Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 1 of 17 PageID #: 18675
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`BILLJCO, LLC,
`
`Plaintiff,
`
`v.
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`Plaintiff,
`
`BILLJCO, LLC,
`
`v.
`
`HEWLETT PACKARD ENTERPRISE
`COMPANY, ARUBA NETWORKS, LLC
`
`Defendants.
`
`Case No. 2:21-cv-00181-JRG
`(Lead Case)
`
`Case No. 2:21-cv-00183-JRG
`(Member Case)
`
`DEFENDANTS HEWLETT PACKARD ENTERPRISE COMPANY’S
`AND ARUBA NETWORKS, LLC’S
`MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS
`
`Petitioners' Ex. 1026, Page 1 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
`
`

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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 2 of 17 PageID #: 18676
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`IV.
`
`V.
`
`INTRODUCTION............................................................................................................. 1
`BACKGROUND ............................................................................................................... 2
`LEGAL STANDARD ....................................................................................................... 5
`ARGUMENT ..................................................................................................................... 5
`Any Delay By Defendants Is Minimal, And There Is No Impact On The
`A.
`6
`Proceedings
`Any Supposed Delay Was Excusable, And Defendants Were Diligent ..................... 6
`The BLIP System Is Important to The Merits of Defendants’ Case ........................... 8
`Plaintiff Will Suffer No Prejudice from Defendants’ Amendment .......................... 10
`D.
`CONCLUSION ............................................................................................................... 11
`
`B.
`
`C.
`
`Petitioners' Ex. 1026, Page 2 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`

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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 3 of 17 PageID #: 18677
`
`Exhibit 1
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`TABLE OF EXHIBITS
`
`BillJCo, LLC’s Disclosure of Asserted Claims and Infringement
`Contentions
`Defendants’ Invalidity Contentions Cover Pleading, dated November
`10, 2021
`Plaintiff BillJCo, LLC’s Answers to Defendants Hewlett Packard
`Enterprise Company and Aruba Networks, LLC’s First Set of
`Interrogatories (Nos. 1-14)
`Users Manual – Bluetooth Host Stack by Ericsson, Interface description
`of HCI
`March 11, 2022: Prey to Michalek Regarding Invalidity Contentions
`Amendment
`March 13, 2022: Zapata to Michalek Regarding Invalidity Contentions
`Amendment
`Grand Overseas, Inc. v. CVS Pharmacy, Inc., No. 2:15-cv-1401, Dkt.
`No. 32 (E.D. Tex. Oct. 28, 2016)
`Defendants’ First Amended Invalidity Contentions Cover Pleading,
`dated February 22, 2022
`Redline Showing Defendants’ Proposed Amendments to Invalidity
`Contentions
`
`Petitioners' Ex. 1026, Page 3 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 4 of 17 PageID #: 18678
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Allure Energy, Inc. v. Nest Labs, Inc.,
`84 F. Supp. 3d 538 (E.D. Tex. 2015) .........................................................................................5
`
`Alt v. Medtronic, Inc.,
`2006 WL 278868 (E.D. Tex. Feb. 1, 2006) .....................................................................6, 7, 10
`
`Arbitron, Inc. v. Int’l Demographics Inc.,
`2008 WL 4755761 (E.D. Tex. Oct. 29, 2008) .........................................................................10
`
`California Inst. of Tech. v. Broadcom Ltd,
`2022 WL 333669 (Fed. Cir. Feb. 4, 2022)...........................................................................9, 10
`
`Computer Acceleration Corp. v. Microsoft Corp.,
`503 F. Supp. 2d 819 (E.D. Tex. 2007) .......................................................................................5
`
`e-Watch, Inc. v. Apple, Inc.,
`No. 2:13-cv-1061-JRG-RSP, 2014 WL 12668405 (E.D. Tex. Dec. 5, 2014) ...........................5
`
`Grand Overseas, Inc. v. CVS Pharmacy, Inc.,
`No. 2:15-cv-1401, Dkt. No. 32 (E.D. Tex. Oct. 28, 2016) ........................................................7
`
`Keranos, LLC v. Silicon Storage Tech., Inc.,
`797 F.3d 1025 (Fed. Cir. 2015)..................................................................................................6
`
`Kroy IP Holdings, LLC v. Autozone, Inc., et al.,
`2014 WL 7463099 (E.D. Tex. Dec. 30, 2014) .............................................................5, 7, 8, 10
`
`Maxell Ltd. v. Apple Inc.,
`2020 WL 10456917 (E.D. Tex. Feb. 24, 2020) .........................................................................8
`
`Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314 (Fed. Cir. 2016)............................................................................................5, 10
`
`Motio, Inc. v. Avnet, Inc.,
`2015 WL 5952530 (E.D. Tex. Oct. 13, 2015) .......................................................................6, 8
`
`Paice LLC v. Toyota Motor Corp.,
`2008 WL 11278039 (E.D. Tex. Nov. 17, 2008) ........................................................................7
`
`Seven Networks, LLC v. Google LLC,
`2018 WL 3327927 (E.D. Tex. July 6, 2018) .............................................................................8
`
`Petitioners' Ex. 1026, Page 4 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 5 of 17 PageID #: 18679
`
`Shaw Indus. Grp, Inc. v. Automated Creel Sys., Inc.,
`817 F.3d 1293 (Fed. Cir. 2016)..................................................................................................9
`
`Sybase, Inc. v. Vertica Sys., Inc.,
`2009 WL 4574690 (E.D. Tex. Nov. 30, 2009) ........................................................................10
`
`Thomas Swan & Co. v. Finisar Corp.,
`2014 WL 12599218 (E.D. Tex. Apr. 29, 2014) .........................................................................8
`
`Uniloc 2017 LLC v. Google LLC,
`2019 WL 6465318 (E.D. Tex. Dec. 2, 2019) .............................................................................7
`
`Other Authorities
`
`Federal Rule of Civil Procedure 26(a)(1)(A)(ii) ..............................................................................3
`
`Patent Rule 3-1 .............................................................................................................................1, 2
`
`Patent Rule 3-2 .........................................................................................................................1, 2, 3
`
`Patent Rule 3-3 .................................................................................................................................2
`
`Patent Rule 3-4 .................................................................................................................................2
`
`Patent Rule 3-6(b) ........................................................................................................................1, 2
`
`Petitioners' Ex. 1026, Page 5 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 6 of 17 PageID #: 18680
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`I.
`
`INTRODUCTION
`
`Defendants Hewlett Packard Enterprise Company and Aruba Networks, LLC (collectively,
`
`“Defendants”) seek leave to amend their Invalidity Contentions to add one prior art system—the
`
`Ericsson Bluetooth Local Infotainment Point (the “BLIP System”)—pursuant to Patent Rule 3-
`
`6(b). Good cause exists because Defendants diligently investigated and obtained information
`
`regarding the BLIP System during the course of discovery and informed Plaintiff of the BLIP
`
`System within weeks of Plaintiff’s untimely disclosure of a new conception date. Pursuant to Local
`
`Patent Rule 3-1 and 3-2, Plaintiff was required to disclose its earliest priority date with its
`
`Infringement Contentions and to produce all documents evidencing the conception and reduction
`
`to practice of its invention on September 15, 2021. On that date, Plaintiff offered no conception
`
`date prior to the application dates on the face of the patent and produced no documents regarding
`
`conception or reduction to practice.
`
`Ignoring its obligations, Plaintiff disclosed a new conception date twenty-one weeks after
`
`it served its Infringement Contentions and over thirteen weeks after Defendants served their
`
`Invalidity Contentions. Plaintiff’s new conception date threatens a prior art system (referred to as
`
`GSM), as well as two prior art patents (referred to as Wu and Sanchez), which Defendants
`
`diligently researched and identified in reliance of Plaintiff’s Rule 3-1 and 3-2 disclosures. It also
`
`threatens 27 potential invalidity obviousness combinations related to GSM, Wu, and Sanchez. The
`
`Court should permit Defendants to supplement their Invalidity Contentions to address any loss of
`
`prior art diligently located in reliance on Plaintiff’s newly stated conception date. Plaintiff’s
`
`untimely disclosure of its conception date is all the more troubling because it impacts a key prior
`
`Petitioners' Ex. 1026, Page 6 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 7 of 17 PageID #: 18681
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`art system (GSM)1 under 35 U.S.C. § 102(g). Prior art systems are of heightened importance to
`
`Defendants’ case as a result of a recent change in the law surrounding IPR estoppel issued by the
`
`Federal Circuit. Plaintiff opposes this motion.
