Estech Systems IP, LLC v. Mitel Networks, Inc.

Filing 293

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 1/17/2023. (ch, )

Case 2:21-cv-00473-JRG-RSP Document 293 Filed 01/17/23 Page 1 of 5 PageID #: 6534

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ESTECH SYSTEMS IP, LLC,
Plaintiff,
v.
MITEL NETWORKS, INC.,
Defendant.

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Case No. 2:21-CV-00473-JRG-RSP
(Lead Case)

MEMORANDUM ORDER
Before the Court, plaintiff Estech Systems IP, LLC moves for leave to serve its first
supplemental infringement contentions on defendant Marriott International, Inc. Dkt. No. 220.
Marriott filed a response, Dkt. No. 240, to which Estech filed a reply, Dkt. No. 254. Accordingly,
the motion is fully briefed. For the following reasons, the motion is GRANTED.
I.

Background
On December 31, 2021, Estech filed suit against Marriott alleging patent infringement of

U.S. patents generally directed to voice over internet protocol (“VoIP”) telephone systems. Dkt.
No. 1. On March 2, 2022, Estech served infringement contentions alleging that Marriott’s use of
VoIP products and services infringed the patents in suit. On April 8, 2022, Estech served its first
set of interrogatories.
Interrogatories Nos. 1, 2, and 4, and responses thereto, are at the heart of the instant motion.
The interrogatories read:
INTERROGATORY NO. 1:
Identify each VoIP Telephony Device (as defined in Definition No. 13) that was or
will be made, created, configured, acquired, put into service, used, offered for sale,
or sold by or for Defendant, within the United States, or imported into the United
States by or for Defendant during the Relevant Time Period.
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INTERROGATORY NO. 2:
Identify each VoIP Telephony Service (as defined in Definition No. 12), including
identifying any and all third-party service providers of such VoIP Telephony
Services, that has provided or will provide VoIP functionality (i.e., voice calling,
voicemail, or Directory Services) to Defendant’s VoIP Telephony Device(s)
identified in response to Interrogatory No. 1 during the Relevant Time Period.
…
INTERROGATORY NO. 4:
Describe Your VoIP Telephony Devices identified in response to Interrogatory No.
1, including (i) the number of each such VoIP Telephony Device that were or will
be made, created, configured, acquired, put into service, used, offered for sale, sold,
within the United States, or imported into the United States by or for Defendant;
(ii) the physical location(s) where each such VoIP Telephony Devices was or will
be made, created, configured, acquired, put into service, used, offered for sale, sold,
within the United States, or imported into the United States by or for Defendant;
(iii) the date range(s) during which each such VoIP Telephony Device was or will
be made, created, configured, acquired, put into service, used, offered for sale, sold,
within the United States, or imported into the United States by or for Defendant;
(iv) the VoIP functionality (i.e., voice calling, voicemail, or Directory Services)
that was or will be used by, accessed by, available to, or for which each such VoIP
Telephony Device was configured to use; (v) the number of Connected Network
Devices (as defined in Definition No. 15) that were or will be coupled to each such
VoIP Telephony Device; and (vi) the VoIP Telephony Service(s) identified in
response to Interrogatory No. 2 that were or will be used by, accessed by, available
to, or for which each such VoIP Telephony Device was configured to use.
Dkt. No. 99-1 pp 3-4 & 6.
On May 9, 2022, Marriott served its first response identifying the use of Microsoft Skype
for Business/Teams, Avaya Phone System, Notrel/GenBans, and Cisco CME. On November 3 and
7, 2022, Estech contacted Marriott to determine whether Marriott would oppose service of a
supplemental infringement contention. On November 8, 2022, Marriott informed Estech that it
would oppose the supplement. The following day, Estech filed the instant motion.
Estech asserts that “Marriott revealed critical information regarding its use of Avaya VoIP
services in its answers to Estech’s first set of interrogatories on May 9, 2022. Estech’s
supplemental infringement contentions add only that issue—Estech’s infringement theory for the
Asserted Patents as it pertains to Marriott’s use of Avaya VoIP services.” Dkt. No. 220 pp 3-4.
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Marriott opposes, claiming the six-month delay from May 9, 2022 when responses where served
to November 9, 2022 when the instant motion was filed precludes a finding of good cause to serve
the supplement.
II.

