Case 2:22-md-03034-TGB ECF No. 97, PageID.7841 Filed 11/04/22 Page 1 of 26
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`
`2:22-MD-03034-TGB
`
`HON. TERRENCE G. BERG
`
`
`§
`§
`§
`§
`§
`§
`§
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`PLAINTIFF NEO WIRELESS, LLC’S RESPONSE TO DEFENDANTS’
`JOINT MOTION TO REDUCE THE NUMBER OF ASSERTED CLAIMS
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`

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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7842 Filed 11/04/22 Page 2 of 26
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`TABLE OF CONTENTS
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`
`INTRODUCTION ............................................................................................ 1
`I.
`II. BACKGROUND .............................................................................................. 2
`III. ARGUMENT .................................................................................................... 7
`A. The Court Should Deny Defendants’ Motion as Premature,
`Inequitable, and Failing to Comply with Local Rule 7.1(a) ........................ 7
`1. Defendants Did Not Comply With Local Rule 7.1(a) ............................ 7
`2. At Any Rate, Defendants’ Motion Is Premature .................................... 8
`3. Any Narrowing Proposal Must Be Reciprocal .....................................10
`B. Defendants’ Aggressive Narrowing Proposal is Unworkable ...................12
`1. Case Law Does Not Support Defendants’ Request ..............................12
`2. Defendants Have Failed to Show that Their Narrowing Proposal
`Would Satisfy Due Process in This Case .............................................13
`3. Defendants’ Complaints About Markman Proceedings are
`Misguided .............................................................................................17
`IV. CONCLUSION ...............................................................................................19
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`i
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7843 Filed 11/04/22 Page 3 of 26
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`TABLE OF AUTHORITIES
`
`Cases
`3D Systems, Inc. v. Envisiontec, Inc.
` No. 05-cv-74891, 2011 WL 4691937 (E.D. Mich. Oct. 6, 2011) ........................12
`
`Biedermann Techs. GmbH & Co. KG v. K2M, Inc.
` No. 2:18-cv-585, 2020 WL 1648482 (E.D. Va. Feb. 18, 2020) ..........................10
`
`Certusview Tech., LLC v. S&N Locating Servs., LLC
` No. 2:13-cv-346, 2014 WL 12603095 (E.D. Va. Mar. 19, 2014) ........................13
`
`Glaukos Corp. v. Ivantis, Inc.
` No. 18-cv-620, 2021 WL 4539047 (C.D. Cal. Aug. 11, 2021) ............................10
`
`High Point Sarl v. Sprint Nextel Corp.
` No. 09-cv-2269, 2010 WL 1292710 (D. Kan. Mar. 29, 2010) ............................13
`
`In re Katz Interactive Call Processing Litig.
` 639 F.3d 1303 (Fed. Cir. 2011) .................................................................... passim
`
`Jawbone Innovations, LLC v. Apple Inc.
` No. 6:21-cv-984, 2022 WL 707227 (W.D. Tex. Mar. 8, 2022) ...........................10
`
`Jiaxing Super Lighting Elec. Appliance Co. v. Maxlite, Inc.
` No. 19-cv-4047, 2020 WL 3980122 (C.D. Cal. Mar. 31, 2020) ..........................11
`
`Joao Control & Monitoring Sys., LLC v. Ford Motor Co.
` No. 13-cv-13615, 2014 WL 645246 (E.D. Mich. Feb. 19, 2014) ........................14
`
`Norgren Automation Solutions, LLC v. PHD Inc.
` No. 14-cv-13400, 2015 WL 10735173 (E.D. Mich. June 22, 2015) ............ 12, 18
`
`Signal IP, Inc. v. Fiat U.S.A., Inc.
` No. 14-cv-13864, 2016 WL 5027595 (E.D. Mich. Sept. 20, 2016) ....................... 9
`
`Stamps.com Inc. v. Endicia, Inc.
` 437 F. App’x 897 (Fed. Cir. 2011) ................................................................ 12, 18
`
`
`
`
`ii
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7844 Filed 11/04/22 Page 4 of 26
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`Other Authorities
`E.D. Tex. Model Order ............................................................................................11
`Fed. Cir. Adv. Council Model Order ................................................................ 10, 11
`Rules
`Fed. R. Civ. P. 26(f) ................................................................................................... 2
`L.R. 7.1(a) .................................................................................................................. 7
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`iii
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7845 Filed 11/04/22 Page 5 of 26
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`STATEMENTS OF ISSUES PRESENTED
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`1. Whether the Court should order Neo Wireless to unilaterally and dramatically
`reduce the scope of its case—far more dramatically than is usually required
`by most courts around the country—before Defendants have even provided
`invalidity contentions or any detailed technical discovery?
