Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 836

***PLEASE IGNORE. Filed in Error. Atty re-filed correct document at DE 839. ***PLEASE IGNORE. RESPONSE in Opposition re 815 Opposed MOTION for Leave to File Supplement to its PR 3-1 Infringement Contentions with Respect to Google Music and Google+Opposed MOTION for Leave to File Supplement to its PR 3-1 Infringement Contentions with Respect to Google Music and Google+ filed by Google Inc.. (Attachments: # 1 Declaration of Han Xu, # 2 Exhibit A - Music Beta, # 3 Exhibit B- Google+, # 4 Exhibit C - Davis-Lynch, # 5 Exhibit D - Power-One, # 6 Exhibit E - Eon Corp, # 7 Text of Proposed Order)(Jones, Michael) Modified on 8/11/2011 (leh, ).

Exhibit C

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Not Reported in F.Supp.2d, 2009 WL 81874 (E.D.Tex.)
(Cite as: 2009 WL 81874 (E.D.Tex.))

Only the Westlaw citation is currently available.
United States District Court,
E.D. Texas,
Tyler Division.
DAVIS-LYNCH, INC.
v.
WEATHERFORD INT'L, INC.
Civil Action No. 6:07-CV-559.
Jan. 12, 2009.
West KeySummaryPatents 291

292.4

291 Patents
291XII Infringement
291XII(B) Actions
291k292 Discovery
291k292.4 k. Other matters. Most Cited
Cases
A patentee did offer a reasonable explanation for
its delay in seeking leave to amend its Patent Infringement Contentions. The record demonstrated that
the patentee could have identified which products to
accuse and how many had been sold by May or June at
the latest. The patentee also offered no explanation as
to why it doubted the accuracy of the alleged infringer's drawings and what was inaccurate until after a
deposition. Furthermore, the patentee had months to
accuse the products and had only sought to inspect one
product. Fed.Rules Civ.Proc.Rule 16(b), 28 U.S.C.A.
Ernest William Boyd, Corey Jacob Seel, Mehaffy &
Weber, Joseph Fletcher Archer, Joseph F. Archer, PC,
Houston, TX, Andy Tindel, Provost Umphrey Law
Firm, Tyler, TX, Eric Michael Adams, Mehaffy &
Weber, Beaumont, TX, for Davis-Lynch, Inc.
Joseph Dean Lechtenberger, Eric Stephen Schlichter,
Joan E. Beckner, Stephen H. Cagle, Howrey LLP,
Houston, TX, Elizabeth L. Derieux, Sidney Calvin
Capshaw, III, Capshaw Derieux, LLP, Longview, TX,
for Weatherford Int'l, Inc.
MEMORANDUM OPINION AND ORDER

JOHN D. LOVE, United States Magistrate Judge.
*1 Before the Court is Defendant Weatherford
International's (“Weatherford”) Motion to Strike, or
Alternatively to Limit, Plaintiff's Patent Infringement
Contentions, (Doc. No. 50), and Plaintiff Davis-Lynch, Inc.'s (“Davis-Lynch”) Motion for Leave
to Supplement Its Patent Infringement Contentions
(“PICs”), (Doc. No. 69). A hearing was held on these
motions on Wednesday, January 7, 2009.
For the reasons stated below, the Court DENIES
Defendant's Motion to Strike, (Doc. No 50), and
GRANTS in part and DENIES in part Plaintiff's
Motion for leave to Supplement its PICs, (Doc. No.
69). The Court GRANTS Plaintiff's Motion to the
extent that Plaintiff seeks to include more specificity,
but DENIES Plaintiff's Motion to include additional
products in its PICs.
The Court ORDERS Davis-Lynch to serve
amended infringement contentions on Weatherford by
February 9, 2009 at 5:00 p.m. in a manner consistent
with this opinion and Local Patent Rule 3-1. These
infringement contentions must be limited to the three
products already accused in this case, product numbers L42A, L45AP, and L46AP. The Court expects
the parties to communicate openly to resolve any
additional disputes surrounding Davis-Lynch's PICs.
BACKGROUND
In February 2004, Davis-Lynch filed a complaint
against Weatherford alleging infringement of one or
more claims of U.S. Patent 6,679,336 (“the '336 patent). During the 2004 litigation and pursuant to Local
Patent Rule 3-1, Davis-Lynch served Weatherford
with patent infringement contentions (“PICs”) asserting infringement against Weatherford product
numbers L42A, L45AP, and L46AP. Davis-Lynch did
not assert infringement against any of Weatherford's
additional forty eight product lines. Pursuant to Local
Patent Rule 3-4, Weatherford produced technical
drawings for thirty-six of its product lines. During
September and October of 2004, Weatherford sent
several letters to Davis-Lynch complaining of deficiencies in the PICs, but Davis-Lynch never attempted
to amend its PICs. In December 2004, Davis-Lynch
filed a request for reexamination of the '336 patent
with the U.S. Patent and Trademark Office, and the

