Lake Cherokee Hard Drive Technologies, L.L.C. v. Bass Computers, Inc. et al

Filing 259

MEMORANDUM OPINION and ORDER - the Court GRANTS Lake Cherokees Motion for Leave to Amend Its Infringement Contentions (Dkt. No. 208). In light of this ruling, the Court DENIES WITHOUT PREJUDICE Marvells and LSIs letter briefs seeking leave to (1) req uest that the Court strike the second amended contentions and (2) move for partial summary judgment of non-infringement based on Lake Cherokees existing infringement contentions. (Dkt. Nos. 213 and 220.). Signed by Judge Rodney Gilstrap on 6/29/12. (ehs, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LAKE CHEROKEE HARD DRIVE
TECHNOLOGIES, LLC.,
Plaintiff,
v.
BASS COMPUTERS, INC., et al.,
Defendants.

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CASE NO. 2:10-cv-216-JRG

MEMORANDUM OPINION AND ORDER

I.

Introduction

Before the Court is Plaintiff Lake Cherokee Hard Drive Technologies, LLC’s (“Lake
Cherokee”) Motion for Leave to Amend its Infringement Contentions. (Dkt. No. 208.) After
carefully considering the parties’ written submissions and the arguments of counsel, the Court
GRANTS Lake Cherokee’s Motion.
II.

Facts & Procedural Posture

Lake Cherokee brought this patent infringement lawsuit against multiple defendants for
infringement of U.S. Patent No. 5,844,738 entitled “Synchronous Read Channel Employing a
Sequence Detector with Programmable Detector Levels” (the ‘738 Patent) and U.S. Patent No.
5,978,162 entitled “Synchronous Read Channel Integrated Circuit Employing a Channel Quality
Circuit for Calibration” (the ‘162 Patent). Pursuant to this Court’s Docket Control Order, Lake
Cherokee served its Infringement Contentions (“original contentions”) on all Defendants on
April 6, 2011. On April 22, 2011, Defendant Marvell Semiconductor, Inc. (“Marvell”) wrote to

Lake Cherokee regarding the original contentions’ “fail[ure] to comply with the Court’s rules”
because the contentions did not specifically identify where each element of each asserted claim is
found for each accused instrumentality. (Dkt. No. 224.) Defendant LSI Corporation (“LSI”)
also wrote to Lake Cherokee, on May 3, 2011, to point out perceived deficiencies in the original
contentions. Id.
In an attempt to limit their motion practice before the Court, Marvell, LSI and Lake
Cherokee held several discussions via telephone and email during May and June 2011 relating to
whether Lake Cherokee would amend its original contentions.

The parties also discussed

whether Marvell and LSI would agree to supplement their responses to Lake Cherokee’s
contention interrogatories, which were also alleged to be deficient. The parties did not reach an
agreement on these issues.
In July 2011, Marvell and LSI produced several million pages of documents to Lake
Cherokee relating to the accused products in this case. After this production, Lake Cherokee
proposed to supplement its infringement contentions for one accused Marvell chip and one
accused LSI chip. The parties agreed that Marvell and LSI would indicate to Lake Cherokee
whether the supplemented infringement contentions for the exemplary chips were sufficient, and
if so, Lake Cherokee committed to revise its infringement contentions for all of the remaining
accused instrumentalities. In exchange for Lake Cherokee’s supplementation, Marvell and LSI
agreed to supplement their responses to certain contention interrogatories.
On September 15, 2011, Lake Cherokee served its first supplemental infringement
contentions as to a single accused Marvell chip and a single accused LSI chip (“first
supplemental contentions”). Concurrent with this service, Lake Cherokee inquired whether the
first supplemental contentions would be acceptable to Marvell and LSI. Marvell responded via

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email by committing to supplement its responses to Lake Cherokee’s contention interrogatories
(as previously agreed-to), but specifically noted that “Lake Cherokee should not interpret this
agreement as conceding the sufficiency of Lake Cherokee’s supplemental infringement
contention chart with respect to the requirements of P.R. 3-1.” (Dkt. No. 224, Ex. N.) The
parties did not address the sufficiency of the first supplemental contentions any further.
In January of 2012, Lake Cherokee told Marvell and LSI that it would again supplement
its infringement contentions for the remainder of the accused Marvell and LSI chips. These
contentions (“second supplemental contentions”) were served on February 6, 2012. Marvell
responded on February 8, 2012 that Lake Cherokee’s second supplemental contentions were “(1)
untimely because Lake Cherokee had not fulfilled the condition precedent (i.e., serving sufficient
infringement contentions as to a single Marvell chip), (2) procedurally improper because Lake
Cherokee failed to move the Court for leave to supplement, and (3) troubling in that Lake
Cherokee waited until shortly after Marvell’s Rule 30(b)(6) deposition on Lake Cherokee’s
infringement contentions to supplement these contentions, and had failed to alert Marvell that the
deposition would be a waste of time and resources because Lake Cherokee was concurrently
preparing yet more supplemental contentions.” (Dkt. No. 224, at 10.) Marvell and LSI then both
informed Lake Cherokee that they intended to move to strike the second supplemental
contentions. Id. This prompted Lake Cherokee to file the Motion for Leave to Supplement
Infringement Contentions which is now before the Court.
III.

