Optics Innovation, LLC v. Samsung Electronics, Co. Ltd. et al, No. 2:24-cv-01048 (E.D. Tex. Jan. 16, 2026)

Before the Court is the Partially Opposed Motion for Leave to Supplement Invalidity Contentions to Add One Prior Art Reference and Otherwise Clarify Invalidity Positions (the “Motion”) filed by Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Defendants,” or “Samsung”). (Dkt. No. 45.) Having considered the Motion and related briefing, the Court finds that it should be and hereby is GRANTED.

I. BACKGROUND

Plaintiff Optics Innovation (“Plaintiff” or “Optics”) filed the above-captioned action against Samsung on December 13, 2024, asserting infringement of U.S. Patent Nos. 10,623,705 (the “’705 patent”) and 10,687,708 (the “’708 patent”). (Dkt. No. 1.) Optics filed an amended complaint, which remains operative in this case, on August 7, 2025. (Dkt. No. 41.)

Optics served its infringement contentions on March 12, 2025. (Dkt. No. 24.) In response to Optics’ identification of four different provisional patent applications filed on three separate dates for the ’708 patent, Samsung served interrogatories on April 28, 2025, requesting further information on these dates. (Dkt. No. 45 at 3, citing Dkt. No. 45-4 at 15.)

2Samsung served its invalidity contentions on May 21, 2025, and included a statement that its contentions “may change defending on… any findings as to the priority date of the Asserted Claims.” (Dkt. No. 45-5 at 4.) Optics responded to Samsung’s April 28 interrogatories after Samsung’s invalidity contentions had been served, but its responses to the interrogatories seeking information on the priority date of the ’708 patent consisted of objections. (Dkt. No. 45 at 4, citing Dkt. No. 45-6 at 47-54.)

On September 10, 2025, Samsung sought Optics’ position on Samsung’s anticipated motion to amend its invalidity contentions, specifically stating it “intend[ed] to file a motion to amend its invalidity contentions to include claim charts for U.S. Patent No. 8,872,910” (“Vaziri-910”)—another patent owned by Optics, with the same named inventor as the two Asserted Patents. (Dkt. No. 45-7; Dkt. No. 46 at 1.) On September 16, 2025, Optics informed Samsung that it would oppose Samsung’s supplementation of its invalidity contentions. (Dkt. No. 46-1.) The parties met and conferred on this issue on October 1, and Samsung provided its proposed supplemental invalidity contentions to Optics for its review on October 2. (Dkt. No. 45 at 6.)

Additionally, on September 17, 2025, Optics notified Samsung of perceived deficiencies in Samsung’s invalidity contentions. (Dkt. No. 45-2.) This communication stated that Optics “requests that Defendants promptly amend their contentions to address these deficiencies.” (Id. at 1.) The September 17, 2025 communication does not mention or invite Samsung to add Vaziri-910 to its contentions.

On October 17, 2025, Samsung filed the instant Motion. (Dkt. No. 45.) The parties’ first deadline regarding claim construction fell on October 21, 2025, and the Markman hearing in this case is scheduled for February 24, 2026. (Dkt. Nos. 37, 53.)

3II. LEGAL STANDARD

Any amendment or supplementation of invalidity contentions that is not expressly permitted by P.R. 3-6(a) is permitted only by order of the Court upon a showing of good cause. See P.R. 3-6(b). The Court considers four factors to determine whether good cause exists: “(1) the reason for the delay and whether the party has been diligent; (2) the importance of what the court is excluding and the availability of lesser sanctions; (3) potential prejudice in allowing the amendment; and (4) the availability of a continuance to cure such prejudice.” KAIST IP US LLC v. Samsung Electronics Co., Ltd., No. 2:16-cv-01314-JRG-RSP, 2018 WL 1806765, at *2 (E.D. Tex. Apr. 17, 2018) (internal citations omitted).

Diligence is a prerequisite for showing that there is good cause to amend. See, e.g., WellcomeMat LLC v. Aylo Holdings S.à r.l, No. 2:23-cv-00483-JRG-RSP, 2024 WL 3586431, at *1 (E.D. Tex. July 29, 2024) (“‘Good cause,’ according to the Federal Circuit, ‘requires a showing of diligence.’”) (citing O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006)).

III. ANALYSIS

Samsung seeks leave to make multiple amendments to its invalidity contentions as set forth in Dkt. Nos. 45-8, 45-11, and 45-12. Optics had agreed not to oppose some of these changes prior to Samsung’s filing the Motion (see Dkt. No. 45 at 6) and did not oppose any amendment other than the inclusion of Vaziri-910 in its responsive briefing (see generally Dkt. Nos. 46, 49). Accordingly, leave to make all amendments requested by Samsung in the Motion other than the inclusion of Vaziri-910 is GRANTED as unopposed.

Additionally, the Court finds that Samsung’s requested leave to amend its invalidity contentions to include the Vaziri-910 prior art should be GRANTED as well.