`Answer: No.
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`iv
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7846 Filed 11/04/22 Page 6 of 26
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`MOST APPROPRIATE AND CONTROLLING AUTHORITIES
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`• In re Katz Interactive Call Processing Litig. 639 F.3d 1303 (Fed. Cir. 2011)
`
`• Joao Control & Monitoring Sys., LLC v. Ford Motor Co. No. 13-cv-13615,
`2014 WL 645246 (E.D. Mich. Feb. 19, 2014)
`
`• Signal IP, Inc. v. Fiat U.S.A., Inc. No. 14-cv-13864, 2016 WL 5027595
`(E.D. Mich. Sept. 20, 2016)
`
`• Norgren Automation Solutions, LLC v. PHD Inc., No. 14-cv-13400, 2015
`WL 10735173 (E.D. Mich. June 22, 2015)
`
`v
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7847 Filed 11/04/22 Page 7 of 26
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`I.
`
`INTRODUCTION
`The Court has already denied Defendants’ request, and nothing has
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`changed since then to warrant revisiting that ruling.
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`The Court held a scheduling conference in this matter on September 16,
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`2022—a little over a month ago. At that conference, Defendants presented a
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`nearly identical request to the one they make now by motion. See Dkt. 81 (Joint
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`Discovery Plan) at 22 n.24. The only major change from Defendants’ previous
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`demand is that the present request is even more unreasonable and draconian,
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`moving up the deadline by two months (from January 18, 2023 to November 23,
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`2022) for Neo to drastically narrow its case (by almost 75%). The Court denied
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`the initial request in September, and Neo promised to confer with Defendants
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`about possible reciprocal narrowing frameworks in the future.
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`Rather than take Neo up on that offer, Defendants instead ignored the issue
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`for a few weeks, during which the only new development was Neo’s narrowing
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`of its case from a theoretical universe of more than 150 claims to the sixty-five
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`claims Neo asserts in its infringement contentions. And then, on a mere two days’
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`notice, Defendants moved for a more accelerated version of the same thing the
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`Court had previously denied. Counsel for Defendants did not even make a
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`perfunctory phone call to Neo’s counsel, pretending instead that the parties had
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`1
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7848 Filed 11/04/22 Page 8 of 26
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`already fully conferred on the issue in the lead up to the September scheduling
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`conference.
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`As Neo explained at the scheduling conference, the Court should reject
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`Defendants’ one-sided, premature proposal (even more so now given Defendants’
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`accelerated timeline). This case, which involves six patents covering six distinct
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`sets of inventions, does not match the profile of the usual case where early
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`narrowing makes sense. And Neo certainly cannot make educated decisions
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`about claim narrowing when Defendants have not even provided invalidity
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`contentions (and will do so only one week prior to their proposed narrowing
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`date), or a single detailed piece of technical information about the Accused
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`Products. The Court should deny Defendants’ motion (again), and allow the
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`parties to continue discussing appropriate reciprocal narrowing procedures as the
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`case progresses.
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`II. BACKGROUND
`The parties first broached the prospect of narrowing claims and prior art
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`during the Rule 26(f) conference process. In Defendants’ initial edits to the
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`parties’ joint scheduling order proposal, provided to Neo in August, Defendants
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`proposed a gradual, multi-staged (though still aggressive and one-sided)
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`narrowing framework. In that plan, Neo’s preliminary infringement contentions
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`to be served on September 28th would contain “an identification of no more than
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`2
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7849 Filed 11/04/22 Page 9 of 26
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`10 claims of each patent in suit…but no more than 40 total claims.” Ex. A (Aug.
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`5, 2022 Redline) at 12. This would be followed by a further reduction of claims
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`(to twenty total), and the first reduction in prior art by Defendant (to twenty-five
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`references), one month before the close of fact discovery. Id. at 17. In other
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`words, under Defendants’ own proposal, the parties would enter claim
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`construction proceedings with forty asserted claims, and only reduce to twenty
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`total claims well after claim construction, near the end of fact discovery.