Analysis

“Leave to amend is required when a plaintiff seeks to amend or supplement
[infringement] contentions, and a plaintiff must show good cause” to do so. EON Corp. v. TMobile USA, No. 10-379, Dkt. No. 594 at 4 (E.D. Tex. Jan. 24, 2012); P.R. 3-6. In determining

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whether good cause for amending contentions exists, the Court has broad discretion and
considers four factors: “(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.”
Alexsam, Inc. v. IDT Corp., No. 2:07-cv-420, 2011 WL 108725, at *1 (E.D. Tex. Jan. 12, 2011);
citing S & W Enters. L.L.C. v. Southtrust Bank of Alabama, 315 F.3d 533, 535 (5th Cir. 2003).
Here, the first factor, explanation for failure to meet the deadline, weighs against Lake
Cherokee. Lake Cherokee conceded during oral argument that it should have either (1) clarified
with Marvell whether the first supplemental contentions were sufficient or (2) served the
supplemental contentions much sooner. Therefore, by Lake Cherokee’s own admission, the first
“good cause” factor does not weigh in favor of granting the requested leave.1
However, the three remaining “good cause” factors all weigh in Lake Cherokee’s favor.
With regard to the second factor, there is no doubt that the second supplemental contentions are
important because Marvell and LSI have indicated their intention to move for summary
judgment of non-infringement based on the first supplemental contentions. As to the third factor
– prejudice – the only appreciable prejudice suffered by Marvell and LSI is that they have
already taken a 30(b)(6) deposition based on the first supplemental contentions. Such minimal
prejudice is readily curable and does not rise to a level that would weight against a finding of
good cause.
The fourth factor also weighs in favor of Lake Cherokee’s request because a continuance
is not necessary to cure any prejudice. The Markman hearing occurred only a few weeks ago,
trial is not set until August 2013, and the second supplemental contentions were served in

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During oral argument Marvell, too, admitted that it could have clarified its communications with Lake Cherokee
regarding the sufficiency of the first supplemental contentions.

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February of this year. Therefore, both Marvell and LSI have had – and still have – ample time to
digest and analyze the second supplemental contentions. A continuance is not necessary and this
final factor weighs in favor of finding good cause to allow Lake Cherokee to supplement its
infringement contentions as requested.
IV.

Cure for Prior 30(b)(6) Deposition

To cure the limited prejudice created by the timing of the initial deposition of Lake
Cherokee’s 30(b)(6) witness, the Court Orders Lake Cherokee to make a knowledgeable witness
available for a subsequent 30(b)(6) deposition with regard to the second supplemental
contentions. Lake Cherokee shall be responsible for reimbursing the reasonable travel costs of
Marvell’s and LSI’s counsel to take such deposition and shall bear the associated court reporter
and videographer costs. Such subsequent 30(b)(6) deposition shall be conducted at a reasonable
time and place as designated by Marvell and LSI.
V.

Future Requests to Amend Infringement Contentions

During oral argument on this Motion, Defendants inquired of the Court as to whether
additional requests to allow Lake Cherokee to amend its infringement contentions, beyond those
presently before the Court, would be permitted. Lake Cherokee made it clear it did not intend to
seek additional leave of this type prior to trial. To memorialize this discussion and to clarify for
all parties the Court’s posture in this regard going forward, the Court believes that this Order
affords Lake Cherokee reasonable relief but it also closes the door on any future need to further
amend the infringement contentions in this case.
VI.

Conclusion

The Court finds that Lake Cherokee has established “good cause” to amend its
infringement contentions under Local Patent Rule 3-6(b) according to the four-factor test.

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Therefore, the Court GRANTS Lake Cherokee’s Motion for Leave to Amend Its Infringement
Contentions (Dkt. No. 208).

In light of this ruling, the Court DENIES WITHOUT

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PREJUDICE Marvell’s and LSI’s letter briefs seeking leave to (1) request that the Court strike
the second amended contentions and (2) move for partial summary judgment of noninfringement based on Lake Cherokee’s existing infringement contentions. (Dkt. Nos. 213 and
220.) Marvell and LSI are entitled to file a letter brief requesting leave to file a motion for
partial summary judgment of non-infringement based on the second amended contentions if they
so choose.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of June, 2012.

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RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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