Case 2:22-md-03034-TGB ECF No. 215, PageID.11980 Filed 01/12/24 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
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`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
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`Case No. 2:22-md-03034-TGB
`
`Hon. Terrence G. Berg
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`DEFENDANTS’ OPPOSITION TO
`PLAINTIFF’S MOTION TO STRIKE
`DEFENDANT’S PRIOR ART ELECTIONS
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11981 Filed 01/12/24 Page 2 of 22
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`CONCISE STATEMENT OF ISSUE
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`Should the Court strike Defendants’ invalidity contention regarding the third-
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`party “Project Angel” prior art where:
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`• In November 2022 and May 2023, Defendants disclosed to Neo the
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`detailed information they possessed regarding Project Angel in their
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`“preliminary” invalidity contentions, including (i) how Project Angel was
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`relevant to each of the asserted patents, and (ii) the extent of the inventors’
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`involvement with Project Angel;
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`• In December 2022, Defendants amended their defenses and counterclaims
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`to plead unenforceability of the asserted patents based on Project Angel;
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`• In March and April 2023, Defendants served document and deposition
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`subpoenas regarding Project Angel on several third-party corporations
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`and the third-party inventors of the patents Neo asserts in this case;
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`• After receiving the third-party documents and taking the inventors’
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`depositions, Defendants
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`supplemented
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`their
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`invalidity
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`and
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`unenforceability contentions regarding Project Angel; and
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`• Fact discovery remains open and expert discovery has not started, so that
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`Neo and its expert will have plenty of time to respond to Defendants’
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`Project Angel contentions?
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`Defendants Answer: No.
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`i
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11982 Filed 01/12/24 Page 3 of 22
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`TABLE OF CONTENTS
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`CONCISE STATEMENT OF ISSUE ....................................................................... i
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`TABLE OF AUTHORITIES ................................................................................... iii
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`ARGUMENT ................................................................................................... 3
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`A. Defendants have diligently and transparently pursued Project
`Angel throughout this case .................................................................... 3
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`1.
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`2.
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`Defendants’ November 2022 preliminary invalidity
`contentions provided extensive details on Project Angel .......... 3
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`Defendants diligently sought third-party discovery to
`support their contentions regarding Project Angel .................... 6
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`B.
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`Neo’s arguments in its motion lack merit ............................................. 9
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`1.
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`2.
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`Defendants did not “waive” Project Angel ................................ 9
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`Defendants have good cause for including Project Angel
`in their current invalidity contentions ...................................... 10
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`3.
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`Neo’s cited cases are not on point ........................................... 12
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`C.
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`Neo is not unfairly prejudiced by Defendants’ inclusion of
`Project Angel in their invalidity contentions ......................................14
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`III. CONCLUSION ..............................................................................................15
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`ii
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11983 Filed 01/12/24 Page 4 of 22
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`TABLE OF AUTHORITIES
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`Cases
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`Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp.,
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`No. C 04-01830 CRB, 2006 WL 3456607 (N.D. Cal. Nov. 29, 2006) .........14
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`Garrity Power Servs. LLC v. Samsung Elecs. Co.,
`
`No. 2:20-CV-00269-JRG, 2021 WL 4894262 (E.D. Tex. Oct. 19, 2021) ....12
`
`Pisony v. Commando Consts., Inc.,
`
`No. 6:17-cv-00055-ADA, 2020 WL 4934463 (W.D. Tex. Aug. 24, 2020) ..11
`
`Thought, Inc. v. Oracle Corp.,
`
`No. 12-05601, 2013 WL 5587559 (N.D. Cal. Oct. 10, 2013) ...................2, 11
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`
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`
`
`iii
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11984 Filed 01/12/24 Page 5 of 22
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`I.
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`INTRODUCTION
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`The Court should deny Neo Wireless LLC’s (“Neo’s”) motion to strike the
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`prior art called “Project Angel.” Defendants disclosed Project Angel in their
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`invalidity contentions served in November 2022 and in May 2023. In their amended
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`pleadings filed in December 2022, Defendants also detailed how Project Angel
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`rendered the asserted claims invalid and unenforceable. Neo never moved to strike
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`those prior art disclosures and pleadings until now – a full year later – after the facts
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`confirm Defendants’ defenses.