`
`II.
`
`BACKGROUND
`
`On September 15, 2021, Plaintiff served its infringement contentions and accompanying
`
`document productions pursuant to Patent Rules 3-1 and 3-2. Ex. 1; Dkt. 62 at 6. Plaintiff claimed
`
`that the Asserted Claims of U.S. Patent Nos. 8,761,804, 10,292,011, and 10,477,994 (collectively,
`
`the “Asserted Patents”) were entitled to a priority date of March 14, 2008. Ex. 1 at 3. Plaintiff
`
`conveniently attempted to reserve the right to “rely on pre-filing conception and/or reduction to
`
`practice.” Id. Plaintiff withheld all documents relating to conception and reduction to practice
`
`on the basis that they were supposedly all “covered by attorney-client privilege.” Id. at 4.
`
`On November 10, 2021, Defendants served their invalidity contentions and accompanying
`
`document productions pursuant to Patent Rules 3-3 and 3-4. Ex. 2. In searching for prior art,
`
`Defendants relied on Plaintiff’s 3-1 and 3-2 disclosures, which identified no pre-application
`
`conception date no conception documents.
`
`To support its case, Defendants retained Dave Williams as a technical expert to assist with
`
`invalidity and non-infringement. Mr. Williams, who identified the BLIP System while diligently
`
`researching product prior art, was identified under the Protective Order on January 26, 2022. Prey
`
`Declaration ¶ 8. On February 22, 2022, despite informing Cisco two months prior (Dkt. 94),
`
`Plaintiff reversed course and claimed an earlier conception date, without seeking leave of Court as
`
`required by the Patent Rule 3-6(b). Ex. 3. Plaintiff included the following table in its February 22
`
`1 While Defendants’ invalidity chart for GSM includes printed publications prior to the October 1,
`2007 date, Defendants were investigating products released around and after October 1, 2007, to
`further illustrate the invalidity of the Asserted Claims.
`
`Petitioners' Ex. 1026, Page 7 of 17
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 8 of 17 PageID #: 18682
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`Answers to Defendants Hewlett Packard Enterprise Company and Aruba Networks, LLC’s First
`
`Set of Interrogatories (Nos. 1-14):
`
`Patent
`
`Priority Date
`
`Date of Conception Date of Reduction to Practice
`
`8,761,804
`
`March 14, 2008
`
`October 1, 2007
`
`March 14, 2008
`
`10,292,011
`
`October 3, 2008
`
`October 1, 2007
`
`October 3, 2008
`
`10,477.994 October 3, 2008
`
`October 1, 2007
`
`October 3, 2008
`
`Ex. 3 at 4. On that date, Plaintiff produced no documents regarding conception or reduction to
`
`practice, despite the local patent rules,2 the federal rules,3 and Defendants’ discovery request,4
`
`requiring Plaintiff to produce these documents earlier in the case. Plaintiff has also provided no
`
`explanation for its untimely disclosure of its conception date and failure to produce documents
`
`related to that conception date.
`
`After receiving these interrogatory responses, Defendants immediately revisited their
`
`Invalidity Contentions, Prey Declaration ¶ 9, and determined that Plaintiff’s tactics put at risk at
`
`least one prior art system and two prior art patents. It also puts at risk 27 proposed obviousness
`
`combinations. In order to address Plaintiff’s new conception date, Defendants worked diligently
`
`to locate relevant prior art. Prey Declaration ¶¶ 7-9. One week after Plaintiff’s interrogatory
`
`responses, Defendants filed their First Motion for Leave to Amend Invalidity Contentions to add
`
`2 Patent Rule 3-2 required Plaintiff to produce “[a]ll documents evidencing the conception . . . of
`each claims invention, which were create on or before the date of application for the patent-in-
`suit or the priority date identified pursuant to P.R. 3-1(e), whichever is earlier.”
`3 Federal Rule of Civil Procedure 26(a)(1)(A)(ii) requires Plaintiff to produce “a copy—or a
`description by category and location—of all documents, electronically stored information, and
`tangible things that the disclosing party has in its possession, custody, or control and may use to
`support its claims or defenses.”