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`Neo objected to that proposal for many of the same reasons set forth
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`below, but agreed to consider mutual narrowing as the case progressed. But when
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`Neo asked Defendants how many prior art references they would limit
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`themselves to in their invalidity contentions (to, at a minimum, make their
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`original proposal fully reciprocal), Defendants withdrew the proposal altogether
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`in late August. Compare Ex. B (Aug. 17, 2022 Redline) with Ex. A. The parties
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`proceeded to confer about a host of other scheduling issues for another month,
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`and only on the day the scheduling proposal was due did Defendants again insert
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`a one-sided narrowing proposal: this time requesting that Neo unilaterally narrow
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`to three claims per patent and eighteen claims total by January 18, 2023, the date
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`of the parties’ final identification of disputed claim terms. Ex. C (Sept. 14, 2022
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`Redline). Defendants’ only basis at the time for the renewed proposal was that it
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`3
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7850 Filed 11/04/22 Page 10 of 26
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`was necessary to accommodate the Court’s twenty-five-page Markman briefing
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`limits. Ex. D (Scheduling Order Email Chain).
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`The Court heard argument on this issue at the Scheduling Conference, and
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`by Defendants’ own admission, the Court denied its request, and only “said that
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`Defendants could raise the issue of claim reduction if it later became an issue.”
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`Mot. at 3. Yet Defendants offer no argument for why it “became an issue” in a
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`way that justifies revisitation by the Court so soon.
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`When Defendants first contacted Neo’s counsel by email on October 19,
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`2022, they stated their intention to hurriedly file this motion without any further
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`discussion, based solely on Neo’s prior opposition to the similar proposal in
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`September. Ex. E (LaHatte–Stewart Email Chain). So that the parties could
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`meaningfully meet and confer about this renewed request, Neo asked Defendants
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`to better explain (i) their rush to relitigate a decided issue; (ii) their authority for
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`their one-sided request; (iii) their plans for invalidity contentions and technical
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`discovery, which might impact claim selection; and (iv) the basis for their
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`allegations that claim reductions must be done prior to any claim construction
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`discovery. Id. Rather than respond to these questions or schedule a phone call,
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`Defendants simply declared the parties to be at an impasse, and filed this motion
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`the next day. Id.
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`4
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7851 Filed 11/04/22 Page 11 of 26
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`Defendants’ only excuse for the rushed filing was that “Neo increased the
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`number of asserted claims from six claims to 65 claims across 6 patents against
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`all nine Defendants,” and that this alleged “increase” in claims justified
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`burdening the Court with this redundant request. Id. But this is revisionist history.
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`Neo’s initial and amended complaints each contained claim charts setting forth
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`detailed infringement allegations for one exemplary claim from each of the six
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`asserted patents. See, e.g., No. 2:22-cv-11770, Dkt. Nos. 1 (representative
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`original complaint), 11 (representative amended complaint). The pleadings made
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`clear that these six charted claims—chosen from among the 152 total claims in
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`the six patents—were exemplary:
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`In the interest of providing detailed averments of infringement, Neo
`Wireless has identified below at least one claim per patent to
`demonstrate infringement. However, the selection of claims should
`not be considered limiting, and additional claims of the Patents-in-
`Suit (including method, system, and apparatus claims) that are
`infringed by Tesla will be disclosed in compliance with the Court’s
`rules related to infringement contentions.
`Dkt. 33 (a representative complaint) at ¶ 50 (emphasis added).
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`Nor is there any doubt that Defendants understood those six charted claims
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`to be exemplary. As discussed above, Defendants themselves originally proposed
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`a forty-claim limit, knowing that Neo’s infringement contentions would likely
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`contain more than that. Because Neo has, if anything, only narrowed the scope of
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`the case since the scheduling conference—from 152 possible claims to the sixty-
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`5
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7852 Filed 11/04/22 Page 12 of 26
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`five now at issue—Defendants have no new basis for re-urging this request,
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`much less a more prejudicial version.
