Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 1 of 12 PageID #: 4785
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`RFCYBER CORP.,
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`
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`v.
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`Plaintiff,
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`
`GOOGLE LLC and GOOGLE PAYMENT
`CORP.,
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`
`
`RFCYBER CORP.,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
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`§
`Case No. 2:20-cv-00274-JRG
`§
`(LEAD CASE)
`§
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`JURY TRIAL DEMANDED
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`§
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`Defendants.
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`Plaintiff,
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`Case No. 2:20-cv-00335-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`SAMSUNG ELECTRONICS CO. LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`v.
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`Defendants.
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`
`PLAINTIFF RFCYBER CORP.’S RESPONSE IN OPPOSITION
`TO SAMSUNG’S MOTION TO STRIKE THE PRIORITY DATE SET
`FORTH IN PLAINTIFF’S INTERROGATORY RESPONSES (DKT. 123)
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`
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 001
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 2 of 12 PageID #: 4786
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`
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`TABLE OF CONTENTS
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`Page(s)
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`FACTUAL BACKGROUND ............................................................................................. 1
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`ARGUMENT ...................................................................................................................... 2
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`A.
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`B.
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`C.
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`Legal Standard for Motion to Strike ....................................................................... 2
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`RFCyber Did Not Fail to Meet a Deadline or Disclose Information ...................... 3
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`1.
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`Samsung’s Cited Cases Are Inapplicable to this Situation ......................... 5
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`RFCyber’s Conception Date Is Important and Any Prejudice to Samsung
`Is of Its Own Making .............................................................................................. 6
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`I.
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`II.
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`
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`i
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 002
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 3 of 12 PageID #: 4787
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`Page(s)
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`TABLE OF AUTHORITIES
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`Cases
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`Elbit Sys. Land v. Hughes Network Sys., LLC, No. 2:15-cv-00037, 2017 WL 2651618
` (E.D. Tex. 2017) ............................................................................................................................ 5
`
`EMG Tech., LLC v. Chrysler Grp., LLC, No. 6:12-CV-259, 2013 WL 12147662, at *1
` (E.D. Tex. Jul. 3, 2013) .......................................................................................................... 3, 4, 5
`
`iFLY Holdings LLC v. Indoor Skydiving Germany GmbH, No. 2:14-cv-01080-JRG-RSP,
` 2016 WL 3680064, at *1 (E.D. Tex. Mar. 24, 2016)..................................................................... 2
`
`Integra Life Scis. Corp. v. Hyperbranch Med. Tech., Inc., No. 15-819-LPS-CJB,
` 2018 WL 3814614 (D. Del. Mar. 23, 2018) .................................................................................. 7
`
`Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-cv-00876-RS (JSC),
` 2017 WL 3888869 (N.D. Cal. Apr. 17, 2017) ............................................................................... 6
`
`Personalized Media Commc’ns LLC v. Apple Inc., No. 2:15-cv-1366-JRG-RSP,
` ECF No. 225 at 1 (E.D. Tex. Sep. 28, 2016) ................................................................................. 6
`
`RevoLaze LLC v. J.C. Penney Corp., No. 2:19-cv-00043, 2020 WL 2220158, at *3
` (E.D. Tex. May 6, 2020) ................................................................................................................ 7
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`SoftVault Sys., Inc. v. Microsoft Corp., No. 2:06-CV-16, 2007 WL 1342554
` (E.D. Tex. May 4, 2007) ............................................................................................................ 6, 7
`
`
`
`ii
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 003
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 4 of 12 PageID #: 4788
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`RFCyber did not violate P.R. 3-1(e) or fail to meet any deadlines. RFCyber set forth its
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`priority date—that is, the earliest application date to which the asserted patents can claim priority,
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`here September 24, 2006—in its P.R. 3-1 contentions. At the same time, pursuant to Rule 3-2(b),
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`RFCyber provided documents evidencing earlier conception and reduction to practice dates. That
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`is what the Rules require, and no Court in this District has held otherwise.
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`Later, after Samsung served Interrogatories that interpreted the priority date more broadly,
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`RFCyber explained that the patents were entitled to a conception date of December 2004 and were
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`diligently reduced to practice through the filing date of September 24, 2006.
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`Because RFCyber identified its priority date under the Rules, and because RFCyber timely
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`disclosed its conception date the first time Samsung requested it, there is no basis to strike
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`RFCyber’s conception date. Any prejudice to Samsung is of its own making, as it could have
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`served an Interrogatory to discover RFCyber’s conception date as early as May 26, 2021, or it
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`could have sought leave to amend its invalidity contentions to assert any earlier art.
