  April 13, 2018: The last of four IPR final written decisions concerning the ’746 patent issues. Papst learns that unelected claim 14 has survived the IPR process.  April 30, 2018 (Dkt. 708): After IPR petitions concerning the ’449 patent are dismissed because of settlements, Samsung files a motion to stay the entire case or, alternatively, to stay all patents except the ’449 patent and to permit Samsung to file a motion for summary judgment of invalidity as to the ’449 patent claims. Papst subsequently agrees to stay all patents except the ’449 patent, but opposes the filing of a motion for summary judgment of invalidity.  July 2, 2018 (Dkt. 725): Certain parties inform the Court of the IPR outcomes. None of the final elected claims survived for the four remaining patents. Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 3 of 16 PageID #: 421752 - 4 -  August 1, 2018 (Dkt. 726): The Court grants-in-part Samsung’s motion to stay. The Court severs the ’449 into a new case for trial and stays the other four patents. The Court denies leave to file a motion for summary judgment of invalidity.  October 9, 2018 (Dkt. 736): Papst files the present motion. II. ARGUMENT Relying only upon hindsight, Papst asks this Court to undo the agreed DCO incorporating this Court’s Model Order that required Papst to make a final election of 16 claims long ago. Papst made that election. If Papst had thought claim 14 of the ’746 patent was important, Papst should and would have elected it. Papst did not. Samsung elected its final prior art references based on Papst’s 16 elected claims. Fact and expert discovery were completed based on those 16 elected claims. Dispositive motions and Daubert motions were briefed and argued based on those 16 elected claims. That is the process that Papst and Samsung agreed to - and the Court ordered consistent with its own Model Order. There is nothing special about this case that should prompt this Court to undo its DCO and let Papst re-do its claim elections. If the Court permitted Papst to do so in this case, it would only encourage litigants in every other patent case before this Court to request a chance to amend their elections after an IPR has been completed. That would frustrate one of the principal tools this Court uses to manage its large patent litigation docket and would drive up the cost of litigation contravening the Court’s Model Order “to Reduce Costs.” There is simply no cause, “good” or otherwise, to permit Papst to re-do its elections now. A. Due Process Does Not Compel The Relief Papst Seeks Papst argues that “due process requires the addition of claim 14 to Papst’s final elected claims because claim 14 presents unique issues of validity, infringement, and damages.” Br. at 3- 8. Papst is wrong. None of the pertinent considerations under the case law support Papst’s due process arguments and the extraordinary relief it seeks. See Stamps.com Inc. v. Endicia, Inc., 437 Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 4 of 16 PageID #: 421753 - 5 - F. App’x 897, 902-03 (Fed. Cir. 2011) (district court did not abuse its discretion in limiting patentee to asserting 15 claims and denying patentee’s motion to pursue additional claims where patentee failed to make a good cause showing for the need to pursue additional claims). The principal case that Papst cites - In re Katz - does not “require[] the court to allow the patentee to add claims upon a showing that such claims present unique issues of validity, infringement, or damages,” as Papst contends. Br. at 3. The Federal Circuit in Katz held that district courts possess the authority and discretion to limit the number of claims asserted in patent infringement actions. In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1312- 13 (Fed. Cir. 2011). Requiring a plaintiff patentee to limit its claims to a certain number from a large number of asserted claims is permissible as long as the district court leaves open the door for the assertion of additional claims upon a showing of good cause or need. See id. at 1310-12. The court noted that it is “conceivable that a claim selection order could come too early in the discovery process, denying the plaintiff the opportunity to determine whether particular claims might raise separate issues of infringement or invalidity in light of the defendants’ accused products and proposed defenses.” Id. at 1313 n.9. In this case, however, the process the parties agreed to and proceeded under through litigation does not raise such concerns. Indeed, Papst does not argue that the claim selection process came unfairly early in the discovery process or that it had insufficient information available to it to elect