Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 1 of 10 PageID #: 2979
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`BLITZSAFE TEXAS, LLC,
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`Plaintiff,
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`v.
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`HONDA MOTOR CO., LTD, et al.,
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`Defendants.
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`No. 2:15-CV-01274 (Lead Case)
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`PLAINTIFF BLITZSAFE TEXAS LLC’S OPPOSITION TO DEFENDANTS’ MOTION
`FOR LEAVE TO SUPPLEMENT INVALIDITY CONTENTIONS
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`Plaintiff, Blitzsafe Texas, LLC (“Plaintiff” or “Blitzsafe”), files this opposition to
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`Defendants’ Motion for Leave to Supplement Invalidity Contentions (Dkt. 125) (“Motion”).
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`Defendants seek to supplement their invalidity contentions with citations to, and analysis of,
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`source code from a TOY/PAN interface. (Motion at 1.) Defendants’ Motion comes more than
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`six months after the due date of their invalidity contentions. Defendants’ original invalidity
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`contentions, served on January 19, 2016, relied on the TOY/PAN interfaces as prior art products
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`and disclosed that Edward Fischer had written the code for the TOY/PAN interface (Ex. D, at
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`14), and yet Defendants never subpoenaed Fisher’s documents, and did not subpoena any other
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`possible source of the code until May 13, 2016. In fact, Defendants had reason to know about
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`the source code many months prior to the due date of their invalidity contentions and failed to
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`pursue it.
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`Defendants were aware, at least as early as December 30, 2015, of a prior litigation
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`between Ford Motor Corporation (“Ford”) and Blitzsafe’s predecessor, Marlowe Patent
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 2 of 10 PageID #: 2980
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`Holdings, LLC (“MPH”), concerning one of the patents asserted in this case. (See Ex. A, at 21.)
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`In that case, the TOY/PAN source code was produced to Ford in 2015 by Mr. Fischer. (Dkt.
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`125-11.) Later in 2015, after the Ford case settled, the Toyota Defendants to this litigation
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`retained the same expert witness that Ford had retained and who had analyzed the TOY/PAN
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`product. (See Ex. B.) In December 2015, the Toyota Defendants filed multiple Petitions for
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`Inter Partes Review (“IPR”) of the patents at issue in this case with the support of this expert.
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`(Ex. A.) Attached to those IPR petitions were declarations prepared by their expert witness in
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`which he discusses his involvement in the prior Ford litigation. (See Ex. A and B.) Defendants’
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`review of the Ford case informed them that “Ford managed to locate a copy of the TOY/PAN
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`source code from the third-party author of that code.” (Motion, at 4.) Thus, Defendants became
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`aware of the prior litigation more than seven months ago, and it clearly informed them of the
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`location of the information that they now wish to use to supplement their invalidity contentions.
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`Despite knowing the location of the source code many months ago, Defendants now
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`assert that “any delay in disclosing these contentions is a direct result of Blitzsafe’s failure to
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`retain and produce its own source code.” (Motion, at 2.) In fact, it appears that although MPH’s
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`outside counsel obtained a copy of the source code that had been produced to Ford by Mr.
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`Fisher, that code was stamped “Attorneys Eyes Only” and was never provided to Ira Marlowe,
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`MPH’s principal. (Ex. C.) Therefore, Blitzsafe was not in possession of the source code and,
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`therefore, it was not collected or produce by Blitzsafe in this litigation.
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`Defendants have failed to explain how the new source code citations and analysis are
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`highly relevant or an improvement over the assertions made in Defendants’ initial invalidity
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`contentions. Defendants already contend in their invalidity contentions that the TOY/PAN
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`1 All exhibits to Blitzsafe’s opposition to Defendants’ motion for leave to supplement their
`invalidity contentions are attached to the declaration of Alessandra Messing, attached hereto.
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 3 of 10 PageID #: 2981
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`device is prior art to the asserted patents and contain all of the features of several asserted claims,
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`and Defendants’ expert submitted an affidavit in the Ford case that purports to support this
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`contention (and which is attached to the Motion as Dkt. 125-5.) The source code is therefore of
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`minimal value to Defendants because it is merely duplicative of their existing invalidity
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`contentions.
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`Moreover, Defendants have failed to show that an amendment at this late date would not
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`be prejudicial to Blitzsafe. Defendants’ entire argument regarding lack of prejudice assumes that
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`Blitzsafe had possession of the code but failed to produce it. Notably, Defendants’ Motion lacks
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`any evidence that the code was actually provided to MPH or Mr. Marlowe, and so Defendants’
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`allegations that Blitzsafe misrepresented whether it has possession of the code are unfounded.