`4 Defendants’ Interrogatory No. 1 requested “all documents that support or corroborate said sates
`and/or diligence contentions . . . .” Ex. 3 at 3.
`
`Petitioners' Ex. 1026, Page 8 of 17
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 9 of 17 PageID #: 18683
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`two prior art systems which they researched, disclosed, and promptly moved to include. Dkt. 94.
`
`That motion is still pending before the court. Dkt. 94. Defendants’ continued, diligent research
`
`revealed the BLIP System. Prey Declaration ¶ 9.
`
`Defendants first produced publicly available BLIP System documents on March 2, 2022.5
`
`Prey Declaration ¶ 10. On March 3, 2022, less than two weeks after Plaintiff served its
`
`interrogatory responses, Defendants served a third-party subpoena to Ericsson. Prey Declaration ¶
`
`9. Less than a week after serving the subpoena, Ericsson provided critical details regarding the
`
`BLIP System in documents that were not publicly available. Prey Declaration ¶ 11. These
`
`documents disclosed features that were not previously known to Defendants regarding the BLIP
`
`System document. Prey Declaration ¶ 11. Specifically, the BLIP System discloses the use of
`
`beaconing between a sending data processing system and a mobile processing system over a
`
`Bluetooth communications interface in order to communicate location-based information. Ex. 4.
`
`On March 11, 2022, four days after obtaining the documents from Ericsson, Defendants
`
`notified Plaintiff of their intent to amend their invalidity contentions to add the BLIP System. Ex.
`
`5 (Prey to Michalek Re Amended Invalidity Contentions). Defendants also provided a copy of
`
`their amended pleading and accompanying invalidity charts on March 13, 2022. Ex. 6 (Zapata to
`
`Michalek Re Amended Invalidity Contentions). The parties met and conferred on March 15, 2022,
`
`and Plaintiff stated that it opposed the motion to amend.
`
`Fact discovery and opening expert reports are due March 21, 2022. Dkt. 44 at 3. Expert
`
`discovery closes on April 25, 2022. Id. Dispositive motions are not due until May 2, 2022, and
`
`jury selection is set to commence on August 8, 2022. Id. at 1, 3.
`
`5 Defendants had to re-Bates stamp this set of production due to overlapping Bates numbering.
`Defendants reproduced the same documents with the corrected Bates number on March 4, 2022.
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`III.
`
`LEGAL STANDARD
`
`The Local Patent Rules “exist to further the goal of full, timely discovery and provide all
`
`parties with adequate notice and information with which to litigate their cases.” Computer
`
`Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007). Under the
`
`Local Rules of this Court, leave to amend invalidity contentions “may be made only by order of
`
`the court, which shall be entered only upon a showing of good cause.” P.R. 3-6(b). The Court
`
`weighs multiple factors in determining whether good cause exists for leave to amend invalidity
`
`contentions, including but not limited to: (1) the length of the delay and its potential impact on
`
`judicial proceedings; (2) the reason for the delay, including whether it was within the reasonable
`
`control of the movant; (3) whether the offending party was diligent in seeking an extension of
`
`time; (4) the importance of the particular matter; and (5) the danger of unfair prejudice to the
`
`nonmovant. Allure Energy, Inc. v. Nest Labs, Inc., 84 F. Supp. 3d 538, 540-41 (E.D. Tex. 2015).
`
`IV.
`
`ARGUMENT
`
`Courts in the Eastern District of Texas have granted leave to amend invalidity contentions
`
`where any prejudice to Plaintiff is self-inflicted, the defendants have acted diligently upon learning
`
`new information, where information is critical to Defendants’ case, or where a change in the law
`
`has necessitated the amendment. See, e.g., e-Watch, Inc. v. Apple, Inc., No. 2:13-cv-1061-JRG-
`
`RSP, 2014 WL 12668405 (E.D. Tex. Dec. 5, 2014); Kroy IP Holdings, LLC v. Autozone, Inc., et
`
`al., 2014 WL 7463099 (E.D. Tex. Dec. 30, 2014); Mortgage Grader, Inc. v. First Choice Loan
`
`Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016). As discussed below, each of these facts supporting
`
`amendment are present, in this case, as discussed below.
