Discovery Category Archives — Patent Lawyer Blog Published By Patent Lawyer

Published on: September 14, 2026

After $9.4 Million Willfulness Verdict, District Court Grants Permanent Injunction and Attorneys’ Fees Based on Defendant’s Litigation Conduct

A federal district court in Texas has granted a patent owner a permanent injunction, more than $4.5 million in pre-judgment interest, and its attorneys’ fees following a willful infringement verdict. The district court based the fee award on the defendant’s litigation conduct, including its repeated reliance on a prior art reference the district court had stricken.

In SnapRays, LLC dba SnapPower v. American Tack & Hardware Company, Inc., Chief Judge Reed O’Connor of the Northern District of Texas resolved the parties’ post-trial motions after a May 2026 trial in which a unanimous jury found that each of the asserted claims of SnapPower’s patents was valid and willfully infringed by American Tack, and awarded SnapPower $9,423,533.52 in damages. The patents cover powered cover plates that draw power through prongs or clips without being hardwired.

On the permanent injunction, the district court found SnapPower “can readily demonstrate the four eBay factors.” The trial record showed that American Tack and SnapPower are the two major players in the powered cover plate market, that SnapPower entered the market first with a popular novel product, and that American Tack’s “own executive suite repeatedly stated in emails—emails it was reticent to produce in discovery—that it was eager to copy the novel product but was aware that SnapPower’s products were likely covered by patent protections.” The entry of American Tack’s accused products coincided with a precipitous fall in SnapPower’s sales, and because SnapPower initially sold direct-to-consumer, American Tack “had cornered the market with infringing products” by the time SnapPower approached large retailers. The district court found reputational harm in the market could not be adequately redressed with legal remedies because “[i]t is difficult to quantify lost market share, brand recognition, and customer goodwill.”

Published on: August 31, 2026

District Court Denies Leave to Amend Invalidity Contentions Based on Prior Art Found by AI Search Tool

by Stan Gibson

A federal district court in California has denied a defendant’s motion for leave to amend its preliminary invalidity contentions to add two prior art references located by an AI-assisted patent search tool, finding that the defendant failed to show diligence in discovering the references before the contention deadline.

In Pacem IP Holdings, LLC v. Maxim Lighting International, Inc., the district court denied Maxim’s motion ruling that the availability of a new search tool does not excuse a party from explaining why it could not have found the art earlier through reasonable diligence.

Pacem sued Maxim in October 2025, asserting four patents directed to LED lamps. The Court’s Civil Trial Order set an April 13, 2026 deadline for preliminary invalidity contentions, which Maxim met by identifying five prior art references and serving nine claim charts.

Published on: December 15, 2025

Samsung Advances in Alter Ego Discovery for Jurisdiction: Court Orders Production and Depositions in CM HK Dispute Where Affiliates Used Common Servers

by Stan Gibson

In a significant development for declaratory judgment actions involving jurisdictional challenges, a Northern District of California Magistrate Judge has ruled in favor of Samsung Electronics in its ongoing dispute with CM HK Ltd. The order from the court resolves key discovery issues, compelling document production from shared corporate resources and additional depositions to probe alter ego allegations. This ruling highlights the scrutiny courts apply to intertwined corporate structures in patent litigation, particularly when personal jurisdiction is at stake.

The case centers on Samsung’s bid for declaratory relief against CyWee Group Ltd.’s patent claims related to motion-sensing technology. After dismissing CyWee voluntarily and granting CM HK’s motion to dismiss for lack of personal jurisdiction, Judge Tigar allowed amendment and limited jurisdictional discovery focused on Samsung’s alter ego theory—that CM HK operates as CyWee’s extension in California, justifying jurisdiction via CyWee’s California contacts.

Under California law, alter ego requires unity of interest and ownership, plus a risk of injustice from treating entities separately. Relevant factors include commingling of assets, shared employees and offices, and disregard of corporate formalities. Judge Tigar noted colorable claims of asset manipulation between CM HK and CyWee, warranting discovery into their relationship.

Published on: May 9, 2025

Court Orders Production of Litigation Funding Agreements in Patent Case: Implications for Witness Bias

by Stan Gibson

Recent Decision Highlights Discoverability of Funding Arrangements

In a recent discovery dispute in the Northern District of California, Judge Sallie Kim has ordered the plaintiff to produce litigation funding agreements, finding them relevant to potential witness bias. The April 29, 2025 order in Correct Transmission, LLC v. Juniper Networks Inc (Case No. 21-cv-09284-RFL) provides important guidance on when litigation funding arrangements may be discoverable despite work product protection claims.