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`Furthermore, in the same way that no new developments have increased
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`the need for narrowing, nothing that has happened in the case has increased
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`Neo’s ability to fully evaluate the narrowing of its case. As of this writing, the
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`only substantive development pertinent to claim selection that has occurred is
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`Neo’s service of its infringement contentions. While Neo has served written
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`discovery, Defendants have not produced any technical details regarding the
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`operation of the accused LTE functionality, and have only just begun identifying
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`their component suppliers and part identifiers, which Neo needs in order to seek
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`third-party technical discovery from those suppliers. Under the parties’ joint
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`discovery plan (Dkt. 84), Defendants will not serve their invalidity contentions
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`until November 16th (and have refused to tell Neo the amount of prior art
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`references per patent they expect to assert, see Ex. E). While some Defendants
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`have filed IPRs, they continue to stagger those filings, and filed another new IPR
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`as recently as one week ago. Finally, the parties do not even begin the process of
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`conferring about claim construction disputes in this case until December 1st, and
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`will not crystallize those disputes into a final identification of claim terms for
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`Markman briefing until January 18, 2023. In sum, with little new information
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`6
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7853 Filed 11/04/22 Page 13 of 26
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`about Defendants’ products or legal positions, Neo is in no better position now
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`than it was in September to adequately assess a narrowing framework.
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`III. ARGUMENT
`A. The Court Should Deny Defendants’ Motion as Premature,
`Inequitable, and Failing to Comply with Local Rule 7.1(a).
`1. Defendants Did Not Comply With Local Rule 7.1(a).
`Neo can only speculate as to why, mere weeks after the Court’s previous
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`denial, Defendants have re-urged this one-sided motion with such unnecessary
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`haste. But given the prematurity and unnecessary rush of Defendants’ motion, the
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`Court need not delve into the merits of Defendants’ proposal to deny it. As
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`described above, Defendants declined to even meaningfully meet and confer with
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`Neo about the motion, in violation of Local Rule 7.1(a). Defendants’ Motion
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`makes a perfunctory reference to having “met and conferred on this motion”
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`pursuant to the Rule, Mot. at 2, but does not even bother to state, per that rule,
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`that “there was a conference between attorneys…in which the movant explained
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`the nature of the motion or request and its legal basis and requested but did not
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`obtain concurrence in the relief sought.” (emphasis added) Neo only learned of
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`the legal authority allegedly supporting Defendants’ request when the brief was
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`filed, and remains unaware of the true rationale for Defendants’ renewal of a
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`recently denied request. Defendants have also never explained to Neo, or to the
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`Court, (i) why their proposal is one-sided and offers no insight or concession
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`7
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7854 Filed 11/04/22 Page 14 of 26
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`regarding Defendants’ forthcoming prior art assertions or technical discovery; (ii)
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`why the proposal differs so dramatically from the original framework Defendants
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`themselves proposed in August (see Ex. A); (iii) why Defendants moved their
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`requested narrowing date from the end of claim construction discovery (as
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`proposed at the Scheduling Conference) to the start of it; or (iv) why Defendants
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`believe Neo’s asserted claims are duplicative or likely to produce excessive claim
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`construction disputes.
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`Defendants may contend that they knew from the Scheduling Conference
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`that Neo would never agree to the specific, one-sided relief they have requested
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`(and they would be right). But they would be wrong to argue that further meeting
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`and conferring would have been futile. A proper conference still may have
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`allowed Neo to better understand Defendants’ expectations for the future scope
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`of the case and likely disputed issues, and the parties could have at least worked
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`to narrow the bounds of this dispute. But because Defendants have left Neo in the
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`dark, the Court should simply deny the Motion outright.
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`2. At Any Rate, Defendants’ Motion Is Premature.
`Neo remains willing to continue conferring with Defendants about
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`reciprocal narrowing at the proper time, and to organically narrowing its case as
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`soon as it is able, regardless of any agreement between the parties or order of the
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`Court. But even the cases cited by Defendants acknowledge that claim selection
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`8
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7855 Filed 11/04/22 Page 15 of 26
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`cannot be done without a full understanding of the key disputes in the case. “It is
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`also conceivable that a claim selection order could come too early in the
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`discovery process, denying the plaintiff the opportunity to determine whether
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`particular claims might raise separate issues of infringement or invalidity in light
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`of the defendants’ accused products and proposed defenses.” In re Katz
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`Interactive Call Processing Litig., 639 F.3d 1303, 1313 n.9 (Fed. Cir. 2011).1
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`And while Defendants make much of needing Neo to narrow its claims
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`before claim construction even begins, claim construction is in fact a key aspect
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`of the “proposed defenses” Neo must have the opportunity to understand before
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`narrowing. Indeed, Neo cannot fully appreciate the “separate issues of
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`infringement or invalidity” in play until it understands Defendants’ claim
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`construction positions. Cf. Signal IP, Inc. v. Fiat U.S.A., Inc., No. 14-cv-13864,
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`2016 WL 5027595, at *3 (E.D. Mich. Sept. 20, 2016) (observing that courts
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`“construe the disputed claim terms in the context of the infringement or invalidity
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`dispute….”). This is why many Courts, including Courts that have issued a
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`“Model Order” for case narrowing, do not even begin the claim narrowing
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`process until after the conclusion of claim construction discovery, when the
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`1 While Defendants misleadingly describe Katz as “limiting the Plaintiff to 15
`claims…before claim construction,” they ignore that this limitation actually
`occurred “after discovery.” Id. at 1309. That court’s case schedule apparently just
`happened to place claim construction after fact discovery, rather than at the outset
`of the case as in this matter.
