Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 1 of 10 PageID #: 4708
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`RFCyber Corp.,
`
`
`v.
`
`GOOGLE LLC, and GOOGLE PAYMENT
`CORP.
`
`
`Plaintiff,
`
`
`Defendants.
`
`Civil Action No. 2:20-cv-00274-JRG
`(Lead Case)
`
`
`Jury Trial Demanded
`
`Civil Action No. 2:20-cv-00335-JRG
`(Member Case)
`
`
`Jury Trial Demanded
`
`
`
`
`
`
`RFCyber Corp.,
`
`
`Plaintiff,
`
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA, INC.
`
`
`Defendants.
`
`
`
`
`DEFENDANTS SAMSUNG ELECTRONICS CO., LTD.’S AND
`SAMSUNG ELECTRONICS AMERICA, INC.’S MOTION TO STRIKE THE
`PRIORITY DATE SET FORTH IN PLAINTIFF’S INTERROGATORY RESPONSES
`
`
`ACTIVE 60123892v6
`
`Samsung Ex. 1046, Page 1 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`

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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 2 of 10 PageID #: 4709
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`I.
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`INTRODUCTION
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`Defendants Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd.
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`(collectively, “Samsung”) respectfully move to strike the priority date improperly asserted by
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`Plaintiff RFCyber Corp. in its interrogatory responses in violation of Local Patent Rules 3-1 and
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`3-6. On May 12, 2021, RFCyber served its Infringement Contentions, which included a September
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`24, 2006 priority date for all of the asserted patents. Samsung justifiably relied on that date in filing
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`four inter partes review petitions (“IPRs”), stipulating to not pursue certain invalidity arguments
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`in this case assuming institution of those IPRs, and preparing/serving its Invalidity Contentions.
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`RFCyber, however, subsequently asserted a new priority date – nearly two years earlier than the
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`priority date it had previously asserted – in its interrogatory responses. Despite having all of the
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`same facts regarding the timing of the alleged inventions of the asserted patents when it served its
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`Infringement Contentions, RFCyber concealed this earlier priority date and waited until after
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`Samsung had invested a significant amount of time and resources in its invalidity case to then shift
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`its priority date in order to swear behind Samsung’s prior art. Such gamesmanship should not be
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`permitted. See Elbit Sys. Land v. Hughes Network Sys., LLC, 2017 U.S. Dist. LEXIS 94495, at *29
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`(E.D. Tex. June 20, 2017) (granting motion to exclude late disclosure of an earlier priority date
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`after defendant had “justifiably developed invalidity positions under the assumption that the . . .
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`patent [was] entitled to” the priority date disclosed in Elbit’s P.R. 3-1 contentions).
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`Further, RFCyber did not seek leave to amend its P.R. 3-1(e) contention to assert a new
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`priority date, and instead tried to circumvent the Local Patent Rules. Recognizing that no good
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`cause exists to properly amend its Infringement Contentions with a new priority date, RFCyber
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`seeks to do so via its interrogatory responses. Needless to say, allowing RFCyber to engage in trial
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`by ambush and assert an earlier priority date at this late date unduly prejudices Samsung’s ability
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`to defend against RFCyber’s infringement allegations.
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`ACTIVE 60123892v6
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`1
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`Samsung Ex. 1046, Page 2 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`

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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 3 of 10 PageID #: 4710
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`Accordingly, Samsung respectfully requests that the Court strike RFCyber’s belated
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`attempt to assert an earlier priority date in its interrogatory responses, and preclude RFCyber from
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`presenting evidence or arguments that the asserted patents are entitled to a priority date earlier than
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`September 24, 2006.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Samsung Reasonably and Justifiably Relied Upon the September 24, 2006
`Priority Date set forth in RFCyber’s Infringement Contentions
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`RFCyber served its Infringement Contentions on May 12, 2021, in which it claimed that
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`each asserted claim “is entitled to the priority date of its earliest application, U.S. Patent
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`Application No. 11/534,653 with a filing date of September 24, 2006.” (Infringement Contentions
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`at 5). Approximately one month after receiving RFCyber’s Infringement Contentions, Samsung
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`filed four IPRs with the Patent Trial and Appeal Board (“PTAB”). (See IPR2021-00978, IPR2021-
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`00979, and IPR2021-00980 (filed June 8, 2021); IPR2021-00981 (filed June 15, 2021)). In those
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`IPR petitions, Samsung demonstrated that RFCyber’s patents are invalid over publications
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`available prior to September 24, 2006 – RFCyber’s claimed priority date. (See, e.g., IPR2021-
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`00978, Paper 2 at 12-13 (asserting U.S. Patent Appl. Pub. No. 2006/0165060 to Dua (“Dua”), filed
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`on January 21, 2005 and published on July 27, 2006 as the primary invalidating prior art)).
