SFA Systems v. Amazon: SFA Permitted to Amend Infringement Contentions Where Amendment Would Streamline Discovery and Prejudice to Amazon Would Be Minimal
SFA Systems ("SFA") filed a patent infringement action against Amazon and twenty-six other defendants in 2011. SFA subsequently timely served its infringement contentions pursuant to the local rules in the Eastern District of Texas. After receiving discovery from Amazon, SFA requested that Amazon supplement its discovery responses to produce documents relating to the Kindle Fire and the Amazon Mobile application. Amazon declined to do so on the basis that the Kindle Fire and the Amazon Mobile app were not accused in the infringement contentions. After several attempts to meet and confer, SFA sought to amend its infringement contentions.
As explained by the district court, the local Patent Rule 3-6 sets forth the procedures for amending infringement contentions. This rule provides that infringement contentions. "shall be deemed to be...final contentions." Patent Rule 3-69a). When a party seeks to amend or supplement its invalidity contentions and considers four factors in ruling on motions for leave to do so: (1) the explanation for the party's failure to meet the deadline; (2) the importance of the thing that would be excluded; (3) the potential prejudice in allowing the thing that would be excluded; and (4) the availability of a continuance to cure such prejudice. Global Sessions LP, 2012 WL 1903903, at *2 (citing S & W Enters., L.L.C. v. Southtrust Bank of Ala., NA, 315 F.3d 533, 536 (5th Cir. 2003)).