Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 1 of 10 PageID #: 4279
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:15-cv-01274-JRG-RSP
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`JURY TRIAL DEMANDED
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`LEAD CASE
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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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`§
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`DEFENDANTS' REPLY ISO THEIR MOTION FOR LEAVE TO
`SUPPLEMENT INVALIDITY CONTENTIONS
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`Defendants1 submit this Reply to address issues raised in Plaintiff Blitzsafe Texas,
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`LLC’s Opposition To Defendants’ Motion For Leave To Supplement Invalidity Contentions
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`filed August 8, 2016. DI 131 (“Blitzsafe’s Opposition” or “Opp.”).
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`I.
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`INTRODUCTION
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`The source code at issue behind these amendments to the invalidity contentions was in
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`Blitzsafe's control since before this litigation began. In fact, Blitzsafe's attorney Cho had the
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`source code all along. Blitzsafe had a duty to preserve relevant evidence and to conduct a
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`reasonable investigation and produce information like this source code. Blitzsafe in fact
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`promised to check with its counsel Cho for the requested source code. But Blitzsafe never
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`1 Defendants Toyota Motor Corporation, Toyota Motor Sales U.S.A., Inc., Toyota Motor
`Manufacturing, Texas, Inc., Toyota Motor Manufacturing Kentucky, Inc., Toyota Motor
`Manufacturing Mississippi, Inc., American Honda Motor Co., Inc., Honda of America Mfg.,
`Inc., Honda Manufacturing of Alabama, LLC, Honda Manufacturing of Indiana, LLC, Hyundai
`Motor America, Hyundai Motor Manufacturing Alabama, LLC, Kia Motors America, Inc., Kia
`Motors Manufacturing Georgia, Inc., Nissan North America, Inc., and Nissan Motor Co., Ltd.,
`(collectively, “Defendants”).
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`1
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 2 of 10 PageID #: 4280
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`produced a single document from Cho, and never even requested the source code. In short,
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`Blitzsafe breached its duties of collection and production, and misrepresented to Defendants the
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`scope of its investigation. Defendants have been prejudiced thereby, and seek leave to amend
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`their contentions to cure the prejudice.
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`Blitzsafe’s suggestions that Defendants should have obtained the source code earlier from
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`Mr. Fischer or Ford are misplaced, as Fischer does not have it, and the Discovery Confidentiality
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`Order in the Ford case required Ford to return or destroy it at the end of that case. Rabena Reply
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`Dec. ¶4; Reply Ex. 21.2 Finally, Blitzsafe's argument that the source code is cumulative is also
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`incorrect; it is not, as it specifically refutes Blitzsafe's prior arguments regarding this prior art.
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`II. DEFENDANTS HAVE BEEN DILIGENT
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`Blitzsafe argues that Defendants were not diligent and should have obtained Blitzsafe’s
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`source code sooner, from a party other than Blitzsafe. E.g., Opp. at 6. Defendants were diligent
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`when they sought Blitzsafe’s code from Blitzsafe, and any delay was due entirely to Blitzsafe’s
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`failure to honor its discovery obligations.
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`Upon learning that the source code resurfaced in MPH, LLC v. Ford et al., Defendants
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`reasonably expected that Blitzsafe would have retained its own source code from that case.
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`Indeed, Blitzsafe was under a legal obligation to keep that highly relevant source code at the
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`conclusion of the Ford case since it prepared to sue the current Defendants just one month later.3
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`Trevino v. Ortega, 969 SW 2d 950, 955 (Tex. 1998) (“…a party must preserve documents,
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`tangible items, and information that are ‘relevant to litigation, or potential litigation, or are
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`2 Reply Exhibits 21-22 are attached to the Reply Declaration of John F. Rabena, Esq., filed
`herewith.
`3 The Ford case settled in June, 2015 (Reply Ex. 22) and Blitzsafe sued the current Defendants
`in July 2015.
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`2
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 3 of 10 PageID #: 4281
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`reasonably calculated to lead to the discovery of admissible evidence...’”). Blitzsafe certainly
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`knew how relevant that source code was, and also knew that its attorney, Mr. Cho, had
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`possession of the code. In fact, on February 25, 2015, one week after Cho received the Fischer
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`production, Marlowe emailed Fischer to complain about Fischer having the source code. Exs. 8,
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`9. In that email, Marlowe also asked Fischer to immediately return any copies. Ex. 9.