claim 14. Only now - at the tail end of the IPR process and after almost all pretrial milestones have passed - does Papst argue that claim 14 is “unique.” At bottom, Papst argues that since one of its claims survived IPR, it should be able to undo the work of the parties and the Court and be granted the opportunity to add the surviving claim to its final claim election and, as a result, re-do discovery and other litigation tasks. As explained below, Papst was neither diligent, Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 5 of 16 PageID #: 421754 - 6 - nor is its requested relief justified under the good cause standard. O2 Micro Int’l Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). First, Papst’s contention that due process requires the relief it seeks is baseless. Papst agreed to the process of having to narrow its case to 16 “final” elected claims. Papst knowingly elected four claims of the ’746 patent that were subject to instituted IPRs, and knowingly did not elect claim 14, which was not. Papst cannot accuse this Court of depriving it of due process by following a process Papst agreed to. Second, Papst fails to show that there is something unique and special about claim 14 such that the Constitution compels the Court to let Papst add it late. Papst wrongly argues that the fact that claim 14 was not cancelled in an IPR means that it presents unique issues of invalidity, infringement, and damages. But simply because a claim survives IPR cannot be the basis for courts to decide, in hindsight, that there are unique issues of validity such that due process concerns are implicated. Such a rule would swallow the narrowing procedures endorsed by Katz and this Court’s Model Order and would require courts to undo scheduling orders in every case whenever a claim survives an IPR. And, in fact, claim 14 is not entirely out of the woods as Papst would have the Court believe. Apple has appealed the claim to the Federal Circuit from one of the IPRs, thus, tilting the scale against Papst’s motion and weighing in favor of awaiting the outcome of the IPR appeals. Nor does it matter that claim 14 is not identical in scope to other claims Papst elected because claims are supposed to cover different subject matter. Finally, it is not relevant to due process that the ’746 patent issued later than other asserted patents. That simply means it has a smaller damages window. Papst decided long ago that claim 14 was not one of its best 16 claims. Papst agreed to the process of having to make final elections and opposed Samsung’s motion for an early stay that Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 6 of 16 PageID #: 421755 - 7 - would have given Papst more time to learn how the IPRs would pan out. Papst has thus failed to show that due process requires the Court to grant the relief it seeks in this case. B. Papst Fails to Meet the Good Cause Standard Papst also fails to meet the good cause standard, which Katz and the Model Order require for late amendment of elections. A court has the inherent power to enforce its scheduling orders. O2 Micro, 467 F.3d at 1363; see also Reliance Ins. v. La. Land & Expl. Co., 110 F.3d 253, 258 (5th Cir. 1997) (“District judges have the power to control their dockets by refusing to give ineffective litigants a second chance to develop their case.”); Masimo Corp. v. Philips Elecs. N. Am. Corp., 918 F. Supp. 2d 277, 282 (D. Del. 2013) (“A district court has inherent authority to reasonably limit both the number of claim terms to be construed and the number of patent claims the parties may assert to control the dispositions of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants.” (quotations and footnotes omitted)). Federal Rule 16(b) allows a party to seek modification of a court-mandated deadline only upon a showing of good cause. Fed. R. Civ. P. 16. The good cause standard requires the party to show that, despite its exercise of diligence, it cannot reasonably meet the scheduling deadlines. S&W Enters., L.L.C. v. Southtrust Bank of Ala., 315 F.3d 533, 535 (5th Cir. 2003). Similarly, the stated purpose of this Court’s Model Order is to “streamline the issues in [a] case to promote a ‘just, speedy, and inexpensive determination.’” E.D. Tex. Order Focusing Patent Claims & Prior Art to Reduce Costs at 1 (citing Fed. R. Civ. P. 1). “[P]ost-entry motions to modify this Order’s numerical limits on asserted claims and prior art references must demonstrate good cause warranting the modification.” Id. ¶ 5; see also E.D. Tex. P.R. 3-6(b) (“Amendment or supplementation of any Infringement Contentions . . . , other than as expressly permitted in P.R. 3-6(a), may be made only by order of the Court, which shall be entered only upon a showing of good cause.”). Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 7 of 16 PageID #: 421756 - 8 - The Court considers four factors in making a determination as to whether the good cause standard is met: “(1) the explanation for the party’s failure to meet the deadline, (2) the importance of what the Court is excluding, (3) the potential prejudice if the Court allows the thing that would be excluded, and (4) the availability of a continuance to cure such prejudice.” Mediostream, Inc. v. Microsoft Corp., No. 2:08-CV-369-CE, 2010 WL 4118589, at *1 (E.D. Tex. Oct. 18, 2010) (citations omitted). The Federal Circuit has also determined that “‘good cause’ requires a showing of diligence.” O2 Micro, 467 F.3d at 1366; see also Mediostream, 2010 WL 4118589, at *1 (“Courts in this district have required diligence to satisfy the good cause standard for amending infringement contentions in the wake of the O2 Micro decision.”) (citations omitted). As a case advances toward trial, leave to amend is less likely to be granted. See, e.g., Wonderland NurseryGoods Co. v. Thorley Indus., LLC, 2014 WL 199789, at *3-4 (W.D. Pa. Jan. 17, 2014) (collecting cases). “At some point, amendments to the infringement contentions must end and the case must move forward.” Ex. 1, Ziptronix, Inc. v. Omnivision Techs., Inc., No. 4:10-cv-5525- SBA, Dkt. 373, Order Granting in Part Pl.’s Mot. to Amend Preliminary Infringement Contentions at 3(N.D. Cal. Jan. 23, 2014) (denying motion to amend infringement contentions because “[i]t is simply too late”). 1. Papst Has Not Been Diligent and Its Explanation Is Misguided Papst fails to meet its burden in proving that it was diligent. O2 Micro, 467 F.3d at 1366 (“The burden is on the movant to establish diligence rather than on the opposing party to establish a lack of diligence.”) (citation omitted). Here, Papst offers no explanation for its failure to elect claim 14 in its final election of asserted claims following the Court’s claim construction order. Instead Papst seeks to unwind the case and add claim 14 to its elected claims simply because it survived IPR. Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 8 of 16 PageID #: 421757 - 9 - Papst asserts that it was diligent because the “final written decision in the last pending IPR against the Final Elected Claims of the ’746 patent (which upheld the claims, including Claim 14, as patentable) did not issue until April 13, 2018.” Br. at 8-9. But Papst fails to address the fact that it waited six months to bring this motion. See Veolia Water Sols. & Techs. N. Am., Inc. v. Aquatech Int’l Corp., 123 F. Supp. 3d 695, 707 (W.D. Pa. 2015) (“Aquatech cannot now, following summary judgment proceedings, or at trial, assert additional claims of the ’255 Patent or any claims of the ’456 Patent against Veolia in this lawsuit.”). Even if Papst had filed its motion last April, this case is still long-past discovery and dispositive motion practice. It is far too late to start this case over. See id. (“Aquatech never requested a case management plan in which certain representative or test claims would be initially considered. . . . It is too late for Aquatech to seek the benefit of such case management tools now.”) (citing In re Katz, 639 F.3d at 1310-13). Papst argues that “it could not have known the outcome of the pending IPRs” and thus “should be permitted to assert its surviving claim against Samsung.” Br. at 9. But if such a concern was legitimate, Papst could have agreed to stay the case pending IPR or moved to elect claim 14 in addition to the other elected claims long ago. Papst did not do so and was therefore not diligent. See O2 Micro, 467 F.3d at 1367 (stating that three months was not diligent); Power Integrations, Inc. v. Fairchild Semiconductor Int’l Inc., No. C 09-5235 MMC (MEJ), 2013 WL 4604206, at *4 (N.D. Cal. Aug. 28, 2013) (two months delay was not diligent); EON Corp IP Holdings LLC v. Aruba Networks, No. 12-cv-1011-JST, 2013 WL 6001179, at *2 (N.D. Cal. Nov. 12, 2013) (three months not diligent). 