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`As explained in further detail below, Defendants’ motion to supplement their invalidity
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`contentions should be denied.
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`I.
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`STATEMENT OF FACTS
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`A. Expert Witness Dr. Matheson and Defendants’ Awareness of Prior Ford Case
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`The TOY/PAN source code with which Defendants now wish to supplement their
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`invalidity contentions was produced on February 11, 2015 to Ford Motor Corporation (“Ford”),
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`in the earlier litigation between Blitzsafe’s predecessor, Marlowe Patent Holdings, LLC
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`(“MPH”), and Ford. (Dkt. 125-11, at ¶ 6.) The expert retained in that case by Ford was Thomas
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`G. Matheson, Ph.D. (See Ex. B, at 3.) Dr. Matheson was involved with the Ford case early on,
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`providing a declaration regarding the functionality and operation of the TOY/PAN interfaces
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`back in 2013. (See Dkt. 125-5.)
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`Shortly after the Ford case settled, in May 2015, Dr. Matheson was retained as an expert
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`by Defendant Toyota to produce declarations in support of a series of Petitions for Inter Partes
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 4 of 10 PageID #: 2982
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`Review (“IPR”), cases IPR2016-00418, IPR2016-00419, IPR2016-00421, and IPR2016-00422.
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`(See Ex. A, at 22; Ex. B.) These four IPR petitions were filed December 30, 2015, each with an
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`attached declaration by Dr. Matheson. (See Ex. B.) Dr. Matheson, in the Relevant Professional
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`Experience sections of his IPR declarations, describes his work in the Ford case. (See Ex. B, at
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`3.) Additionally, each petition filed by Defendants identifies the Ford case as a Related Matter.
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`(See Ex. A, at 2.)
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`B. Possession and Production of TOY/PAN Source Code
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`In the Ford case, Ford filed a Motion for Rule 11 Sanctions, but the Court denied the
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`motion as “a transparent effort to secure summary judgment, in the guise of Rule 11 sanctions.”
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`(Dkt. 125-8, at 8.) During discovery, Ford requested information from MPH that had been lost in
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`2006 due to a leak during a severe storm. (See Dkt. 125-7.) Documents and source code that
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`Ford sought were destroyed by mold and mildew, and MPH’s data server was subject to
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`flooding. (Id.) MPH attempted to recover the lost information, and had the server inspected by a
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`computer repair and upgrade center (the center where the server was purchased). (Id.) However,
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`the drive had crashed and the computer repair company could not recover the data. (Id.)
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`After Ford realized that MPH no longer had the source code, it served a document and
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`deposition subpoena on Mr. Fischer, an engineer who had previously performed work for
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`Blitzsafe. (Dkt. 125-11.) Mr. Fischer produced documents responsive to Ford’s subpoena,
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`including a copy of the TOY/PAN source code. (Id.) Mr. Marlowe, having been under the
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`impression that Mr. Fischer returned all copies of Blitzsafe’s intellectual property years earlier,
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`was rightfully upset. (See Dkt. 125-10.) Mr. Marlowe was also troubled by the fact that he had
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`informed Mr. Fischer of the flood and server crash that destroyed much of Blitzsafe's intellectual
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`2 Only IPR2016-00418 is attached as exemplary.
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 5 of 10 PageID #: 2983
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`property in 2006 and, in response, Mr. Fischer mentioned nothing of the copies of Blitzsafe’s
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`code that he had made and kept. (Id.)
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`On February 18, 2015, Ford’s attorney emailed the document production received from
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`Mr. Fischer to Mr. Kun Cho, MPH’s attorney at the time. (Dkt. 125-9.) The following day, Mr.
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`Cho responded to the Ford’s attorney’s email saying that he would provide the Fischer
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`production to Mr. Marlowe despite the fact that the code was marked “Attorneys Eyes Only.”
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`(Id.) Mr. Marlowe, however, never received Ed Fischer’s copy of the source code from Mr. Cho.
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`(Id.; see also Ex. C, at ¶2.) In fact, Blitzsafe has never received the TOY/PAN source code that
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`was sent to Ford’s counsel, and only now has a copy in its possession as a result of the
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`production from Ford to Defendants in this case. (Ex. C, at ¶3.)