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`Because Project Angel was a third-party system involving technology
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`developed by AT&T and Motorola, Defendants served several subpoenas on the
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`relevant witnesses and corporations. Over the course of several months, Defendants
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`(and Neo) received third-party documents regarding Project Angel. The last batch
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`of documents were received in September 2023. Defendants also deposed third-
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`parties Titus Lo and Ruifeng Wang, who are named inventors of Neo’s asserted
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`patents and who testified about their involvement with Project Angel. Neo attended
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`those depositions. And according to the agreed schedule, Defendants then served
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`updated invalidity contentions in December 2023, citing the subpoenaed documents
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`and the named inventors’ testimony.
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`Yet, Neo now argues that Defendants did not chart Project Angel in December
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`2022, pursuant to the Court’s schedule. But at that time, Defendants did not possess
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`1
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11985 Filed 01/12/24 Page 6 of 22
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`the third-party discovery about Project Angel, and were thus unable to chart Project
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`Angel at that time. But as discovery progressed, Defendants secured the relevant
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`third-party discovery to confirm their early and consistent contentions.
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`As the Court noted in its Order requiring election of prior art, Defendants may
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`modify their election to “bring back in non-selected” items upon a showing of good
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`cause. (ECF No. 102, quoting Thought, Inc. v. Oracle Corp., No. 12-05601, 2013
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`WL 5587559 at *2 (N.D. Cal. Oct. 10, 2013)). As Thought, Inc. acknowledged,
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`“recently secured discovery” is a “good cause” basis to “bring back” unelected prior
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`art. Neo will suffer no unfair prejudice because (i) it has known about Defendants’
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`contentions on Project Angel since November 2022, (ii) it received the third-party
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`documents and testimony about the system when the Defendants did, (iii)
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`Defendants timely amended and supplemented their invalidity contentions on
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`December 20, 2023, which was the Court’s deadline for serving final invalidity
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`contentions, (iv) fact discovery remains open, and (v) expert discovery has not yet
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`begun.
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`For these reasons, the Court should deny Neo’s motion to strike.
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`2
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11986 Filed 01/12/24 Page 7 of 22
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`II. ARGUMENT
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`A. Defendants have diligently and transparently pursued Project
`Angel throughout this case
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`1.
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`Defendants’ November 2022 preliminary invalidity
`contentions provided extensive details on Project Angel
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`Neo admits, as it must, that “‘Project Angel’—a wireless system/product
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`allegedly operated by AT&T in the late 90s—was identified in Defendants’ initial
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`invalidity contentions in November 2022.” (Mot. at 3.) But Neo omits the level of
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`detail that Defendants’ November 2022 preliminary contentions provided about
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`Project Angel:1
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`Digital Broadband (Project Angel) was sold and/or offered for
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`sale by AT&T Wireless, and was in public use by its customers in the
`2000 timeframe or earlier. AT&T Wireless published sales and
`marketing documentation targeted towards AT&T Wireless’s existing
`or future customers, and disclosed specific implementation details
`about the Digital Broadband system. As such, these publications
`indicate that at least by 2000, the Digital Broadband system was being
`commercially exploited and was ready for patenting.
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`* * *
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`Upon information and belief, McCaw Cellular Communications,
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`Inc. (“McCaw”) began developing a wireless system project called
`“Project Angel” in the 1990s. AT&T purchased McCaw in 1994,
`including Project Angel. In the mid to late 1990s, AT&T further
`developed Project Angel—a wireless system incorporating orthogonal
`frequency-division multiple access (“OFDMA”) technology that used
`a base station and remote units to communicate data through the
`wireless system.
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`1 All emphases in this brief have been added, unless otherwise indicated.