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`Given that on February 19, 2015, Blitzsafe's attorney Cho stated to Ford's counsel that he
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`was going to give the documents to Marlowe, and that on February 25, 2015 Marlowe demanded
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`the immediate return of any copies of these documents from Fischer, Mr. Marlowe's Declaration
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`stating that he never received these important documents strains credibility.4
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`But it doesn’t matter whether Mr. Cho gave Blitzsafe the code or not. Even assuming the
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`source code was never actually returned to Blitzsafe, whether by oversight or calculated decision
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`to suppress evidence in future cases, Mr. Cho still had the source code and he was still
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`Blitzsafe’s lawyer. Accordingly, Blitzsafe’s representation to Defendants that “…Plaintiff
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`Blitzsafe Texas, LLC (“Blitzsafe”) does not have the source code for the TOY/PAN products
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`identified in your April 25th letter in its possession, custody, or control” (Ex. 18, p. 1) was false;
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`Blitzsafe’s lawyer Cho did in fact have the source code. Rabena Decl. ¶ 20. The code was
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`therefore in Blitzsafe’s “possession, custody, or control.” In re Bankers Trust Co., 61 F. 3d 465
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`(6th Cir. 1995) (“Moreover, federal courts have consistently held that documents are deemed to
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`4 Curiously, Blitzsafe’s Privilege Log lists 17 entries in the nine-day period from the date that
`Mr. Cho stated that he would provide the Fischer production to Blitzsafe, until the end of
`February 2015. Ex. 11, pp. 126-128, entries 1314-1330. Those entries are all between Mr.
`Cho and Mr. Marlowe, and sometimes include Brown Rudnick attorneys. Every one of those
`entries is described in vague terms such as “Confidential communication rendering legal advice
`regarding litigation.” Ex. 11, p. 126, entry 1316. Without a clearer description or an in camera
`review of these documents, it not possible for Defendants to challenge Blitzsafe’s incredible
`representation that Mr. Cho never gave Blitzsafe back its own source code.
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`3
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 4 of 10 PageID #: 4282
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`be within the ‘possession, custody or control’ for purposes of Rule 34 if the party has actual
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`possession, custody or control, or has the legal right to obtain the documents on demand.”)
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`(emphasis added) citing, Resolution Trust Corp. v. Deloitte & Touche, 145 F.R.D. 108, 110 (D.
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`Colo.1992); Weck v. Cross, 88 F.R.D. 325, 327 (N.D. Ill.1980). Blitzsafe had the legal right to
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`obtain its own documents from its own lawyer, but failed to do so.
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`To make matters worse, Blitzsafe’s counsel expressly represented to Defendants’ counsel
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`that they did check with Mr. Cho:
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`We have also reached out to counsel for Marlowe Patent Holdings from the Ford and
`DICE cases to obtain additional materials from these cases and will supplement
`Blitzsafe’s document production with any responsive, non-privileged materials we obtain.
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`Ex. 18, p. 2. Since counsel represented that they requested the documents from Blitzsafe's
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`counsel Cho, then how is it that Blitzsafe never produced even a single document from Mr. Cho,
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`let alone the missing prior art source code? Defendants were reasonable to rely on Blitzsafe to
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`abide by its duties to preserve evidence, to conduct a diligent search for relevant documents, and
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`to conduct the searches it said it had conducted. Blitzsafe cannot now be allowed to benefit from
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`its own discovery failures and misrepresentations.
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`Defendants were also reasonable to expect that Ford’s counsel would not have kept
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`Blitzsafe’s source code after settling the litigation. In fact, the Discovery Confidentiality Order
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`in the Ford case had the typical requirement that counsel return or destroy all confidential
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`documents produced by the opposing party at the end of the case. Reply Ex. 21, ¶16. Similarly,
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`Mr. Fischer represented that he did not retain copies of the source code after producing it in the
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`Ford case, for fear of repercussions from Mr. Marlowe. Rabena Reply Dec. ¶ 4.
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`III. THE SOURCE CODE IS MATERIAL AND NOT CUMULATIVE
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`As a fallback, Blitzsafe contends that the source code is cumulative and therefore not
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`necessary, because Defendants and Dr. Matheson have already contended that the TOY/PAN
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`4
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 5 of 10 PageID #: 4283
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`interfaces are invalidating prior art without the source code. In the Ford case, Dr. Matheson
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`analyzed the prior art TOY/PAN interface hardware and external signals, and concluded based
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`on the signal and hardware behavior, that the interface generated the claimed “device presence
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`signal.” Ex. 4, e.g. Pars. 54-55. MPH took the position in that case, that based on certain
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`behavior of the interface and the attached stereo, the “device presence signal” in that setup was
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`actually being generated by the CD changer, not the interface. In particular, MPH argued:
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`This is proof that the Panasonic CD changer is sending signals to the Toyota radio and
`the prior art interface is not generating a device presence signal for maintaining the car
`stereo in a state responsive to processed data and audio signals.
`Ex. 5 at 16.
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`While MPH’s logic in that case was flawed, the source code contains further evidence
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`that makes it clear that the “device presence signal” was generated by the interface as claimed.
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`Ex. 12, e.g., pp. 33-36. Thus, the source code is not cumulative to the external signal analysis or
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`the hardware analysis.
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`IV. CONCLUSION
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`For each of the foregoing reasons, Defendants respectfully request that the Court find that
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`Defendants have met the good cause standard required to supplement their Invalidity
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`Contentions and grant Defendants leave to supplement their Invalidity Contentions with the
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`materials provided in Exhibit 12.
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`Defendants also request any other relief that the Court deems appropriate in light of
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`Blitzsafe’s litigation misconduct as detailed above, including reimbursement of fees and costs for
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`having to obtain the code from third parties including Blitzsafe’s former counsel, and for having
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`to bring this motion.
