Viavi Solutions Inc. v. Platinum Optics Technology Inc.

Background

Viavi Solutions Inc. brought the patent case under 35 U.S.C. § 271(b), alleging that Platinum Optics Technology Inc. induced infringement of at least one claim in each of several patents. Viavi designs optical filters using hydrogenated silicon for three-dimensional motion sensing and holds patents associated with that technology. The opinion describes Viavi as a U.S.-based company headquartered in Delaware and Platinum as a Taiwan-based company that manufactures optical filters using hydrogenated silicon.

Viavi sought permission to file a second amended complaint. It wanted to add allegations of direct infringement under 35 U.S.C. § 271(a), based on information it said it obtained during discovery. Viavi alleged that Platinum directly shipped 15 accused filter wafers from Taiwan to an unnamed company in the United States and that the samples infringed claims in Viavi’s patents.

Arguments

Under Federal Rule of Civil Procedure 15(a)(2), courts should freely allow amendments when justice requires. The court considered whether the amendment involved undue delay, bad faith, repeated failure to correct deficiencies, prejudice to Platinum, or futility—meaning that the proposed amendment would fail as a matter of law.

Viavi argued that the amendment would not prejudice Platinum because the existing complaint already concerned inducement involving the same accused filters. Viavi also argued that the case was still at an early stage and that it moved to amend shortly after learning about the alleged direct infringement.

Platinum argued that Viavi waited nearly three months to seek amendment, filed its motion shortly before Platinum’s summary-judgment motion, and would be unable to prove direct infringement. Platinum also disputed whether the wafers shipped to the unnamed company were the same as the accused filters and argued that the wafers required additional manufacturing before they could be incorporated into a device.

Court’s Analysis

The court rejected Platinum’s prejudice argument. It held that the parties’ litigation history in Asia and in two other cases before the court did not show prejudice in this action. Platinum therefore failed to establish that allowing the amendment would unfairly harm its ability to litigate.

The court also found no undue delay. Viavi allegedly learned the relevant facts on August 1, 2022, and filed its motion on October 21, 2022. The court accepted Viavi’s explanation that it used the intervening time to obtain additional discovery and noted that Platinum knew Viavi intended to add a direct-infringement claim because the parties had discussed it.

The court declined to decide whether the amendment would ultimately succeed. It said the dispute over whether the wafers and accused filters were the same was not appropriately resolved on a motion for leave to amend and was better addressed on a motion to dismiss. The court likewise declined to resolve Platinum’s contention that Viavi lacked proof of direct infringement, explaining that the sufficiency of Viavi’s evidence could be addressed later. The court found that Platinum had not identified specific instances of bad faith.

Disposition

The court granted Viavi’s motion for leave to file the second amended complaint. Viavi could file it within 21 days after entry of the order, but could not add new claims or parties without the court’s permission or the parties’ stipulation under Rule 15. The order did not decide whether Platinum actually infringed Viavi’s patents. The order also stated that Platinum’s pending motion for summary judgment would be treated as a partial motion for summary judgment without requiring new briefs, and that Viavi could file the amended complaint while incorporating the court’s ruling on that motion.