MEMORANDUM OPINION AND ORDER Plaintiff BroadSign International, LLC (“Plaintiff” or BroadSign”) brings this action against Defendant T-Rex Property AB (“Defendant” or “T-Rex”), seeking declaratory judgments of noninfringement and invalidity of U.S. Patent No. RE39,470 (“the ’470 patent”), U.S. Patent No. 7,382,334 (“the ’334 patent”), and U.S. Patent No. 6,430,603 (“the ’603 patent”) (collectively, the “Patents-in-Suit”), as well as a declaratory judgment that BroadSign has intervening rights with respect to the ’470 patent.On January 10, 2018, this Court issued a Memorandum Opinion and Order (Docket Entry No. 40, the “January Opinion”) granting T-Rex’s motion to dismiss the Amended Complaint (Docket Entry No. 10, the “AC”) in its entirety. In the January Opinion, the Court granted BroadSign permission to move for leave to file a further Amended Complaint.On February 1, 2018, BroadSign moved for leave to file a Second Amended Complaint (Docket Entry No. 42) and, in accordance with the Court’s instructions, appended to its motion its proposed Second Amended Complaint (Docket Entry No. 44-1, the “SAC”), a blackline comparison showing all proposed changes to the AC, and a memorandum of law.The Court has jurisdiction of this action pursuant to 35 U.S.C. §§271 et seq., and 28 U.S.C. §§1331 and 1338.The Court has considered carefully all of the parties’ submissions, and for the reasons stated below, BroadSign’s motion for leave to file the SAC is granted.BACKGROUNDThe Court assumes the parties’ familiarity with the underlying context of the case, which is laid out in detail in the January Opinion. (January Opinion at 2-4.) In the January Opinion, the Court dismissed BroadSign’s complaint for lack of subject matter jurisdiction, concluding that the allegations regarding Defendant’s suits against BroadSign’s customers and Defendant’s actions in connection with discussions initiated by BroadSign, as described in Plaintiff’s Amended Complaint, did not constitute an “aggressive enforcement strategy” warranting a finding of a case or controversy. (Id. at 9.) The Court further concluded that BroadSign had failed to allege facts indicating that T-Rex could state a contributory infringement cause of action against BroadSign. (Id. at 9-10.) Specifically, BroadSign failed to allege its product was especially made or especially adapted for use in an infringement of the Patents-in-Suit at the time it sold its products to customers, and that its software was not a staple article or commodity of commerce suitable for substantial noninfringing use. (Id. at 8-10.) Because Plaintiff had not demonstrated that a “substantial controversy” existed between the parties, it had not met its burden of proving by a preponderance of the evidence that subject matter jurisdiction exists. (Id. at 10.)The following abbreviated recitation of facts is drawn from BroadSign’s SAC, the well-pleaded factual allegations of which are taken as true for purposes of this motion practice.BroadSign supplies “hardware and software solutions to operators of networks of digital displays.” (SAC 11.) T-Rex is the “assignee and owner of the right, title, and interest in and to the Patents-in-Suit,” which concern the control and coordination of digital displays. (Id.
9, 10.) Over the last several years and during the course of this lawsuit, T-Rex has sued “at least seven” of BroadSign’s customers, which are various entities that make, use, or sell complete digital signage systems, “for [direct] patent infringement on one or more of the Patentsin-Suit.” (Id. 29.) The SAC includes new allegations that, in its suits against BroadSign’s customers, T-Rex has specifically identified components supplied by BroadSign that allegedly infringe the Patents-in-Suit, and has compared the limitations of at least one claim of each patent to a product that includes BroadSign components and software. (Id.
