Magistrate Judge James C. Francis IV granted plaintiff On Track Innovations’ (“OTI”) motion to amend its complaint to include claims of active inducement of U.S. Patent 6,045,043 (“the ’043 patent”). The ’043 patent concerns a cellular phone technology called Near Field Communications (“NFC”) that allows both contact and contactless modes of peer-to-peer radio communication, obviating the need for switching devices.

For example, the user of a NFC-capable phone can turn on his stereo though his cell phone. OTI initially alleged that T-Mobile’s NFC-capable cell phones directly infringe the ’043 patent, and seeks to amend its complaint to allege that, by inviting customers to obtained advanced SIM cards for insertion into NFC-capable cell phone, T-Mobile induced infringement by end users.

The court held that OTI provided enough evidence to support a plausible claim of active inducement, and granted its motion to amend because there was no undue delay on OTI’s part and no undue prejudice to T-Mobile. The court found that there was no undue delay in OTI’s seeking to amend its complaint twenty months after originally filing because, according to OTI, it first became aware that T-Mobile had invited customers to obtain new Advanced Sim Cards for the NFC- capable cell phones 19 months after OTI had filed the complaint, when T-Mobile launched of the NFC program. The court also found there was no undue prejudice to T-Mobile because expert discovery had not closed and T-Mobile can still obtain relevant evidence for their defense, including an opinion of counsel letter. Additionally, the court noted that T-Mobile “should have accessible to it the evidence bearing on its own state of mind” relevant to intent.

Case: On Track Innovations LTD v. T-Mobile USA, No. 12 Civ. 2224 (AJN) (S.D.N.Y. February 3, 2014)