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`I.
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`FACTUAL BACKGROUND
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`Each of the Patents-in-Suit claims priority, either on its own or through parent and
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`grandparent applications, to U.S. Patent Appl. No. 11/534,653, filed on September 24, 2006. On
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`May 12, 2021, RFCyber served its P.R. 3-1 Infringement Contentions and made its P.R. 3-2
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`Production. In conformance to the Rule’s requirements for each “patent that claims priority to an
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`earlier application,” RFCyber identified September 24, 2006 as the priority date to which each
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`asserted claim is entitled. RFCyber also served its Rule 3-2 production which included documents
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`relating to its conception and reduction to practice that occurred before September 24, 2006.
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`On June 17, 2021, Samsung served its First Set of Interrogatories to RFCyber, requesting,
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`among other things, a priority date for each asserted claim and details regarding conception and
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 004
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`reduction to practice. RFCyber timely responded on July 19, 2021, again indicating that the claims
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`were entitled to the September 24, 2006 priority date of the earliest filed application, and also
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`explaining that the claims were conceived in December 2004 and diligently reduced to practice.
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`In accordance with the Protective Order, RFCyber made its relevant source code available for
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`inspection at its counsel’s office. RFCyber later supplemented with a detailed narrative explaining
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`its conception and diligent reduction to practice and provided citations to the source code files.
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`Samsung was silent for more than two months before complaining on September 20, 2021,
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`that RFCyber’s conception date was earlier than the priority date disclosed under P.R. 3-1(e).
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`RFCyber explained the distinction between the two concepts as embodied in the Rules and offered
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`to supplement its response to clarify that September 24, 2006 was the patents’ priority date, but
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`that the patents’ conception date was December 2004. Samsung nevertheless filed this motion on
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`October 6, 2021, nearly three months after RFCyber provided its Response setting out the
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`December 2004 conception date and less than a month before the fact discovery cutoff. (Dkt. 63
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`at 3.) As of this writing, Samsung has not inspected RFCyber’s source code.
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`II.
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`ARGUMENT
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`A.
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`Legal Standard for Motion to Strike
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`The Court considers four factors when determining if a violation of a disclosure obligation
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`is “substantially harmless” and does not merit exclusion: 1) the importance of the evidence; (2) the
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`prejudice to the opposing party of including the evidence; (3) the possibility of curing such
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`prejudice by granting a continuance; and (4) explanation for a party’s failure to disclose. iFLY
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`Holdings LLC v. Indoor Skydiving Germany GmbH, No. 2:14-cv-01080-JRG-RSP, 2016 WL
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`3680064, at *1 (E.D. Tex. Mar. 24, 2016).
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`2
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 005
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 6 of 12 PageID #: 4790
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`B.
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`RFCyber Did Not Fail to Meet a Deadline or Disclose Information
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`RFCyber complied with all of its disclosure obligations; thus there is no violation of any
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`duty to disclose. RFCyber’s P.R. 3-1 contentions properly explained that each patent which
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`claimed priority to an earlier application was entitled to a priority date of September 24, 2006, the
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`earliest filing date in the chain of applications leading to the Asserted Patents. P.R. 3-1(e) (“For
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`any patent that claims priority to an earlier application, the priority date to which each asserted
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`claim allegedly is entitled.”); EMG Tech., LLC v. Chrysler Grp., LLC, No. 6:12-CV-259, 2013
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`WL 12147662, at *1 (E.D. Tex. Jul. 3, 2013) (“[T]he rule makes clear that the priority date
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`provided pursuant to P.R. 3-1 is related to claiming priority to ‘an earlier application.’”). At the
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`same time, in compliance with P.R. 3-2(b), RFCyber produced “documents evidencing the
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`conception [and] reduction to practice . . . of each claimed invention, which were created on or
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`before . . . the priority date identified pursuant to P.R. 3-1(e).” P.R. 3-2(b) (emphasis added).
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`Under the Rules, conception dates need not be disclosed under Rule 3-1(e). EMG Tech., 2013 WL
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`12147662, at *2 (“[T]he rule makes clear that a party may produce evidence of conception and
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`reduction to practice that predates the priority date identified pursuant to P.R. 3-1(e).”).
