United States District Court, E.D. Texas, Tyler Division
MEMORANDUM OPINION AND ORDER
LOVE UNITED STATES MAGISTRATE JUDGE.
the Court is Plaintiff Realtime Data LLC's Sealed Motion
for Leave to Supplement Infringement Contentions as to
Defendant Rackspace US, Inc. (Doc. No. 158.) Rackspace has
filed a Response (Doc. No. 161), Realtime has filed a Reply
(Doc. No. 171), and Rackspace has filed a Sur-Reply (Doc. No.
181). After consideration of the parties'
arguments and for the reasons stated herein, the Court GRANTS
Realtime's Motion for Leave to Supplement its
Infringement Contentions, with further requirements as
explained below. (Doc. No. 158.)
26, 2016, Realtime filed the above-captioned case against
Rackspace and one other Defendant. (Doc. No. 1.) Realtime
filed an Amended Complaint on October 11, 2016. (Doc. No.
33.) In its October 2016 Complaint, Realtime alleges that
Rackspace infringes seven Realtime patents with the Rackspace
Cloud Backup, ONTAP, and AltaVault products. (Id.)
April 25, 2017, Realtime took the deposition of
Rackspace's Chief Technology Officer, John Engates. (Doc.
No. 158-1 (“Chung Decl.”), ¶4.) Mr. Engates
testified that the Rackspace Managed Backup product also
performs deduplication and compression via CommVault
software. (Id.) Rackspace had first produced
documents relating to CommVault on April 18, 2017.
(Id. at ¶5.) On May 1, 2017, Realtime served
supplemental infringement contentions on Rackspace that
included claim charts for Rackspace Managed Backup.
(Id. at ¶6.) After meeting and conferring with
Rackspace on the issue, Realtime filed the current Motion to
Supplement Infringement Contentions on May 15, 2017. (Doc.
fact discovery deadline is currently set for July 10, 2017,
the expert discovery deadline is set for August 18, 2017, and
the dispositive motion deadline is set for August 25, 2017.
(Doc. No. 167.) Trial is set for January 22, 2018.
Local Rule 3-6 sets forth when a party may amend its
infringement or invalidity contentions. If a party
“believes in good faith that the Court's Claim
Construction Ruling so requires, not later than 30 days after
service by the Court of its Claim Construction Ruling, that
party may serve Amended Infringement Contentions without
leave of court.” E.D. Tex. L.R. P. R. 3-6(a).
Otherwise, a party seeking to supplement its infringement
contentions must obtain leave of Court upon a showing of good
cause. E.D. Tex. L.R. P. R. 3-6(b).
in this district rely on four factors to determine whether a
party has shown good cause to supplement infringement
contentions: “(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) potential prejudice in allowing the amendment; and (4)
the availability of a continuance to cure such
prejudice.” Motion Game, LLC v. Nintendo Co.,
Case No. 6:12-cv-878-RWS-JDL, 2015 WL 1774448, at *2 (E.D.
Tex. Apr. 16, 2015).
Potential Prejudice in Allowing Amendment
argues that Rackspace is not prejudiced because Realtime is
not seeking to add any new patents or claims, but simply
seeking to “add one new accused product that was
recently identified in deposition.” (Doc. No. 158, at
5.) Realtime argues that fact discovery is still open.
(Id. at 5-6.) Realtime also argues that Rackspace
made a “conscious decision” not to include
Rackspace Managed Backup in its answer to interrogatory
responses served January 17, 2017, and thus any prejudice is
“self-inflicted”. (Id. at 6.)
argues that it will be prejudiced because Realtime is
attempting to add an entirely new product that operates
differently from the currently accused products. (Doc. No.
161, at 4-5.) Rackspace argues that the Rackspace Managed
Backup product compresses data without an “analysis
step” or “selection step, ” as required by
the claims. (Id.) Thus, Rackspace argues, Rackspace
will need to perform new and “extensive” prior
art searching to supplement its invalidity case.
(Id. at 5-6.) Rackspace also argues at length that
because Rackspace Management Backup does not perform an
“analysis step” or “selection step, ”
amendment is futile and must be denied. (Id. at
reply, Realtime argues that Rackspace's futility argument
“amounts to a summary judgment motion for
non-infringement, ” not a basis to deny supplemental
infringement contentions. (Doc. No. 171, at 1-2.) On the
merits, however, Realtime argues that certain patent claims
do not even mention analyzing, selecting, or identifying.
(Id. at 2 (citing U.S. Patent No. 9, 116,
908, Claim 1; U.S. Patent No. 7, 415, 530, Claim 1).)
Realtime argues that its theories against Rackspace ...