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`3
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11987 Filed 01/12/24 Page 8 of 22
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`During AT&T’s work on Project Angel, AT&T created a
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`number of confidential documents, data, and source code related to
`Project Angel and OFDMA wireless communication systems. AT&T
`took measures to ensure the confidentiality of Project Angel and to
`prevent its disclosure, including, upon information and belief, marking
`related documents, data, and source code “proprietary” and/or
`“confidential,” covering windows in buildings with metalized film to
`prevent non-authorized personnel from electronically eavesdropping on
`AT&T personnel associated with Project Angel, and requiring
`employees working on Project Angel to sign a non-disclosure
`agreement (“NDA”). AT&T also applied for and obtained several
`patents related to Project Angel and OFDMA technology. AT&T
`offered Project Angel for sale as early as August 1999.
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`Upon information and belief, several named inventors of the
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`Asserted Patents, including at least Xiaodong Li, Titus Lo, and Ruifeng
`Wang, were employed by AT&T or one of its subsidiaries, worked on
`Project Angel, and/or had access to AT&T’s wireless technology
`research and documentation.
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`* * *
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`Upon information and belief, named inventor Xiaodong Li was
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`employed by or interned with AT&T, and worked on Project Angel,
`and/or OFDMA wireless communication systems. In the early 2000s,
`Xiaodong Li co-founded a Broadstorm, and later formed Walbell, a
`predecessor-in-interest to Neo Wireless, in 2002-2003.
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`Upon information and belief, Xiaodong Li “proposed to
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`strategically hire key Project Angel engineers from AT&T.” See Order
`Denying Summary Judgment, Adaptix, Inc. v. Apple, Inc. et al, Civ. No.
`5:13-cv-01776-PSG, Doc. No. 404 at 4 (N.D. Cal. Jan. 15, 2015).
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`Other patents listing Xiaodong Li as a co-inventor have been
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`litigated in federal cases. Fact discovery in these cases established a
`record that Broadstorm had “pretty much . . . everything . . . on
`[AT&T’s] engineering side” and “several AT&T technical documents
`related to Project Angel.” Id.
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`4
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11988 Filed 01/12/24 Page 9 of 22
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`Upon information and belief, several named inventors of the
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`Asserted Patents, including at least Xiaodong Li and two additional
`named inventors (Kemin Li and Haiming Huang), were employed by
`Broadstorm and had access to or knowledge of AT&T’s wireless
`technology research and documentation, including Project Angel.
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`(Ex. 1, Defendants’ 11/16/22 Invalidity Contentions, pp. 31-35, 1001-1003.)
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`In these same November 2022 preliminary contentions, Defendants disclosed
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`their understanding of named inventor Ruifeng Wang’s role in Project Angel based
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`on the limited, publicly available information that Defendants had at that time:
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`Ruifeng Wang is listed as a co-inventor of the ’450 patent.
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`Ruifeng Wang was employed by an AT&T subsidiary from at least July
`2000 to January 2003, working on “[s]ystem design and technology
`innovation for broadband wireless systems (AT&T Angel Project).”
`See Ruifeng Wang LinkedIn Profile. Upon information and belief,
`Ruifeng Wang worked at a predecessor-in-interest to Neo Wireless
`from at least June 2004 to August 2008.
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`(Id., p. 1001.)
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`In addition to laying out these facts, Defendants’ November 2022 preliminary
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`contentions also explained how Project Angel is relevant to each of Neo’s asserted
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`patents. (Id., pp. 1004-1008.) And Defendants explained how the named inventors’
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`failure to disclose Project Angel to the USPTO during its examination of the asserted
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`patents renders the asserted patents unenforceable. (Id., pp. 1009-1010.)
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`5
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11989 Filed 01/12/24 Page 10 of 22
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`Neo’s motion omits these early and detailed disclosures regarding Project
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`Angel in support of Defendants’ invalidity and unenforceability defenses and
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`counterclaims.2
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`2.
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`Defendants diligently sought third-party discovery to
`support their contentions regarding Project Angel
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`Defendants explained in their preliminary contentions that they expected to
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`receive additional materials from “third parties” during discovery to support their
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`invalidity and unenforceability claims:
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`Discovery is ongoing in this case, and Defendants will supplement their
`contentions with respect to the Digital Broadband [Project Angel]
`system being in “public use” or “on sale” if and when more information
`becomes available. Indeed, Defendants expect to receive documents
`from third parties either through informal requests or under subpoenas
`that are believed
`to have knowledge, documentation, and/or
`corroborating evidence concerning the Digital Broadband [Project
`Angel] system being in “public use” or “on sale.”