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Court dismissed the litigation without prejudice on
February 14, 2005.
Upon completion of the reexamination proceedings, Davis-Lynch filed the present action on December 18, 2007. Davis-Lynch has asserted a subset of
the same claims of the '336 patent against the same
products at issue in the 2004 litigation. This Court
entered a Docket Control Order (“DCO”) requiring
Davis-Lynch to serve Weatherford with PICs by
February 15, 2008, and setting a Markman hearing for
March 19, 2009 and a trial date of January 11, 2010.
Davis-Lynch essentially served the same PICs from
the 2004 litigation. In April 2008, Weatherford produced technical drawings for the remaining fifteen
product lines which had not been given to Davis-Lynch during the 2004 litigation,FN1 and a sales
summary containing information about every sale of
relevant Weatherford products on April 29, 2008.
During June and July of 2008, the parties' counsel
discussed the possibility of Davis-Lynch amending its
PICs, but Davis-Lynch took no action.
FN1. Weatherford claims that it has fifty-one
Large-Bore and Mid-Bore Auto-Fill Float
Collar product lines. Davis-Lynch seeks to
accuse fifty-five Weatherford products. The
parties have not adequately explained this
apparent discrepancy.
*2 On November 13, 2008, Davis-Lynch took its
first deposition of a Weatherford employee with
knowledge of Weatherford's products, Michael LoGiudice. On November 14, 2008, Weatherford filed a
Motion to Strike, or Alternatively to Limit, Plaintiff's
Patent Infringement Contentions to the three products
accused in its current PICs. (Doc. No. 50.) Davis-Lynch responded to Weatherford's Motion and, on
December 11, 2008, filed a Motion for Leave to Supplement Its Patent Infringement Contentions to include additional products. (Doc. No. 69).
Weatherford contends that Davis-Lynch's current
PICs lack the specificity required by Local Patent Rule
3-1. It further contends that Davis-Lynch should not
be allowed to include additional products in its PICs
because Davis-Lynch has failed to show good cause to
amend its PICs. Weatherford maintains that Davis-Lynch had access to detailed technical drawings of
all fifty-one of Weatherford's relevant product lines at
least since April 2008, but failed to assert infringe-

ment against any additional products until Decemeber
11, 2008. Davis-Lynch contends that it was unable to
amend its PICs until after it deposed Mr. LoGuidice,
due to discrepancies in the documents produced by
Weatherford. It claims that its current PICs are sufficient, but seeks leave to amend its PICs to assuage
Weatherford's concerns about specificity. It also seeks
leave to accuse an additional fifty-two products in its
PICs (“the additional products”). It has attached proposed amended PICs to its Motion. (Doc. No. 69-1.)
APPLICABLE LAW
“The Patent Rules demonstrate high expectations
as to plaintiffs' preparedness before bringing suit,
requiring plaintiffs to disclose their preliminary FN2
infringement contentions before discovery has even
begun.” American Video Graphics, L.P. v. Electronic
Arts, Inc., 359 F.Supp.2d 558, 560 (E.D.Tex.2005).
“[W]hen parties formulate, test, and crystallize their
infringement theories before stating their preliminary
infringement contentions, as the Patent Rules require,
the case takes a clear path, focusing discovery on
building precise final infringement or invalidity contentions and narrowing issues for Markman, summary
judgment, trial, and beyond.” Connectel, LLC v.
Cisco Sys., Inc., 391 F.Supp.2d 526, 527
(E.D.Tex.2005).
FN2. The Eastern District no longer uses the
term “preliminary” to describe the infringement contentions required under Local Patent
Rule 3-1. See E.D. Tex. Gen. Order 06-15 at
27-28 (Oct. 27, 2006).
Local Patent Rule 3-1 requires a party to provide
PICs setting forth “particular theories of infringement
with sufficient specificity to provide defendants with
notice of infringement beyond that which is provided
by the mere language of the patent [claims] themselves.” STMicroelectronics, Inc. v. Motorola, Inc.,
308 F.Supp.2d 754, 755 (E.D.Tex.2004). A Party may
not rely on vague, conclusory language or simply
mimic the language of the claims. Id. Specifically,
Rule 3-1(b) requires a party to identify each accused
product by name and model number, if known. Rule
3-1(c) requires “[a] chart identifying specifically
where each element of each asserted claim is found
within each Accused Instrumentality.” (emphasis
added.) Rule 3-1(d) requires a party to specify
“[w]hether each element of each asserted claim is
claimed to be literally present or present under the

