Case 2:22-md-03034-TGB ECF No. 209-4, PageID.11885 Filed 12/29/23 Page 1 of 5
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`Exhibit C
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`Case 2:22-md-03034-TGB ECF No. 209-4, PageID.11886 Filed 12/29/23 Page 2 of 5
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`March 1, 2023
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`VIA E-MAIL (paul.steadman@us.dlapiper.com; matt.moore@lw.com; gosen@fr.com;
`reger@fr.com; celine.crowson@hoganlovells.com; dwells@sternekessler.com;
`FCCimino@Venable.com; pbrennan@jenner.com; jjohnson@fr.com)
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`Matthew J. Moore
`Latham & Watkins LLP
`555 Eleventh St. NW, Suite 1000
`Washington, DC 20004
`Tel: (202) 637-2000
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`Thomas H. Reger II
`Fish & Richardson P.C.
`1717 Main St., Suite 5000
`Dallas, TX 75201
`Tel: (214) 747-5070
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`Deirdre M. Wells
`Stern, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Ave. NW, Suite 600
`Washington, DC 20005
`Tel: (202) 371-2600
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`Peter J. Brennan
`Jenner & Block LLP
`353 N. Clark St.
`Chicago, IL 60654
`Tel: (312) 222 9350
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`Paul R. Steadman
`DLA Piper LLP
`444 W Lake St., Suite 900
`Chicago, IL 60606
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`Tel: (312) 368-2135
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`Conrad A. Gosen
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`Fish & Richardson P.C.
`60 S Sixth St., 3200 RBC Plaza
`Minneapolis, MN 55402
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`Tel: (612) 335-5070
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`Celine J. Crowson
`Hogan Lovells US LLP
`555 Thirteenth St NW
`Washington, DC 20004
`Tel: (202) 637-5703
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`Frank C. Cimino, Jr.
`Venable LLP
`600 Massachusetts Ave. NW
`Washington, DC 20001
`Tel: (202) 344-4569
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`John T. Johnson
`Fish & Richardson P.C.
`7 Times Square, 20th Floor
`New York, NY 10036
`Tel: (212) 765-5070
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`RE:
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`In re Neo Wireless, LLC Patent Litig., No. 2:22-md-03034-TGB (E.D. Mich.)—
`Defendants’ Joint Preliminary Invalidity Contentions
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`Page 1 of 4
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`Case 2:22-md-03034-TGB ECF No. 209-4, PageID.11887 Filed 12/29/23 Page 3 of 5
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`March 1, 2023
`Page | 2
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`Dear Counsel:
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`I write on behalf of Neo Wireless to address certain issues in Defendants’ Joint
`Preliminary Invalidity and Unenforceability Contentions (“Invalidity Contentions”), served in
`the above referenced matter.
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`
`Gibson Disclosures in Chart B-05
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`In the chart marked B-05, Defendants have disclosed excerpts of the elected publication
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`reference identified as Gibson. See NEO-MDL_PA003633. This reference appears to be a
`textbook on mobile communications. In addition to citing and reproducing portions of Gibson
`throughout the chart, Defendants have attempted to cite to an entire chapter of Gibson using a
`“see also” signal on multiple occasions. See, e.g., Invalidity Contentions, Ex. B-05 at 76. This
`incorporation of an entire textbook chapter is far from “identifying where specifically in each
`alleged item of prior art each limitation of each asserted claim is found.” Dkt. 84 at 19.
`Defendants have not complied with the disclosure requirements to rely on this chapter of Gibson.
`To the extent Defendants wish to rely on any disclosure within this chapter of Gibson,
`Defendants must amend their contentions to identify the specific portions of this chapter in
`which Gibson is alleged to disclose an asserted claim element. Otherwise, Defendants have not
`sufficiently disclosed any use of this chapter in any grounds for invalidity so as to rely on it in
`the case.
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`HiperLAN 2 Product or System Election
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`Neo understands that Defendants have elected an alleged prior art product or system that
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`“operated in accordance with the HiperLAN/2 technical standard” as one of Defendants’ elected
`references. See Invalidity Contentions, Ex. B-03 at 1, 1 n.1. In their Invalidity Contentions,
`Defendants have not identified the particular product or system that “operated in accordance with
`the HiperLAN/2 technical standard,” nor established that the particular product or system was
`“known or used by others in this country,” “in public use,” or “on sale” at a date so as to qualify
`as prior art to the asserted patents. To the extent Defendants intend to move forward with this
`product or system theory, Defendants must meet their burden to establish that the identified
`product—whatever that specific product or system may be—actually qualifies as prior art to the
`asserted patents by meeting one of the listed categories of pre-AIA § 102. Neo will move to
`strike theories that simply rely on vague assertions that there were products or systems that
`implemented the HiperLAN 2 specifications. To be clear, Neo understands that Defendants are
`not relying on (and will not be entitled in the future to rely on) the specific HiperLAN standards
`documents listed and cited to within Ex. B-03 as printed publications, since that would mean
`Defendants had exceeded the Court’s prior art narrowing order. See Dkt. 102 at 3.