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`(Id., p. 35.)
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`In December 2022, Defendants Ford, General Motors, FCA, Tesla and Toyota
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`served their respective amended answer and counterclaim that pleaded, with
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`specificity, their defense that the named inventors’ failure to disclose Project Angel
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`2 Neo does not move to strike Defendants’ unenforceability counterclaims relating
`to Project Angel, and Neo has no basis for doing so. As explained herein,
`Defendants pled unenforceability in their amended answers and counterclaims, and
`Defendants have made multiple disclosures to Neo in support of those pleadings.
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`6
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11990 Filed 01/12/24 Page 11 of 22
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`to the USPTO rendered the asserted patent claims unenforceable. (See e.g., ECF
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`No. 108, PageID.8584-8595.)
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`Over the subsequent months, Defendants served subpoenas seeking relevant
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`discovery. In March 2023, Defendants served a subpoena for documents and
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`deposition on AT&T regarding Project Angel. (ECF No. 209-5.) In April 2023,
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`Defendants also served subpoenas on Motorola and T-Mobile requesting, among
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`other things, discovery regarding Project Angel. (Ex. 2, 4/7/23 Subpoena to
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`Motorola, Request Nos. 6-8; Ex. 3, 4/7/23 Subpoena to T-Mobile, Request Nos. 6-
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`8.) In May 2023, Defendants served subpoenas on the third-party named inventors
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`of Neo’s asserted patents: Titus Lo, Ruifeng Wang, Xiaodong Li, Kemin Li, and
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`Haiming Huang. Each subpoena to the named inventors included a topic directed to
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`Project Angel. (Ex. 4, Request No. 6 for each subpoena.)
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`As Neo admits, third-party documents responsive to Defendants’ subpoenas
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`were produced starting in May 2023, and that production was not complete until
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`AT&T’s very large production in September 2023. (Mot. at 5.) On May 1, 2023,
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`Defendants supplemented their invalidity contentions based on the available
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`discovery at the time, and maintained their assertions that Project Angel rendered
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`the asserted patent claims invalid and unenforceable. (Ex. 5, 5/1/23 Invalidity
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`Contentions, pp. 36-37, 549-557.)
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`7
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11991 Filed 01/12/24 Page 12 of 22
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`On June 15, 2023, Defendants subpoenaed third parties CFIP NCF Holdings
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`LLC; Neocific, Inc.; Walbell Technologies, Inc.; and Waltical Solutions, Inc. (all of
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`which are affiliated with the named inventors and/or involved with the asserted
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`patents) for documents and testimony relating to Project Angel. (Ex. 6, 6/15/23
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`subpoena to CFIP NCF Holdings.) Defendants deposed Inventor Titus Lo on June
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`28, 2023, about Project Angel. (Ex. 7, pp. 88-92, 95-97, 101-102, 104-106, 111-
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`112, 115-116, 129.3) On August 1, 2023, Defendants then deposed inventor Ruifeng
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`Wang regarding Project Angel. Neo’s counsel attended both depositions.
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`Notably, despite the stipulated Protective Order entered in the case, Neo’s
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`counsel repeatedly encouraged named inventor Ruifeng Wang to withhold
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`information about Project Angel due to “confidentiality” concerns:
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`Can you please explain what project angel was?
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`Q.
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`MR. STEWART: I’ll just caution you here if you can answer at a high
`level.
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`THE WITNESS: Yeah.
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`MR. STEWART: That’s fine but I would remind you probably have
`confidentiality obligations to your former employer and so I wouldn’t
`go into too much detail.
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`* * *
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`Q. What did Project Angel use to assign a frequency time resource
`allocation?
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`3 Mr. Lo’s deposition transcript was designated Confidential Attorney Eyes Only
`pursuant to the Protective Order entered in this case. If the Court would like
`Defendants to file that transcript under seal, Defendants will do so.