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doctrine of equivalents in the Accused Instrumentality.” Rule 3-1(f) states that if a party wishes to assert
that any of its own products practice the claimed invention, for any purpose, the party must identify those
products.
*3 A party may amend its PICs upon a showing of
good cause. Fed.R.Civ.P. 16(b); Garmin, Ltd. v.
TomTom, Inc., No. 2:06-cv-338, 2007 WL 2903843 at
*6 (E.D.Tex. Oct.3, 2007). The tests for determining
whether to allow a party to supplement infringement
contentions and for determining whether to strike
infringement contentions are essentially the same. A
court must consider the following factors: (1) the
reason for the delay and whether the party has been
diligent; (2) the importance of what the court is excluding and the availability of lesser sanctions; (3) the
danger of unfair prejudice; and (4) the availability of a
continuance and the potential impact of a delay on
judicial proceedings. Computer Acceleration Corp. v.
Microsoft Corp., 503 F.Supp.2d 819, 822
(E.D.Tex.2007); Garmin, 2007 WL 2903843 at *6.
ANALYSIS
There are two issues before the Court: whether
Davis-Lynch should be allowed to amend its PICs to
include the additional products, and whether Davis-Lynch's current PICs are adequate.
I. Whether Davis-Lynch May Amend Its PICs to
Include Additional Products
With regard to the first issue, the Court finds that
Davis-Lynch has failed to demonstrate good cause to
amend its PICs to include the additional products.
Weatherford has explained that it turned over detailed
technical drawings of other relevant products in October of 2004 and in April of 2008 pursuant to Local
Patent Rule 3-4(a). It contends that these drawings,
and other publicly available information, should have
allowed Davis-Lynch to complete its PICs for all
products by the deadline listed in the DCO or certainly
well before December 11, 2008. Davis-Lynch offers a
number of reasons as to why it failed seek leave to
include the additional products in its PICs, but none of
these reasons stand up to scrutiny.
Reason for Delay
Davis-Lynch asserts that it needed to confirm
which Weatherford products had been offered for sale
and whether the technical drawings disclosed by
Weatherford were accurate before amending its PICs.

It argues that Weatherford did not “marry itself to,”
i.e. commit to the accuracy of, its technical drawings
until it filed its Motion to Strike. The Court notes that,
Davis-Lynch never raised these concerns with the
Court or with Weatherford until after Weatherford
filed its Motion to Strike. (Doc. No. 75 at p. 7.) Absent
some additional evidence not presented to the Court,
Davis-Lynch's purported concerns were patently unreasonable. Weatherford produced the technical
drawings pursuant to Local Patent Rule 3-4(a) along
with a sales summary providing information about
every sale of potential accused instrumentalities on
April 29, 2008. Production of documents pursuant to
this rule constitutes a representation that the drawings
are “sufficient to show the operation of any aspects or
elements of an Accused Instrumentality.” Contrary to
Davis-Lynch's arguments, there is no requirement that
a party separately “marry itself to” its Rule 3-4 disclosures. Based on these documents, Davis-Lynch
could have identified which products to accuse, and
how many of those products had been sold.
*4 Davis-Lynch claims that, at a deposition taken
in November, Weatherford employee, Michael LoGiudice, opined that one of the technical drawings
disclosed by Weatherford was inaccurate.FN3 Davis-Lynch offers no reasonable explanation as to why
it doubted the accuracy of Weatherford's drawings
prior to the deposition of Mr. Logiudice, which was
taken nine months after the deadline to submit its
PICs. Even if Weatherford did violate Rule 3-4 by
serving an inaccurate technical drawing, this fact
should have been the subject of an appropriate motion
with the Court, not an excuse to delay accusing fifty
two products for well over six months.
FN3. Weatherford asserts that this drawing
was not one of the technical drawings that it
produced pursuant to Local Patent Rule 3-4.
Davis-Lynch also asserts that it was unable to
complete its PICs because it could not adequately
inspect one of Weatherford's products. The fact that
Davis-Lynch has now filed a Motion to Supplement
its PICs without inspecting that product belies this
assertion. Furthermore, Davis-Lynch has only sought
to inspect one product, a product already accused in its
current PICs. As above, to the extent that Davis-Lynch
has been hindered by a lack of discovery, it has failed
to diligently raise these issues with the Court. Accordingly, Davis-Lynch has offered no reasonable ex-

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planation for its delay in seeking leave to amend its
PICs. This factor weighs heavily against allowing
Davis-Lynch to supplement its PICs with the additional products..
Importance of Infringement Contentions and the
Availability of Lesser Sanctions
Davis-Lynch contends that the fifty two additional products are important because they make up
seventy-five percent of Weatherford's sales. Nonetheless, the requirement to timely provide a claim
chart for each accused product is “crystal clear.”
Computer Acceleration Corp., 503 F.Supp.2d at 822.
Allowing Davis-Lynch to amend its PICs to include
additional products at this stage in the litigation would
“deter neither game-playing nor actual violation of the
rules-to the contrary it would actually discourage the
voluntary exchange of information.” Id.; O2 Micro,
Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1366 (Fed.Cir.2006). After all, the relative importance of including these products in its PICs should
have generated a commensurate amount of diligence.
Moreover, exclusion of these additional products will
not result in dismissal of Davis-Lynch's case in its
entirety. See Computer Acceleration Corp., 503
F.Supp.2d at 825 (excluding products from a case is
not the same as granting a default judgment against a
Plaintiff). This case will still proceed against the three
products Davis-Lynch has accused in its current PICs.

Danger of Unfair Prejudice
*5 This case is set for a Markman hearing March
19, and dispositive motions are due by July 20, 2009.
If Davis-Lynch were allowed to introduce fifty two
new accused products into this case, the burden on
Weatherford would be significant. There is some
dispute as to the extent to which the additional products differ from the three products currently accused.
Nonetheless, Weatherford has asserted that it would
have very little time to identify terms for claim construction, to conduct a prior art search, and to properly
formulate its defenses including inequitable conduct.
In addition, the parties could be burdened with additional written discovery, document production requests, and additional work from the parties' technical
experts. At the hearing, Davis-Lynch argued that only
one witness might need to be deposed again. Although
re-taking one deposition would not be overwhelmingly burdensome for Weatherford, it would still be
prejudicial-especially in light of the looming deadlines
in this case. This factor weighs against allowing Davis-Lynch to supplement its PICs with the additional
products.
The Availability of a Continuance
This case is set for a Markman hearing in March,
and trial in January 2010. The Court's docket does not
permit a continuance of these deadlines to consider
infringement contentions that should have been filed
almost a year ago.

While precluding these products from being asserted in this case may prejudice Davis-Lynch to some
degree, the prejudice is not so great as to weigh significantly against Davis-Lynch's lack of diligence.FN4
Accordingly, this factor does not weigh in favor of
allowing Davis-Lynch to supplement its PICs with the
additional products.

Although the prejudice to Weatherford may not
be substantial, Davis-Lynch has no reasonable explanation for its lack of diligence. After consideration
of all the relevant factors, the Court finds that Davis-Lynch has failed to demonstrate good cause to
amend its PICs to include the additional products.

FN4. Davis-Lynch argues that if it is not allowed to amend its PICs to include the additional products, then it will be forced to file a
separate lawsuit. Weatherford argues that
any subsequent lawsuit would be barred by
claim preclusion principles. See Roche Palo
Alto LLC v. Apotex, Inc., 531 F.3d 1372,
1379 (Fed.Cir.2008). Whether or not claim
preclusion would apply is not properly before
this Court. The question in this case is
whether Davis-Lynch can show good cause
to include the additional products in its PICs.

II. Whether Davis-Lynch's Current PICs Are
Adequate
The Court finds that Davis-Lynch's current PICs
have some deficiencies. However, the Court finds that
striking these PICs in their entirety would be inappropriate. The parties both argue that striking Davis-Lynch's current PICs, without allowing them to
amend, would constitute a death penalty sanction. The
Court agrees that if it were to strike Davis-Lynch's
PICs, it would be forced to dismiss the case for failure
to comply with the DCO. The Court finds this result to
be unnecessarily harsh. Accordingly, the Court will
order Davis-Lynch to amend its PICs to comply with

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the local patent rules.
Davis-Lynch has failed to comply with Rule
3-1(b), which requires a party to identify each accused
product by model number if known. Davis-Lynch's
PICs do identify three products by model number, but
they also state that “one or more of Defendant's Large
Bore Auto-Fill Float Collar products,” are infringing.
A party may not blindly accuse every product a defendant produces and expect to narrow its claims at its
own convenience. See American Video Graphics,
L.P., 359 F.Supp.2d at 560. As explained above, Davis-Lynch offers no justification as to why it failed to
identify Weatherford's accused products by model
number in February 2008, or at least by May or June
of 2008. Davis-Lynch's proposed supplemental PICs
still contain language implying that even more unidentified products are infringing. As agreed at the
hearing, this language must be removed.
*6 Weatherford also argues that Davis-Lynch's
PICs are ambiguous because they accuse products
“without and/or including a filter shoe, cemented or
composite guide shoe.” At the hearing, Davis-Lynch
adequately explained that this language means that it
has accused products regardless of whether a filter
shoe or guide shoe has been attached to them.
Davis-Lynch has also failed to comply with Rule
3-1(c), which requires “[a] chart identifying specifically where each element of each asserted claim is
found within each Accused Instrumentality.” (emphasis added.) Davis-Lynch's current PICs do include
a chart for each product accused by model number, but
those charts do little more than parrot the claim language. This defect could have been ameliorated by the
fact that Davis-Lynch attached diagrams of each of the
accused products with certain claim elements identified by number. However, these diagrams are largely
illegible and the claim elements are ambiguously
identified. The claim chart in Davis-Lynch's proposed
amended PICs offers more detail, but Davis-Lynch
only submits one claim chart for fifty-five different
products. Once again, Davis-Lynch has attached, now
legible, diagrams of each of the accused products, but
it has labeled only a handful of claim elements relating
to only one product.
The Court orders Davis-Lynch to include a separate claim chart for each of the three accused products. If Davis-Lynch wishes to include drawings of the

products, they must be legible and each claim element
must be clearly and unambiguously identified in the
drawings. At the hearing, Weatherford argued that
certain claim elements in Davis-Lynch's proposed
amended claim chart are insufficiently described, e.g.,
elements 43d and 33f. At the hearing, Davis-Lynch
agreed to provide additional citations to the LoGiudice
deposition which could resolve these disputes. The
Court orders Davis-Lynch to do so.
With regard to claim element 43d, Weatherford
argued that Davis-Lynch's PICs do not adequately
explain how the flapper elements in Weatherford's
products “close in response to a direction of fluid
flow” as required by the '336 patent. The Court finds
that this argument relates to a theory of
non-infringement, not the adequacy of Davis-Lynch's
PICs.
Further, Davis-Lynch has failed to comply with
Rule 3-1(d), which requires a party to specify
“[w]hether each element of each asserted claim is
claimed to be literally present or present under the
doctrine of equivalents in the Accused Instrumentality.” Both Davis-Lynch's current PICs and its proposed
amended PICs state that there is both literal infringement and infringement through the doctrine of
equivalents. At the hearing, Davis-Lynch indicated
that it believes Weatherford's products literally infringe. It must clarify its position on this issue.
Finally, Davis-Lynch has failed to comply with
Rule 3-1(f), which states that if the party wishes to
assert that any of its own products practice the claimed
invention, for any purpose, the party must identify
those products. Both Davis-Lynch's current PICs and
proposed amended PICs essentially ignore this rule.
At the hearing, Davis-Lynch agreed to list any of its
products which it intends to assert practice the invention.
CONCLUSION
*7 For the reasons stated above, the Court DENIES Defendant's Motion to Strike, (Doc. No 50), and
GRANTS in part and DENIES in part Plaintiff's
Motion for leave to Supplement its PICs, (Doc. No.
69). The Court GRANTS Plaintiff's Motion to the
extent that Plaintiff seeks to include more specificity,
but DENIES Plaintiff's Motion to include additional
products in its PICs.

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Not Reported in F.Supp.2d, 2009 WL 81874 (E.D.Tex.)
(Cite as: 2009 WL 81874 (E.D.Tex.))
The Court ORDERS Davis-Lynch to serve
amended infringement contentions on Davis-Lynch
by February 9, 2009 at 5:00 p.m. in a manner consistent with this opinion and Local Patent Rule 3-1.
These infringement contentions must be limited to the
three products already accused in this case, product
numbers L42A, L45AP, and L46AP. The Court expects the parties to communicate openly to resolve any
additional disputes regarding Davis-Lynch's PICs.
So ORDERED.
E.D.Tex.,2009.
Davis-Lynch, Inc. v. Weatherford Int'l, Inc.
Not Reported in F.Supp.2d, 2009 WL 81874
(E.D.Tex.)
END OF DOCUMENT

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