Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 1 of 11 PageID #: 19433
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`NO. 2:15-CV-01274-JRG-RSP
`(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 IN SUPPORT OF THEIR MOTION TO STRIKE PORTIONS
`OF THE REBUTTAL EXPERT REPORT OF JOSEPH C. MCALEXANDER III
`REGARDING VALIDITY OF U.S. PATENT NUMBERS 7,489,786 AND 8,155,342
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 2 of 11 PageID #: 19434
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`Had Blitzsafe truly intended to claim priority to U.S. Patent Application No. 10/316,961,
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`it could have easily said so. Blitzsafe could have said: “Each of the asserted claims of the ’342
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`patent is entitled to the priority date of December 11, 2002.” Just as easily, Blitzsafe could have
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`said: “Each of the asserted claims of the ’342 patent is entitled to the priority date of U.S. Patent
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`Application No. 10/316,961.” Blitzsafe did neither. Instead, it said: “Each of the asserted
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`claims of the ’342 patent is entitled to the priority date of U.S. Patent Application No.
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`11/475/847 [sic], filed June 27, 2006, under P.R. 3-1(e).” Exh. 1 at 6 (emphasis added). In
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`reality, Blitzsafe waited eight months to make such a claim. And when Defendants opposed
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`Blitzsafe’s late proposal to amend its P. R. 3-1(e) disclosures—because Defendants specifically
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`relied on the priority date claimed in Blitzsafe’s P. R. 3-1(e) disclosures when selecting the
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`Clayton reference and because it was too late to redo their invalidity investigation and
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`analysis1—Blitzsafe chose not to seek permission from the Court, but to sandbag Defendants.
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`Now, to avoid the impact of its P. R. 3-1(e) disclosures, Blitzsafe advances an argument that
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`makes no sense and would defeat the purpose of P. R. 3-1(e). This Court should reject
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`Blitzsafe’s manufactured argument and grant Defendants’ motion.
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`I.
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`BLITZSAFE DISTORTS THE FACTS.
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`Blitzsafe twists the language of its P. R. 3-1(e) disclosures to achieve a result that it could
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`not achieve by moving for leave to amend. Blitzsafe now asserts that, “from the very beginning
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`of this case, [it] contended that the claims of the ’342 Patent [were] entitled to a priority date of
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`December 11, 2002,” but if true, why did Blitzsafe not expressly say so in its P. R. 3-1(e)
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`1 Contrary to Blitzsafe’s assertion, the cited filings in inter partes review (“IPR”) proceedings do not negate the
`prejudice to Defendants. See Opposition at 2–3, 6. Blitzsafe only claimed priority to the application filed on June
`27, 2006. Exh. 1 at 6. Blitzsafe never moved to amend its disclosures, and it expressly denied any intent to rely on
`an earlier date. Defendants were entitled to rely on Blitzsafe’s disclosures and representations. Potential arguments
`anticipated by Toyota in an IPR petition, and Blitzsafe’s arguments in IPR proceedings that are inconsistent with the
`express positions it has taken in this litigation, do not render unreasonable Defendants’ reliance on Blitzsafe’s
`express representations in this litigation.
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`1
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 3 of 11 PageID #: 19435
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`disclosures on November 24, 2015? See Opposition at 2; Exh. 1 at 6. Instead, the only date
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`Blitzsafe identified was the June 27, 2006 filing date of the ’342 Patent’s application. Exh. 1 at
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`6. When interpreting statutes, contracts, and claim terms, a plain-meaning construction is
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`preferred, and the same logic should apply here. See, e.g., Poly-America, L.P. v. API Indus.,
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`Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (claim terms); Ibe v. Jones, 836 F.3d 516, 526–27
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`(5th Cir. 2016) (contract); Sample v. Morrison, 406 F.3d 310, 312 (5th Cir. 2005) (statute).
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`While Blitzsafe now pretends its P. R. 3-1(e) disclosures inferentially referred to the earliest
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`application on the face of the patent, a plain reading of its disclosures only supports a claim of
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`priority to the June 27, 2006 filing date of the ’342 Patent’s application. See Exh. 1 at 6.