Case Background

The case involves patent infringement claims brought by Correct Transmission against Juniper Networks. The patents-in-suit have an interesting ownership history, having changed hands multiple times before the current litigation:

Originally owned by Orckit Communications (co-founded by CEO Izhak Tamir)
After liquidation, purchased by Orckit IP in 2015 (funded by Tamir)
Later assigned to Correct Transmission for enforcement and licensing
Correct Transmission then entered into litigation funding agreements to monetize the patents

The dispute centered on whether these litigation funding agreements should be produced to the defendant.

Published on: April 13, 2023

Masimo v. Apple: District Court Excludes Lost Profits Damage Theory for Failure to Disclose

by Stan Gibson

In this patent infringement action, Apple moved to exclude Masimo’s damage theory on lost profits for failure to disclose during discovery. As explained by the district court, Masimo presented its lost profits theory based on the equation: “Lost profits = Apple Watch units sold x Masimo’s per-unit profit.” Masimo claimed that the equation breaks down and is supported as follows:

Apple Watch units sold from Q4 2018 to Q1 2023 (i.e., from the first sale of an Apple Watch to present), including Series 4-7
Masimo’s sensor module price of $100
Masimo’s gross profit margin (overall as a company) of 65% (or, alternatively, subtracting the cost to build each sensor module from the $100 price)

The district court analyzed whether each of these “building blocks” were adequately disclosed by Masimo.

With respect to the first building block, sold units of Apple Watches, the district court determined “that Plaintiffs did not disclose during fact or expert discovery (1) the subset of Apple Watch models and sales units on which they now intend to rely at trial; or (2) an explanation of why this subset of units properly informs lost profits.” Masimo’s reliance on Apple’s disclosure of total watches sold was insufficient because Massimo was not contending that all watches were part of the lost profits theory. Continue reading

Published on: July 7, 2022

District Court Determines That A “Decent Patent Lawyer” Would Have Responded To Requests For Admissions To Preserve Objections Even If Client Was Not Available When Responses Were Due

by Stan Gibson

In this patent infringement action, Plaintiff Eagle Eyes Traffic Industry USA Holding LLC (“Eagle Eyes”) filed a motion for an order compelling Defendant E-Go Bike LLC (“E-Go”) to provide responses to Eagle Eyes’ requests for production of documents (“RFPs”), interrogatories (“rogs”), and requests for admission (“RFAs”). After noting that E-Go’s counsel conceded that the requests were properly served by e-mail, the court addressed E-Go’s explanation for failing to respond to the discovery:

E-Go’s explanation for its failure to respond is that the company ceased operations toward the end of last year, and it was difficult for U.S.-based counsel to obtain information from the pertinent former E-Go employee due to Covid lockdown in Shanghai and surrounding cities. That is a reasonable explanation for why it was difficult to produce documents or provide substantive information that counsel did not possess. But it does not constitute an explanation for why U.S. counsel based in Pleasanton, California did not serve written responses and objections. Drafting objections is an exercise of legal judgment under U.S. law, and a Chinese ex-employee would have been no help with that anyway.

The court then turned to appropriate remedies. The court noted that there was no good cause for failing to submit objections to requests (even if substantive responses could not have been provided) and therefore found that any objections to requests were now waived. Continue reading

Published on: January 19, 2021

District Court Extends Fact Discovery Deadline to Permit Additional Inspection of Source Code prior to Submission of Expert Reports

by Stan Gibson

In this patent infringement action, Plaintiff Personalized Media Communications, LLC (“PMC”) filed a motion seeking (1) a court order compelling Defendant Netflix Inc. (“Netflix”) to provide PMC with on-site access to Netflix’s source code after the close of fact discovery or, in the alternative, (2) an extension of the fact discovery deadline to allow review of the source code. Netflix opposed the motion asserting that PMC should have completed review of the source code prior to the close of fact discovery and that there was no good cause to extend the fact discovery deadline.

In support of its positon, PMC did not cite to any case law that supported its argument that a party producing confidential source code through on-site access procedures must allow further review of this source code after the fact discovery deadline. The district court did not find persuasive the cases cited by PMC, which concern inspection of physical sites rather than review of confidential source code. Continue reading

Published on: April 9, 2019

Magistrate Judge Recommends Denial of Motion to Amend Final Infringement Contentions Where Plaintiff Should Have Sought Additional Information in Discovery

by Stan Gibson

Plaintiff, Fox Factory, moved to amend its final infringement contentions, asserting that the defendant, SRAM, LLC, had failed to produce relevant information regarding its custom “BRAIN” product that had delayed Fox Factory from learning that the BRAIN product infringed the patent-in-suit. SRAM opposed the motion and contended that Fox Factory was well aware of the BRAIN product before the amendment deadline and that SRAM had no obligation to craft or intuit Fox Factory’s infringement position.

