Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)

Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.

In the first order, he denied plaintiff's request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. Magistrate Grewal disagreed and noted that plaintiff's proposed contentions say nothing about the supposed new information learned at the deposition and instead are based on allegations focused generally on the sales of handset themselves—allegations that are found in plaintiff's original complaint. Since plaintiff originally pleaded a contributory infringement theory and then abandoned it in its preliminary infringement contentions, plaintiff cannot amend its infringement contentions to reassert this theory again without identifying specific new material to a new theory. As for the four new products plaintiffs seek to add, Magistrate Grewal only allowed two new products to be added because they were newly released products that could not have been identified earlier. As for the other two products, Magistrate Grewal found that plaintiff could have discovered these products had it acted with the requisite diligence and therefore denied plaintiff's request to add these two new products.

In the second order, Magistrate Grewal denied defendants' motion to stay the cases pending inter partes review proceedings that had been initiated as to some, but not all, asserted claims. First, Magistrate Grewal stated that the cases are in their "advanced stage": the court has construed the claims three times, the parties have exchanged voluminous documents, fact discovery is set to close in one month, and trial is under a year away. These factors all weigh against granting a stay. And second, it is unlikely the stay will simply the issues in these cases because fewer than 25% of the claims are subject to the inter partes review. Thus, while a stay would not unduly prejudice plaintiff, Magistrate Grewal nevertheless found that a stay was inappropriate given the two aforementioned factors.

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