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`9
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7856 Filed 11/04/22 Page 16 of 26
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`parties know the full state of play. See Model Order Focusing Patent Claims and
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`Prior Art to Reduce Costs (“E.D. Tex. Model Order”), at ¶ 2, available at
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`www.txed.uscourts.gov/sites/default/files/forms/ModelPatentOrder.pdf; Model
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`Order Limiting Excess Patent Claims and Prior Art (“Fed. Cir. Adv. Council
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`Model Order”2), at 1–2, available at
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`https://patentlyo.com/media/docs/2013/07/model-order-excess-claims.pdf;
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`Jawbone Innovations, LLC v. Apple Inc., No. 6:21-cv-984, 2022 WL 707227
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`(W.D. Tex. Mar. 8, 2022). Even Defendants’ own prior proposals acknowledged
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`as much, pushing more significant narrowing to the end of fact discovery or at
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`least the end of claim construction exchanges. See Ex. A; Dkt. 81 (Joint
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`Discovery Plan) at 22 n.24.
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`3. Any Narrowing Proposal Must Be Reciprocal.
`Finally, it is futile to talk about reducing the scope and burden of the case
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`if, while demanding that Neo reduce its asserted claims, Defendants remain free
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`to assert an unbounded number of prior art references throughout the case.
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`Unbounded invalidity contentions are just as likely to result in duplicative,
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`2 Though this Order is no longer sponsored or endorsed by the Federal Circuit, it
`is still often used by litigants and courts alike to guide the claim narrowing process.
`Biedermann Techs. GmbH & Co. KG v. K2M, Inc., No. 2:18-cv-585, 2020 WL
`1648482 (E.D. Va. Feb. 18, 2020) (using the Fed. Cir. Adv. Council Model Order
`as guidance); Glaukos Corp. v. Ivantis, Inc., No. 18-cv-620, 2021 WL 4539047
`(C.D. Cal. Aug. 11, 2021) (same).
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`10
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7857 Filed 11/04/22 Page 17 of 26
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`burdensome wasted effort by the parties and the Court as unbounded
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`infringement allegations. See Jiaxing Super Lighting Elec. Appliance Co. v.
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`Maxlite, Inc., No. 19-cv-4047, 2020 WL 3980122, at *2 (C.D. Cal. Mar. 31,
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`2020) (“The Court also agrees with Plaintiffs that Defendant should be required
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`to reciprocally narrow its prior art grounds after Plaintiffs have narrowed their
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`asserted claims…[T]his common practice promotes fairness in efforts to conserve
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`resources related to both infringement and invalidity.”). For the same reason, the
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`Model Orders cited above require that each narrowing phase affects both asserted
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`claims and asserted prior art. E.D. Tex. Model Order, at ¶ 2; Fed. Cir. Adv.
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`Council Model Order at 1–2. Because Defendants have, since August, repeatedly
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`resisted any efforts to discuss reciprocal narrowing—apparently believing that it
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`is premature to evaluate the narrowing of their prior art assertions—it stands to
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`reason that it is also premature to unilaterally force Neo to reduce claims.
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`Given all these complications left entirely unaddressed by Defendants’
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`motion, the Court should deny the motion, and again allow the parties to confer
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`over the next several weeks about a realistic, workable solution in the future (or
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`at a minimum, a more crystallized dispute).
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`11
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7858 Filed 11/04/22 Page 18 of 26
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`B. Defendants’ Aggressive Narrowing Proposal is Unworkable.
`1. Case Law Does Not Support Defendants’ Request.