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`Samsung’s position—that a patentee must disclose its conception date under Rule 3-1(e)—
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`is nonsensical. First, Rule 3-1(e) specifically applies only to “any patent that claims priority to an
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`earlier application.” P.R. 3-1(e). Thus, there would be no obligation to disclose the conception date
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`if the patent does not claim priority to an earlier application: a nonsensical result. Indeed, the ’218
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`Patent does not claim priority to any earlier application; thus there is no conceivable violation of
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`P.R. 3-1 with respect to that patent, even if Samsung is correct. The far more reasonable
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`interpretation is that the priority date called for in P.R. 3-1(e) is the application priority date.
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`Second, Rule 3-2 specifically allows and calls for production of documents “evidencing
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`the conception [and] reduction to practice” made “on or before . . . the priority date identified
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`3
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 006
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`pursuant to P.R. 3-1(e).” P.R. 3-2 (b). A conception and reduction to practice before the P.R. 3-
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`1(e) date is exactly what RFCyber alleges. If the P.R. 3-1(e) disclosure must include the conception
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`date, as Samsung argues, one would expect there to be few, if any, relevant documents to produce
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`under P.R. 3-2(b), and P.R. 3-2(b) would fail to capture any documents relating to diligent
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`reduction to practice after the conception date. The chief purpose of P.R. 3-2(b)—early production
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`of documents supporting conception and reduction to practice prior to the filing of the earliest
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`priority document—would be eviscerated under Samsung’s interpretation of the rules.
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`At least one case in this District has dealt with this exact issue. In EMG Tech, the plaintiff
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`had listed its priority date as March 3, 2000, but produced documents showing conception on
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`September 9, 1999. 2013 WL 12147662, at *1. The defendants later served invalidity contentions
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`with cited art “dated after September 9, 1999 but before March 3, 2000.” Id. The plaintiff moved
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`for leave to amend its infringement contentions to change its priority date to September 9, 1999.
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`Id.
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`The defendants, like Samsung in this case, argued that the plaintiff’s compliance with the
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`rules was “sandbagging and gamesmanship” and that “the patentee should be required to disclose
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`the specific date it purports to rely on in its P.L.R. 3-1 disclosure to put defendants on notice of
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`the ‘target’ date for preparing invalidity contentions under P.L.R. 3-3.” Id. at *2. However, as the
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`Court explained:
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`Local Rule P.R. 3-1 requires that a party alleging patent infringement make certain
`disclosures. In particular, the rule states that the disclosures “shall contain the following
`information: ... (e) For any patent that claims priority to an earlier application, the priority
`date to which each asserted claim allegedly is entitled.” P.R. 3-1(e). Accordingly, the rule
`makes clear that the priority date provided pursuant to P.R. 3-1 is related to claiming
`priority to “an earlier application.”
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`Id. at *1 (emphasis added). The Court further noted that, because P.R. 3-2(b) requires the patentee
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`to produce “documents evidencing the conception, reduction to practice, design, and development
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`4
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 007
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`of each claimed invention, which were created on or before the date of application for the patent
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`in suit or the priority date identified pursuant to P.R. 3-1(e), whichever is earlier”, “the rule makes
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`clear that a party may produce evidence of conception and reduction to practice that predates
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`the priority date identified pursuant to P.R. 3-1(e).” Id. at *2 (emphasis added).
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`The Court therefore held that “Plaintiff has complied with the local patent rules and there
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`is no need for Plaintiff to amend its infringement contentions to list an earlier date.” Id. at *2.
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`RFCyber therefore properly listed September 24, 2006, as the priority date in its
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`Infringement Contentions. The Court should therefore deny Samsung’s motion.
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`1.
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`Samsung’s Cited Cases Are Inapplicable to this Situation
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`Samsung cites several cases (Dkt. 123, “Motion” at 5), but none are relevant to these
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`circumstances. In Elbit Sys. Land v. Hughes Network Sys., LLC, No. 2:15-cv-00037, 2017 WL
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`2651618 (E.D. Tex. 2017), the Court excluded reliance on a supplemental interrogatory response
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`that sought to change the priority date of a patent nine days before the close of fact discovery. Id.
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`at *9-10. The Court there did not rely on Rule 3-1, but instead determined that updating an
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`interrogatory response at the close of fact discovery was untimely. Id. Here, RFCyber has
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`consistently stated that its patents had conception dates in December 2004, and its only supplement
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`was to provide a detailed description of the facts and supporting evidence. Indeed, it is Samsung
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`who waited until the end of fact discovery to raise objections to RFCyber’s timely disclosure.
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`Samsung’s other cases are even less applicable. For example, in SoftVault Sys., Inc. v.