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`Additionally, Samsung advised the PTAB with respect to each IPR that “the effective filing date
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`of the [challenged] patent is September 24, 2006.” (See, e.g., id. at 6). Moreover, in light of
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`RFCyber’s September 24, 2006 priority date, Samsung filed a so-called Sotera stipulation with
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`this Court stipulating that it will not pursue any of the grounds asserted in the IPRs (if instituted)
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`or any other ground that could have been raised. (Dkt. 60).
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`On July 14, 2021, Samsung served its Invalidity Contentions, again relying on the
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`September 24, 2006 priority date. At no time before Samsung served its Invalidity Contentions,
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`ACTIVE 60123892v6
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`2
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`Samsung Ex. 1046, Page 3 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`

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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 4 of 10 PageID #: 4711
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`not even after Samsung filed its IPRs, did RFCyber contend that the asserted patents were entitled
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`to an earlier priority date or that the inventors conceived of or reduced to practice any of the
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`purported inventions prior to September 24, 2006.
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`B.
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`RFCyber Waited Until After Samsung Filed its IPRs and Served its Invalidity
`Contentions to Assert a December 12, 2004 Priority Date
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`On July 19, 2021, RFCyber served its Responses to Samsung’s First Set of Interrogatories,
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`in which RFCyber moved its alleged priority date by nearly two years – from September 24, 2006
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`to December 12, 2004 – based on an assertion of an earlier conception and reduction to practice.
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`(See RFCyber’s Interrogatory Responses at 7-12). Then, on September 14, 2021, RFCyber
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`supplemented its responses to add figures and excerpts from various RFCyber documents allegedly
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`demonstrating conception “at least as of December 2004” as well as referencing its own
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`confidential source code as purporting to demonstrate the inventors’ diligent reduction to practice.1
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`(See RFCyber’s First Supplemental Interrogatory Responses at 9-17). Further, RFCyber
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`maintained that “[e]ach Asserted Claim is entitled to a priority date at least as early as December
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`12, 2004.” (Id. at 32). Critically, RFCyber did not seek – and still has not sought – leave to amend
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`its Infringement Contentions to change its claimed priority date.
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`III. LEGAL STANDARD
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`The Local Patent Rules are “designed to require parties to crystalize their theories of the
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`case, and to prevent a ‘shifting sands’ approach to patent litigation.” Motorola, Inc. v. Analog
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`Devices, Inc., 2004 WL 5633735, at *1 (E.D. Tex. Apr. 8, 2004). Pursuant to P.R. 3-1(e), a party
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`claiming infringement must identify “the priority date to which each asserted claim allegedly is
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`entitled” in its infringement contentions. See also Elbit, 2017 U.S. Dist. LEXIS 94495, at *28.
`
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`1 RFCyber disclosed the existence of its source code in its May 12, 2021 Infringement Contentions,
`but it did not make it available for inspection until after August 27, 2021.
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`ACTIVE 60123892v6
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`3
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`Samsung Ex. 1046, Page 4 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 5 of 10 PageID #: 4712
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`In addition, P.R. 3-6 provides that a party’s infringement contentions “shall be deemed to
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`be that party’s final contentions” unless amendment or supplementation is expressly permitted
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`under P.R. 3-6(a) or by an order of the Court, “which shall be entered only upon a showing of good
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`cause.” P.R. 3-6(b). The four factors routinely applied to determine whether good cause exists are:
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`“(1) the explanation for the failure to meet the deadline; (2) the importance of the thing that would
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`be excluded; (3) potential prejudice in allowing the thing that would be excluded; and (4) the
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`availability of a continuance to cure such prejudice.” RevoLaze LLC v. J.C. Penney Corp., 2020
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`U.S. Dist. LEXIS 80265, at *5 (E.D. Tex. May 6, 2020). “The burden of proving good cause rests
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`with the party seeking the amendment.” Id. As demonstrated below, no good cause exists that
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`would permit RFCyber to amend its Infringement Contentions to include an earlier priority date.
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`Accordingly, RFCyber’s attempt to circumvent this district’s Patent Rules should not be permitted
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`and RFCyber should be precluded from relying on its untimely December 2004 priority date first
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`disclosed in its interrogatory responses.
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`IV. ARGUMENT
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`A.