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`Blitzsafe first expressed a desire to change its P. R. 3-1(e) disclosures on July 25, 2016—
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`six months after Defendants served their invalidity contentions and two months after most
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`Defendants narrowed their list of prior art references and combinations. See Exh. 6; Motion at
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`3–4. Not coincidentally, this was just a few weeks after the PTAB instituted IPR of the ’342
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`Patent based on the Clayton reference. See Exh. 9 at 37–38 (attached). The PTAB expressly
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`determined that the asserted claims of the ’342 Patent were more likely than not unpatentable in
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`view of Clayton. See VirtualAgility Inc. v. Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed. Cir.
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`2014); Exh. 9 at 37. Obviously, this forced Blitzsafe to modify its position and claim that
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`the ’342 Patent predated Clayton.
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`But by July 25, 2016, this litigation had advanced too far for Blitzsafe to make this
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`change without severely impacting Defendants. See Motion at 9–10. Because of this prejudice,
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`Defendants opposed Blitzsafe’s proposal to amend its P. R. 3-1(e) claim of priority. See Exh. 6.
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`Blitzsafe could have filed an opposed motion to get the issue decided then, but it chose not to do
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`so. Defendants, therefore, relied on this decision and reasonably believed that Blitzsafe had
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`2
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 4 of 11 PageID #: 19436
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`abandoned its plan to rely on an earlier claim of priority in this litigation. Blitzsafe now asserts
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`that it merely considered an amendment to “claim priority to an actual reduction to practice” that
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`it later determined was unnecessary. Opposition at 4–5. Nothing supports this post hoc
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`justification. It is inconsistent with Blitzsafe’s July 25, 2016 email, which says nothing about
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`reduction to practice, and Blitzsafe’s amended interrogatory response (served the same day),
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`which also says nothing about an actual reduction to practice. See Exh. 6 and Exh. 7.
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`Defendants sought a meet-and-confer in mid-August 2016 with the specific purpose of
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`confirming that Blitzsafe was not planning to claim priority to an earlier application in spite of its
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`P. R 3-1(e) disclosures. Blitzsafe expressly stated that was not its intent. See Exh. 8. Blitzsafe
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`now mischaracterizes that meeting. The meeting occurred before expert reports were served, so
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`the McAlexander Validity Reports and this motion were not discussed. See Opposition at 4.
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`And Defendants certainly disagreed with Blitzsafe’s current argument—the whole purpose of the
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`meeting was to confirm, before expert reports were served, that Blitzsafe was not going to
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`advance such an argument. Defendants were thus surprised when it reappeared in the
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`McAlexander Validity Reports two months later.
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`II.
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`IF BLITZSAFE’S ARGUMENT IS ACCEPTED, P. R. 3-1(e) IS MEANINGLESS.
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`Blitzsafe’s reliance on its reference to “the priority date of U.S. Patent Application No.
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`11/475/847 [sic],” as opposed to the “filing date,” makes no sense, because it ignores the
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`purpose of P. R. 3-1(e). When a patent “claims priority to an earlier application,” P. R. 3-1(e)
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`requires disclosure of “the priority date to which each asserted claim allegedly is entitled”
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`precisely because not all claims are necessarily entitled to claim priority to the earliest
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`application in the chain of priority. See PowerOasis, Inc. v. PowerOasis Networks, LLC, 522
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`F.3d 1299, 1305 n.4 (Fed. Cir. 2008). A claim is entitled to claim priority to an earlier
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`application only if that earlier application contains written description support for that particular
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`3
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 5 of 11 PageID #: 19437
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`claim. See, e.g., Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1134 (Fed. Cir. 2011).
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`Instead of requiring an accused infringer to investigate the potential priority date of each asserted
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`claim, which “can be quite complex,” the purposes of the Patent Rules are served by requiring
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`the patentee to disclose its position at the outset. See PowerOasis, 522 F.3d at 1305 n.4; Comput.
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`Acceleration Corp. v. Microsoft Corp., 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007). As the
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`patentee ultimately bears the burden of proving that a particular claim is entitled to claim priority
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`to an earlier application, it makes sense that it is subject to this obligation. See PowerOasis, 522
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`F.3d at 1305–06, 1305 n.4.
