United States District Court, E.D. Texas, Marshall Division
PAYNE UNITED STATES MAGISTRATE JUDGE.
Wells Fargo Bank, N.A. filed a Motion for Leave to Serve
Appendix of William L. Saffici, which is now before the
Court. (Dkt. No. 100.) In this motion, Wells
Fargo seeks leave to serve an appendix to the original report
of its invalidity expert, Mr. Saffici. After consideration,
the Court GRANTS the motion.
brought suit against Wells Fargo alleging that Wells
Fargo's Mobile Deposit system infringes several of
USAA's patents. (Dkt. No. 1.) Wells Fargo, as one of its
defenses, alleged that some of the asserted patents are
invalid. (Dkt. No. 36 at 15.) Relevant to this motion, Wells
Fargo alleged that dependent claims 6, 12, and 18 of U.S.
Patent No. 9, 224, 136 (the “'136 Patent”)
are invalid. To prove its contention regarding the asserted
claims, it relies on its invalidity expert, Mr. Saffici, who
determined in his report that the asserted claims were
disclosed by or rendered obvious by prior art.
responded by requesting this Court to find that as a matter
of law Mr. Saffici's report fails to provide evidence
that the additional claim limitations in the asserted claims
are disclosed by the prior art. (Dkt. No. 77.) Wells Fargo
disagrees and moved for leave to file an appendix to the
report to help clarify that the at-issue limitations are
properly disclosed in Mr. Saffici's report. (Dkt. No.
Court may grant a party leave to supplement its expert's
report after the deadline for “good cause.”
Fed.R.Civ.P. 16(b)(4). “In determining whether
‘good cause' exists, the Court considers the
following four factors: ‘(1) the explanation for the
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.'” Fractus, S.A. v. AT&T
Mobility LLC, No. 2:18-CV-00135-JRG, 2019 WL 5373197, at
*1 (E.D. Tex. Aug. 20, 2019) (quoting Sw. Bell Tel. Co.
v. City of El Paso, 346 F.3d 541, 546-47 (5th Cir.
the four factors described above, the Court finds that Wells
Fargo has demonstrated good cause to amend Mr. Saffici's
the first factor-the explanation for the failure to meet the
deadline-the Court notes that USAA served a similar appendix
for Dr. Conte, its infringement expert, in response to
complaints from Wells Fargo regarding the sufficiency of his
original report. (Dkt. No. 131-6.) Wells Fargo argues that it
believed it was equitably entitled to a similar appendix when
USAA similarly complained of the sufficiency of its
infringement expert's report. Therefore, the Court
concludes that Wells Fargo had a good faith, reasonable
belief that its appendix would be allowed.
the second factor-the importance of amendment-Wells Fargo
argues that the appendix “does not include any new
theories or prior art” and is only meant to
“alleviate any potential confusion.” (Dkt. No.
100 at 1.) Thus, Wells Fargo's argument for importance is
undermined by its assertion that the appendix only
“cites to and identifies the already existing opinions
and evidence” in Mr. Saffici's report, serving to
“eliminate any potential for”
misinterpretation. (Dkt. No. 140 at 1-2.) Therefore, further
clarification of theories already disclosed are not overly
important under this factor.
the third factor-potential prejudice in allowing the
amendment-the Court agrees with Wells Fargo that its appendix
merely clarifies theories already disclosed in Mr.
Saffici's report. While this fact cuts against the
importance of the amendment, it also cuts against the
prejudice to USAA in allowing the amendment. USAA argues that
if the amendment is allowed, it will be prejudiced since it
would turn “opening expert reports into noses of wax to
be molded into different forms to suit a party's needs at
trial.” (Dkt. No. 131 at 5.) Yet, USAA, in describing
its own appendix, said that there is little prejudice when
“[t]he Appendix simply reorganized the existing content
in [the expert's] report . . . .” (Id. at
4.) The Court therefore finds little to no potential
prejudice in allowing the amendment.
the fourth factor, the Court finds that no continuance is
necessary. USAA has been aware of the appendix, and the
pending motion to serve it, for at least a month. Further, as
Wells Fargo noted, “USAA was able to ...