Law and Analysis
“Amendments or supplementation of any Infringement Contentions” for reasons unrelated

to claim construction “may be made only by order of the Court, which shall be entered only upon
a showing of good cause.” Local Patent Rule 3-6(b).
The Court considers the following factors: (A) the explanation for the failure to meet the
deadline; (B) the importance of the amendment; (C) potential prejudice in allowing the
amendment; and (D) the availability of a continuance to cure such prejudice. See, e.g., S & W
Enters., L.L.C. v. Southtrust Bank of Ala., NA, 315 F.3d 533, 536 (5th Cir. 2003). Implicit to the
first factor is a showing of diligence. See, e.g., O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1366 (Fed. Cir. 2006) “The burden is on the movant to establish diligence rather
than on the opposing party to establish a lack of diligence.” Id. The undersigned has applied this
framework under similar circumstances. See, e.g., Arigna Tech. Ltd. v. Volkswagen AG, No. 221CV-00054-JRG-RSP, 2022 WL 2761288, at *1 (E.D. Tex. Jan. 19, 2022).
A.

Explanation

Estech rather generally asserts that it “worked diligently to supplement its infringement
contentions” after May 9, 2022, when Marriott served its answers to interrogatories. Dkt. No. 220
pp 4-5.
B.

Importance

Estech argues that the supplement is important because Marriott used Avaya services
during the entire damages period of this case and because expert infringement reports are limited

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to those theories provided in the infringement contentions. Dkt. No. 220 p 5 (citing Core Wireless
Licensing, S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 3655302, at *4 (E.D.
Tex. Mar. 21, 2016)). Estech further argues that denying supplementation would effectively
penalize Estech. Marriott argues that the six-month delay belies the importance espoused by
Estech. Dkt. No. 240 p 7.
C.

Prejudice

Estech argues that Marriott will not be prejudiced by the entry of the supplement claiming
that the implementation of Avaya operates in substantially the same way as the implementation of
Mitel described in the initial infringement contentions. Dkt. No. 220 pp 5-6. Marriott argues that
there is no expert opinion corroborating Estech’s argument, that it will be prejudiced by the
additional discovery necessary for claim construction, and that VoIP systems are implemented on
an entity-by-entity basis requiring in depth discovery to determine the implementation of Avaya
by each entity. Dkt. No. 240 p 8.
The Court notes that fact discovery ends April 3, 2023. Dkt. No. 113.
D.

Continuance

Estech contends that a continuance is not necessary in the absence of prejudice, but
available if the Court finds its existence. Estech’s case against Marriott is consolidated for pre-trial
purposes with several other cases, a Markman hearing held in a consolidated fashion with the other
six defendants is scheduled for February 22, 2023, and the case between Estech and Marriott is
scheduled for trial July 24, 2023. Due to the consolidated nature of the case and the timing of the
motion, continuance of either the Markman hearing, the trial, or any other unexpired deadline is
not desirable. S&W Enterprises, L.L.C. v. SouthTrust Bank of Alabama, NA, 315 F.3d 533, 537
(5th Cir. 2003) (“In view of district judges' ‘power to control their dockets by refusing to give

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ineffective litigants a second chance to develop their case,’ Reliance Ins. [Co. v. La. Land &
.
Exploration Co., 110 F.3d 253, 258 (5th Cir.1997)], we conclude that it was within the judge's
sound discretion not to grant a continuance.”).
III.

Conclusion
Although Estech’s showing of diligence is thin, the amount of time remaining before claim

construction and the close of fact discovery when the supplement was served undermines any
prejudice Marriott may endure.
Accordingly, Estech’s motion for leave to serve first supplemental infringement
contentions, Dkt. No. 220, is GRANTED.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of January, 2023.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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