2019-09-24 Motion for Leavepdf
2019-09-24 Motion for Leavepdf
Page 1 of 7
Jon Scahill shared this file. Want to do more with it?
  1. IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISIONSEMCON IP INC. ) ) Plaintiff, ) ) v. ) Civil Action No. 2:18-CV-00193-JRG ) ) JURY TRIAL DEMANDED ASUSTEK COMPUTER, INC. ) ) Defendant. ) ____________________________________) MOTION FOR LEAVE TO SERVE AMENDED INITIAL DISCLOSURES AND TO PRODUCE DISCOVERY OUT OF TIME On September 16, 2019, Defendant ASUSTeK Computer Inc. (“ASUSTeK”)provided to Plaintiff Semcon IP Inc. (“Semcon”) documentation previously submitted to the U.S. Department of Customs and Border Protection (the “CBP Documents”)relevant to the question whether ASUSTeK imports its products to the United States. The documents show that the product importer is nonparty Asus Computer International, Inc. (“ACI”). Exhibit A. ASUSTeK contends that the CBP Documents are relevant to ASUSTeK’s defenses in this case—in particular, ASUSTeK’s contention that ithas committed no infringing acts within the United States—as explained inASUSTeK’s Second Amended Rule 26 Initial Disclosures, provided to Semcon on September 10, 2019 ASUSTeK’sSecond Amended Rule 26 Initial Disclosures identify three additional persons likely to have factual knowledge related to ACI’s importation of the accused products into the United States: Netty Lee, an employee of ASUSTeK; Jaime Morquecho, an employee of ACI; and ACI’s customs agent. Semcon previously took the deposition of Ms. Lee, ASUSTeK’s Case 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 1 of 7 PageID #: 2540
  2. 230(b)(6) witness, whose designated topics included theimportation issues. Because ASUSTeK’s production of the CBP Documents occurred after the 30(b)(6) deposition, Semconmay wantto re-depose Ms. Lee—as well as ASUSTeK’s other newly-identified witnesses—on the contents of the documents and any new issues they raise regarding the importation of the accused products. ASUSTeKis willing to offer these witnesses for depositionnow—after the close of fact discovery—in view of the importance of the importation issue to the correct determination of the ultimate issue in this case: ASUSTeK’s liability, if any, for thepatent infringement alleged bySemcon.For these and the reasons that follow, ASUSTeKrespectfully seeks leave to formally serve its Second Amended Rule 26 Initial Disclosures and the CBPDocuments and to offer depositions of the ASUSTeK witnesses to Semcon. ARGUMENTA request for leave to modify the scheduling order to allow for additional disclosures or discovery after the deadlines have past requires the movant to show “good cause.”SeeFed. R. Civ. P. 16(b).The following factors are considered in determining whether good cause is shown: (1) the explanation for the failure to provide the disclosures or to complete discoveryin a timelyfashion; (2) the importance of the information in the disclosures or discovery; (3) the potential prejudice in allowing the disclosures or discovery; and (4) the availability of a continuance to cure any prejudice. See Geiserman v. MacDonald, 893 F.2d 787, 790 (5th Cir. 1990).Application of these factors strongly favors leave. First, as an initial matter, ASUSTeK concedes that both the additionalinformationcontained in ASUSTeK’s Second Amended Rule 26 Initial Disclosures and the CBP Documents should have been provided earlier in this case. New counsel for ASUSTeK, Chen Malin LLP, began efforts to obtain the CBP Documents Case 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 2 of 7 PageID #: 2541
  3. 3within one week of being engaged inthis case, and very quickly contacted Semcon counsel in an attempt to reach agreement regarding the CBP Documents and depositions (albeit unsuccessfully). The documents were received from third party customs brokers on Thursday, September 12, 2019 and were provided to Semcon on Friday, September 13, 2019, with one additional document produced Monday, September 16, 2019. The Second Amended Rule 26 Initial Disclosures, identifyingadditional persons as having knowledge about the importation issue, were provided on September 10, 2019.Shortlythereafter, ASUSTeK brought the instant motion for leave to formally serve the new amendeddisclosures and the CBP Documents and to offer depositionsof the new persons identified in the amended disclosures.Second, it is difficult to overstate the importance of the new information and discovery to the crucialissue of liability. Because the accused products are designed and manufactured in Asia, ASUSTeK’s liability turns on whether Semcon can show that it imports the accused products into the United States or sells the accused products in the United States.The new information providedin the Second Amended Rule 26 Initial Disclosures and in the CBP Documents shows that ASUSTeK does neither. Instead, it is ACI that performs these functions.Therefore, ASUSTeK, the only named defendant in this case, cannot be held liable for the infringement alleged by Semcon. Prohibiting the use of thenew information and discovery would exclude evidence on the decisive question of ASUSTeK’s United Statesactivities, and to a large extent act to strike a potentially case-dispositive defense. Courts have traditionally been hesitant to order such a result. See Bey v. Hood, No. 6:19-CV-00227-JDK, 2019 U.S. Dist. LEXIS 144074, at *5(E.D. Tex. Aug. 23, 2019).Third, the new informationcontained in the amended disclosures and documents do not present a new claim or defense and cannot reasonably be described as an unfair surprise. This Case 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 3 of 7 PageID #: 2542
