Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 1 of 11 Page ID #:46980
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`George C. Lombardi (pro hac vice)
`glombardi@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile:
`(312) 558-5700
`
`E. Danielle T. Williams (pro hac vice)
`dwilliams@winston.com
`WINSTON & STRAWN LLP
`300 South Tryon Street, 16th Floor
`Charlotte, NC 28202
`Telephone: (704) 350-7700
`Facsimile:
`(704) 350-7800
`
`
`Dustin J. Edwards (pro hac vice)
`dedwards@winston.com
`WINSTON & STRAWN LLP
`800 Capitol St., Suite 2400
`Houston, TX 77002-2925
`Telephone: (713) 651-2600
`Facsimile:
`(713) 651-2700
`
`Diana Hughes Leiden (SBN: 267606)
`dhleiden@winston.com
`WINSTON & STRAWN LLP
`333 S. Grand Avenue, 38th Floor
`Los Angeles, CA 90071-1543
`Telephone: (213) 615-1700
`Facsimile:
`(213) 615-1750
`
`Attorneys for Defendants
`BANK OF AMERICA CORPORATION
`and BANK OF AMERICA, N.A.
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`UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
` CASE NO. 2:20-cv-7872-GW-PVC
`
`DEFENDANTS’ RESPONSE TO
`PLAINTIFFS’ EX PARTE
`APPLICATION REGARDING
`DISPOSITIVE MOTIONS
`
`Hon. George H. Wu
`
`
`
`NANTWORKS, LLC, a Delaware
`limited liability company, and NANT
`HOLDINGS IP, LLC, a Delaware
`limited liability company,
`
`Plaintiffs,
`
`vs.
`
`BANK OF AMERICA
`CORPORATION, a Delaware
`corporation, and BANK OF
`AMERICA, N.A., a national banking
`association,
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`
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`Defendants.
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`Case No. 2:20-cv-7872-GW-PVC
`DEFENDANTS’ RESPONSE TO PLAINTIFFS’ EX PARTE APPLICATION REGARDING DISPOSITIVE MOTIONS
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 2 of 11 Page ID #:46981
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`The Court should deny Plaintiffs NantWorks, LLC, and Nant Holdings IP, LLC
`(“NantWorks”)’s ex parte application to arbitrarily limit the number of motions filed
`by Defendants Bank of America Corp. and Bank of America, N.A. (“Bank of
`America”) that the Court should consider.
`First, Bank of America is only left to file its partial summary judgment motions
`because NantWorks refuses to reasonably narrow the case. Bank of America has spent
`close to four years working to streamline the case for a jury. Notwithstanding regular
`communications with NantWorks about its need to narrow the case based on the
`evidence, Bank of America is still left with patent infringement claims for five patents
`and a breach of contract claim (which is merely NantWorks’s trade secret claim
`asserted under breach of contract theory). Less than four months before trial, summary
`judgment is the proper mechanism for limiting the issues for trial, given NantWorks’s
`persistent refusal to do so.
`Second, NantWorks does not dispute that the Court’s procedures and the Local
`Rules do not impose a limit on the number of dispositive motions. What is more,
`NantWorks’s ex parte application goes back on an express agreement between the
`parties. On April 2, 2024, Bank of America met and conferred with NantWorks
`regarding limits to the number of pages, words, and motions. However, on April 4,
`2024, NantWorks agreed that there were no limits and that no issues needed to be
`raised with the Court given the Court’s local rules. NantWorks only now requests a
`limitation after Bank of America filed its motions.
`In short, the Court should not grant any ex parte application from NantWorks
`because addressing the partial summary judgment motions now will save time and
`resources and is not contrary to the Court’s local rules.
`ARGUMENTS AND AUTHORITIES
`A. Bank of America’s Dispositive Motions Will Narrow and Simplify the
`Case for Trial.
`Bank of America filed eight partial summary judgment motions to address the
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 3 of 11 Page ID #:46982
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`scope and complexity of the issues that remain in this case that will narrow and
`simplify the issues for trial. From the start of this case, Bank of America has sought
`NantWorks’s agreement to limit those issues, and successfully narrowed many issues
`in early motion practice. And after over three years of asserting an unsustainable trade
`secret claim, NantWorks finally dropped it, shortly before expert reports were due.
`But NantWorks now essentially asserts the trade secret claim in the form of breach of
`contract claims that implicate three separate contracts governed by three different
`state laws. And while NantWorks refuses to drop its breach of contract claims, none
`of NantWorks’s experts provided opinions as to breach of contract, including any
`opinions as to the measure of damages for breach of contract. One of Bank of
`America’s dispositive motions directly addresses these issues.
