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.