Prism Technologies v. AT&T et al

Filing 189

MEMORANDUM AND ORDER - IT IS ORDERED that AT&T's motion to supplement its invalidity contentions is granted. Ordered by Senior Judge Lyle E. Strom. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
AT&T MOBILITY, LLC,
)
)
Defendant.
)
______________________________)

8:12CV122

MEMORANDUM AND ORDER

This matter is before the Court on the defendant’s
motion to supplement its invalidity contentions (Filing No. 169)
with a supporting brief (Filing No. 170).

The plaintiff filed a

brief objecting to the supplement (Filing No. 176) and
corresponding index of evidence (Filing No. 177).

The defendant

then filed a responsive brief (Filing No. 186) and corresponding
index of evidence (Filing No. 187).
I.

The motion will be granted.

BACKGROUND
The plaintiff, Prism Technologies, L.L.C. (“Prism”),

has brought a patent infringement action against the defendant,
AT&T Mobility, L.L.C.

The time has passed for the defendants to

amend invalidity contentions without leave of the Court.
must show “good cause” for supplementation.

AT&T

See Filing No. 68,

4-5.
AT&T wishes to add a prior art claim regarding Cellular
Digital Packet Data (“CDPD”) technology.

Filing No. 170, at 1.

According to AT&T, CDPD “describes a cellular telephone system
that allows users to download Internet data to their phones, and
includes specifications for how to authenticate those users . . .
[which] constitutes prior art.”

Id.

AT&T claims they pursued

CDPD information last year (Filing No. 186, at 1, Filing No. 1871, at 1-2).

However, the CDPD Forum, the entity which published

CDPD specifications, no longer exists.

AT&T tracked down Mark

Taylor, a co-developer of the CDPD specification and former AT&T
employee.
2013.

Mr. Taylor produced the specifications in mid-December

AT&T analyzed the documents, determined the specifications

presented an important prior art argument, and notified Prism of
its proposed supplemental materials January 13, 2014.
II.

Id. at 2.

LAW
In patent cases, the “good cause” standard controls

whether a motion to supplement contentions.

“Courts evaluating

whether good cause exists focus on whether the moving party acted
diligently when new evidence is revealed to the moving party in
discovery.”
Ltd.,

Prism Technologies, L.L.C. v. Research in Motion,

No. 8:08CV537, 2010 WL 1254940, * 2 (D. Neb. Mar. 24,

2010) (citing O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1363 (Fed. Cir. 2006)).

In evaluating whether a

party acted diligently, the moving party must show the delay is
attributable to something other than error.
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Id. (citing Bd. of

Trs. of Leland Stanford, Jr. Univ. v. Roche Molecular Sys., No.
C05–04158, 2008 WL 624771, at *3 (N.D. Cal. Mar. 4, 2008)).

If

the moving party has acted diligently, the Court must consider
whether granting the motion will prejudice the non-moving party.
See O2 Micro Int'l Ltd., 467 F.3d at 1363.
III. ANALYSIS
The Court finds that AT&T acted diligently in
supplementing the CDPD specifications and, therefore, good cause
exists to supplement their invalidate contentions.

During

discovery, AT&T sought materials to support their legal positions
and thereby discovered the CDPD specifications.

These

specifications are no longer published and were not uncovered by
a global search for patents, so there is no doubt that the delay
is attributable to something other than AT&T’s error.

Once AT&T

discovered the CDPD, they acted promptly to evaluate it and
notify Prism.
Having determined that AT&T has acted diligently in
this case, the Court must determine whether Prism would be
prejudiced by this supplement.

The Court finds the supplement

will not prejudice Prism in time or volume.
counter this new information.

Prism has time to

Originally, factual discovery was

slated to end February 14, 2014, which Prism argued prejudiced
its cause.

However, upon joint motion of the parties, the Court
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has extended discovery and various other deadlines by a month.
Prism has sufficient time to prepare for AT&T’s invalidity
contentions.
Also, Prism claims AT&T’s supplement will impose
unnecessary, additional documents in AT&T’s voluminous prior art
claims.

Filing No. 176, at 4-5.

The Court finds that, though

the lateness of this new theory is regrettable, it was
unavoidable.

The quantity of AT&T’s other prior art claims, and

the size of the current prior art claim, do not unnecessarily
prejudice Prism.

Accordingly,

IT IS ORDERED that AT&T’s motion to supplement its
invalidity contentions is granted.
DATED this 19th day of February, 2014.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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