2. Papst Fails to Show Importance As addressed above, Papst’s motion attempts to distinguish claim 14 as unique from other claims of the ’746 patent and the other asserted patents. But if claim 14 were so important and so Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 9 of 16 PageID #: 421758 - 10 - different, then Papst should have elected it.1 Instead, Papst tethers its argument for importance on the fact that claim 14 “is the sole claim . . . to survive IPR.” Br. at 10. But claim 14 is no more important at this time than it was when Papst made its final election in the face of substantial IPR challenges, including claim 14. Only post hoc does Papst seek relief from the agreed DCO. If this were a legitimate basis to re-do Papst’s informed decisions under the agreed-upon case management process, then every DCO requiring case narrowing would have to be modified if an unelected claim survived an IPR. This would fundamentally undermine the tool this Court uses to manage its large patent docket. That is more “important” than a lone claim that Papst did not see fit to choose when it elected its 16 claims for trial. In addition, Papst’s argument that denial of the present motion “would prevent Papst from recovering from Samsung in this litigation altogether” collapses in view of more recent events. Br. at 10. The severed action involving the ’449 patent went to trial after Papst filed its motion and a verdict of nearly $6 million was returned. Although not every accused product was involved in the ’449 patent trial, it is certainly not true that Papst is precluded from recovering “altogether” for the Tasler patent portfolio. This factor weighs in favor of denying leave to amend in this case. 3. Samsung, Not Papst, Would Be Unfairly Prejudiced Papst argues that changing its election of claims and amending its infringement contentions presents no prejudice to Samsung, but that is wrong for many reasons. First, Papst minimizes the effort involved in adding claim 14 and new products at this stage despite fact discovery and expert discovery being closed. Samsung will be forced to supplement its discovery in light of the new contentions, possibly present additional witnesses for deposition, prepare new expert reports, and will need to be allowed to reconsider and, if necessary, amend its final election of prior art, and 1 By arguing that claim 14 is so unique from the other claims, Papst undercuts its argument that there are minimal implications as to discovery and expert reports. Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 10 of 16 PageID #: 421759 - 11 - readdress dispositive motions. Such efforts are not trivial, as the court in Adaptix, Inc. v. T-Mobile USA, Inc. recognized when it denied the plaintiff’s motion to supplement its infringement contentions after the close of fact discovery and after opening expert reports had been served. Case No. 6:12-cv-122, 2014 WL 12639945 (E.D. Tex. Nov. 12, 2014). As in the present case, the Adaptix court recognized that the defendants would suffer substantial prejudice if infringement contention changes were allowed because the defendants had relied on the earlier contentions in forming invalidity positions and in submitting expert opinions. Id. at *3. Moreover, the court said that a “continuance would not cure the potential prejudice to Defendants, as the parties have spent considerable resources on these cases.” Id. Here too prejudice cannot be avoided if the Court were to allow after the close of expert discovery the addition of claim 14. Papst argues that “the parties already have completed fact discovery necessary to prepare claim 14 for trial” and, conversely, “can address [additional discovery] through agreement or seek leave from the Court.” Br. at 10. In doing so, Papst disregards that expert discovery did not encompass claim 14. As such, additional discovery would undoubtedly be required, including infringement, non-infringement, invalidity, and validity. Second, it is optimistic to suggest that the parties would agree to additional discovery given that the present motion for leave is opposed. In other words, now is the time for Papst to seek the necessary relief, which as shown is not warranted. If any final elected claim is revived by the forthcoming Federal Circuit decisions on the IPRs, then this case is practically ready for trial. It is simply not credible for Papst to argue that no prejudice would result to Samsung even though “the addition of Claim 14 [] would require that parties to revise infringement and damages expert reports to address the single additional claim Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 11 of 16 PageID #: 421760 - 12 - and present their witnesses for limited deposition.” Br. at 11.2 This factor weighs in favor of denying Papst’s motion. Papst seeks an unfair tactical advantage over Samsung by seeking to expand its case well after the close of all discovery and dispositive motions based on events in the IPRs. But Papst successfully opposed Samsung’s motion for leave to file a motion for summary judgment as to the ’449 patent after that patent survived the IPR process. Papst cannot expect this Court to alter the case schedule for Papst based on events in the IPRs when Papst stridently opposed the Court doing so for Samsung. Papst made the strategic and calculated decision not to elect claim 14 of the ’746 patent against Samsung and instead elected 16 other claims (including the four claims of the ’746 that Papst elected while knowing they were subject to instituted IPRs, unlike claim 14). Papst, and Papst alone, crystalized this case concerning the elected claims and it would be unfairly prejudicial to Samsung to permit Papst to undo its own informed choices and start over. See Comput. Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007) (the Local Patent Rules “exist to further the goal of full, timely discovery and provide all parties with adequate notice and information with which to litigate their cases.”) (citations omitted). Papst should live with its calculated and knowing actions. Papst’s eleventh hour attempt to add claim 14 back into this case comes far too late. See Uniloc USA, Inc. v. Distinctive Devs. Ltd., No. 6:12-cv-462-RWS, 2016 WL 11485612, at *2 (E.D. Tex. Dec. 13, 2016) (denying motion for leave to amend 2 Papst also argues that adding claim 14 back into the case “should be no surprise to Samsung” because Papst “informed Samsung of the likelihood that [its final election] would need to be amended ‘after final written decisions are received on all pending and to-be-filed IPRs against the asserted patents.’” Br. at 11. Obviously, Papst cannot circumvent the DCO by an extrajudicial “reservation” of a right it never possessed in the first place. See Cellular Commc’ns Equip., LLC v. Apple Inc., No. 6:14-cv-251, 2016 WL 4211707, at *3 (E.D. Tex. Aug. 10, 2016) (“The purpose of infringement contentions is to provide defendants with notice as to what plaintiff’s theories of infringement are, not any possible theory of infringement that could be asserted based upon the language of the patent. . . . Thus, injecting a new infringement theory at a late stage is prejudicial to a defendant.”) (citation omitted). Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 12 of 16 PageID #: 421761 - 13 - infringement contentions where plaintiff “has not shown that it was diligent in seeking to amend its infringement contentions” and “offered no reason why it could not have included claims 21 and 22 in its original infringement contentions or sought to amend those contentions before the stay”). Under similar circumstances, this Court rejected these types of tactics. See id. In Uniloc, the plaintiff stated in its complaint that the defendant infringed “at least claim 107” of the patent and it served infringement contentions for just that claim. Id. at *1. Seven months later, the defendant filed an IPR on that claim along with about a dozen others. Id. The parties jointly moved to stay the case. Id. By that time, there had been no claim construction or expert discovery and fact discovery was primarily limited to source code analysis. Ex. 2, Uniloc, Dkt. No. 114 (11/29/2016 Hr’g Tr.) at 5:21-6:3, 7:19-20, 20:11-12. Ultimately, the asserted claim was found unpatentable by the PTAB, but two other claims survived. Uniloc, 2016 WL 11485612, at *1. The plaintiff then sought leave to amend its infringement contentions to add those two remaining claims. Id. But this Court determined that the plaintiff’s diligence in seeking amendment was a threshold issue and an analysis of prejudice was unnecessary. Id. at *2. The Court faulted the plaintiff for not including those two claims in its original contentions when all the pertinent documents and data were already available to it. Id. The Court said that the plaintiff could have moved to amend well before knowing the outcome of the IPR. Id. The same is true here. This factor weighs in favor of denying leave to amend in this case. 4. A Continuance Would Be Inappropriate and Insufficient Adding back in claim 14 to this case would require a completely new schedule involving discovery and dispositive motion practice. In effect, this case would start anew. There is no valid justification for allowing Papst a do-over in this action just because one of its unelected claims survived IPRs. See Ariba, Inc. v. Emptoris, Inc., No. 9:07-CV-90, 2008 WL 7285523, at *5 (E.D. Tex. Sept. 9, 2008) (“The Federal and Local Rules are, in part, intended to protect parties from Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 13 of 16 PageID #: 421762 - 14 - having to prepare for trial while conducting never-ending discovery.”). Papst refused to stay the case early, chose not to elect claim 14, and chose not to seek relief when it would have made sense, thus Papst should not be able to get a “mulligan” now. C. Papst’s Bid to Add New Products Is Even More Problematic Finally, Papst’s request to add new products to this case is untimely because it