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`8
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11992 Filed 01/12/24 Page 13 of 22
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`MR. STEWART: Object to form and same caution as before about
`getting into too much detail that’s confidential.4
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`Then, as Neo admits, third-party document production concerning Project
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`Angel concluded in September 2023. (Mot. at 5.) On December 20, 2023, which
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`was the Court’s deadline for serving final invalidity contentions, Defendants
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`provided Neo with claim charts comparing the documents and deposition testimony
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`collected through discovery (information Neo already had access to) to the asserted
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`patent claims that Neo elected following the Court’s claim construction ruling. (ECF
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`No. 209-7, PageID.11935.5)
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`B. Neo’s arguments in its motion lack merit
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`1.
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`Defendants did not “waive” Project Angel
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`Neo argues that Defendants did not identify Project Angel in their December
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`16, 2022 disclosure electing prior art pursuant to the Court’s Order. (Mot. at 4.) But
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`at that time, Defendants had not yet received the third-party documents and
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`deposition testimony outlined above. Once Defendants received this necessary
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`4 Mr. Wang’s deposition transcript was designated Confidential Attorney Eyes Only
`pursuant to the Protective Order entered in this case. If the Court would like
`Defendants to file that transcript under seal, Defendants will do so.
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`5 Defendants’ claim charts regarding Project Angel contain third-party information
`designated Confidential Attorney Eyes Only under the Protective Order. If the Court
`would like Defendants to file the Project Angel claim charts under seal, Defendants
`will do so.
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`9
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11993 Filed 01/12/24 Page 14 of 22
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`discovery and confirmed the facts stated in their contentions and amended pleadings,
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`Defendants included Project Angel (again) in their contentions served on the agreed
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`deadline of December 18, 2023.
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`Neo also asserts that Defendants waited until March 2023 to serve a subpoena
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`on AT&T concerning Project Angel. (Mot. at 5.) But as confirmed by Defendants’
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`November 2022 contentions and their December 2022 amended pleadings,
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`Defendants were diligently collecting – and disclosing to Neo – publicly available
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`information about Project Angel well before March 2023. The fact that Defendants
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`additionally subpoenaed third parties during fact discovery is hardly improper.
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`Despite its present arguments, Neo did not move to strike Project Angel in
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`March 2023 when Defendants began serving their subpoenas regarding Project
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`Angel, or in May 2023 when Defendants served supplemental invalidity contentions.
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`Instead, Neo waited until December 2023 – after the third-party discovery was
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`complete – to file its motion to strike. Neo’s motion is a transparent attempt to avoid
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`compelling evidence, produced by third-parties and the inventors of Neo’s patents,
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`that renders those patents invalid.
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`2.
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`Defendants have good cause for including Project Angel
`in their current invalidity contentions
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`Even if Neo’s present arguments had merit, which they do not, Defendants’
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`receipt of the third-party Project Angel materials during fact discovery, but after the
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`Court’s December 16, 2022 date for selecting prior art, constitutes “good cause” for
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`10
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`including Project Angel in their most recent contentions. As the Court noted in its
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`Order setting the deadlines for prior art election, good cause is a reasonable basis to
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`“bring back” an unelected prior art reference:
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`To ensure there will be no undue prejudice to a party, the Court
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`will remain flexible if a party shows good cause for additional claims
`or prior art references. See, e.g., Thought, Inc. v. Oracle Corp., No. 12-
`05601, 2013 WL 5587559 at *2 (N.D. Cal. Oct. 10, 2013) (“Even after
`requiring parties to limit the number of claims at issue for claim
`construction or trial, courts should allow patent holders to bring back
`in non-selected claims upon a showing of ‘good cause’ that the non-
`selected claims present unique issues of infringement or invalidity.”).