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 11 of 17 PageID #: 18685
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`A.
`
`Any Delay By Defendants Is Minimal, And There Is No Impact On The
`Proceedings
`
`Defendants file this motion three weeks after Plaintiff disclosed to them a new conception
`
`date on February 22, 2022, and before the close of fact discovery on March 21, 2022. This three-
`
`week period is shorter than other such motions this Court has granted. See Motio, Inc. v. Avnet,
`
`Inc., 2015 WL 5952530, at *3-4 (E.D. Tex. Oct. 13, 2015); Alt v. Medtronic, Inc., 2006 WL
`
`278868, at *3-4 (E.D. Tex. Feb. 1, 2006). During this time, Defendants diligently worked to obtain
`
`information regarding the BLIP System. Prey Declaration ¶ 7-9.
`
`Defendants’ amendment also comes prior to the close of fact and expert discovery. Both
`
`sides are still engaging in the production of documents and written discovery and taking
`
`depositions. In addition, Plaintiff’s rebuttal expert report on invalidity of the Asserted Patents is
`
`not due for one month. Plaintiff is left ample time to address Defendants’ limited supplement and
`
`will have an opportunity to depose Defendants’ technical expert on the BLIP System. Further,
`
`Defendants’ request will not impact the schedule, as Defendants do not request an extension or
`
`alteration of the Court ordered schedule for opening expert reports or otherwise.
`
`B.
`
`Any Supposed Delay Was Excusable, And Defendants Were Diligent
`
`While Defendants diligently investigated product prior art, any alleged delay is a direct and
`
`unavoidable result of Plaintiff’s late disclosure of its conception date. Plaintiff has yet to provide
`
`any explanation for its late disclosure of its conception date or failure to produce conception
`
`documents. Infringement contentions “require parties to crystallize their theories of the case” to
`
`“prevent the shifting sands approach to claim construction.” Keranos, LLC v. Silicon Storage
`
`Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015). Yet Plaintiff concealed its conception date with
`
`an assertion of privilege, only to reveal it to Defendants twenty-one weeks after serving its
`
`Infringement Contentions. See Ex. 2 at 4 (“BillJCo’s documents evidencing conception and
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 12 of 17 PageID #: 18686
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`reduction to practice are covered by attorney-client privilege.”). There is no excuse, especially
`
`given that Plaintiff disclosed its earlier conception date to Cisco nearly 2 months prior to
`
`Defendants. Indeed, Defendants were only made aware of this claimed conception date one week
`
`before Plaintiff served its February 22 Interrogatory Responses. Defendants could not “reasonably
`
`meet” the deadlines laid out by this Court with any degree of diligence, because Defendants were
`
`not on notice of Plaintiff’s claimed conception date. Kroy IP Holdings, 2014 WL 7463099; Paice
`
`LLC v. Toyota Motor Corp., 2008 WL 11278039 (E.D. Tex. Nov. 17, 2008). This alone supports
`
`providing Defendants’ leave to amend their invalidity contentions. Id.; see also Alt, 2006 WL
`
`278868 at *5.
`
`Further, Defendants “exercised diligence in discovering the prior art.” Uniloc 2017 LLC v.
`
`Google LLC, 2019 WL 6465318, at *1 (E.D. Tex. Dec. 2, 2019). Defendants’ technical expert
`
`discovered the BLIP System in late January—only a few weeks before Plaintiff’s February 22
`
`Interrogatory Responses. Defendants then worked diligently to locate relevant documents
`
`regarding the BLIP System, as evidenced by Defendants serving Ericsson with a subpoena less
`
`than two weeks after Plaintiffs identified its new conception date. Prey Declaration ¶ 9. Second,
`
`the requested Ericsson BLIP System documents were not publicly available. Grand Overseas, Inc.