  4. 4information pertainstoASUSTeK’scontentions previously disclosed in ASUSTeK’sFirst Amended Rule 26Initial Disclosures, served over two months ago, as well as in ASUSTeK’s answer and interrogatory responses.It is also notable that documents nearly identical to the CBP Documents were produced by ASUSTeK to Mariner IC in the case of Mariner IC, Inc. v. Asustek Computer, Inc., No. 2:18-cv-00069-JRG (E.D. Tex.). Mariner IC and Semcon are sister corporations, under common ownership by Quest IP, ExhibitB(pages from Quest ICForm 8-k at Sec. 1.01(i)), and Mariner IC is represented by exactly the same counsel who represents Semcon in this case, the Brown Rudnick firm. Thus, it is reasonable to assume that (1) Semcon was and is fully aware that ACI is the importer of the accused ASUSTeK products as shown in CBP Documents produced in that case and (2) Semcon’s counsel were and are equally aware of this fact. Thus, production of the CBP Documents resulted in little or no surprise in this case.In order to mitigate any perceivedprejudice that Semconmay allegeas a result of the new information in the Second Amended Rule 26 Initial Disclosures or the CBP Documents, ASUSTeK requests permission to make Jaime Morquecho and ACI’s customs broker availablefor depositions on the importation issue and to make Ms. Lee available for a follow up deposition.1This deposition would be the least severe remedy to ensure compliance with the Court’s case management orders. See Moore v. Hernandez, No. 2:17-cv-531, 2018 U.S. Dist. LEXIS 225928, at *7-8(E.D. Tex. Mar. 6, 2018)(allowing late supplementation of an expert report because the non-movants “do not point to any specific prejudice that could not be remedied by, among other things, additional deposition hours and vigorous cross examination”); Slabisak v. Univ. of Tex. Health Sci. Ctr., No. 4:17-cv-597, 2017 U.S. Dist. LEXIS 171636, at 1ACI’s customs broker will be offered for the purpose (if necessary) of authenticating and laying foundation for the CBP Documents.Case 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 4 of 7 PageID #: 2543
  5. 5*11-12 (E.D. Tex.Oct. 4, 2018)(“[T]he Court’s discovery policy should enable the parties to cure any prejudice caused by UTHSCT’s late production of Henry’s notes.”).ASUSTeKis prepared to cover all reasonable out of pocket travel costs related to the depositions.Finally, rather than request an amendment to the Docket Control Order or a continuance for trial, ASUSTeKrequests leave to offer thedepositionsof its witnesses after the July 15 discovery cutoff. The three-month period before trial leaves ample time to conduct a subsequent deposition and allow for Semconto consider the CBP Documentsand cross examineASUSTeK on those documents at trial.CONCLUSIONIn conclusion, ASUSTeK respectfully requests that the Court grant it leave to formally serve its Second Amended Rule 26 Initial Disclosures and the CBPDocuments and to offer a second deposition of Netty Lee, along with depositions of Jaime Morquecho and ACI’s customs broker, on the importation issue and the contents of the CBP Documents.Granting this motion would not result in any unfair prejudice to Semcon, would promote the interests of justice by allowing the jury to render a verdict on allmaterial evidence, and would not alter the scheduled date for trial. If granted, ASUSTeKwill agree to cover all reasonable travel costs regarding the witness’deposition. Case 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 5 of 7 PageID #: 2544
  6. 6Dated: September 18,2019Respectfully submitted,/s/ Steven C. MalinLi Chen (TX Bar No. 24001142)Steven C. Malin (TX Bar No. 12859750)Kristoffer Leftwich (TX Bar. No. 24046285)CHEN MALIN LLP1700 Pacific AvenueDallas, Texas 75201Tel: (214) 627-9950Fax: (214) 627-9940Lchen@chenmalin.comSmalin@chenmalin.comKleftwich@chenmalin.comMelissa R. Smith Gillam & Smith, LLP 303 South Washington Avenue Marshall, Texas 75670 (903) 934-8450 (903) 934-9257 –fax Melissa@gillamsmith.comAttorneys for Defendant ASUSTeK Computer, Inc.CERTIFICATE OF SERVICEThe undersigned certifies that the foregoing document was filed electronically in compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and correct copy of the foregoing document by electronic mail on September 18, 2019./s/ Steven MalinCase 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 6 of 7 PageID #: 2545
  7. 7CERTIFICATE OF CONFERENCEOn September 16, 2019, counsel for ASUSTeKComputer, Inc. conferred by telephone withcounsel for Semcon IP Inc. regarding this Motion.Attorneys whoattended the meet and conferare:For ASUSTEKoLi Chen (lead counsel)oMelissa SmithoTom GorhamFor SemconoFred Fabrikant (lead counsel)oPeter LambrianakosoKurt TrueloveCounsel for ASUSTeK confirms thatthat, after good faith efforts, no agreement could be reached and the parties are at an impasse. Agreement could not be reached because Semcon does not believe ASUSTEK is entitled to the relief that it seeks.Accordingly, this Motion is presented to the Court for consideration./s/Steven MalinCase 2:18-cv-00193-JRG Document 113 Filed 09/24/19 Page 7 of 7 PageID #: 2546
We use cookies to provide, improve, protect and promote our services. Visit our Privacy Policy and Privacy Policy FAQs to learn more. You can manage your personal preferences, including your ‘Do not sell or share my personal data to third parties’ setting using the “Customize cookies” button below.