Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 1 of 9 PageID #: 3017
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CYWEE GROUP LTD.,
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`Plaintiff,
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`v.
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`SAMSUNG ELECTRONICS CO., LTD. AND
`SAMSUNG ELECTRONICS AMERICA, INC.
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` CASE NO. 2:17-cv-00140-RWS-RSP
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`JURY TRIAL DEMANDED
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`Defendants.
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND
`PRIOR ART REFERENCES
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`In this infringement case, Plaintiff CyWee Group Ltd. (“CyWee”) has asserted only two
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`patents and eleven claims against Defendants Samsung Electronics Co. Ltd and Samsung
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`Electronics America, Inc. (collectively, “Samsung”). Despite CyWee’s narrow and targeted
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`claims, Samsung’s invalidity contentions span over 4,000 pages and assert eighty-three prior art
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`references. The immense size and scope of Samsung’s invalidity contentions creates a needle in
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`a haystack scenario, wherein CyWee is forced to dig, sift, and sort through an impossibly
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`voluminous amount of materials in order to even hazard a guess as to what fraction of prior art
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`theories and references Samsung actually intends to rely on in its invalidity case. By burying its
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`core invalidity arguments and key prior art references within a multitude of contentions,
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`Samsung not only unduly prejudices CyWee in its trial preparation, but also fails to provide
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`CyWee with adequate notice of its invalidity theories in contravention of the Local Patent Rules
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`and their intended goals. Accordingly, CyWee requests that the Court require Samsung to clearly
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`identify and articulate its primary three invalidity arguments, and to reduce its unwieldy number
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`of prior art references to no more than three for each asserted claim.
`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 1
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 2 of 9 PageID #: 3018
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`I. FACTUAL BACKGROUND
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`On February 2, 2017, CyWee sued Samsung for infringement of U.S. Patent No.
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`8,441,438 (the “’438 patent”) and U.S. Patent No. 8,552,978 (the “’978 patent”). The ’978 patent
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`is a continuation-in-part of the ’438 patent. In July 2017, CyWee served its infringement
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`contentions, asserting only eleven claims across both patents – nine claims for the ’438 patent
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`and two for the ’978 patent. See Dkt. 41-2.
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`Samsung’s invalidity contentions, on the other hand, span over 4,000 pages and identify
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`eighty-three separate prior art references that allegedly anticipate or render the asserted patents
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`obvious. Declaration of Ari Rafilson (“Rafilson Decl.”) ¶ 2. Samsung asserts that the identified
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`combinations are “not intended to be exhaustive,” “exemplary,” and do “not exclude other
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`combinations,” without disclosing such actual combinations. Samsung further contends that “it
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`would have been obvious to one of ordinary skill in the art to combine any of these references to
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`arrive at the claimed invention.” Rafilson Decl. ¶ 2. (emphasis added).
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`On April 17, 2018, the Court held the Markman hearing in this case. Pursuant to the
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`current Docket Control Order, July 31, 2018 is the deadline to complete fact discovery and
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`September 28, 2018 is the deadline to complete expert discovery. Dkt. 96. To address Samsung’s
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`overbroad and unwieldy invalidity contentions, the parties met and conferred on April 18, 2018
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`and April 26, 2018. But Samsung refused to reduce its invalidity arguments and prior art
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`references unless CyWee limited its asserted claims, which have been narrowly tailored since the
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`inception of this case. CyWee is thus forced to seek relief from the Court. Rafilson Decl. ¶ 3.
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`II. ARGUMENT & AUTHORITIES
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`The Court has inherent authority to limit the parties’ claims and defenses where
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`appropriate. See, e.g., Acantha LLC v. DePuy Orthopaedics Inc., 2017 WL 5186376 at *4 (E.D.
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 2
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 3 of 9 PageID #: 3019
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`Wisc. Nov. 8, 2017); Certusview Techs., LLC v. S & N Locating Servs., LLC, 2014 WL 4930803
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`at *6 (E.D. Va. Oct. 1, 2014); MyMedical Records, Inc. v. Walgreen Co., 2014 WL 2931695 at
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`*1 (C.D. Cal. June 27, 2014). Just as the Court has the inherent authority to limit the patent
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`claims that a plaintiff may assert, the Court also has the authority to limit the number of
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`invalidity arguments and prior art references that defendants may assert.” Acantha LLC, 2017
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`WL 5186376 at *4 (quoting Certusview Techs., LLC, 2014 WL 4930803 at *6). “Requiring the
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`limitation of asserted claims-and, it follows, prior art references-is permissible so long as the
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`court permits assertion of additional claims (or prior art) upon a showing of good cause or need.”