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`(ECF No. 102, PageID.8172.)6
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`In the cited Thought, Inc. opinion, the court held that a party’s election “is not
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`immutable” and that “recently secured discovery” is a “good cause” basis to “bring
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`back” unelected prior art. Thought, Inc., 2013 WL 5587559, *3. That is precisely
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`what occurred here. Numerous other courts have similarly held that new information
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`received in discovery is good cause for supplementing invalidity contentions. See,
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`e.g., Pisony v. Commando Consts., Inc., No. 6:17-cv-00055-ADA, 2020 WL
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`4934463, at *1 (W.D. Tex. Aug. 24, 2020) (“[I]invalidity contentions ‘need not
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`disclose ‘specific evidence nor do they require a [defendant] to prove its [invalidity]
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`case.’ … Instead, ‘[t]he purpose of invalidity contentions is to provide notice while
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`6 Neo asserts the Court’s December 20, 2023 deadline for invalidity contentions “is
`intended to allow last-minute changes to contentions prompted by the Court’s claim
`construction.” (Mot. at 10, emphasis in original.) But the Court’s Order contains
`no such language and instead recognizes that “good cause” may be shown.
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`11
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11995 Filed 01/12/24 Page 16 of 22
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`discovery is intended to develop details so that legal theories become more concrete
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`as the litigation progresses.’”); Garrity Power Servs. LLC v. Samsung Elecs. Co.,
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`No. 2:20-CV-00269-JRG, 2021 WL 4894262, at *2–4 (E.D. Tex. Oct. 19, 2021)
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`(granting accused infringer leave to amend its invalidity contentions to include
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`information obtained through third party discovery of a prior art system it had
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`identified to the patentee in its original invalidity contentions).
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`3.
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`Neo’s cited cases are not on point
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`Despite the weight of authorities, Neo relies on three cases that are inapposite.
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`It first cites Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 16-cv-
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`13456, 2019 WL 2171262, at *3 (E.D. Mich. May 20, 2019). (Mot. at 7.) But in
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`that case, not only did BesTop serve invalidity contentions that “differed markedly”
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`from those made during discovery, but BesTop served them after the close of fact
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`discovery, after expert discovery, and after the summary judgment and Daubert
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`deadlines. In the present case, in contrast, Defendants asserted Project Angel in all
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`of their invalidity contention disclosures that were all served during fact discovery
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`and before expert discovery even begins. And, unlike Webasto, the reason for
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`Defendants’ supplementation and election of Project Angel in their most recent
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`disclosures was the receipt of discovery from AT&T and other third parties. Neo
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`has been familiar with that discovery, and has known about Defendants’ ongoing
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`12
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11996 Filed 01/12/24 Page 17 of 22
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`pursuit of Project Angel since their November 2022 preliminary invalidity
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`contentions. Webasto is therefore not on point.
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`Neo also cites Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods.,
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`LLC, No. 09-C-0916, 2011 WL 13077073, at *1 (E.D. Wis. Aug. 26, 2011). But in
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`that case, the court denied Kimberly Clark’s motion to strike invalidity opinions
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`presented in First Quality’s expert report, because (1) those opinions were based on
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`information learned during the course of discovery, and (2) they were based on
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`invalidity contentions that were served before the close of fact discovery. As in
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`Kimberly-Clark, Defendants in this case repeatedly and consistently disclosed
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`Project Angel in their various invalidity contentions served during fact discovery,
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`and expert discovery has not yet started.
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`Finally, Neo cites ChemFree Corp. v. J. Walter, Inc., 250 F.R.D. 570, 573
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`(N.D. Ga. 2007). (Mot. at 8-9.) In that case, the challenged invalidity contentions
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`identified prior art “that were not cited in any of Defendants' prior invalidity
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`contentions.” In the present case, in contrast, Neo admits that Project Angel was a
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`focus of Defendant’s invalidity contentions, unenforceability defenses, and
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`pleadings “from the outset of the case” and “was identified in Defendants’ initial
`
`invalidity contentions in November 2022.” (Mot. at 3, 8.)
`
`Neo’s three cited cases thus undermine its request to strike Defendants’
`
`invalidity contentions regarding Project Angel.
`
`13
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11997 Filed 01/12/24 Page 18 of 22
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`
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`C. Neo is not unfairly prejudiced by Defendants’ inclusion of Project
`Angel in their invalidity contentions
`
`As explained above, Defendants included Project Angel in each of their
`
`invalidity contentions, and Neo received the relevant third-party discovery at or very
`
`near the time the Defendants did. Neo also attended the relevant depositions. Neo
`
`can thus hardly claim that Project Angel is “new” or that Neo is now “prejudiced”
`
`by Defendants’ reliance on prior art repeatedly identified, including in November
`
`2022, December 2022, and May 2023.