`Even setting aside the inherent prematurity of Defendants’ proposal and
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`the lack of reciprocity, the magnitude of Defendants’ proposed narrowing is an
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`independent reason to deny their motion. In their brief, Defendants cherry pick
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`(without analysis3) a number of cases that allegedly support their three-claim-per-
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`patent limit. E.g., Br. at 9–10. This is a fruitless exercise, since Neo could cite
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`just as many that impose dramatically different requirements than Defendants
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`propose here, including the 2013 Federal Circuit Model Order, many cases from
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`Defendants’ own list, and Defendants’ own original proposal in this very case,
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`3 What analysis Defendants do provide in their Brief is misleading. They repeatedly
`characterize each cited case as ordering a claim reduction “before claim
`construction,” to make it seem as though those courts ordered the same relief
`requested here. Br. at 9–10. But while Defendants here ask Neo to reduce claims
`in the opening months of discovery, and before the parties have even identified
`terms for construction, the narrowing in the majority of the cited cases occurred
`after fact discovery (because the Court held claim construction proceedings after
`discovery), or at least at the end of claim construction discovery (rather than at the
`outset of it as Defendants propose). See, e.g., Ex. F (underlying district court
`scheduling order in Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897 (Fed. Cir.
`2011), showing that Markman proceedings did not begin until after the close of
`fact and expert discovery); Norgren Automation Solutions, LLC, No. 14-cv-13400,
`2015 WL 10735173, at *2 (E.D. Mich. June 22, 2015) (addressing narrowing only
`after the submission of a Joint Claim Construction Chart, and after the exchange
`of “contentions infringement and validity issues”). And 3D Systems, Inc. v.
`Envisiontec, Inc. involved a different procedure entirely, where the court severed
`and stayed all claims other than designated “paradigm claims.” No. 05-cv-74891,
`2011 WL 4691937, at *1 (E.D. Mich. Oct. 6, 2011).
`12
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7859 Filed 11/04/22 Page 19 of 26
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`see Ex. A. In fact, some Courts have declined to order any narrowing at all on
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`nearly identical facts to these, instead asking the parties to revisit the issue after
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`discovery has clarified the issues, just as Neo requests here. See High Point Sarl
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`v. Sprint Nextel Corp., No. 09-cv-2269, 2010 WL 1292710, at *3 (D. Kan. Mar.
`
`29, 2010) (“[T]he discovery cutoff is not imminent, and it would be premature to
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`limit the number of claims plaintiff may assert at this time.”); Certusview Tech.,
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`LLC v. S&N Locating Servs., LLC, No. 2:13-cv-346, 2014 WL 12603095, at *2
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`(E.D. Va. Mar. 19, 2014) (“Until the parties’ discovery disputes regarding both
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`the bases for Plaintiff’s claims and Defendants’ defenses to those claims are
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`addressed, it appears premature to require Plaintiff to arbitrarily limit its
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`claims.”). Ultimately, regardless of what other Courts have done, the parties
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`agree that this decision rests entirely within the Court’s discretion, based on the
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`facts of the case.
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`2. Defendants Have Failed to Show that Their Narrowing
`Proposal Would Satisfy Due Process in This Case.
`And the facts of this case, which Defendants make no attempt to grapple
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`with, do not warrant anything close to Defendants’ proposal. Key to the Federal
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`Circuit’s holding in In re Katz that the court’s claim narrowing did not violate
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`due process was that (1) “the defendants had made ‘a convincing showing that
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`many of the claims are duplicative,’” and (2) the plaintiff refused to “point out
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`those unselected claims that raised separate issues of infringement and
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`13
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7860 Filed 11/04/22 Page 20 of 26
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`invalidity.” 639 F.3d at 1311–12; see also Joao Control & Monitoring Sys., LLC
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`v. Ford Motor Co., No. 13-cv-13615, 2014 WL 645246, at *2 (E.D. Mich. Feb.
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`19, 2014) (noting that “Ford has made an initial showing that the patents-in-suit
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`are generally related (i.e., part of the same patent family) and contain many
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`similar claims”).
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`As to the first point, Defendants’ entire effort to demonstrate the
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`redundancy of Neo’s asserted claims is a single conclusory sentence: “The
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`asserted claims are largely duplicative and could be dropped by Neo without any
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`impact on its infringement case whatsoever.” Br. at 13. They offer no support for
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`that claim other than an unannotated table (Defs.’ Exhibit G), and could not
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`support such a claim, since the courts in Katz and Joao based their similar
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`determinations on “the common genealogy of Katz’s patents and the terminal
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`disclaimers in almost all of them.” E.g., Katz, 639 F.3d at 1311. Here, by
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`contrast, only two of the six asserted patents share a common specification, none
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`contain terminal disclaimers to any other asserted patent, and all six patents cover
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`distinct technology and read on distinct parts of the LTE specifications. Thus,
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`there is no redundancy across patents in Neo’s asserted claims.