`
`v. CVS Pharmacy, Inc., No. 2:15-cv-1401, Dkt. No. 32 (E.D. Tex. Oct. 28, 2016) (granting leave
`
`to supplement invalidity contentions where the defendants later located non-public information
`
`from third-party) (attached as Exhibit 7). Third, the prior art system that Defendants seek to add is
`
`over twenty years old. Prey Declaration ¶ 9. The age of this system and the associated difficulty
`
`in discovering its existence and in obtaining relevant information further advocates for permitting
`
`Defendants’ amendment. See also Kroy IP Holdings, 2014 WL 7463099 (“[A]ge and difficulty in
`
`unearthing prior art is a factor to be considered in determining whether good cause has been shown
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 13 of 17 PageID #: 18687
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`to supplement invalidity contentions….”). Finally, Defendants worked quickly to prepare the
`
`proposed supplemental invalidity contentions and communicated its intent to seek leave to amend
`
`to Plaintiff a mere four days after obtaining the non-public BLIP System documents. Seven
`
`Networks, LLC v. Google LLC, 2018 WL 3327927, at *1 (E.D. Tex. July 6, 2018) (finding
`
`diligence was “greatly bolstered by the relative speed [, five days,] with which [the defendant]
`
`passed along the production of [prior art information]”).
`
`The BLIP System Is Important to The Merits of Defendants’ Case
`
`c.
`Here, the proposed amendment is of paramount importance and therefore supports
`
`providing leave to amend. Motio, Inc. v. Avnet, Inc., 2015 WL 5952530, at *3-4 (E.D. Tex. Oct.
`
`13, 2015) (leave to amend is permitted “far after the deadline for the service of invalidity
`
`contentions [where the] reference appears to be exceedingly relevant and may very well be of
`
`paramount importance”); Kroy IP Holdings, 2014 WL 7463099 (permitting amendment where the
`
`defendant “should have informed [plaintiff] at an earlier time of its intention” because “the
`
`proposed amendment relates to an important piece of evidence… it would be improper to bar
`
`[defendant] from raising that invalidity claim”). The Court need not “analyze the strength of
`
`[Defendants’] contentions at this stage,” Thomas Swan & Co. v. Finisar Corp., 2014 WL
`
`12599218, *2 (E.D. Tex. Apr. 29, 2014), but should consider Defendants’ “representations as to
`
`the nature of the [proposed] prior art.” Kroy IP Holdings, 2014 WL 7463099, *5. In determining
`
`whether a proposed amendment is important, “courts consider whether the prior art discloses
`
`features not present in the previously disclosed prior art are necessary or whether it is merely
`
`cumulative in light of the references already asserted.” Maxell Ltd. v. Apple Inc., 2020 WL
`
`10456917, at *2 (E.D. Tex. Feb. 24, 2020).
`
`The BLIP System is important because it anticipates and/or renders obvious the claimed
`
`inventions of the Asserted Patents. The BLIP System’s importance is shown by the fact that BLIP
`
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`proves that the concept of using beacons to transmit information for a variety of location-based
`
`applications existed before Plaintiff’s late disclosed October 1, 2007 conception date. The BLIP
`
`System discloses the use of beaconing to mobile processing systems in order to communicate
`
`context-related data records and support location-based applications. Ex. 4.
`
`Further, the BLIP System disclosed features not previously disclosed in other prior art
`
`systems. Specifically, the BLIP System discloses the use of beaconing between a sending data
`
`processing system and a mobile processing system over a Bluetooth communications interface in
`
`order to communicate location-based information. Ex. 4. The prior art systems already disclosed
`
`prove the concept of using beacons to transmit information for a variety of location-based
`
`applications via an infrared communications interface, not Bluetooth. Ex. 8. Thus, the BLIP
`
`System is not cumulative to the prior art system references already disclosed, and an amendment
`
`to add the system is necessary because it provides a unique ground for both anticipation and
`
`obvious, which would render the Asserted Patents invalid.
`
`Finally, a change in law occurred in early February that significantly increased the
`
`importance of prior art systems to Defendants’ case. In California Inst. of Tech. v. Broadcom Ltd,
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`2022 WL 333669 (Fed. Cir. Feb. 4, 2022), the Federal Circuit noted existing precedent that
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`Defendants were only estopped from asserting prior art previously asserted at the Patent Trial and
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`Appeal Board. Shaw Indus. Grp, Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016).
