United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAVNE, UNITED STATES MAGISTRATE JUDGE.
defendants have each moved for emergency relief, requesting
that the Court again strike Traxcell's infringement
contentions and impose sanctions against Traxcell for failure
to comply with Local Patent Rule 3-1. See Dkt. Nos.
114, 118, 120, and 122. The emergency motions are granted for
the following reasons, and additional relief is ordered as
set forth below.
January 12, 2017, Traxcell filed complaints against
Alcatel-Lucent, Huawei, Nokia, Motorola Solutions, and
Samsung. See Case Nos. 2:17-cv-00041, -42, -43, -44,
-45. Traxcell's original complaints alleged infringement
of two patents that generally relate to systems and methods
involving the interaction between a mobile device and a
wireless network. The lawsuit against Motorola Solutions has
since been dismissed with prejudice, pursuant to an unopposed
motion filed by Traxcell. See Case No.
2:17-cv-00042, Dkt. Nos. 93 and 97. The cases against the
Alcatel-Lucent, Huawei, Nokia, and Samsung remain pending.
original complaint against Alcatel-Lucent alleged
infringement of U.S. Patent Nos. 9, 510, 320 and 8, 977, 284.
Case No. 2:17-cv-00041, Compl. ¶¶ 6-15, Dkt. No. 1.
In response to a motion to dismiss filed by Alcatel-Lucent on
April 24, 2017, id., Dkt. No. 12, Traxcell filed an
amended complaint on May 2, 2017, id., Dkt. No. 15.
In addition to alleging infringement of the '320 and
'284 patents, the amended complaint alleges that
Alcatel-Lucent infringes a third patent, U.S. Patent No. 9,
642, 024. Id. ¶¶ 16-21, Dkt. No. 15.
1, 2017, Alcatel-Lucent filed a motion to dismiss the amended
complaint under Rules 12(b)(6) and Rule 12(b)(3), contending
both that Traxcell's amended complaint fails to state a
claim and that venue is improper. Id., Dkt. No. 19.
Although Alcatel-Lucent's motion remains pending, the
Court entered an order on November 13, 2017, permitting
Traxcell to conduct venue-related discovery and requiring
Traxcell to update its response regarding whether venue was
proper no later fifteen days after Alcatel-Lucent's
venue-related discovery responses. Id., Dkt. No. 28.
There has been no further activity on the docket regarding
the venue dispute between Traxcell and Alcatel-Lucent.
'024 patent was added into the cases against Huawei and
Nokia through a similar course of events. After Huawei
answered the complaint, see Case No. 2:17-cv-00042,
Dkt. No. 8, Traxcell amended the complaint against Huawei to
add allegations regarding infringement of the '024
patent, id., Dkt. No. 12. Traxcell similarly added
the '024 patent into the case against Nokia in May of
2017. See id., Dkt. No. 10.
lawsuit against Samsung, Traxcell's amended complaint
alleges infringement of the two patents asserted in the
original complaint, i.e., the '320 and '284 patents,
in addition to alleging infringement of U.S. Patent Nos. 9,
549, 388. See Case No. 2:17-cv-0045, Dkt. No. 15.
Three days after filing the amended complaint against
Samsung, Traxcell filed an unopposed motion to dismiss the
claim that Samsung is infringing the '388 patent without
prejudice, and that motion was granted. See id.,
Dkt. Nos. 17 and 19. Traxcell then filed another amended
complaint alleging infringement of the '320 and '284
patents, in addition to alleging infringement of the '024
patent. See id., Dkt. No. 21.
6, 2017, the Court entered an order consolidating the cases
into a lead case. See Case No. 2:17-cv-00042
(“Lead Case”), Dkt. No. 15. On June 15, 2017, the
Court entered a notice on the docket indicating that a
scheduling conference would be held on June 18, 2017. See
id., Dkt. No. 19. Under the local patent rules, a party
claiming patent infringement must serve a “Disclosure
of Asserted Claims and Infringement Contentions” no
later than ten days before the scheduling conference. Local
Patent Rule 3-1. The rule governing infringement contentions
requires a party claiming infringement to satisfy four
pertinent requirements-the following disclosures must be
(a) Each claim of each patent in suit that is allegedly
infringed by each opposing party;
(b) Separately for each asserted claim, each accused
apparatus, product, device, process, method, act, or other
instrumentality (“Accused Instrumentality”) of
each opposing party of which the party is aware. This
identification shall be as specific as possible. Each
product, device, and apparatus must be identified by name or
model number, if known. Each method or process must be
identified by name, if known, or by any product, device, or
apparatus which, when used, allegedly results in the practice
of the claimed method or process;
(c) A chart identifying specifically where each element of
each asserted claim is found within each Accused
Instrumentality, including for each element that such party
contends is governed by 35 U.S.C. § 112(6), the identity
of the structure(s), act(s), or material(s) in the Accused
Instrumentality that performs the claimed function; and
(d) Whether each element of each asserted claim is claimed to
be literally present or present under the doctrine of
equivalents in the Accused Instrumentality;
Id. at 3-1(a)-(d). Traxcell was obliged to comply
with these requirements no later than June 7, 2017, and
Traxcell had nearly five months to prepare infringement