`
`Moreover, Neo’s first responsive expert opinion on Project Angel, its rebuttal
`
`expert report, is not due until March 25, 2024 – more than three months after
`
`Defendants’ challenged contentions. And no trial date has been set in any of the
`
`MDL cases. Neo thus has plenty of time to formulate a response, if any, to
`
`Defendants’ contentions, which as explained above are based on information Neo
`
`has always had access to. See Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., No. C
`
`04-01830 CRB, 2006 WL 3456607, *2 (N.D. Cal. Nov. 29, 2006) (“Given that the
`
`disputed final invalidity contentions were filed more than fifteen months before the
`
`scheduled trial date, it is difficult to imagine what conceivable prejudice might be
`
`suffered by the Defendant at trial as a result of the timing of these ‘new’ invalidity
`
`contentions.”).
`
`Because Neo has plenty of time under the current schedule to respond to
`
`Defendants’ invalidity contentions with respect to Project Angel, and because no
`
`14
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`Case 2:22-md-03034-TGB ECF No. 215, PageID.11998 Filed 01/12/24 Page 19 of 22
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`
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`trial date has been set, Neo is not unfairly prejudiced by Defendants’ inclusion of
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`Project Angel in their recent (timely) invalidity contentions served while fact
`
`discovery remains open and expert discovery has yet to begin.
`
`
`
`III. CONCLUSION
`
`For the above reasons, the Court should deny Neo’s motion to strike Project
`
`Angel from Defendants’ invalidity contentions in this case.
`
`
`
`Date: January 12, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ John S. LeRoy
`
`John S. LeRoy (P61964)
`Christopher C. Smith (P73936)
`Kyle G. Konz (P79452)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone: (248) 358-4400
`jleroy@brookskushman.com
`csmith@brookskushman.com
`kkonz@brookskushman.com
`
`Counsel for Defendant
`Ford Motor Company
`
`
`
`
`
`
`
`
`/s/ Peter J. Brennan
`
`Reginald J. Hill (IL Bar #6225173)
`Peter J. Brennan (IL Bar #6190873)
`JENNER & BLOCK LLP
`353 N. Clark St.
`Chicago, IL 60654
`Telephone: (312) 222-9350
`rhill@jenner.com
`pbrennan@jenner.com
`
`Counsel for Defendants
`Nissan North America Inc. and Nissan
`Motor Acceptance Corporation A/K/A
`Nissan Motor Acceptance Company LLC
`
`15
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`

`Case 2:22-md-03034-TGB ECF No. 215, PageID.11999 Filed 01/12/24 Page 20 of 22
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`
`
`
`/s/ Joseph A. Herriges
`
`
`Joseph A. Herriges, MN Bar No.
`390350
`Conrad A. Gosen, MN Bar No.
`0395381
`James Huguenin-Love, MN Bar No.
`0398706
`FISH & RICHARDSON P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`herriges@fr.com, gosen@fr.com,
`huguein-love@fr.com
`
`Michael J. McKeon, DC Bar No.
`459780
`Christian Chu, DC Bar No. 483948
`Jared Hartzman, DC Bar No. 1034255
`Joshua Carrigan, VA Bar No. 96911
`FISH & RICHARDSON P.C.
`1000 Maine Avenue SW, Suite 1000
`Washington, DC 20024
`Telephone: (202) 783-5070
`mckeon@fr.com, chu@fr.com,
`hartzman@fr.com, carrigan@fr.com
`
`J. Michael Huget (P39150)
`Sarah E. Waidelich (P80225)
`HONIGMAN LLP
`315 East Eisenhower Prkwy., Ste. 100
`Ann Arbor, MI 48108
`Tel: (734) 418-4254
`mhuget@honigman.com,
`swaidelich@honigman.com
`
`Counsel for Defendants General
`Motors Company and General
`Motors LLC
`
`
`
`
`
`/s/ Thomas H. Reger II
`Thomas H. Reger II
`Texas Bar No. 24032992
`reger@fr.com
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`Telephone: (214) 747-5070
`
`Lawrence Jarvis
`Georgia Bar No. 102116
`jarvis@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, Georgia 30309
`Telephone: (404) 892-5005
`
`Elizabeth Ranks
`Massachusetts Bar No. 693679
`ranks@fr.com
`FISH & RICHARDSON P.C.