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`C. Defendants’ Supplemental Invalidity Contentions
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`Defendants first requested the TOY/PAN interface source code from Blitzsafe on March
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`3, 2016. (Motion, at 5.) Defendants then waited nearly two months to contact Blitzsafe again to
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`inquire about the source code. (Dkt. 125-13.) Responding to Defendants’ inquiry, Blitzsafe’s
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`Brown Rudnick attorneys truthfully told Defendants that Blitzsafe does not have the source code
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`for the TOY/PAN products. (Dkt. 125-17, Ex. C, at ¶2.) Defendants subpoenaed Ford and its
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`counsel for the source code and eventually obtained it on June 14, 2016. (Motion, at 5.) Now,
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`six months after filing their invalidity contentions, Defendants submit their motion for leave to
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`supplement their contentions with citations to and analysis of this source code.
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`II.
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`ARGUMENT
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`Defendants’ Motion should be denied because Defendants’ have failed to show good
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`cause for supplementation. P.R. 3-6(b). Defendants have not shown that they were diligent in
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`obtaining the source code and they have not shown that the source code, and their analysis of the
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 6 of 10 PageID #: 2984
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`code, is highly relevant, or that Blitzsafe will not be prejudiced by the addition of this
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`supplemental source code analysis.
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`A.
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`Defendants Have Failed to Show they Acted Diligently
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`Defendants have failed to meet their burden to show that they acted diligently in locating
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`the source code. See O2 Micro Intern. Ltd. v. Monolithic Power Systems, 467 F.3d 1355, 1366
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`(Fed.Cir. 2006) (the moving party has the burden of establishing diligence to amend
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`contentions). Defendants’ claim that “any delay in disclosing these contentions is a direct result
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`of Blitzsafe’s failure to retain and produce its own source code” is disingenuous, as there is no
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`explanation why Defendants did not earlier obtain the source code from either Mr. Fischer,
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`Ford’s counsel, or Kun Cho, given that their expert was fully aware of its existence. (Motion, at
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`2.)
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`Prior to December 30, 2015, Defendants were well aware of the earlier case between
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`Ford and MPH in which the TOY/PAN source code was produced by Mr. Fischer to Ford’s
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`attorneys. (Ex. A.) Defendants’ awareness and knowledge of that prior litigation is likely what
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`lead them to retain the same expert witness, Dr. Matheson. The Toyota Defendants even filed
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`multiple IPR petitions in December 2015 against the patents at issue in this case, including in the
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`petitions Declarations by Dr. Matheson which discussed his involvement with the prior Ford
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`case. (Ex. B.) Additionally, in their original invalidity contentions served on January 19, 2016,
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`Defendants stated that “Mr. Fischer wrote the source code and designed the circuit board for the
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`TOY/PAN V.2 interface and other interfaces offered for sale by Blitzsafe of America.” (Ex. D, at
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`14.) Yet, somehow, Defendants are now making the claim that they were diligent in locating
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`that very code that they knew Mr. Fisher possessed but which they never sought from him.
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`(Motion at 7.)
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 7 of 10 PageID #: 2985
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` In their Motion, Defendants point to irrelevant facts from the earlier Ford case in a
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`misguided effort to blame Blitzsafe for not possessing the source code. They point to the fact
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`that Blitzsafe’s server crashed and documents grew mold after being flooded in a storm in 2005,
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`causing a major loss of intellectual property for Blitzsafe. (Dkt. 125-7.) They point to the fact
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`that in 2010 Ira Marlowe asked a webpage to take down an unauthorized copy of Blitzsafe's
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`copyrighted intellectual property, which was being reproduced with inaccuracies. (Id.). They
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`point to the fact that Blitzsafe’s previous contractor produced Blitzsafe’s own intellectual
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`property in the course of the Ford litigation, which was long after that employee misrepresented
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`to Blitzsafe that he did not possess such property. (Dkt. 125-9, Dkt. 125-10.) They point to the
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`fact that, in April 2015, Blitzsafe's current counsel, Brown Rudnick, was retained for settlement
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`negotiations with Ford. (Dkt. 125-18.) These allegations are all irrelevant to whether Defendants
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`were diligent in obtaining the information for this amendment. 02 Micro Intern., 467 F.3d at
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`1366.
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`The only facts that matter in assessing the Defendants’ diligence in this instance are the
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`facts that Defendants knew of the prior Ford case in which the source code was produced, that
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`Defendants retained the same expert from that prior Ford case, and that Defendants had
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`knowledge that Ed Fischer was a previous employee of Blitzsafe who wrote source code for
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`these interfaces - all before January 19, 2016 when Invalidity Contentions were served.