`
`There Is No Justification for RFCyber’s Failure to Disclose the December 2004
`Priority Date in Its Infringement Contentions
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`With the evidence of an alleged earlier priority date in hand, RFCyber chose to disclose
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`September 24, 2006 as the priority date in its Infringement Contentions. Then, after Samsung
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`located and relied upon prior art from before September 24, 2006 (but after December 12, 2004),
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`and knowing that no good cause exists to amend its priority date contentions, RFCyber sought to
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`“back door” a previously undisclosed December 12, 2004 priority date through its interrogatory
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`responses. RFCyber’s improper attempt to shift its alleged priority date in an effort to pre-date
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`Samsung’s prior art should be rejected.
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`The documents that RFCyber cited in its original and supplemental interrogatory responses
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`ACTIVE 60123892v6
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`4
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`Samsung Ex. 1046, Page 5 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 6 of 10 PageID #: 4713
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`as alleged support for its earlier priority date are RFCyber’s own documents and source code and,
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`thus, were available to RFCyber at the time it served its Infringement Contentions. As this Court
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`observed in Elbit, “[i]n many instances, a party claiming infringement will possess facts supporting
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`priority before bringing the lawsuit.” 2017 U.S. Dist. LEXIS 94495, at *28.2 The Local Rules thus
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`require a plaintiff to “crystallize” its theories early in the litigation so as to “prevent a ‘shifting
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`sands’ approach to patent litigation.” Motorola, 2004 WL 5633735, at *1. RFCyber inexplicably
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`failed to assert the December 2004 priority date in its Infringement Contentions and cannot offer
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`any valid explanation for its failure to do so. See Softvault Sys. v. Microsoft Corp., 2007 U.S. Dist.
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`LEXIS 33060, at *4-5 (E.D. Tex. May 4, 2007) (finding the patentee “cannot establish diligence
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`in light of its failure to fully analyze [the] information” upon which it relied to change the asserted
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`claims’ priority date); see also id. at *4 (noting that “[t]he earlier application date is not ‘new
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`information’ that SoftVault acquired from Microsoft during discovery – it is information that was
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`publicly available before SoftVault filed suit.”) (emphasis in original). There is no justification for
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`RFCyber’s decision to wait until after Samsung filed its IPRs and served its Invalidity Contentions
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`to disclose its December 2004 priority date for the first time in its interrogatory responses. See
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`Personalized Media Comms. LLC v. Apple Inc., No. 2:15-cv-1366-JRG-RSP (E.D. Tex. Sept. 28,
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`2016), ECF No. 225 at 1 (“[T]he Court does not find good cause and sufficient diligence to grant
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`PMC leave to modify its disclosure under local Patent Rule 3-1(e).”). RFCyber’s belated attempt
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`to shift its priority date position is clear gamesmanship and an improper attempt to circumvent the
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`Court’s rules for providing and amending infringement contentions.
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`B.
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`Any Importance of the Undisclosed Priority Date to RFCyber is Substantially
`Outweighed by the Prejudice to Samsung
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`As this District previously noted, “[p]riority dates are an important element in patent
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`2 All emphasis added unless otherwise noted.
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`ACTIVE 60123892v6
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`5
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`Samsung Ex. 1046, Page 6 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 7 of 10 PageID #: 4714
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`infringement cases. An earlier priority date would necessarily shrink the relevant body of prior art
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`and could have a large impact on [a defendant’s] invalidity analyses.” Softvault Sys., 2007 U.S.
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`Dist. LEXIS 33060, at *5. But, allowing RFCyber to rely on the previously undisclosed December
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`12, 2004 priority date to antedate Samsung’s disclosed prior art would substantially and unfairly
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`prejudice Samsung. See Elbit, 2017 U.S. Dist. LEXIS 94495, at *29 (“While Elbit’s attempt to
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`antedate a prior art defense is undoubtedly important, the prejudice to Hughes is significant.”).
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`As discussed above, RFCyber strategically waited until after Samsung (i) invested
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`significant time and resources into developing its invalidity arguments, (ii) filed four IPRs, and
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`(iii) disclosed its Invalidity Contentions to raise a drastically new priority date through its
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`interrogatory responses. Samsung will be severely and unduly prejudiced if RFCyber is permitted
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`to rely on the new priority date because Samsung reasonably and justifiably relied upon the
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`September 24, 2006 priority date identified in RFCyber’s Infringement Contentions. For example,
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`the Elbit Court granted the defendant’s motion to strike the plaintiff’s earlier, previously
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`undisclosed, priority date as the “prejudice to [the defendant would be] significant.” See Elbit,
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`2017 U.S. Dist. LEXIS 94495, at *29 (concluding that the defendant “justifiably developed
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`invalidity positions under the assumption that the . . . patent [was] entitled to” the P.R. 3-1 priority
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`date). The Eastern District of Texas is not alone. “As other courts have noted, untimely alleged
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`early conception dates prejudice the accused infringer where the new date range pre-dates the
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`accused infringer’s prior art.” Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., 2017 WL 3888869,
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`at *2 (N.D. Cal. Apr. 17, 2017); see also Integra LifeSciences Corp. v. Hyperbranch Med. Tech.,
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`Inc., 2018 WL 3814614, at *3 (D. Del. Mar. 23, 2018) (striking “Plaintiffs’ belated shift in the
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`asserted priority date” given the resulting prejudice where “HyperBranch’s entire invalidity case .