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`Nor have Defendants made any effort to deny that the asserted claims
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`within each patent present unique issues of infringement and validity. At most,
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`Defendants’ Exhibit G demonstrates that Neo’s patents contain both apparatus
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7861 Filed 11/04/22 Page 21 of 26
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`and method claims for certain subject matter—itself a distinction that could
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`present distinct legal issues. For example, if Defendants later argue non-
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`infringement based on the physical implementation or presence of a component
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`of the apparatus, the same argument would not apply to the corresponding
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`method claim.4 Defendants (and Neo) are hampered in large part because of the
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`prematurity of this request, as discussed above—the parties simply do not know
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`all the disputes over infringement and validity, and so could not possibly identify
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`all the unique issues each claim presents. See, e.g., id. at 1313 (requiring plaintiff
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`to “show that a noninfringement defense raised by a specific defendant group to a
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`currently asserted claim does not apply in substantially the same manner to a
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`newly asserted claim,” or that “the defendants have raised serious issues of
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`validity on a currently asserted claim, but that the same defense does not affect
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`the newly asserted claim in substantially the same way.”). Neo cannot show, and
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`Defendants cannot rebut, that these distinctions among the asserted claims exist
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`when Defendants have not set forth their contentions yet. The same is true for
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`technical discovery and claim construction—Neo cannot show a meaningful
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`4 Perhaps more importantly, Defendants’ Exhibit G demonstrates that the only
`duplication Defendants can actually demonstrate also cuts against their main
`complaints of prejudice. If these claims are truly duplicative except for their status
`as method versus apparatus, they will not generate any distinct claim construction
`disputes, since the disputed claim terms will be present in both of the analogous
`claims.
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`
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`15
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7862 Filed 11/04/22 Page 22 of 26
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`distinction between claims based on the operation of the Accused Products or the
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`application of Defendants’ proposed claim constructions until Neo knows that
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`information.
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`But more importantly, even with the limited knowledge Neo does have—
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`from the few invalidity arguments made by Defendants to date in IPRs—there is
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`a clear indication that many of the asserted claims do pose unique issues. In three
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`of the five IPRs filed, Defendants had to resort to asserting multiple different
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`prior art combinations to challenge all of the asserted claims from each of the
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`respective patents. See IPR2022-01538 (’302 patent); IPR2022-01539 (’512
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`patent); IPR2023-00086 (’908 patent). For example, in the IPR seeking to
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`invalidate the ’302 patent—from which Neo has asserted 12 claims, making it
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`one of the most susceptible to Defendants’ three-claim narrowing framework—
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`Defendants raised seven distinct invalidity grounds, multiple of which are
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`required to cover all of the twelve asserted claims. Ex. G (IPR2022-01538,
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`Petition for Inter Partes Review of the’302 patent). In other words, even before
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`addressing infringement or claim construction issues, many of Neo’s asserted
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`claims have already demonstrated unique legal issues on invalidity. Because
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`Defendants did not offer any substantive analysis of the alleged duplication in
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`Neo’s asserted claims, the Court should deny the Motion, and allow the record to
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`16
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`Case 2:22-md-03034-TGB ECF No. 97, PageID.7863 Filed 11/04/22 Page 23 of 26
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`develop enough for the parties to fully evaluate whether that duplication truly
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`exists.
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`3. Defendants’ Complaints About Markman Proceedings are
`Misguided.
`Finally, unable to muster any evidence of duplication in Neo’s asserted
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`claims, Defendants fall back on generic allegations that narrowing will “reduce
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`the number of terms to be construed,” “focus fact and expert discovery,” and
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`“decrease the number of issues presented at summary judgment and trial.” Br. at
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`10–12. While it is objectively true that fewer claims could produce efficiencies in
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`the litigation, that is true in every case. Those platitudes do not explain why this
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`particular case warrants the intensive, one-sided, pre-claim construction
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`narrowing Defendants request here, rather than any of the host of other
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`frameworks endorsed by courts around the country.
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`Moreove