Intellectual Ventures I LLC et al v. American Airlines, Inc.

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
INTELLECTUAL VENTURES I LLC
and INTELLECTUAL VENTURES II
LLC,
Plaintiffs,
v.
AMERICAN AIRLINES, INC.,
Defendant.
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Civil Action No. 4:24-cv-980
Judge Mazzant
MEMORANDUM OPINION AND ORDER
Pending before the Court is Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures
II LLC Letter Brief seeking to compel Defendant American Airlines, Inc. to produce information
relating to its use of the accused instrumentalities prior to the filing of the Complaint and Amended
Complaint (Dkt. #103). Having considered the parties letter briefs, the relevant pleadings, and the
applicable law, the Court finds that the relief requested by Plaintiffs should be GRANTED.
BACKGROUND
This is a patent infringement case. On November 2, 2024, Plaintiffs Intellectual Ventures I
LLC and Intellectual Ventures II LLC (collectively, “Plaintiffs”) filed its Complaint alleging that
Defendant American Airlines, Inc. (“Defendant”) infringed at least one claim of six patents,
including U.S. Patent Nos. 7,257,582 (“the ʻ582 Patent”), 7,324,469 (“the ʻ469 Patent”), 7,949,785
(“the ʻ785 Patent”), 8,027,326 (“the ʻ326 Patent”), 8,332,844 (“the ʻ844 Patent”), and 8,407,722
(“the ʻ722 Patent”) (Dkt. #1 at ¶ 1). In its Complaint, Plaintiffs pleaded past damages for
Defendant’s infringement of each of the asserted patents including for damages that may have
occurred prior to the filing of the Complaint (Dkt. #1 at ¶¶ 25, 27, 29, 31, 33, 35). On September
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10, 2025, after the Court granted its motion for leave, Plaintiffs filed an Amended Complaint
alleging that Defendant infringed at least one claim of six additional patents, including U.S. Patent.
Nos. 7,712,080 (“the ʻ080 Patent”), 7,721,282 (“the ʻ282 Patent”), 7,822,841 (“the ʻ841 Patent”),
8,352,584 (“the ʻ584 Patent”), 10,103,845 (“the ʻ845 Patent”), and 11,032,000 (“the ʻ000 Patent)
(Dkt. #84 at ¶ 1).1 In its Amended Complaint, Plaintiffs pleaded past damages for Defendant’s
infringement of all Asserted Patents (Dkt. #84 at ¶¶ 37, 39, 41, 43, 45, 47).
On September 26, 2025, Plaintiffs served discovery requests including its Amended First
Set of Interrogatories (“Interrogatories”) relating to the accused instrumentalities for the Asserted
Patents (Dkt. #103 at p. 2). On October 27, 2025, Defendant provided its responses to the discovery
but objected to Plaintiffs’ Interrogatories, stating that it “will limit its responses to activities or
events that occurred after the filing of this Action because [Plaintiffs] allegedly failed to plead
compliance with 35 U.S.C. § 287” (Dkt. #103 at p. 2).
On December 2, 2025, the Court held a hearing on various discovery disputes between the
parties, including Defendant’s refusal to produce the pre-suit discovery requested by Plaintiffs (See
Minute Entry, Dec. 2, 2025). Unable to resolve this issue at the hearing, the Court ordered the
parties to submit letter briefs by December 10, 2025 (See Minute Entry, Dec. 2, 2025). On
December 10, 2025, Plaintiffs filed its Letter Brief in support of its argument that Defendant should
be compelled to produce relevant discovery relating to its use of the accused instrumentalities prior
to the filing of the Complaint and Amended Complaint, including discovery responses, technical
documents, and source code (Dkt. #103 at p. 1). Later that same day, Defendant filed its opposing
1 	The twelve (12) patents identified in Plaintiffs’ Complaint (Dkt. #1) and Amended Complaint (Dkt. #84) are
collectively referred to herein as the “Asserted Patents.”
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Letter Brief in support of its argument that Plaintiffs’ request for pre-suit discovery must be denied
because it failed to plead compliance with the marking statute, 35 U.S.C. § 287(a).2
ANALYSIS
The issue before the Court is whether a patent plaintiff must satisfy its burden of pleading
compliance with the marking statute (35 U.S.C. § 287) before it may engage in discovery relating
to its claim for past damages under 35 U.S.C. § 286.
In its Letter Brief, Plaintiffs argue that the Court should compel Defendant to produce the
requested pre-suit discovery because relevant discovery cannot be withheld based solely on alleged
non-compliance with 35 U.S.C. § 287 (Dkt. #103 at p. 3).3 Specifically, Plaintiffs contend that
Defendant’s blanket refusal to produce the requested information solely on the grounds that
Plaintiffs failed to adequately plead compliance with the marking statute lacks any arguable basis in
law (See Dkt. #103 at pp. 3–5).4 According to Plaintiffs, the marking requirement of § 287(a) acts to
preclude and/or limit the recovery of damages and cannot, as Defendant attempts to do, be used
to try and limit the scope of relevant discovery in the case (Dkt. #103 at pp. 3–4).
