How to Lose Opposing a Motion for Leave to Amend Infringement Contentions

Practicing law on a Friday afternoon is hard work. See?

This afternoon I’m working on my first sur-sur-sur-reply, which per some rule someplace simply must be written outside with the aid of some Shiner Bock. But while enjoying the sunshine I also enjoyed this opinion which provides some additional clarification on the always interesting topic of when infringement contentions can be amended. And, more importantly, what conduct by a defendant – which was doing so well just yesterday – kneecapped its ability to oppose such a motion, and what conduct by parties does Judge Gilstrap just really not like? You’ll want to take notes here.


Outside what’s now my office in 1903. The Hub is still here, as you can see in the reflection above.

It’s easy to get in the weeds on this one, but at its core, the plaintiff was seeking to add two new product lines that Samsung had released since the litigation started. Polaris (yes, this is the same case as the “permission v. forgiveness” opinion analyzed yesterday) argued that Samsung failed to disclose these products in discovery. Samsung responded that it had no obligation to disclose these products, which it claimed that Polaris could have readily identified through public sources.

Polaris did seek discovery on unaccused additional products that might practice the asserted patent, but it got only partial responses, which would become important later.

Judge Gilstrap concluded that Polaris had been sufficiently diligent in attempting to ascertain whether the new products should be added to the case. “Samsung’s failure to comply with its obligations under Federal Rule of Civil Procedure 26(e)(1)(A) might by itself be sufficient grounds to grant Polaris’s motion,” he wrote, and “is certainly a sufficient explanation for Polaris’s failure to accuse these products.” (Internal citations omitted).

See, I told you there would be good stuff in here. It gets better.

You see, Samsung argued in its response that the products sought to be added operated differently and thus would require additional time for expert analysis, then three days before it filed its surreply its expert served a report stating that “for purposes of analyzing infringement of the ’117 patent claims that I understand have been asserted, there are no substantial differences in the operation of the functionalities of the … [new] products.”

Samsung then “argued in its sur-reply that evidence “clearly showed that the accused functionality in Samsung’s 2017 TVs differed from Samsung’s 2018 family.” Wait, what? While its sur-reply did not claim the need for further technical analysis as a reason for a continuance, it did not correct nor retract the claim which was made in Samsung’s response brief. “Not repeating a misstatement is not the same as correcting that misstatement,” Judge Gilstrap observed.

Only after being confronted with Polaris’s supplemental brief did Samsung finally concede that there was no “risk of prejudice from additional technical analysis,” the Court wrote. Certainly there would need to be some additional non-technical discovery, but not additional technical analysis.

Conduct of the Parties’ Counsel

The Court’s opinion did not stop when it resolved the immediate issue. Instead, it devotes a couple of pages to its observation of the conduct of the parties’ counsel.

The Court is troubled by the parties’ behavior both in the lead up to this Motion as well as in their related briefing. The apparent failure of the parties to adequately meet and confer seems to have precipitated not only this Motion but other issues in this case, such as the parties’ inability to conduct four of their expert depositions within the time allotted by the Court or even to agree on appropriate briefing for this Motion.
As discussed above, the Court questions whether Samsung has been completely forthright with Polaris or with the Court. However, Samsung’s conduct is no excuse for the heated rhetoric Polaris has used throughout its briefing. Polaris, in its reply alone, accuses Samsung of reasoning that is “severely flawed,” “highly problematic,” “highly troubling,” and “complete nonsense.” Not to be outdone, Samsung regularly, and somewhat ironically, accuses Polaris of “misleading” the Court. This is not effective advocacy. It does not well serve the Court or the legal profession. As the parties prepare for trial in this case, the Court admonishes them to conduct their affairs with each other and before this Court with the requisite professionalism, candor, and decorum expected of officers of the Court. Cf. 35 U.S.C. § 285.
Said, to both sides, another way: drop the name-calling and communicate with each other and the Court openly and honestly.”

(Internal citations omitted) (Emphasis added).

Polaris’ request for legal fees was denied, but in case the cf. reference to Section 285 was missed, the order concludes with the statement that “the Court will remain mindful of this dispute if and when it is asked to determine, at a future date, whether or not this case is exceptional.”

© 2020 Michael C. Smith. Use limited to individual subscribers. Further distribution prohibited.

This blog does not constitute legal advice. If you’d like to discuss a related legal matter, please contact Michael C. Smith via email or call 903-938-8900.