United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
patent case, Apple moves the Court for leave to amend its
answer to CCE's Third Amended Complaint [Doc. # 215].
Relative to its live pleadings, [Doc. # 231-234], Apple's
proposed First Amended Answer [Doc. # 298] adds a
counterclaim for breach of contract based on CCE's
alleged failure to disclose certain patent applications to
the European Telecommunications Standards Institute (ETSI), a
working group that developed the LTE standard relevant to the
asserted patents. Apple asserts this failure entitles it to
monetary damages as a third-party beneficiary to the
reviewing the briefing submitted by both parties, the Court
GRANTS Apple's motion.
August 15, 2016, CCE filed its Third Amended Complaint [Doc.
# 215]. Apple answered on August 29, 2016, [Doc. # 231-234],
which was the deadline to amend responsive pleadings. In
November 2016, Apple filed its Motion for Leave to Amend
[Doc. # 297] and proffered its First Amended Answer [Doc. #
new counterclaim concerns a purported contractual obligation
by Nokia Siemens, which was CCE's predecessor-in-interest
to the asserted patents. According to Apple, Nokia Siemens
failed to disclose certain patent applications to ETSI. [Doc.
# 298] ¶¶ 7, 11-47. The patent applications were
provisional and PCT applications related to the asserted
patents in this litigation.
claims CCE was bound by that contractual obligation as a
successor-in-interest to Nokia Siemens. By failing to
disclose the patent rights CCE says are essential to LTE
standards, and by now asserting those patent rights against
Apple, CCE violated its contractual obligation. This caused
significant harm to Apple as a third-party beneficiary to the
obligation. Id. ¶¶ 96-99. Notably,
Apple's new factual allegations are similar to
allegations in its earlier Answers. See, e.g., [Doc.
# 231] ¶¶ 130-133.
parties have already conducted some discovery on this issue.
In December 2016, the Court ordered letters rogatory directed
in part to communications with standard setting
organizations. Among many other issues, the letters were
directed to discovery about obligations to disclose the
asserted patents and related applications to ETSI. [Doc. #
340-343]; [Doc. 318-1] at 14 (¶ 13); id. at 15
pretrial conference is set for July 11, 2017, with jury
selection beginning on July 31, 2017. [Doc. # 435].
Rule 16(b) Analysis
deadline has been set for filing amended pleadings,
Fed.R.Civ.P. 16(b) governs the decision about whether to
permit a post-deadline amendment. Under Rule 16(b)(4), a
motion to modify the scheduling order by permitting the
filing of an amended pleading after a deadline may be granted
“only for good cause and with the judge's
gives trial courts “broad discretion to preserve the
integrity and purpose of the pretrial order.”
Geiserman v. MacDonald, 893 F.2d 787, 790 (5th Cir.
1990). District courts, however, should consider (1) the
explanation for the party's 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 such prejudice.
United States ex rel. Bias v. Tangipahoa Parish Sch.