In response, Defendant argues that Plaintiffs’ request for pre-suit discovery must be denied
as a matter of law because Plaintiffs failed to plead compliance with the marking statute (35 U.S.C.
2 	Defendant’s opposing Letter Brief does not have a docket cite because counsel for Defendant opted to submit the
letter brief to the Court via email rather than the Electronic Document Filing System—a method the Court expressly
authorized during the December 2, 2025 hearing.
3 	Plaintiffs contend that the requested information—including, information relating to whether the accused
instrumentalities infringed prior to the filing of the Complaint and Amended Complaint and to the extent of that
infringement—is “undeniably relevant to the amount of [past] damages” it may seek for Defendant’s infringement
of the Asserted Patents (Dkt. #103 at p. 2). Moreover, Plaintiffs contend that the requested information may also be
relevant for “other purposes, for example rebutting any alleged non-infringement alternatives asserted by Defendant
and willfulness” (Dkt. #103 at p. 3).
4 	In support of this argument, Plaintiffs assert that it was unable to find any case law that supports withholding
relevant discovery on the basis that a defendant has either (i) alleged a marking defense or (ii) alleged that a patent
plaintiff failed to adequately plead compliance with 35 U.S.C. § 287 (Dkt. #103 at p. 3).
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§ 287). Put another way, because Plaintiffs failed to plead compliance with the marking statute,
pre-suit damages are not at issue in this case, and thus Plaintiffs are not entitled to discovery on its
pre-suit damages claim. In support of this argument, Defendant relies on numerous federal district
court decisions, which it contends establishes black-letter law that pre-suit damages are not
available if a patent plaintiff does not plead compliance with the marking statute.5 In sum, Plaintiffs
request for pre-suit discovery ignores the fact that it cannot seek pre-suit damages as a matter of
law in this case, and thus its request must be denied.
The Court finds that Defendant should be compelled to produce the pre-suit information
requested by Plaintiffs for several reasons. First, the Federal Rules of Civil Procedure do not
support Defendant’s objection—seeking to limit its responses to “activities and events that
occurred after the filing of this Action”—to Plaintiffs’ discovery requests. Inquiry into Defendant’s
use of the accused instrumentalities prior to the filing of the Complaint and Amended Complaint
is highly relevant and directly relates to Plaintiffs’ claim for past damages. What’s more, Defendant
does not argue (or even imply) that Plaintiffs’ discovery requests fall into a category that requires
the Court to restrict a party’s ability to conduct discovery.6 Thus, any restriction on Plaintiffs’
5 	As discussed in more detail below, the Court finds that the cases Defendant cites in its Letter Brief are inapposite to
the issue that is before the Court. The central dispute between the parties is whether relevant discovery can be
withheld based solely on a patent plaintiffs alleged non-compliance with 35 U.S.C. § 287. Each of the cases that
Defendant cites, however, deal with dispositive or post-trial motions for a patent plaintiff’s failure to plead
compliance with 35 U.S.C. § 287, not discovery issues.
6 In general, the Federal Rules of Civil Procedure allow the parties to freely conduct discovery so long as the discovery
requests fall within some broad parameters. See Fed. R. Civ. P. 26(b)(1); see also Herbert v. Lando, 441 U.S. 153, 177
(1979) (explaining that courts must give these rules “a broad and liberal treatment to effect their purpose of
adequately informing the litigants in civil trials.”). Indeed, the Rules only require the Court to restrict a party’s
ability to conduct discovery in a limited set of circumstances. First, the Court must restrict discovery if “the
discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more
convenient, less burdensome, or less expensive.” Id. at 26(b)(2)(C)(i). Second, the Court must prohibit a party from
seeking certain information if the party “has had ample opportunity to obtain the information by discovery in the
action.” Id. at 26(b)(2)(C)(ii). And third, the Court must limit a discovery request if it “is outside the scope
permitted by Rule 26(b)(1).” Id. at 26(b)(2)(C)(iii).
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ability to obtain discovery stemming from a failure to plead compliance with the marking statute
must come from the case law itself.
Second, none of the cases that Defendant relies on support any limitations on the discovery
process. For example, all ten of the cases that Defendant cites in its Letter Brief deal only with
dispositive motions or post-trial motions, not discovery issues. See e.g., VirtaMove, Corp. v. Hewlett
Packard Enter. Co., No. 2:24-CV-00064-JRG, 2024 WL 4519761, at *1 (E.D. Tex. Oct. 17, 2024)
(addressing defendant’s partial motion to dismiss plaintiff’s claims for past damages on the
grounds that it failed to plausibly plead compliance with 35 U.S.C. § 287); Maxwell v. J. Baker, Inc.,
86 F.3d 1098, 1111 (Fed. Cir. 1996) (considering whether the lower court erred by denying
defendant’s motion for judgment as a matter of law on the issue of patent marking under 35 U.S.C.
