Plaintiff Imperium (IP) Holdings, Inc. ("Imperium") filed a patent infringement action accusing eight defendants of infringing several patents. With respect to Apple, Imperium asserted that Apple infringed all of the patents-in-suit and listed the iPhone 3G, specifically. Imperium subsequently provided detailed claim charts setting forth Imperium's theory of infringement in relation to an exemplary device and also identified other devices with image sensors and image processors believed to infringe the asserted claims of the patents in suit in the same or substantially similar manner.

Imperium later moved for leave to amend its infringement contentions to add 74 additional products. In support of this motion, Imperium asserted, according to the district court, "[o]n May 25, 2012, Plaintiff contracted with UBM Techlnsights to obtain access to its Information Retrieval Insights System ("IRIS") for a sum of twenty-five thousand dollars ($25,000). IRIS could provide the identity of the image sensors and processors that are incorporated into many, but not all, of Defendants' devices. Upon receiving access to IRIS, Imperium immediately began utilizing IRIS to identify the image sensors in Defendants' products. Through IRIS, Plaintiff identified 74 additional products containing image sensors and/or image processors manufactured, used, sold, offered for sale, and/or imported by Defendants that Plaintiff asserts infringe the patents-in-suit in the same manner as the products previously identified."

The court then noted the requirements of the local patent rules for amending infringement contentions: "Patent Rule 3-6 provides that amendment or supplementation of infringement contentions may be permitted only upon a showing of good cause. P.R. 3-6(b). District courts have discretion in ruling on motions to amend infringement contentions, and the court should consider four factors in making its ruling:

  1. the explanation for the failure to meet the deadline;
  2. the importance of the amendments;
  3. the potential prejudice in allowing the amendments; and
  4. the availability of a continuance to cure such prejudice.

Realtime Data, 2009 WL 2590101, at *2."

The court then analyzed the four factors. On the first factor, the district court noted that "Plaintiff asserts that it was diligent and the proposed amended contentions are based on non-public information that was not available for purchase until May 2012. Plaintiff also asserts that Defendants refused to provide discovery on 'reasonably similar' products. Defendants respond that Plaintiff was not diligent and that '[i]t is apparent that Plaintiff never purchased the phones that it belatedly seeks to accuse of infringement, and thus simply cannot speak to the public availability of the image sensor information in such phones.' Defendants further argue that the IRIS launch did not add any information to what was previously available to Plaintiff and that UBM has maintained a database of 'teardown reports' that identify, among other things, the image sensors used in Defendants' products for years. In reply, Plaintiff argues that it paid $25,000 for access to IRIS confirming that the information in the database was not publically available. The Court finds that Plaintiff was diligent in this case."

On the second factor, the court also found in favor of Imperium: "Plaintiff asserts that through the use of the IRIS database, Plaintiff identified 74 new infringing products and a denial of this motion would prevent Plaintiff from accusing these 74 identified products of infringement. Defendants assert that Plaintiff's demonstrable lack of diligence, including its failure to even purchase the mobile phones that it seeks to accuse of infringement here, calls into question the importance of Plaintiff's amendment. The Court finds that this factor favors granting leave."

Turning to the third factor, the court found that "Plaintiff's amended contentions do not assert new theories of infringement or new patents against any of the Defendants and there would be no need to revisit claim construction or their invalidity contentions. The Court agrees with Plaintiff. This case is set for trial in April 2013, and there is sufficient time to address any additional discovery and have the case ready for trial. The Court finds that Defendants will not be seriously prejudiced by granting leave."

On the last factor, the court also found in favor of the plaintiff and found that a continuance of the trial was not necessary. "The last factor requires the Court to look at the availability of a continuance to cure prejudice. Plaintiff asserts that the amendments will not require a continuance of the trial date. Defendants assert '[a] long continuance, sufficient to address the substantial prejudice caused by Plaintiff's proposed addition of 74 products to this litigation, would derail the case schedule and may jeopardize the April 2013 trial date.' The Court disagrees. The trial is set before Judge Clark in April 2013 and will not be continued. The Court believes that allowing the amendments will still allow sufficient time for the parties to prepare for trial, which is over eight months away, without a continuance. Thus, this factor weighs in favor of granting leave."

Accordingly, the amended infringement contentions were permitted.

Imperium (IP) Holdings, Inc. v. Apple, Inc., et al., Case No. 4:11-CV-163 (E.D. Tex. Aug. 30, 2012)