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 6 of 10 PageID #: 4284
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`Dated: August 18, 2016
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`Respectfully submitted:
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`/s/ J. Thad Heartfield
`J. Thad Heartfield
`Texas Bar No. 09346800
`thad@heartfieldlawfirm.com
`THE HEARTFIELD LAW FIRM
`2195 Dowlen Road
`Beaumont, TX 77706
`Telephone: (409) 866-3318
`Facsimile: (409) 866-5789
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`William H. Mandir (pro hac vice)
`wmandir@sughrue.com
`John F. Rabena (pro hac vice)
`jrabena@sughrue.com
`Brian K. Shelton (pro hac vice)
`bshelton@sughrue.com
`Fadi N. Kiblawi (pro hac vice)
`fkiblawi@sughrue.com
`Margaret M. Welsh (pro hac vice)
`mwelsh@sughrue.com
`SUGHRUE MION PLLC
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`Telephone: (202) 293-7600
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`ATTORNEYS FOR DEFENDANTS
`TOYOTA MOTOR CORPORATION,
`TOYOTA MOTOR SALES U.S.A., INC.,
`TOYOTA MOTOR MANUFACTURING,
`TEXAS, INC., TOYOTA MOTOR
`MANUFACTURING KENTUCKY, INC.,
`and TOYOTA MOTOR
`MANUFACTURING MISSISSIPPI, INC.
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 7 of 10 PageID #: 4285
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`/s/ Joseph M. Beauchamp
`Joseph M. Beauchamp
`Texas State Bar No. 24012266
`Email: jmbeauchamp@jonesday.com
`H. Albert Liou
`Texas State Bar No. 24061608
`Email: aliou@jonesday.com
`Erin C. Dickerman 24087358
`Texas State Bar No.
`Email: edickerman@jonesday.com
`JONES DAY
`717 Texas Street, Suite 3300
`Houston, Texas 77002-2712
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
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`Joseph Melnik
`California State Bar No. 255601
`Email: jmelnik@jonesday.com
`Jones Day
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Facsimile: (650) 739-3900
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`Randy Akin
`Texas State Bar No. 00954900
`Email: gra@randyakin.com
`G.R. (Randy) Akin, P.C.
`3400 W. Marshall Avenue, Suite 300
`Longview, Texas 75604
`Telephone: (903) 297-8929
`Facsimile: (903) 297-9046
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`ATTORNEYS FOR DEFENDANTS
`AMERICAN HONDA MOTOR CO., INC.;
`HONDA OF AMERICA MFG., INC.;
`HONDA MANUFACTURING OF
`ALABAMA, LLC; AND HONDA
`MANUFACTURING OF INDIANA, LLC
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 8 of 10 PageID #: 4286
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`/s/ Paul R. Steadman
`Paul R. Steadman
`Illinois Bar No. 6238160
`paul.steadman@dlapiper.com
`Matthew D. Satchwell
`Illinois Bar No. 6290672
`matthew.satchwell@dlapiper.com
`DLA PIPER LLP
`203 N. LaSalle St., Suite 1900
`Chicago, IL 60601-1293
`Telephone: 312.368.2111
`Facsimile: 312.236.7516
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`Patrick S. Park
`California Bar No. 246348
`patrick.park@dlapiper.com
`DLA PIPER LLP
`20000 Avenue of the Stars, Suite 400
`North Tower
`Los Angeles, CA 90067
`Telephone: 310.595.3000
`Facsimile: 310.595.3300
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`ATTORNEYS FOR DEFENDANTS
`HYUNDAI MOTOR AMERICA, HYUNDAI
`MOTOR MANUFACTURING ALABAMA,
`LLC, KIA MOTORS AMERICA, INC., and
`KIA MOTORS MANUFACTURING
`GEORGIA, INC.
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 9 of 10 PageID #: 4287
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`/s/ Sean N. Hsu
`Jeffrey S. Patterson
`Texas Bar No. 15596700
`jpatterson@hdbdlaw.com
`Sean N. Hsu
`Texas Bar No. 24056952
`shsu@hdbdlaw.com
`HARTLINE DACUS BARGER DREYER
`LLP
`8750 North Central Expressway
`Suite 1600
`Dallas, Texas 75231
`Telephone: (214) 369-2100
`Facsimile: (214) 369-2118
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`ATTORNEYS FOR DEFENDANTS
`NISSAN NORTH AMERICA, INC. and
`NISSAN MOTOR CO., LTD.
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`Case 2:15-cv-01274-JRG-RSP Document 134 Filed 08/18/16 Page 10 of 10 PageID #: 4288
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on August 18, 2016 all counsel of record who have
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`consented to electronic service are being served with a copy of the foregoing DEFENDANTS'
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`REPLY ISO THEIR MOTION FOR LEAVE TO SUPPLEMENT INVALIDITY
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`CONTENTIONS, via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ J. Thad Heartfield
`J. Thad Heartfield