§ 287(a)); Stoneridge Control Devices, Inc. v. ZF N. Am., Inc., 645 F. Supp. 3d 699, 708–09 (E.D.
Mich. 2022) (dismissing plaintiff’s claims for pre-suit damages after finding that it failed to plead
compliance with the statutory marking requirement). Moreover, the Court’s independent research
turned up no cases that applied § 287(a)’s pleading requirement to discovery issues.
The lack of support for Defendant’s position makes sense, given the peculiarity of its
request. Defendant asks the Court to limit Plaintiffs’ right to discovery in this case based on its
allegation that Plaintiffs failed to adequately plead one of its claims (pre-suit damages) in the
Complaint. However, Defendant has neither sought nor obtained a dispositive ruling related to this
alleged pleading deficiency; in fact, this is the first time Defendant has ever raised this issue with
the Court. Indeed, the mere existence of the alleged pleading deficiency, without more, has no
determinative impact on the scope of discovery. Until Defendant has properly asked the Court to
decide the merits of its pleading deficiency claim, and the Court enters a decision regarding the
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relief request therein, all of Plaintiffs claims continue to remain alive and well. As a result, the pre-
suit information sought “may be relevant to the claim or defense of any party.” See Muhammed v.
Shelton, No. 4:23-CV-428, 2024 WL 3498346, at *1 (E.D. Tex. July 22, 2024); FED. R. CIV . P.
26(b)(1). Specifically, this information may be relevant to Plaintiffs claims against Defendant—
including, but not limited to, its claim for past damages—and Defendant’s informal assertion of a
pleading deficiency in the Complaint does not negate Plaintiffs’ right to obtain discovery of relevant
information. To hold otherwise, would allow a party to assert a variety of procedural challenges and
affirmative defenses that may or may not be legitimate simply as a means to limit discovery, which
would run afoul to the purpose of Federal Rule of Civil Procedure 26(b)(1). See Muhammed , 2024
WL 3498346, at *1 (“a request for discovery should be considered relevant if there is any possibility
that the information sought may be relevant to the claim or defense of any party.”) (citation
modified).7 Thus, a patent plaintiff’s failure to plead compliance with the marking statue has no
applicability in the context of discovery. Accordingly, the parties will need to hash out whether
Plaintiffs had a duty to mark a product under § 287 and their compliance with that duty in a
dispositive motion or at trial based on the information obtained through the discovery process.
7 	The Court finds the Colorado District Court’s decision in Zvelo, Inc. v. SonicWALL, Inc., No. 06-CV-00445-PAB-
KLM, 2013 WL 2338352 (D. Colo. May 29, 2013) to be instructive. In Zvelo, defendant refused to produce all of
plaintiff’s requested discovery, arguing that one of the affirmative defenses alleged in its answer, the doctrine of
intervening patent right, limits the scope of relevant discovery. Id. at *1–2. In response, plaintiff argues that the court
should overrule the objection and compel defendant to produce the requested information because “the mere
existence of an affirmative defense should have no determinative impact on the scope of discovery.” Id. at *3 (citation
modified). The court agreed with plaintiff and ordered defendant to produce the requested information. Id at *3–5.
The court explained that because it has “not yet entered nor has it been asked to decide the merits of defendant’s
affirmative defenses” both “[p]laintiff’s claims and [d]efendant’s affirmative defenses and counterclaims are alive
and well.” Id. at *3 (citation modified). As a result, Defendant must produce the requested information because the
requested information “may be relevant to [p]laintiff’s claims against [d]efendant, and [d]efendant’s assertion of an
affirmative defense does not negate [p]laintiff’s right to take discovery of relevant information. Id. Indeed, to hold
otherwise, “would allow any party to assert a variety of affirmative defenses that may or may not be legitimate simply
as a means to limit discovery,” which would be contrary to the purpose of FED . R. C IV . P. 26(b)(1).
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CONCLUSION
It is therefore ORDERED that Plaintiffs Intellectual Ventures I LLC and Intellectual
Ventures II LLC Letter Brief requesting that the Court compel Defendant American Airlines, Inc.
to produce relevant discovery relating to its use of the accused instrumentalities prior to the filing
of the Complaint and Amended Complaint (Dkt. #103) is hereby GRANTED. Accordingly, the
Court ORDERS that Defendant produce all relevant discovery relating to its use of the accused
instrumentalities prior to the filing of the Complaint and Amended Complaint, including discovery
responses, technical documents, and source code, within seven (7) days of entry of this Order.
IT IS SO ORDERED.
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