December 12, 2019 Practice Points

What to Know About Amending Infringement Contentions After Source Code Review

Failing to know how the facts and circumstances fit into local case law can have major consequences.

By Ken Fung

Many patent case-heavy district courts have developed local rules and procedures governing the production and review of source code—significant events in any software patent infringement case. And knowing what should come next after the source code review can be critical. In some jurisdictions, like Delaware or the Western District of Texas, standard scheduling and other orders typically address the requirements and timing for source code-related amendments to infringement contentions. But in the Eastern District of Texas and the Northern District of California, practitioners need to know how their facts and circumstances fit into the relevant case law addressing disputes over source code-related amendments. Failing to do so can have major consequences, including stricken infringement theories, waived arguments, and excluded expert opinions.

In the Eastern District of Texas and the Northern District of California, the patent local rules require the accused infringer to produce relevant source code after service of the infringement contentions. This often leads to the need for the plaintiff to amend its contentions to include details about the source code. The rules permit such amendment “upon a timely showing of good cause,” and thus judges in both jurisdictions typically grant requests to amend. But these jurisdictions differ in how they address whether contentions must be updated to include source code citations and, if so, how specific those updates must be.

Standard discovery orders in the Eastern District of Texas provide that plaintiffs must update infringement contentions within 30 days of source code production. But the district has allowed later amendments if the plaintiff can show that the delay had no material impact and that striking the contentions would “significantly compromise” the plaintiff’s case. See, e.g. CyWee Group Ltd. v. Samsung Electronics Co. Ltd., 2018 WL 5834148 (E.D. Tex. 2018). And judges there have at times permitted tardy amendments when the plaintiff shows that the delay was in part due to a defendant’s refusal to produce the code. See, e.g., Harris Corporation v. Huawei Device USA, Inc., 2019 WL 4247067 (E.D. Tex. 2019).

The Northern District of California, on the other hand, has held that requests for amendments may be denied when plaintiffs aren’t diligent in timely seeking amendments after source code production, with timeliness determined on a case-by-case basis. For example, in Koninklijke Philips N.V. v. Acer Inc., 2019 WL 652868 (N.D. Cal. 2019), the court denied the plaintiff’s request to amend after holding that a purported lack of time to review the necessary code wasn’t enough reason to ignore a duty to timely request amendment.

These districts also have imposed similar but somewhat differing requirements on the specificity of source code citations in amended contentions. The Eastern District of Texas requires showing on “an element-by-element” basis how each software limitation is met, while the Northern District of California requires a more stringent “pinpoint citation” of code. An inability to satisfy these requirements can result in orders to further amend, or the later striking of portions of expert reports. See, e.g., Biscotti Inc. v. Microsoft Corp. 2017 WL 2267283 (E.D. Tex. 2017), and Finjan, Inc. v. SonicWall, Inc., 2019 WL 2077849 (N.D. Cal. 2019).

The District of Delaware hasn’t adopted patent local rules, and judges there have implemented procedures that largely avoid disputes concerning amended contentions. In Delaware, defendants are typically required to produce source code before being served infringement contentions, and plaintiffs are usually allowed to provide final, amended contentions without leave of court. The Western District of Texas, a growing venue for patent cases particularly since Judge Alan Albright took the bench, also hasn’t adopted patent local rules. But like the judges in Delaware, Judge Albright has proactively addressed this issue. His standard order incorporates the same sequence for contention and source code production as the Eastern District of Texas and the Northern District of California, but also expressly allows amendments without leave when they are based on material identified after the initial contentions and are served “seasonably.”

Ken Fung is an attorney in Fisch Sigler LLP’s Silicon Valley, California, office.

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