Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd. et al

Filing 219

MEMORANDUM OPINION AND ORDER - DENYING 155 Opposed SEALED MOTION for Leave to File Motion for Summary Judgment Out-Of-Time filed by Samsung Electronics Co., Ltd., Samsung Semiconductor, Inc., Samsung Electronics America, Inc. Since leave was not granted, the Clerk is instructed to terminate Defendants Motion for Partial Summary Judgment that the Accused Samsung-Sony Products are Licensed (Dkt. #157) as an active motion. With trial rapidly approaching, the Court requests that th e parties each prepare, with consideration given to this order and the actions of the District Court of Delaware, a limited briefing (10 pages of briefing, not including exhibits) describing how issues related to the Sony License Agreement should affect the trial. These briefs shall be filed by noon on Thursday, January 28, 2016. Signed by Judge Amos L. Mazzant, III on 1/21/2016. (baf, )

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

IMPERIUM IP HOLDINGS (CAYMAN),
LTD.

§
§
§
v.
§
§
SAMSUNG ELECTRONICS CO., LTD.,
§
SAMSUNG ELECTRONICS AMERICA,
§
INC., SAMSUNG
§
TELECOMMUNICATIONS AMERICA,
§
LLC, AND SAMSUNG SEMICONDUCTOR, §
INC.
§

CIVIL ACTION No. 4:14-CV-371
Judge Mazzant

MEMORANDUM OPINION AND ORDER
Pending before the Court is Defendants‟ Opposed Motion for Leave to File Motion for
Summary Judgment Out-of-Time (Dkt. #155). After reviewing the relevant pleadings, the Court
finds that the motion should be denied.
BACKGROUND
Plaintiff filed suit against Defendants on June 9, 2014, asserting patent infringement
(Dkt. #1). In mandatory disclosure on February 12, 2015, Defendants informed Plaintiff that
Sony, among other companies, was a supplier of image sensors for Samsung‟s products (Dkt.
#155, Ex. K). On March 9, 2105, Defendants further specified in response to interrogatories
which products contained Sony image sensors (Dkt. #155, Ex. L). On April 2, 2015, Plaintiff
produced to Defendants Imperium‟s 2013 Settlement and License Agreement with Sony
Corporation (“Sony License Agreement”) that concerns the patents-in-suit (Dkt. #155, Ex. B;
Dkt. #169, Ex. 3).
September 9, 2015, marked the discovery deadline and the deadline to file dispositive
motions (Dkt. #70 at p. 3). That same day, Plaintiff‟s damages expert, Michele Riley, called

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attention to Sony sensors in her expert report: “As Exhibit 6A – 7D shows, certain of these
sensors were purchased by Samsung from Sony. I understand that Imperium is not accusing
those sensors of infringement in this case.” (Dkt. #155, Ex. Q). Also that same day, September
9, 2015, Plaintiff‟s technical expert Dr. Cameron H.G. Wright presented his infringement report
(Dkt. #155, Ex. R). This infringement report details, in part, the alleged infringement of Claim
14 of asserted U.S. Patent No. 7,092,029, which includes, among other items, an image sensor
(Dkt. #155, Ex. R at p. 191; Dkt. #1, Ex. C at col. 14). In demonstrating “exemplary support” for
this limitation of an image sensor, the report points to Defendants‟ supplemented response to
interrogatories identifying image sensors used in Samsung products (Dkt. #155, Ex. R at p. 184;
Ex. M). Of particular note is that at least one of Dr. Wright‟s citations points to a product
disclosure that lists, as the image sensors, only Sony image sensors (Dkt. #155, Ex. M at p. 4).
Defendants contend that they “did not know before September 9 that Imperium would
rely on Sony sensors to prove infringement, but once it learned that this is what Imperium was
doing, Samsung worked diligently to bring this issue promptly before the Court.” (Dkt. #155 at
p. 12). Nearly eight weeks later, on November 3, 2015, Plaintiff filed the current motion for
leave to file summary judgment out-of-time, alleging that accused products containing Sony
image sensors are licensed to the patents-in-suit under the Sony License Agreement (Dkt. #155
at p. 2). On November 23, 2015, Plaintiff filed its opposition brief (Dkt. #169). On December 4,
2015, Defendants filed their reply (Dkt. #178) and on December 11, 2015 Plaintiff filed a surreply (Dkt. #183).
LEGAL STANDARD
Federal Rule of Civil Procedure 6(b) states that if a request is made to extend time after
the original time has already expired, the court may “for good cause, extend the time ... if the