`1 Marina Park Drive
`Boston, Massachusetts 02210
`Telephone: (617) 542-5070
`
`J. Michael Huget (P39150)
`Sarah E. Waidelich (P80225)
`HONIGMAN LLP
`315 East Eisenhower Prkwy., Ste. 100
`Ann Arbor, MI 48108
`Tel: (734) 418-4254
`mhuget@honigman.com
`swaidelich@honigman.com
`
`Counsel for Defendant Tesla, Inc.
`
`
`16
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`

`

`Case 2:22-md-03034-TGB ECF No. 215, PageID.12000 Filed 01/12/24 Page 21 of 22
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`
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`
`
`
`/s/ Frank C. Cimino, Jr.
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`Jonathan L. Falkler
`Robert C. Tapparo
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`(202) 344-4569
`FCCimino@Venable.com
`MSWoodworth@Venable.com
`JLFalkler@Venable.com
`RCTapparo@Venable.com
`
`Patrick G. Seyferth (P47575)
`Susan M. McKeever (P73533)
`BUSH SEYFERTH PLLC
`100 W. Big Beaver Road, Suite 400
`Troy, MI 48084
`(248) 822-7800
`seyferth@bsplaw.com
`mckeever@bsplaw.com
`
`Attorneys for Defendant
`FCA US LLC
`
`/s/ John T. Johnson
`
`
`John T. Johnson (New York Bar
`No.2589182)
`FISH & RICHARDSON P.C.
`7 Times Square, 20th Floor
`New York, NY 10036
`Telephone: (212) 765-5070
`Facsimile: (212) 258-2291
`E-mail: jjohnson@fr.com
`
`Ruffin B. Cordell (New York Bar No.
`2589182)
`Benjamin J Christoff
`FISH & RICHARDSON P.C.
`1000 Maine Ave., S.W., Suite 1000
`Washington, D.C. 20024
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`E-mail: Cordell@fr.com
`
`Thomas Branigan (P41774)
`Matin Fallahi (P84524)
`Bowman and Brooke LLP
`41000 Woodard Avenue, 200 East
`Bloomfield Hills, MI 48304
`Telephone: (248) 205-3300
`Facsimile: (248) 205-3399
`thomas.branigan@bowmanandbrooke.com
`matin.fallahi@browmanandbrook.com
`
`Counsel for Defendants
`American Honda Motor Co., Inc. and
`Honda Development & Manufacturing of
`America, LLC
`
`
`
`17
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`

`

`Case 2:22-md-03034-TGB ECF No. 215, PageID.12001 Filed 01/12/24 Page 22 of 22
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`
`
`
`
`
`
`
`
`/s/ Paul R. Steadman
`
`
`Paul R. Steadman (Illinois Bar No.
`6238160)
`Matthew Satchwell (Illinois Bar No.
`6290672)
`Shuzo Maruyama (Illinois Bar No.
`6313434)
`DLA PIPER LLP (US)
`444 West Lake Street, Suite 900
`Chicago, IL 60606-0089
`Tel: 312.368.2135
`Fax: 312.251.2850
`paul.steadman@us.dlapiper.com
`matthew.satchwell@us.dlapiper.com
`shuzo.maruyama@us.dlapiper.com
`
`Brian Erickson (Texas Bar No. 24012594)
`DLA PIPER LLP (US)
`303 Colorado Street, Suite 3000
`Austin, Texas 78701-4653
`Tel: 512.457.7059
`Fax: 512.721.2263
`brian.erickson@us.dlapiper.com
`
`Counsel for Defendants Toyota Motor
`Corporation, Toyota Motor North
`America, Inc., Toyota Motor Sales, U.S.A.,
`Inc. and Toyota Moto