comes after the close of fact and expert discovery. Adding new products at this stage further prejudices Samsung, as the court recognized in Packet Intelligence LLC v. Netscout Systems, Inc. when it denied the plaintiff’s request for leave to add additional products to its infringement contentions because it was “not persuaded that Plaintiff acted diligently in investigating whether [the new products] might have infringed the Asserted Patents.” Case No. 2:16-CV-230-JRG, 2017 WL 2531591, at *2 (E.D. Tex. April 27, 2017). In addition, the court determined that adding additional products would cause “inevitable discovery disputes” and would “risk, if not guarantee, further delay.” Id. For the same reason, the Court should reject Papst’s attempt to inject new products into this case after the close of discovery. Id. (denying motion to amend infringement contentions to include new products after several months of discovery); CyWee Grp. Ltd. v. Apple Inc., No. 14-cv-1853-HSG (HRL), 2016 WL 7230865, at *1-3 (N.D. Cal. Dec. 14, 2016) (denying patentee leave to amend its infringement contentions to accuse two recently released products because 20 accused products were already in the suit and fact discovery was set to close in two weeks); Richtek Tech. Corp. v. uPi Semiconductor Corp., No. C 09-5659 WHA, 2016 WL 1718135, at *2-3 (N.D. Cal. Apr. 29, 2016) (after a stay pending reexamination had been lifted, denying patentee leave to amend its infringement contentions to accuse products that were developed after the patentee filed its infringement complaint, the court ruling that to include new accused products developed after the complaint was filed requires a supplemental complaint under Rule 15(d) or a separate infringement action). The Court should thus deny Papst’s request to add new products to the case. Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 14 of 16 PageID #: 421763 - 15 - Dynetix Design Sols., Inc. v. Synopsys, Inc., No. C11-5973 PSG, 2013 WL 4537838, at *1 (N.D. Cal. Aug. 22, 2013) (“[I]f our local rules are to have any teeth, [infringement theories] must be adequately disclosed and supplemented along the way, should new evidence arise in discovery.”) (footnote omitted); cf. Oracle Am., Inc. v. Google Inc., No. C 10-3561 WHA, 2011 WL 4479305, at *2 (N.D. Cal. Sept. 26, 2011) (refusing to allow Oracle to accuse new products where Oracle did not claim that it did not know those product names when it submitted its infringement contentions; “Oracle could have and should have specifically identified all such accused devices”). Ex. 3, Int’l Dev. LLC v. Richmond, No. 3:09-cv-2495-GEB, Dkt. 105, Order at 1 (D.N.J. Jan. 6, 2011) (denying motion to amend infringement contentions to add certain new products). III. CONCLUSION For the foregoing reasons, Samsung respectfully requests the Court deny Papst’s motion for leave to amend claim election and infringement contentions. Respectfully submitted, Dated: December 6, 2018 /s/ Patrick J. Kelleher Michael E. Jones State Bar No. 10929400 POTTER MINTON A Professional Corporation 110 N. College, Suite 500 Tyler, Texas 75702 mikejones@potterminton.com Phone: (903) 597-8311 Fax: (903) 593-0846 Stephen E. McConnico State Bar No. 13450300 Kim Gustafson Bueno State Bar No. 24065345 SCOTT DOUGLAS & MCCONNICO LLP 303 Colorado Street, Suite 2400 Austin, Texas 78701 smcconnico@scottdoug.com kbueno@scottdoug.com Patrick J. Kelleher (LEAD COUNSEL) IL ARDC No. 6216338 Carrie A. Beyer IL ARDC No. 6282524 DRINKER BIDDLE & REATH LLP 191 North Wacker Drive, Suite 3700 Chicago, IL 60606-1698 patrick.kelleher@dbr.com carrie.beyer@dbr.com Phone: (312) 569-1000 Fax: (312) 569-3000 Nick Colic IL ARDC No. 6296112 DRINKER BIDDLE & REATH LLP 1500 K Street, N.W., Ste. 1100 Washington, DC 20005-1209 nick.colic@dbr.com Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 15 of 16 PageID #: 421764 - 16 - Phone: (512) 495-6300 Fax: (512) 495-6399 Phone: (202) 842-8800 Fax: (202) 842-8465 Francis DiGiovanni DE Bar No. 3189 Thatcher A. Rahmeier DE Bar No. 5222 DRINKER BIDDLE & REATH LLP 222 Delaware Ave., Ste. 1410 Wilmington, DE 19801 francis.digiovanni@dbr.com thatcher.rahmeier@dbr.com Phone: (302) 467-4200 Fax: (302) 467-4201 Attorneys for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. CERTIFICATE OF SERVICE The undersigned certifies that the foregoing document was electronically filed in compliance with Local Rule CV-5(a). As such, this document was served on all counsel who have consented to electronic service, Local Rule CV-5(a)(3), on this 6th day of December, 2018. /s/ Patrick J. Kelleher Patrick J. Kelleher 94343509 Case 6:15-cv-01095-RWS Document 752 Filed 12/06/18 Page 16 of 16 PageID #: 421765