After Aylus timely served the report of its technical expert, Daniel Schonfeld, and Apple deposed the expert, Aylus served a "First Supplemental Expert Report of Dan Schonfeld" at the end of the expert discovery period. Apple then filed a motion to exclude the Supplemental Report on the grounds that (1) it was untimely because it contained new opinions regarding joint infringement that could have, and should have, been raised in Dr. Schonfeld's opening report, (2) that Aylus had no justifiable excuse for the delayed disclosure, and (3) that Apple was prejudiced by the Supplemental Report.

The district court rejected Apple's first argument because Apple conceded that the Federal Circuit's en banc opinion in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015), which Aylus claimed provided the basis for the Supplemental Report, "modified one aspect of" the control or direction standard for joint infringement. "On a claim for direct infringement of a method patent, the court will hold an entity responsible for others' performance of method steps under two circumstances: (1) where that entity directs or controls others' performance, and (2) where the actors form a joint enterprise." Id. at 1022. The Federal Circuit held that in cases turning on the first ground, "liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance." Id. at 1023. In such cases, "the third party's actions are attributed to the alleged infringer such that the alleged infringer becomes the single actor chargeable with direct infringement." Id.

The district court then concluded that "[i]n light of Apple's concession and the timing of the Akamai decision, Apple's argument that Dr. Schonfeld's Supplemental Report is untimely is unpersuasive. He could not have included opinions based on an August 13, 2015 decision in a report that was due on August 7, 2015. . . . The supplemental report at issue in that case was not preceded by a change in 'one aspect' of the relevant law. See id. Rather, the supplemental report was offered because the expert had made the deliberate decision to use a simplified model. Id. It is difficult to see how Dr. Schonfeld could have made a deliberate decision not to base his opinions on a court decision that was not issued until August 13, 2015, after the deadline for his opening report. In any event, the Supplemental Report was served prior to the original deadline for expert discovery, September 29, 2015, and well before the extended deadline of October 16, 2015, which coincides with the date the parties were scheduled to continue day two of Dr. Schonfeld's deposition."

The district court also rejected Apple's second argument. Apple "contends that Aylus has no justifiable excuse for the timing of the Supplemental Report because even if characterized as a rebuttal to the non-infringement opinions of Apple's expert, Dr. Polish, Dr. Schonfeld's opinions should have been raised in his opening report, as Aylus bears the burden of proof on the issue of infringement. (Joint Ltr. at 4.) Again, this argument ignores the timing of the Akamai decision."

Finally, the district court rejected Apple's third argument. "Apple claims that it is prejudiced by the Supplemental Report because Aylus is effectively circumventing the presiding judge's scheduling order and will not have an opportunity to respond.4 (Id. at 4-5.) Here, however, Dr. Schonfeld's Supplemental Report is harmless. Apple has indicated that it was scheduled to continue the second day of Dr. Schonfeld's deposition on October 16, 2015, and it has not argued that it would not have an adequate opportunity to question Dr. Schonfeld about his Supplemental Report, or any questions he did not adequately answer during his September 23 deposition, on that day."

Accordingly, the district court denied the motion to exclude the supplemental report.

Aylus Networks, Inc. v. Apple Inc., Case No. 13-cv-04700-EMC (KAW) (N.D. Cal. Oct. 30, 2015)