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`Blitzsafe cannot now argue that it claimed priority to the December 11, 2002 filing date
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`of U.S. Patent Application No. 10/316,961 based on its reference to the “priority date of U.S.
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`Patent Application No. 11/475/847 [sic], filed June 27, 2006,” because the “priority date” of each
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`of the claims in that application, which issued as the ’342 Patent, remains unresolved.
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`Blitzsafe’s argument is circular—the asserted claims of the ’342 Patent are entitled to the priority
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`date of the priority date of the ’342 Patent’s application. That is no disclosure at all. It provides
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`no notice and fails to narrow the issues. See Fenner Invs., Ltd. v. Hewlett-Packard Co., No.
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`6:08-cv-273, 2010 U.S. Dist. LEXIS 17536, at *6 (E.D. Tex. Feb. 26, 2010).
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`The ’342 Patent issued from a continuation-in-part application that is one in a series of
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`such applications. Doc. 1-2, at 2. Generally, each continuation-in-part application adds new
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`material. PowerOasis, 522 F.3d at 1305 n.4. Defendants are entitled to know where in the chain
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`of priority Blitzsafe contends that material supporting each of the asserted claims was added.2
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`2 Blitzsafe contends that the asserted claims of the ’342 Patent are entitled to claim priority to U.S. Patent
`Application No. 10/316,961, filed on December 11, 2002, in its Opposition, but Blitzsafe’s expert disagrees. See,
`e.g., Exh. 10 at 112–13 (opining that the December 11, 2002 Marlowe Application “does not disclose any
`limitations of the ’342 Patent claims”) (attached). And in IPR proceedings, Blitzsafe only claimed priority back to
`2005. Exh. 11 at 2–3 (attached). These inconsistencies further undermine the credibility of Blitzsafe’s argument
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`4
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 6 of 11 PageID #: 19438
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`The only date, and the only application, referred to in Blitzsafe’s P. R. 3-1(e) disclosures was
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`the ’342 Patent’s application, filed on June 27, 2006. Exh. 1, at 6. McAlexander should not be
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`allowed to rely on an earlier claim of priority. If Blitzsafe’s circular argument is held to be
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`sufficient, there is no need for P. R. 3-1(e) disclosures. Every patentee can simply parrot
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`Blitzsafe’s meaningless disclosure knowing that it can support any claim of priority that may be
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`deemed necessary in the future. Accused infringers will have to investigate every possibility—
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`adding unnecessary complexity to patent litigation in this district.
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`III. MCALEXANDER INDISPUTABLY RELIES ON UNPRODUCED DOCUMENTS.
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`Blitzsafe does not deny that McAlexander relies on unproduced documents, despite P. R.
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`3-2(b) requiring the production of all documents evidencing conception. Exh. 4 at 106 & n.120.
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`And Blitzsafe does not explain its failure to produce these documents even though they have
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`always been in its possession. This is but a further example of Blitzsafe’s failure to comply with
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`its disclosure obligations and this Court’s orders. See, e.g., Freeny v. Murphy Oil Corp., No.
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`2:13-cv-791, 2015 U.S. Dist. LEXIS 118731, at *5–7 (E.D. Tex. June 4, 2015) (granting motion
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`to exclude testimony relating to documents produced after the close of fact discovery).
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`IV. CONCLUSION
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`Defendants face serious prejudice if Blitzsafe can rely on unproduced documents and an
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`untimely claim of priority. Motion at 9–10. Blitzsafe, however, claims to have other “strong
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`positions regarding validity,” and it can rely on the presumption of validity. Opposition at 6.
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`Because Blitzsafe will not be prejudiced, and because Blitzsafe has failed to offer a reasonable
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`explanation for its excessive delay, the Court should grant Defendants’ motion.
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`(continued…)
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`that it always “contended that the claims of the ’342 Patent [were] entitled to a priority date of December 11, 2002.”
`Opposition at 2.