In analyzing whether there was good cause to permit the amendment, the court first looked at whether Fox Factory was diligent—and found that it was not. “Strikingly, Plaintiff’s arguments sidestep its own knowledge—and when it gained such knowledge—about the existence and functionality of Defendants’ customized BRAIN shock for Specialized. Instead, FOX Factory seeks to direct the court’s attention to Defendants’ discovery shortcomings. But in considering good cause, this court first focuses on whether the original deadline could have been met with reasonable diligence by Plaintiffs, not any bad faith by Defendants. Colorado Visionary Academy, 194 F.R.D. at 687. Using this framework, based on the record before it, this court is not persuaded that FOX Factory exercised adequate diligence to warrant amendment of its Final Infringement Contentions at this late juncture.”

In reaching the conclusion that Fox Factory was not diligent, the court specifically noted that “FOX Factory carefully never argues it only learned of Defendants’ BRAIN shock at the end of the discovery period. Indeed, the record before this court belies any suggestion that FOX Factory’s knowledge of the BRAIN shock was dependent upon Defendants’ disclosures late in discovery. And while FOX Factory vigorously argues that it was diligent in pursuing Defendants’ identification of all its rear shock products so that it could pursue discovery and understand the full scope of infringement, Plaintiff never cogently explains why its own internal document related to competitive analysis from September 28, 2017 is insufficient to constitute knowledge of the BRAIN product and trigger its own independent obligation to diligently pursue discovery on the topic.”

Published on: March 5, 2019

District Court Denies Motion to Stay Pending Resolution of Dispositive Motion

by Stan Gibson

In this patent infringement action, the defendant, Playmonster LLC (“Playmonster”), requested that the district court stay discovery during the pendency of its forthcoming dispositive motion. As part of its request, Playmonster contended that a dispositive motion “would be the most efficient resolution of this case,” and that a stay of discovery would promote judicial efficiency and conserve the Parties’ resources, which would include reducing the attorney’s fees that would be spent on the case should the dispositive motion be granted.

The plaintiffs, Quality Innovative Products, LLC (“Quality”), opposed the stay of discovery in the case. As its main argument, the plaintiffs asserted that the case was filed over a year ago, “and the Defendant has enjoyed substantial delay already while it pursued a first dispositive motion” that it used “as an excuse not to comply with its discovery obligations.” Quality further argued that they “should not have to piece meal litigation for the convenience of the Defendant.” Quality also asserted that they oppose filing of dispositive motions until discovery closes.

The district court concluded that a stay of discovery was inappropriate. “The court is disinclined to stay discovery pending the filing of a dispositive motion. While Defendant may file a dispositive motion at any time it deems appropriate on or before the set deadline, the court’s practice standards do limit parties to one dispositive motion without leave of the court. See NYW Civ Practice Standards 56.1. In addition, leave to file additional dispositive motions is only granted in exceptional circumstances. See id. Further, stays of discovery in this District are generally disfavored, see Church Mut. Ins. Co. v. Coutu, No. 17-CV-00209-RM-NYW, 2017 WL 3283090, at *2 (D. Colo. Aug. 2, 2017), and nothing in the record before the court at this juncture justifies a stay.”

Published on: March 1, 2019

TC Technology v. Sprint: District Court Grants Motion to Amend Complaint to Add Willfulness Claim Finding Good Cause Based on Deposition Testimony

by Stan Gibson

TC Technology filed a patent infringement action against Sprint alleging that Sprint infringed a patent pertaining to wireless services used on an LTE network. The complaint did not allege willful infringement.

171030-JMBM-14-Jill-Skinner-001-300x269 During discovery, Sprint responded that it had received an email several years before the lawsuit was filed with an offer to purchase the patent-in-suit. An attachment to the email identified and described the patent-in-suit. Although the general counsel for Sprint forwarded the email and attachment to several Sprint employees, Sprint explained that it believed the attachment was never opened. TC Technology took the deposition of one of these employees and then filed a motion to amend the complaint to add a claim for willful infringement. Because the motion was filed after the cut-off established to amend the pleadings, TC Technology could not amend the complaint without a showing of good cause.

During deposition, the Sprint witness (Mr. Ball) testified that “there was no way to verify one way or the other” whether the attachment had been opened, other than the recollections of himself, Mr. Wunsch, and Mr. Cowan that it was not opened. As explained by the district court, Mr. Ball also testified that he did not think he, Mr. Wunsch, or Mr. Cowan would have opened the attachment in the normal course of business.