`Bank of America provided clear reasons why its three invalidity motions were
`brought separately and NantWorks is incorrect that they could have been brought
`together. Dkt. 408 at 6. Contrary to NantWorks’s arguments (id. at 4), Bank of
`America notified NantWorks that it intended to file two dispositive motions related
`to Section 101 because one motion dealt with the asserted independent claim from the
`’252 patent, which has a distinct claim regarding symbols, a distinct abstract idea, and
`distinct case law from the remaining asserted claims of the other asserted patents. And
`Bank of America’s dispositive motion pursuant to Section 112 involves different
`factual and legal issues that are more appropriately evaluated in a separate motion.
`The two motions addressing non-infringement could not be brought together,
`notwithstanding NantWorks’s arguments. Id. at 6. Defendants filed two motions for
`summary judgment of non-infringement as a direct result of NantWorks’s conduct in
`the case, each dealing with distinct issues. Initially, NantWorks still asserts
`infringement of 13 claims across five Asserted Patents against various functionalities
`within the Accused Product that were allegedly performed by Defendants and its
`customers that will not be feasible to present to a jury in a concise manner. Presenting
`the issues to the Court, which has extensive experience in patent infringement matters,
`-3-
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 4 of 11 Page ID #:46983
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`will be judicially economical and save public resources. Furthermore, despite two
`rounds of claim construction, NantWorks’s technical expert report continues to shift
`NantWorks’s infringement theories that contradict the plain language of the claims
`and the Court’s constructions. See Dkts. 145, 236. Specifically, NantWorks’s
`technical expert complicated the case by reinterpreting the Court’s claim construction,
`taking inconsistent positions across like claim limitations, and not setting forth viable
`infringement theories. As a result, Defendants needed to file one motion to address
`non-viable infringement theories, including NantWorks’s failure to prove divided
`infringement, and another to address NantWorks’s shifting, misapplication of the
`Court’s claim construction with respect to the Recognize limitations that apply to four
`Asserted Patents. Considering all of these factors, these issues are ripe for the Court’s
`review which will be able to navigate the complexities of the patent infringement
`issues using its history with claim construction.
`NantWorks is wrong that Bank of America filed two motions addressing
`NantWorks’s damages. Dkt. 408 at 6 (citing Dkt. 364, 382 1). Instead, Bank of
`America filed one motion because NantWorks cannot establish willful infringement
`and one motion because NantWorks failed to mark pursuant to 35 U.S.C. § 287(a).
`Only the marking motion limits the time period for which NantWorks can recover
`patent infringement damages in this case. The no willful infringement motion does
`not address a damages issue, instead it addresses the absence of evidence to support
`NantWorks’s claim for willful infringement as a matter of law. Indeed, as detailed in
`the motions, willful infringement and marking turn on different factual and legal
`issues—especially given arguments Plaintiffs have raised in this case. To recover
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`1 NantWorks references Dkt. 382, which is a motion for summary judgment for non-
`infringement, so Bank of America is left to assume NantWorks meant to reference its
`motion for summary judgment for NantWorks’s failure to comply with the marking
`statute. Dkt. 367.
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 5 of 11 Page ID #:46984
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`pre-suit damages under 35 U.S.C. 287(a), the marking statute, the patentee must prove
`that it either marked patented articles in accordance with the provision’s requirements
`or provided actual pre-suit notice of infringement. 35 U.S.C. § 287(a). The question
`whether a patentee has met Section 287(a)’s prerequisite turns only on the sufficiency
`of the patentee’s conduct. Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 950
`F.3d 860, 866 (Fed. Cir. 2020). And to determine the sufficiency of actual notice,
`courts evaluate the conduct of the patentee. See Amsted Indus. v. Buckeye Steel
`Casings Co., 24 F.3d 178, 187 (Fed. Cir. 1994) (stating that a patentee must provide
`an “affirmative communication of a specific charge of infringement by a specific
`accused product or device”). Moreover, because of Plaintiffs’ theory that the marking
`statute does not apply to three of the Asserted Patents, Bank of America has also had
`to argue, as a threshold matter, that Plaintiffs must show that they complied with the
`marking statute for all Asserted Patents.
`Willful infringement, on the other hand, involves completely different factual
`and legal issues. As the Federal Circuit has reiterated, “the conclusion that willfulness,
`as an indication that an infringer knew of a patent and of its infringement, does not
`serve as actual notice as contemplated by § 287. While willfulness turns on the
`knowledge of an infringer, § 287 is directed to the conduct of the patentee.” Arctic
`Cat, 950 F.3d at 866. It is true 35 U.S.C. § 284 affords district courts the discretion to
`award enhanced damages for patent infringement, but only after a factfinder
`concludes that a defendant has infringed a patent willfully. To prove willful
`infringement, a patentee must show that a defendant engaged in “wanton, malicious,
`and bad-faith behavior.” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1309 (Fed.