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`Elected References Which Purport to Incorporate Other Disclosures by Reference
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`In charting some of their elected references, Defendants have cited to and reproduced
`disclosures that are not within the four corners of the elected references but are instead in other,
`unelected publications. Neo highlights the following examples:
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`Page 2 of 4
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`Case 2:22-md-03034-TGB ECF No. 209-4, PageID.11888 Filed 12/29/23 Page 4 of 5
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`March 1, 2023
`Page | 3
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`Elected Reference
`Walton 131
`Ma 429
`Smee 007
`Krishnan 123
`Laroia 005
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`Unelected Reference(s)
`Walton 309; Walton 601
`Ma 624
`Smee 601
`Krishnan 368; Krishnan 362
`Laroia 539
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`It appears Defendants may contend that the elected references incorporate by reference
`the disclosures of the corresponding unelected references. Defendants must establish
`incorporation by reference as a matter of law, and the disclosures within the Invalidity
`Contentions are insufficient to meet this burden. Neo will object to any use of disclosure outside
`of the four corners of the elected references unless Defendants establish as a matter of law that
`an elected reference specifically incorporates the charted disclosure(s).
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`Purported Incorporation by Reference of Other Invalidity Theories/IPRs
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`In their Invalidity Contentions, Defendants state:
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`Defendants expressly incorporate by reference, as if expressly set forth in these
`contentions, all invalidity positions, prior art, and claim charts asserted against
`Neo Wireless in any Neo Wireless lawsuit or IPR proceeding by defendants, prior
`defendants, petitioners, and potential or actual licensees to the Asserted Patents.
`Defendants specifically incorporate by reference all invalidity positions presented
`in IPR2022-01537, IPR2022-01538, IPR2022-01539, IPR2022-01567, IPR2023-
`00086, IPR2023-00079, and any other inter partes petition(s) that may be filed
`against any of the Asserted Patents.
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`Invalidity Contentions at 4–5. Neo objects to this language as improper disclosure. This broad,
`catch-all incorporation language is plainly insufficient to sufficiently disclose any invalidity
`theory outside of the currently elected references as charted in Defendants’ attached charts. Neo
`is plainly not on notice of any theory outside of those charted. See, e.g., Thermolife Int’l, LLC v.
`Hi-Tech Pharms., Inc., No. 1:15-CV-00892, 2021 WL 4185904, at *3–5 (N.D. Ga. Jan. 21,
`2021); Celgene Corp. v. Hetero Labs Ltd., No. 17-3387, 2021 WL 3701700, *19–21 (D.N.J.
`June 15, 2021). Neo will move to strike any other, new invalidity theory that is based solely on
`this language and not disclosed as required by the Parties’ joint discovery plan. See Dkt. 84.
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`Reservation of Rights
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`Neo objects to Defendants’ overbroad reservation of rights, including the right to
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`supplement their Invalidity Contentions “if they become aware of additional prior art, become
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`Page 3 of 4
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`Case 2:22-md-03034-TGB ECF No. 209-4, PageID.11889 Filed 12/29/23 Page 5 of 5
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`March 1, 2023
`Page | 4
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`aware of additional features of the prior art references cited below, or become aware of any other
`relevant information through discovery, including non-party discovery, or otherwise.” Invalidity
`Contentions at 4. To Neo’s knowledge, Defendants have not demonstrated any diligence in
`attempting to conduct discovery on additional prior art references prior to the due date for
`Defendants’ Invalidity Contentions; nor have Defendants served any third-party subpoenas or
`produced any discovery concerning additional prior art references in the three months since the
`Contentions were served. If that is incorrect, Defendants must immediately identify and produce
`any investigations or third-party discovery initiated before their Invalidity Contentions were due
`for any system/non-publication prior art on which they intend to rely. Otherwise, Neo will move
`to strike any future reliance on unelected references or systems undisclosed and uncharted in
`their Invalidity Contentions as of the date they were due: November 16, 2022.
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`Sincerely,
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`Bjorn A. Blomquist
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`Page 4 of 4
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