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`Broadcom overruled Shaw, holding instead that “estoppel applies not just to claims and grounds
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`asserted in the petition and instituted for consideration by the Board, but to all claims and grounds
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`not in the IPR but which reasonably could have been included in the petition.” 2022 WL 333669,
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`*11. Defendants filed petitions for inter partes review with respect to each of the asserted patents
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`Petitioners' Ex. 1026, Page 14 of 17
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`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 15 of 17 PageID #: 18689
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`in mid-January 2022.6 Broadcom, which issued just weeks after Defendants filed their inter partes
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`review petitions, may impose broad estoppel if their inter partes reviews are instituted. As a result
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`of this change in the law, the admittance of prior art systems, which cannot be brought in inter
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`partes review petition, and similarly are not subject to estoppel, are increasingly critical to
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`Defendants’ invalidity defense. This change in law further supports providing Defendants leave to
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`amend their invalidity contentions to add the BLIP System. See Mortgage Grader, Inc. v. First
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`Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016) (finding good cause for amendment where
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`a change in law had the potential to impact proceedings); see also Arbitron, Inc. v. Int’l
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`Demographics Inc., 2008 WL 4755761 (E.D. Tex. Oct. 29, 2008) (same).
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`Plaintiff Will Suffer No Prejudice from Defendants’ Amendment
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`D.
`The danger of unfair prejudice in this case is minimal, as any prejudice Plaintiff may suffer
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`is a direct result of its own conduct. See Kroy IP Holdings, 2014 WL 7463099 (permitting
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`amendment where plaintiff proposed new infringement theory after serving its contentions).
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`Plaintiff concealed its conception date until well after its obligations under the Local Rules and
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`even after Defendants served Invalidity Contentions. Further, insertion of the BLIP System results
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`in a mere 13 additional invalidity combinations for Plaintiff to analyze, which is far fewer than the
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`27 combinations put at risk by Plaintiff’s late disclosed conception date. Ex. 9. By contrast,
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`Defendants would be prejudiced by the exclusion of a prior art system tending to demonstrate the
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`Asserted Patents’ invalidity before Plaintiff’s late disclosed conception date.7
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`6 Defendants filed petitions for inter partes review on the ’804 and ’011 patents on January 14,
`2022, and a petition for inter partes review on the ’994 patent on January 18, 2022.
`7 Even though the Court has already issued its Markman order, courts in this district regularly
`permit amendments to invalidity contentions after Markman proceedings. Sybase, Inc. v. Vertica
`Sys., Inc., 2009 WL 4574690, at *3 (E.D. Tex. Nov. 30, 2009); see also Alt, 2006 WL 278868 at
`*5 (noting the plaintiff did not identify any particular arguments it would have asserted in response
`to the new prior art reference at the Markman when discussing the factors it considered when
`finding no prejudice).
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`Petitioners' Ex. 1026, Page 15 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`

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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 16 of 17 PageID #: 18690
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`V.
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`CONCLUSION
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`For the foregoing reasons, Defendants respectfully request that this Court grant
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`Defendants’ Motion for Leave to Amend Invalidity Contentions.
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`Dated: March 15, 2022
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`Respectfully submitted,
`
`/s/ Rose Cordero Prey
`Rose Cordero Prey
`Jeffrey Colin
`Elana B. Araj.
`GREENBERG TRAURIG, LLP
`One Vanderbilt Avenue
`New York, NY 10017
`Tel: (212) 801-9200
`Fax: (212) 801-6400
`Email: preyr@gtlaw.com
`Email: colinj@gtlaw.com
`Email: araje@gtlaw.com
`
`Melissa R. Smith
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`ATTORNEYS FOR HEWLETT PACKARD
`ENTERPRISE COMPANY AND ARUBA
`NETWORKS, LLC
`
`Petitioners' Ex. 1026, Page 16 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`Case 2:21-cv-00181-JRG Document 104 Filed 03/21/22 Page 17 of 17 PageID #: 18691
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Plaintiff s counsel of record were served with a trne and
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`con ect copy of the foregoing document by electronic mail on March 15, 2022.
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`Isl Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that counsel for Defendants met and confened with
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`counsel for Plaintiff. Counsel for Plaintiff indicated that it is opposed to this motion.
`
`Isl Melissa R. Smith
`Melissa R. Smith
`
`12
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`Petitioners' Ex. 1026, Page 17 of 17
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00426
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`