`Cir. 2019). Accordingly, the no willful infringement motion addresses the absence of
`evidence to support NantWorks’s willful infringement claim.
`Because NantWorks has refused Bank of America’s requests that it narrow the
`issues for trial, which is now less than four months away, Bank of America seeks the
`Court’s assistance to eliminate the issues described above for which there are no
`-5-
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 6 of 11 Page ID #:46985
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`genuine factual disputes, for which NantWorks has no viable theory, and/or which
`will not aid the jury in making its determinations in this case. Summary judgment is
`the proper mechanism for doing so.
`B. The Number of Dispositive Motions Is Reasonable Here, and the
`Court Should Not Permit NantWorks to Back Out on Its Prior
`Agreement.
`As explained above, the number of dispositive motions that Bank of America
`filed is reasonable given the complexities and scope of the case, but as an additional
`matter, NantWorks should not be permitted to back out of its previous agreement. The
`first time NantWorks objected to any limit on the number of motions for summary
`judgment or Daubert motions Bank of America could file was on May 2, 2024, after
`the parties’ May 1, 2024 conferral and on the eve of the May 3, 2024 filing
`deadline. Even if NantWorks had raised an objection on April 30 (the deadline set by
`the Court and for which Bank of America sent proposed windows), there was not
`enough time for Bank of America to change course from the parties’ previous
`agreement on April 2, 2024. There was no reason for Bank of America to expect
`NantWorks to back out of its previous agreement.
`Specifically, during the parties’ meet and confer on May 1, 2024, Bank of
`America explained the nature of its multiple motions, including some of the reasons
`set forth in Section A supra, and NantWorks raised no objection at that time. Bank of
`America is not circumventing any limits on word limits. Instead, Bank of America
`pursued each of its motions in reliance on NantWorks’s statements and
`agreements during the parties’ April 2, 2024 conferral. NantWorks’s request to
`the Court to backtrack on that agreement is an unduly prejudicial “gotcha” for Bank
`of America. At no time from the April 2, 2024 conference up to two days before
`summary judgment motions were due did NantWorks ever indicate that there was a
`limit on the number of motions for summary judgment, much less the arbitrary
`number of three they propose now. And contrary to NantWorks’s assertions (id. at 4-
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 7 of 11 Page ID #:46986
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`5), no request to present the issue to the Court came until May 4, 2024, after Bank of
`America filed its motions.
`Additionally, there is no dispute that the Court and the Local Rules do not
`impose a limit on the number of dispositive motions a party can bring. See, e.g., Dkt.
`408 at 3, n.2. For this reason alone, NantWorks’s cases are inapposite, and its
`position fails.
`Setting that aside, NantWorks’s cases do not stand for the proposition that a
`party is precluded from filing multiple dispositive motions, under L.R. 11-6.1 or
`otherwise. For example, in Doe K.G. v. Pasadena Hospital Association, Ltd., the
`Court disallowed two separate defendants to bring multiple dispositive motions. 2021
`WL 6882383, at *1 (C.D. Cal. Nov. 3, 2021). But what NantWorks ignores is that the
`Court allowed multiple different options of filing additional summary judgment
`briefing, including additional page limits, multiple motions, or a hybrid briefing
`approach. Id. at *2. Here, the case is proceeding to trial in four months, and Bank of
`America wishes to streamline many of the issues for a jury. And upon Bank of
`America’s request to obtain relief from the Court a month ago, NantWorks found that
`such a request was unnecessary. Dkt. 408 at 3, n.2. As this Court is aware, it has
`considered multiple summary judgment motions filed by a single party, including in
`cases involving patent infringement. L’Garde, Inc. v. Raytheon Space & Airborne
`Sys., 2013 WL 12113998, at *7 (C.D. Cal. Sept. 6, 2013) (citing Hoffman v.
`Tonnemacher, 593 F.3d 908, 911 (9th Cir. 2010)) (finding “district courts have
`discretion to permit successive motions for summary judgment”); California Inst. of
`Tech. v. Broadcom Ltd., 2019 WL 8807924, at *2 (C.D. Cal. Nov. 21, 2019) (allowing
`multiple rounds of summary judgment motions); McRO, Inc. v. Namco Bandai Games
`Am., Inc., 2018 WL 9410401, at *2 (C.D. Cal. Nov. 13, 2018) (allowing multiple
`rounds of summary judgment motions).