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party failed to act because of excusable neglect.” The Fifth Circuit has established four factors
the Court should consider when determining whether good cause exists: “(1) the explanation for
the failure to timely move for leave to amend; (2) the importance of the amendment; (3) potential
prejudice in allowing the amendment; and (4) the availability of a continuance to cure the
prejudice.” Sw. Bell Tel. Co. v. City of El Paso, 346 F.3d 541, 546–47 (5th Cir.2003). To
establish “good cause” a party must show that it “could not have met the deadline despite its
diligence” along with satisfaction of the four-part test. S & W Enters. v. SouthTrust Bank, 315
F.3d 533, 536-38 (5th Cir. 2003).
Defendants must first satisfy the requirements of Rule 6(b), which specifically requires
that Defendants show they failed to timely file the motion for summary judgment because of
“excusable neglect.” Fed. R. Civ. P. 6(b); Rivero v. Sunbeam Products, Inc., No. SA-08-CV591XR, 2010 WL 1752532 (W.D. Tex. Apr. 29, 2010). “Relevant factors used to determine
„excusable neglect‟ include: „the danger of prejudice to the [non-movant], the length of the delay
and its potential impact on the judicial proceedings, the reason for the delay, including whether it
was within the reasonable control of the movant, and whether the movant acted in good faith.‟ ”
Rivero, 2010 WL 1752532, at *1 (citing Pioneer Inv. Servs. Co. v. Brunswick Assocs. Ltd.
P'ship, 507 U.S. 380, 395 (1993); Adams v. Travelers Indem. Co. of Conn., 465 F.3d 156, 161
n.8 (5th Cir.2006)).
ANALYSIS
Defendants argue that they are entitled to an extension to file a motion for summary
judgment because of “excusable neglect.” Defendants assert that Plaintiff obscured the fact that
it is relying upon Sony sensors for purposes of infringement during fact discovery, and therefore
in only became apparent on September 9 that Plaintiff was relying upon Sony image sensors to

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show infringement (Dkt. #155, at pp. 2, 8). However, much of the information relied upon by
Defendants to support its motion for summary judgment was known, or should have been
known, by Defendants before September 9. First, as Defendants explain, the accused SamsungSony products comprise almost half of the accused products in this lawsuit (Dkt. #155 at p. 3).
Second, Defendants were aware that the patents-in-suit include, at least as one limitation, “an
image sensor coupled to a memory” (Dkt. #1, Ex. C at col. 14, ln. 3). Third, Defendants had
identified accused products that contain, as the only image sensor, a Sony image sensor (Dkt.
#155 at p. 8). Fourth, Defendants had access to the Sony License Agreement as of April 2, 2015
(Dkt. #169, Ex. 3). Considering these factors, the Court finds that even if Plaintiff “obscured”
the fact that it is relying upon Sony image sensors, Defendants could have been aware of the
potential relevance of the Sony License regarding what it describes as almost half of the accused
products long before September 9, 2015, such that the timing of the filing was in the reasonable
control of Defendant. This tends to suggest that the current filing is not untimely due to
“excusable neglect.”
Further, even if the Court found that September 9, 2015, was the first day that Defendants
could reasonably understand that, in its view, Plaintiff is improperly relying on licensed Sony
image sensors to attempt to satisfy limitations of the asserted claims, the Court considers the
length and reason for the delay in filing this motion for leave on November 3, 2015. Defendants
argue that the fifty-five days from its learning of this issue on September 9, 2015, and the
passing of the date for dispositive motions was “due to corresponding and conferring with
Imperium, and confirming through the expert deposition that its experts were, in fact, relying on
Sony image sensors,” is not significant and would result in a full briefing well before trial (Dkt.
#155 at pp. 12-13). Following September 9, 2015, but before filing the present motion for leave,

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Defendants filed a Motion to Strike Products in response to Plaintiff‟s expert‟s report (Dkt.
#135), a Motion to Exclude Opinions of Plaintiff‟s expert Dr. Wright (Dkt. #136), a Motion to
Exclude Opinions of Plaintiff‟s expert Michele Riley (Dkt. #137), a request to extend the expert
discovery deadline (Dkt. #139), and a Motion to Strike Portions of Dr. Wright‟s Rebuttal Report
(Dkt. #143). Defendants communicated with Plaintiff regarding the Sony License Agreement
several times (Dkt. #155, Ex. C, D), and took two depositions that, in part, addressed the Sony
License Agreement and infringement (Dkt. #155, Ex. W, X). Yet for nearly eight weeks,
Defendants did not make a motion to the Court that it intended to request leave to file a motion
out-of-time. The Court recognizes that preparing a motion for summary judgment can be
intensive and time-consuming. However, the Court finds it significantly less excusable to delay
a request for leave to file, particularly where the request concerns as time-sensitive and impactful
an issue as summary judgment.
Considering specifically the length of this delay and the reason for the delay, including
that the information relevant to this motion was largely within Defendants‟ possession prior to
September 9, 2015, the Court does not find there to be excusable neglect in Defendants‟ late
filing.
It is therefore ORDERED that Defendants‟ Opposed Motion for Leave to File Motion
for Summary Judgment Out-of-Time (Dkt. #155) is hereby DENIED. Since leave was not
granted, the Clerk is instructed to terminate Defendants‟ Motion for Partial Summary Judgment
that the Accused Samsung-Sony Products are Licensed (Dkt. #157) as an active motion.
The Court recognizes that issues regarding the Sony License Agreement and its
significance to the case at hand are greatly disputed between the parties. Defendants, as one
specific example, noted in their motion that “exclusive jurisdiction for determination of

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Imperium‟s breach of the Sony License and resulting damages due to Samsung from Imperium
lies in state and federal courts in Delaware.” (Dkt. #155 at p. 3). Additionally, Plaintiff has
limited the number of products and the claims asserted (Dkt. #170, #213). With trial rapidly

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approaching, the Court requests that the parties each prepare, with consideration given to this
order and the actions of the District Court of Delaware, a limited briefing (10 pages of briefing,
not including exhibits) describing how issues related to the Sony License Agreement should
affect the trial. These briefs shall be filed by noon on Thursday, January 28, 2016.

SIGNED this 21st day of January, 2016.

___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE

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