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`Microsoft Corp., No. 2:06-CV-16, 2007 WL 1342554 (E.D. Tex. May 4, 2007), the plaintiff sought
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`to change its application-based priority date based on the plaintiff’s discovery that “priority of the
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`claims-at-issue in this case is based on a previous application filed March 25, 1998.” Id. at *1. The
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`plaintiff in SoftVault did not offer a conception date as in this case. Id. The one-page decision in
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`Personalized Media Commc’ns LLC v. Apple Inc., No. 2:15-cv-1366-JRG-RSP, ECF No. 225 at 1
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`5
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 008
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 9 of 12 PageID #: 4793
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`(E.D. Tex. Sep. 28, 2016), provides no details as to how the plaintiff sought to change its priority
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`date; there is no indication that the decision had anything to do with disclosing a conception date.
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`C.
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`RFCyber’s Conception Date Is Important and Any Prejudice to Samsung Is
`of Its Own Making
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`Samsung admits that conception dates that antedate prior art are important, which weighs
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`against its motion. (Motion at 5-6.) Samsung instead relies on supposed prejudice that cannot be
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`cured by a continuance. (Motion at 6-7.) But Samsung admits that it has known of RFCyber’s
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`conception date since July 19, 2021, when there were more than three months remaining in
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`discovery. (Motion at 3.) Despite that knowledge, and despite the extreme prejudice Samsung now
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`complains of, Samsung sat and waited for two months before even raising the issue, and only
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`brought its motion with fewer than 4 weeks left in the discovery period. Samsung had ample
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`opportunity to cure any prejudice in the months it sat idle by simply conducting discovery
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`diligently and amending its invalidity contentions. Similarly, a continuance is not appropriate here,
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`both because there is no violation of the Rules and because Samsung’s own delay caused any
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`prejudice. Any issues with the priority date and conception date could have been addressed earlier.
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`Samsung’s cited cases all involve drastically different circumstances. As discussed above,
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`in Elbit, the plaintiff waited until 9 days remained in discovery to supplement an Interrogatory
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`Response to raise a new conception date. RFCyber provided its conception date here in its first
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`response to Samsung’s Interrogatory; indeed, Samsung could have served an Interrogatory earlier
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`(as early as May 26, 2021) and received its answer before its Invalidity Contentions were due. The
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`prejudice in Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 14-cv-00876-RS (JSC), 2017
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`WL 3888869 (N.D. Cal. Apr. 17, 2017), arose because the plaintiff there had not provided
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`conception and reduction to practice documents (required under N.D. Cal’s Rule 3-2(b)), and
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`sought to change its conception date two years after the case began (id. at *2); there is no such
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`6
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 009
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 10 of 12 PageID #: 4794
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`
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`complaint here. Similarly, in Integra Life Scis. Corp. v. Hyperbranch Med. Tech., Inc., No. 15-
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`819-LPS-CJB, 2018 WL 3814614 (D. Del. Mar. 23, 2018), the plaintiff changed its interrogatory
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`response to assert an earlier date a year after the Court ordered it to provide a full response setting
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`out that date. Id. at *2-3. No such order exists in this case. Unlike in RevoLaze LLC v. J.C. Penney
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`Corp., No. 2:19-cv-00043, 2020 WL 2220158, at *3 (E.D. Tex. May 6, 2020), RFCyber did not
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`“wait[] until the very end of the discovery period to amend its contentions;” indeed, Samsung
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`waited until the end of the discovery to raise this issue. And, unlike in Softvault, Samsung could
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`have cured any prejudice by seeking to amend its invalidity contentions, rather than staying silent
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`for months.
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`Accordingly, RFCyber’s P.R. 3-1(e) disclosure and Interrogatory response were both
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`entirely proper, and the Court should deny Samsung’s motion. Alternatively, if the Court finds that
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`amendment of RFCyber’s infringement contentions is required, it should allow RFCyber to amend
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`its infringement contentions in view of RFCyber’s reasonable reliance on EMG Tech. and the
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`Local Rules as set forth above.
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`Dated: October 20, 2021
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`Respectfully submitted,
`
` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`7
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 010
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`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF
`RFCYBER CORP.
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`
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`8
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 011
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`Case 2:20-cv-00274-JRG Document 130 Filed 10/20/21 Page 12 of 12 PageID #: 4796
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on October 20, 2021, a true and correct copy of the
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`above and foregoing document has been served on counsel of record via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3).
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`
`
`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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`RFCyber's Exhibit No. 2012, IPR2021-00981
`Page 012
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