`NantWorks’s reliance on In re Superior is also misplaced. Dkt. 408 (citing
`2:02-cv-5155-PA-MLG (C.D. Cal. Oct. 30, 2002), Dkt. 293). The court in Superior
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 8 of 11 Page ID #:46987
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`struck the plaintiffs’ motions for summary judgment in a minute order for violating
`Local Rule 11-6, applying the rule from over 20 years ago regarding page limits.2 Id.
`Further, nothing about the minute entry demonstrates that the Court struck the
`summary judgment motions because too many were filed, and it only discussed
`allowing the parties to file one summary judgment motion because the deadline for
`filing dispositive motions had expired. Id. Thus, this case is wholly inapplicable.
`Finally, the assertion that there is “no reason” summary judgment issues cannot
`be combined in a single motion is self-serving and wholly inconsistent with the
`parties’ April 2, 2024 discussion, where the number and complexity of issues in this
`case were discussed. This is precisely why Bank of America suggested on April 4,
`2024 to seek the Court’s guidance if NantWorks disagreed there was no rule
`precluding multiple dispositive motions, but NantWorks agreed there was no rule.
`Now, NantWorks requests the Court to limit Bank of America to “three motions.”
`NantWorks provides no explanation as to why three motions are reasonable, but eight
`is not, given the complexity of issues left in the case, and instead requests a number
`favorable to NantWorks.
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`CONCLUSION
`For these reasons, Bank of America requests the Court to deny NantWorks’s
`request to limit the number of Bank of America’s partial summary judgment motions
`that the Court will review and consider.
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`2 Local Rule 11-6, as written in 2002, reads as follows: “No memorandum of points
`and authorities, pre-trial brief, trial brief, or post-trial brief shall exceed 25 pages in
`length, excluding indices and exhibits, unless permitted by order of the judge.”
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 9 of 11 Page ID #:46988
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`Dated: May 8, 2024
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`WINSTON & STRAWN LLP
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`By: /s/ E. Danielle T. Williams
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`George C. Lombardi
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`E. Danielle T. Williams
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`Dustin J. Edwards
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`Attorneys for Defendants
`BANK OF AMERICA CORPORATION and
`BANK OF AMERICA, N.A.
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 10 of 11 Page ID
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`CERTIFICATE OF SERVICE
`I hereby certify that all counsel of record in the Attached Service List who have
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`consented to electronic service are being served with a copy of this document via the
`Court’s CM/ECF system per Local Rule CV-5(a)(3) on May 8, 2024.
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`/s/ E. Danielle T. Williams
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`Case 2:20-cv-07872-GW-PVC Document 418 Filed 05/08/24 Page 11 of 11 Page ID
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`SERVICE LIST
`United States District Court for the Central District of California
`Nantworks, LLC, et al. v. Bank of America Corporation, et al.
`Case No. 2:20-cv-07872-GW-PVC
`
`
`Kevin P. B. Johnson
`Todd M. Briggs
`Quinn Emanuel Urquhart and Sullivan LLP
`555 Twin Dolphin Drive 5th Floor
`Redwood Shores, CA 94065
`650-801-5000
`Fax: 650-801-5100
`Email: kevinjohnson@quinnemanuel.com
`Email: toddbriggs@quinnemanuel.com
`Eric Hui-chieh Huang
`Quinn Emanuel Urquhart and Sullivan LLP
`51 Madison Avenue 22nd Floor
`New York, NY 10010
`212-849-7143
`Fax: 212-849-7100
`Email: erichuang@quinnemanuel.com
`James R Asperger
`Quinn Emanuel Urquhart and Sullivan LLP
`865 South Figueroa Street 10th Floor
`Los Angeles, CA 90017-2543
`213-443-3000
`Fax: 213-443-3100
`Email: jimasperger@quinnemanuel.com
`Kate Cassidy
`LTL ATTORNEYS LLP
`152 W 57th Street, 19th Floor
`New York, New York 10019
`Telephone: (332) 244-7015 ext. 215
`kate.cassidy@ltlattorneys.com
`Steven Hansen
`LTL ATTORNEYS LLP
`152 W 57th Street, 19th Floor
`New York, New York 10019
`Telephone: (332) 244-7015 ext. 215
`Steven.Hansen@ltlattorneys.com
`
`
`Attorneys for Plaintiffs
`Nantworks, LLC
`and Nant
`Holdings IP, LLC
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`Attorneys for Plaintiffs
`Nantworks, LLC
`and Nant
`Holdings IP, LLC
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`Attorneys for Plaintiffs
`Nantworks, LLC
`and Nant
`Holdings IP, LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC
`and Nant
`Holdings IP, LLC
`
`Attorneys for Plaintiffs
`Nantworks, LLC
`and Nant
`Holdings IP, LLC
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