Texas Round-Up: December 2024

Three subjects stood out in patent litigation in Texas in December 2024: (1) knowledge of related patents, general patent portfolio, or other asserted patents do not establish the knowledge requirement for pre-suit indirect and willful claims; (2) a Rule 30(b)(6) corporate witness must testify on behalf of the organization regardless of whether factual questions may also relate to an expert’s opinion; and (3) waiting until after the deadline for serving invalidity contentions before starting to search for system prior art could preclude a defendant from amending its contentions to include the late-discovered system prior art.

Dialect, LLC v. Bank of America, NA, 2-24-cv-00207 (Dec. 4, 2024, E.D. Tex.) (Gilstrap, J.)

The court granted the defendant’s motion to dismiss the plaintiff’s claims for pre-suit induced, contributory, and willful infringement because the plaintiff failed to sufficiently plead the “knowledge” requirement for those claims. Judge Gilstrap stated that “Plaintiff’s argument that Defendant knew of a related patent application does not plausibly show that Defendant knew of the asserted patents.” Id. at 5. Judge Gilstrap further noted that “Plaintiff’s argument that Defendant learned of the asserted patents when it met with the asserted patents’ prior owner is also insufficient.” Id. (emphasis in the original). He also explained that “Plaintiff’s pre-suit letter is insufficient to establish pre-suit knowledge … [because the] letter did not identify the asserted patents, did not identify the asserted patents’ owner, and did not claim or allege that Defendant was infringing.” Id.

Monterey Research, LLC v. Renesas Electronics Corporation et al., 2-24-cv-00238, (Dec. 4, 2024, E.D. Tex.) (Gilstrap, J.)

The court granted in part the defendant’s motion to dismiss the plaintiff’s claims for pre-suit induced infringement for one of the asserted patents and determined that the plaintiff brought a plausible claim as to some asserted patents, but not the patent at issue. Judge Gilstrap explained that:

Plaintiff has failed to plead facts plausibly showing that [Defendant] knew of the ’688 Patent before this lawsuit. Plaintiff’s allegations regarding pre-suit correspondence with [Defendant] are limited to the [other asserted] Patents. Plaintiff does not allege or argue that [Defendant] was willfully blind to support its allegation of pre-suit knowledge of the ’688 Patent. Accordingly, under these specific facts, the Court finds that Plaintiff fails to state a claim for pre-suit induced infringement of the ’688 Patent.

Id. at 7.

Active Wireless Technologies LLC v. T-Mobile USA, Inc. et al., 2-23-cv-00261 (Dec. 13, 2024, E.D. Tex.) (Gilstrap. J.)

The court granted a motion to compel a Rule 30(b)(6) deposition of the plaintiff’s corporate witness when in his deposition he either refused to answer questions or seemed genuinely uneducated about some deposition topics. Judge Gilstrap explained that:

A corporate witness cannot avoid answering factual questions because those questions may also relate to an expert’s opinion—the corporate witness is obligated to testify for the organization. . . . While Plaintiff focuses on [the witness’s] personal knowledge, Plaintiff seems to misunderstand the purpose of a 30(b)(6) witness. A 30(b)(6) witness does not testify simply to his or her personal knowledge. A 30(b)(6) witness testifies on behalf of an organization, and the witness must testify about information known or reasonably available to the organization.”

Id. at 5 (emphasis in the original) (internal quotation omitted).

Longitude Licensing Limited v. BOE Technology Group Co., Ltd., 2-23-cv-00515 (Dec. 19. 2024, E.D. Tex) (Payne, M.J.)

The court denied the defendant’s motion to amend its invalidity contentions to include a system prior art because the defendant failed to show diligence or a lack of prejudice to the plaintiff. Magistrate Judge Payne explained that:

The Court understands that the process of identifying and analyzing system prior art can be difficult and costly and thus defendants might choose to prioritize their searches on easier to locate and cheaper products. At the same time, the Court does not believe that Defendants may use this process to skirt the Court’s deadlines by conducting searches for new products that only begin after the deadline.

Id. at 2. Magistrate Judge Payne also noted that because the close of fact discovery and opening expert reports were due in a little over a month, the defendant’s “late amendments prejudice Plaintiff’s ability to respond to them.” Id.