4A. Samsung Has Been Diligent in Seeking Inclusion of Vaziri-910

The majority of the parties’ briefing focuses on Samsung’s diligence in seeking its inclusion of Vaziri-910. Samsung asserts that it has been diligent because it “pursued information from Plaintiff concerning the priority date that Plaintiff contends the asserted claims are entitled to” and provided its proposed amendments to Optics immediately upon request. (Dkt. No. 45 at 7-8.) Samsung argues that the time it spent serving interrogatories regarding the priority date, identifying flaws in Optics’ infringement contentions that would necessitate supplementation, and then “tryi[ng] to address issues raised by Optics in an effort to avoid unnecessary motion practice before bringing this dispute to the Court” all demonstrate sufficient diligence. (Dkt. No. 45 at 7; Dkt. No. 47 at 3 n.1.) It further asserts that “[a]lthough Optics may argue that the Vaziri-910 claim charts are unrelated to [Optic’s September 17] requests [for supplementation], Samsung disagrees.” (Dkt. No. 45 at 8.)

Optics responds that Samsung’s delay of at least three months between when it learned of Vaziri-910 and when it informed Optics of its intent to amend, as well as its further delay in filing for another month after getting Optics’ objection to the amendment, demonstrate a lack of diligence. (Dkt. No. 46 at 3-4.) It further asserts that whatever confusion Samsung may have had about the priority date of the ’708 patent does not excuse or explain Samsung’s lack of diligence in seeking to amend invalidity contentions as to the ’705 patent, for which only one priority date was ever identified. (Id. at 8-9.)

The Court finds Samsung’s arguments that “Vaziri-910’s relevance increased when Optics failed to substantiate its priority claims” (Dkt. No. 45 at 9) as well as their attempts from September into October to reach an agreement with Optics before filing its motion with the Court, demonstrate some material level of diligence. However, the Court also sees that Samsung could have been more5 diligent.

B. The Inclusion of Vaziri-910 is Important to Samsung’s Case

Samsung asserts that the inclusion of Vaziri-910 in its invalidity contentions “is highly relevant because it teaches the use of multi-camera imaging devices and conventional components— contradicting Optics’ narrative of novelty and non-obviousness based on claims directed to ‘at least two cameras which are used to generate an output image.’” (Dkt. No. 45 at 9, citing Dkt. Nos. 1 and 45-10.) It states that Vaziri-910 is therefore “essential to Samsung’s anticipation and obviousness theories” (Dkt. No. 45 at 9), particularly because it “shares an identical specification with the ’705 patent” (Dkt. No. 47 at 4).

Optics responds that Samsung’s May 21 contentions “already advance those theories through numerous printed publications and systems,” and that Vaziri-910 either “simply reiterates the same teaches,” making it “cumulative and unimportant,” or it is “uniquely significant,” meaning Samsung’s “failure to chart it in its May 21 contentions underscore[] a lack of diligence.” (Dkt. No. 46 at 9.)

The Court finds that the inclusion of Vaziri-910 is important to Samsung’s case, and that this factor weighs in favor of granting leave. Optics provides no explanation as to prior art already provided in Samsung’s contentions which support its assertion that Vaziri-910 is cumulative. Optics merely argues that Vaziri-910 is either cumulative (in which case it is unnecessary) or it is unique (in which case it reasserts is position on Samsung’s lack of diligence). If Vaziri-910 is merely cumulative, then any prejudice to Optics is low. If it is unique then the importance to Samsung is necessarily increased. It is one or the other, but Optics essentially saying it is either hot or cold is not helpful.

6As Courts in this District have found before, amendments addressing core invalidity theories are important. See, e.g., Ax Wireless LLC v. Lenovo Grp. Ltd., No. 2:22-cv-00280, 2023 WL 8587253, at *3 (E.D. Tex. Dec. 11, 2023) (“The Court finds the proposed amendments are important as they disclose and clarify contested invalidity theories”).

C. Optics Will Not be Prejudiced by the Amendment

Optics’ statement that it “will be unfairly prejudiced” if the Court were to grant Samsung’s motion is supported in its briefing by a repetition of its argument that Samsung was not diligent, and an assertion that “this Court can find a lack of good cause even when there is no prejudice.” (Dkt. No. 46 at 9.)

The Court agrees with Samsung’s argument that the supplementation will not materially prejudice Optics. (Dkt. No. 45 at 10.) Samsung alerted Optics of its intent to rely on Vaziri-910 on September 12, 2025, and fact discovery will not close until April 13, 2026. (Id.) Additionally, although the Court agrees with Optics that its September 17, 2025 request for supplementation of Samsung’s infringement was not an invitation for Samsung to include Vaziri-910 within those amendments, such a request made on September 17 supports a finding of a lack of prejudice to Optics. Since Optics made affirmative requests for Samsung to amend its invalidity contentions at that time, it cannot be reasonably said that it will be unfairly prejudiced by the Court permitting Samsung to formalize those amendments now.

D. No Continuance is Requested or Necessary

Optics does not seek a continuance or state that one would be warranted in its briefing. (Dkt. No. 46 at 10; Dkt. No. 49 at 5.) As such, the Court finds that this factor also weighs in favor of granting Samsung leave to amend, and that no continuance is necessary.

7IV. CONCLUSION

For the reasons stated herein, the Court finds that Samsung’s Partially Opposed Motion for . Leave to Supplement Invalidity Contentions to Add One Prior Art Reference and Otherwise Clarify Invalidity Positions (Dkt. No. 45) should be and hereby is GRANTED.

Since the Parties filed their briefing under seal, the Court files this Order under seal as well. However, the Parties are ORDERED to jointly prepare a redacted version of this Order for public viewing and to file the same on the Court's docket as an attachment to a Notice of Redaction within five (5) business days of this Order.

So ORDERED and SIGNED this 16th day of January, 2026.

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE