Reported / Citable
Background
Impulse Downhole Solutions Ltd. and Impulse Downhole Tools USA Ltd. sued Downhole Well Solutions, LLC for patent infringement. Under the court’s scheduling order, Impulse was required to serve preliminary infringement contentions by December 1, 2023.
DWS voluntarily produced technical documents on November 29, two days before that deadline, and produced a more extensive set on December 15 after Impulse identified deficiencies. Impulse served its original contentions on December 1, then served amended contentions on December 27 incorporating information from DWS’s document productions. DWS moved for summary judgment based on the original contentions, while Impulse alternatively sought leave to amend.
The Court’s Holding
Judge Keith P. Ellison held that Southern District of Texas Patent Rule 3-6 allowed Impulse to amend its preliminary infringement contentions without leave of court. The rule permits amendment when technical materials produced under Patent Rule 3-4 give the infringement claimant good cause to amend, provided the amendment is served within a reasonable time.
The court found the December 27 amendment timely: it came within 30 days of the November 29 production and within 14 days of the December 15 production. The court rejected DWS’s position that materials produced shortly before the original-contentions deadline had to be incorporated by that deadline. It also held that the scheduling order’s reference to Patent Rule 3-7 did not displace Rule 3-6’s exception. Because the amended contentions were proper, Impulse’s leave motion and DWS’s summary-judgment motion, which attacked the prior contentions, were both denied as moot.
Key Takeaways
- Patent Rule 3-6 permits amendment of preliminary infringement contentions without leave when later-produced technical material provides good cause.
- A production shortly before the contentions deadline does not eliminate the rule’s requirement that the patentee receive a reasonable time to amend.
- A summary-judgment motion directed solely to superseded infringement contentions may become moot after a proper amendment.
Why It Matters
The decision applies the Patent Rules pragmatically and rejects an interpretation that would pressure parties to analyze and incorporate newly produced technical material immediately before a contentions deadline. It also confirms that a scheduling order requiring leave under Patent Rule 3-7 remains subject to Rule 3-6’s express exception.