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`Defendants reasonably should have been aware at least as early as December 2015 of the
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`location of the source code. 02 Micro Intern., 467 F.3d at 1367 (lack of diligence shown by party
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`having a reason to know about relevant invalidity theories earlier); Google, Inc. v. Netlist, Inc.,
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`No. C08–04144 SBA, 2010 WL 1838693, at *2 (N.D.Cal. May 5, 2010) (“The critical
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`issue is not when [Defendants] discovered this information, but rather, whether they could
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 8 of 10 PageID #: 2986
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`have discovered it earlier had it acted with the requisite diligence.”). Yet, Defendants did
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`not obtain and start analyzing the source code until June 14, 2016. (Motion, at 5). Considering
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`these facts along with Defendants’ six month delay in obtaining the source code, Defendants
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`have not proven they were diligent. Realtime Data, LLC v. Packeteer, Inc., No. 6:08cv144, 2009
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`WL 2590101, at *4 (E.D. Tex. Aug. 18, 2009) citing O2 Micro, 467 F.3d at 1366 (affirming
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`district court's finding that a three month delay with lack of adequate explanation for the delay
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`showed a lack of diligence).
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`B. Defendants Have Failed to Show that the Source Code and Is Highly Relevant
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`Defendants have failed to show that their citations to, and analysis of, the source code is
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`highly relevant. Defendants’ Motion simply states that the “source code makes it clear that these
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`interfaces did in fact generate the claimed ‘device presence signal.’” (Motion, at 8.) However,
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`Defendants failed to argue that this piece of source code and its analysis is any more relevant
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`than the 23 other references previously relied on in their invalidity contentions, including the
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`very TOY/PAN product that Dr. Matheson has already stated in an affidavit has the same
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`features that Defendants now contend are contained in the code. (Dkt. 125-5.)
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`In Defendants’ Motion, instead of putting forth reasons the source code should be found
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`relevant, Defendants state another irrelevant fact from the Ford case - that MPH and Ford settled
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`the case, and that the settlement took place after Ed Fischer produced the source code in his
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`response to the subpoena. (Motion, at 8.) Of course, this is true – settlements always take place
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`at the end of a case. Defendants then argue there is a public interest in allowing validity of
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`patents to be challenged in court, which is irrelevant to the Court’s analysis on a motion to
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`amend invalidity contentions. (Id.) Finally, Defendants allege, without any support, that
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`Blitzsafe engaged in litigation misconduct and “should not be rewarded.” (Motion, at 9.) The
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`irrelevance of these allegations to the issue at hand underlines that Defendants cannot show that
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 9 of 10 PageID #: 2987
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`the source code is “highly relevant.” Innovative Display Tech. LLC v. Acer Inc., 2014 WL
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`2796555, at *2 (E.D. Tex. June 19, 2014) (finding that Defendants wholly failed to show the
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`importance of the amendment when Defendants made a conclusory argument that prior art is
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`critically important and attached amended invalidity contentions, without an explanation of how
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`the "arts, if supplemented to the original Infringement Contentions, would render a particular
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`patent invalid").
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`C. Blitzsafe Will be Unfairly Prejudiced by the Supplementation
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`Defendants’ argument that Blitzsafe will not be prejudiced is an admission that this
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`motion should be denied. Defendants state that they are merely seeking to supplement their
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`invalidity contentions with evidence of the same prior art product that they have already
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`disclosed. This demonstrates that the amendment is unnecessary and, in Defendants’ own view,
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`duplicative of evidence already in the record.
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`The timing of this amendment will create unfair prejudice for Blitzsafe because it comes
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`with only a few weeks remaining in the fact discovery period when Blitzsafe is busy taking
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`depositions all over the country and preparing to address Defendants’ and their suppliers' refusal
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`to produce their own source code and provide other discovery in this case. The production and
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`reliance on new source code that needs to be analyzed at this late date—when Plaintiff’s experts
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`are busy reviewing other technical information as part of their preparation of expert report—is
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`unfair to Blitzsafe given Defendants’ lack of diligence.
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`Case 2:15-cv-01274-JRG-RSP Document 130 Filed 08/08/16 Page 10 of 10 PageID #: 2988
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`III. CONCLUSION
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`For the foregoing reasons, Blitzsafe respectfully requests that the Court deny Defendants’
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`Opposed Motion to Leave to Supplement Invalidity Contentions.
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`Respectfully submitted,
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`BROWN RUDNICK LLP
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`By: __/s/ Alessandra Carcaterra Messing_
`Alfred R. Fabricant
`Texas Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`Email: ldrucker@brownrudnick.com
`Texas Bar No. 2303089
`Peter Lambrianakos
`Texas Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Alessandra Carcaterra Messing
`Texas Bar No. 5040019
`Email: amessing@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
`
`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF,
`BLITZSAFE TEXAS, LLC 
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`DATED: August 8, 2016
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`-10-