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`. . relied on [the original] priority date”). Samsung should not be punished for RFCyber’s lack of
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`ACTIVE 60123892v6
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`Samsung Ex. 1046, Page 7 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 8 of 10 PageID #: 4715
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`diligence or gamesmanship, especially when it results in such a drastic and unfair change in
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`Samsung’s litigation position.
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`C.
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`The Prejudice Resulting from the Previously Undisclosed Priority Date
`Cannot be Cured by a Continuance
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`There is no availability of a continuance to cure the prejudice to Samsung at this late stage.
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`Fact discovery is currently set to close on November 1, 2021, the parties are engaged in claim
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`construction briefing with the Markman hearing scheduled for October 28, 2021 and jury selection
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`is set for March 21, 2022. There is no flexibility to modify the schedule to accommodate additional
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`discovery and what would amount to a complete redo of Samsung’s invalidity contentions. See
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`RevoLaze, 2020 U.S. Dist. LEXIS 80265, at *8-9 (noting that “if the patentee waits until the very
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`end of the discovery period to amend its contentions, the accused infringer is deprived of a fair
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`opportunity to conduct discovery addressing this contention”). Moreover, “a continuance would
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`not cure prejudice to [Samsung] arising from a narrowed body of prior art.” Softvault Sys., 2007
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`U.S. Dist. LEXIS 33060, at *6. In short, excluding RFCyber’s previously undisclosed priority date
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`is the only remedy that would prevent this prejudice to Samsung and adequately deter future
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`violations of the Local Patent Rules. See LML Patent Corp. v. JPMorgan Chase & Co., 2011 WL
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`5158285, at *6 (E.D. Tex. Aug. 11, 2011) (“[T]he Court does not find how any sanction short of
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`exclusion would adequately deter future violation of the Patent Rules and rectify the unfair
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`prejudice.”).
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`V.
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`CONCLUSION
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`For all of the foregoing reasons, Samsung respectfully requests that the Court (i) strike
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`RFCyber’s untimely assertion of a December 2004 priority date, and (ii) preclude RFCyber from
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`presenting evidence or arguments that the alleged inventions are entitled to a priority date earlier
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`than the September 24, 2006 date identified in its Infringement Contentions.
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`ACTIVE 60123892v6
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`Samsung Ex. 1046, Page 8 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 9 of 10 PageID #: 4716
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`Respectfully submitted,
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`By: /s/ Allan A. Kassenoff
`Melissa R. Smith
`Bar No. 24001351
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`Richard A. Edlin
`Allan A. Kassenoff
`Rose Cordero Prey
`Jeffrey R. Colin
`Vimal Kapadia
`GREENBERG TRAURIG, LLP
`MetLife Building, 200 Park Avenue
`New York, NY 10002
`Telephone: (212) 801-9200
`Facsimile: (212) 801-6400
`Email: edlinr@gtlaw.com
`Email: kassenoffa@gtlaw.com
`Email: preyr@gtlaw.com
`Email: colinj@gtlaw.com
`Email: kapadiav@gtlaw.com
`
`Attorneys for Defendants Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
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`
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`
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`Dated: October 6, 2021
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`ACTIVE 60123892v6
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`Samsung Ex. 1046, Page 9 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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`Case 2:20-cv-00274-JRG Document 123 Filed 10/06/21 Page 10 of 10 PageID #: 4717
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`CERTIFICATE OF CONFERENCE
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`On September 20, 2021, counsel for Samsung corresponded with counsel for RFCyber
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`demanding that RFCyber remove its conflicting priority date assertion included in its supplemental
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`interrogatory responses. RFCyber refused and provided no basis for its failure to disclose the
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`December 2004 date in its Infringement Contentions. On October 5, 2021, counsel for Samsung
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`conferred with counsel for RFCyber regarding the relief requested in this motion as required by
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`Local Rule 7(h). RFCyber confirmed that it opposes this motion. The parties’ discussions
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`conclusively ended at an impasse, leaving an open issue for the Court to resolve.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on this 6th day of October 2021, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`through the Court’s CM/ECF system under Local Rule CV-5(a)(3).
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`ACTIVE 60123892v6
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`Samsung Ex. 1046, Page 10 of 10
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00981
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