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`5
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 7 of 11 PageID #: 19439
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`Dated: December 2, 2016
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`Respectfully submitted,
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`/s/ Joseph M. Beauchamp
`Joseph M. Beauchamp
`Texas State Bar No. 24012266
`Email: jbeauchamp@jonesday.com
`H. Albert Liou
`Texas State Bar No. 24061608
`Email: aliou@jonesday.com
`Erin C. Dickerman
`Texas State Bar No. 24087358
`Email: edickerman@jonesday.com
`JONES DAY
`717 Texas Street, Suite 3300
`Houston, Texas 77002-2712
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
`
`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
`
`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
`
`/s/ J. Thad Heartfield
`J. Thad Heartfield
`Texas Bar No. 09346800
`thad@heartfieldlawfirm.com
`THE HEARTFIELD LAW FIRM
`2195 Dowlen Road
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 8 of 11 PageID #: 19440
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`Beaumont, TX 77706
`Telephone: (409) 866-3318
`Facsimile: (409) 866-5789
`
`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
`
`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.
`
`/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
`
`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
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 9 of 11 PageID #: 19441
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`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.
`
`/s/ Sean N. Hsu
`Jeffrey S. Patterson (Lead Counsel)
`Texas Bar No. 15596700
`Keith M. Lews
`Texas Bar No. 24083388
`HARTLINE DACUS BARGER DREYER
`LLP
`8750 N. Central Expwy., Suite 1600
`Dallas, TX 75231
`Telephone: (214) 369-2100
`Facsimile: (214) 369-2118
`jpatterson@hdbdlaw.com
`klewis@hdbdlaw.com
`
`Sean N. Hsu
`State Bar No. 24056952
`Rajkumar Vinnakota
`State Bar No. 24042337
`Glenn E. Janik
`State Bar No. 24036837
`JANIK VINNAKOTA LLP
`Gateway Tower
`8111 LBJ Freeway, Suite 790
`Dallas, TX 75251
`Tel.: 214.390.9999
`Fax: 214.586.0680
`shsu@jvllp.com
`kvinnakota@jvllp.com
`gjanik@jvllp.com
`
`ATTORNEYS FOR DEFENDANTS
`NISSAN NORTH AMERICA, INC. AND
`NISSAN MOTOR CO., LTD.
`
`/s/ Deron R. Dacus
`Deron R. Dacus
`Texas State Bar No. 00790553
`Peter A. Kerr
`Texas State Bar No. 24076478
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 10 of 11 PageID #:
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`The Dacus Firm, P.C.
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 705-1117
`Email: ddacus@dacusfirm.com
`E-mail: pkerr@dacusfirm.com
`
`Michael J. Lennon
`NY State Bar No. 1160506
`Sheila Mortazavi (admitted pro hac vice)
`ANDREWS KURTH KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Telephone: (212) 425-7200
`Facsimile: (212) 425-5288
`Email:
`michaellennon@andrewskurthkenyon.com
`Email:
`sheilamortazavi@andrewskurthkenyon.com
`
`Susan A. Smith (admitted pro hac vice)
`ANDREWS KURTH KENYON LLP
`1350 I Street, NW, Suite 1100
`Washington D.C. 20005
`Telephone: (202) 662-2700
`Facsimile: (202) 662-2739
`Email:
`susansmith@andrewskurthkenyon.com
`
`ATTORNEYS FOR DEFENDANTS AND
`COUNTERCLAIM-PLAINTIFFS
`VOLKSWAGEN GROUP OF
`AMERICA, INC. and VOLKSWAGEN
`GROUP OF AMERICA
`CHATTANOOGA OPERATIONS, LLC
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`Case 2:15-cv-01274-JRG-RSP Document 269 Filed 12/02/16 Page 11 of 11 PageID #:
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system per Local Rule CV-5(a)(3) on December 2, 2016.
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`/s/ Joseph M. Beauchamp
`Joseph M. Beauchamp
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that, in accordance with Local Rule CV-7(h), on
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`October 20, 2016, Joseph M. Beauchamp, counsel for the U.S. Honda Defendants, contacted
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`counsel for Blitzsafe about this issue. On October 27, 2016, counsel for Blitzsafe and
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`Defendants met and conferred about whether Blitzsafe was opposed to this motion and the relief
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`requested. Blitzsafe’s counsel stated that it opposed the motion. Accordingly, no agreement
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`could be reached as to the relief sought by Defendants.
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`/s/ Joseph M. Beauchamp
`Joseph M. Beauchamp
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