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`MyMedical Records, Inc., 2014 WL 2931695 at *1 (citing In re Katz Interactive Call Processing
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`Patent Litig., 639 F.3d 1303, 1310-12 (Fed. Cir. 2011)).
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`A. This Court Routinely Limits Invalidity Arguments and Prior Art References.
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`This Court has repeatedly recognized the benefits of limiting prior art references for
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`invalidity defenses to a manageable number. See, e.g., Keranos, LLC v. Silicon Storage Tech.,
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`Inc., No. 2:13-CV-17, 2013 WL 5763738, at *4 (E.D. Tex. Aug. 5, 2013), vacated in part, 797
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`F.3d 1025 (Fed. Cir. 2015) (limiting prior art references and acknowledging that "[t]he Court
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`routinely limits Defendants to two or three prior art references"); Glob. Sessions LP v.
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`Travelocity.com LP, No. 6:10CV671 LED-JDL, 2012 WL 9491750 (E.D. Tex. Dec. 4, 2012)
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`(limiting the prior art to three references per claim); Gemalto S.A. v. HTC Corp., Case No. 6:10-
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`cv-00561, Dkt. 293 at 1-2 (E.D. Tex. Oct. 23, 2012) (ordering defendants to reduce the number
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`of prior art references and combinations thereof to two to three per asserted claim); MOSAID
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`Techs. Inc. v. Freescale Semiconductor, Case No. 6:11-cv-00173, Dkt. 182 at 1-2 (E.D. Tex.
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`Aug. 28, 2012) (ordering defendants to limit invalidity references to four total references per
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`claim, single references, or combinations thereof); Unified Messaging Sols. LLC v. Facebook,
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 3
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 4 of 9 PageID #: 3020
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`Inc., No. 6:11CV120, 2012 WL 11606516, at *1 (E.D. Tex. July 12, 2012) (ordering defendants
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`to reduce invalidity bases to no more than four per asserted claim prior to the Markman
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`hearing).1
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`Samsung has asserted numerous invalidity arguments and an inordinate amount of prior
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`art references. Although in the early stages of a case, parties often make “broad generalizations
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`regarding the ‘appropriate’ number of claims and references to be asserted,” Glob. Sessions LP,
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`2012 WL 9491750, at *1, courts have often limited prior art references after claim construction
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`has been completed or when discovery has been substantially completed, see e.g. Keranos, LLC,
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`2013 WL 5763738, at *4 (limiting prior art references after discovery had "substantially
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`completed"); see also Certusview Techs., LLC, 2014 WL 4930803, at *5 (stating that the case
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`had reached a sufficient stage in the discovery process to allow parties to make an informed
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`decision about which claims and defenses to pursue).
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`Here, claim construction briefing and argument has been completed, and the deadline for
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`fact discovery is fast approaching. Samsung has undoubtedly determined its trial theories at this
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`point in the case, and it has not provided any justification for why more than 4,000 pages of
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`invalidity contentions are reasonably necessary for its case or otherwise supported by good
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`cause. As this Court has recognized, “[a]bsent extraordinary circumstances, a manageable
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`number per claim is no more than 2 -3 references.” Gemalto, Case No. 6:10-cv-00561, Dkt. 293
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`at 1-2. Moreover, limiting prior art references “reduce[s] the overall cost of the litigation by
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`1 Other courts also regularly limit asserted invalidity theories and prior art references. See e.g.
`Certusview Techs., LLC v. S & N Locating Servs., LLC, No. 2:13CV346, 2014 WL 4930803, at *7
`(E.D. Va. Oct. 1, 2014) (limiting the number of prior art references to twenty-five); Digital Reg of
`Tex., LLC v. Adobe Sys., No. C 12-1971 CW, 2014 WL 4090550, at *9 (N.D. Cal. Aug. 19, 2014)
`(discussing limitation of prior art to three references or combinations per claim); Thought, Inc. v.
`Oracle Corp., No. 12-CV-05601-WHO, 2013 WL 5587559, at *4 (N.D. Cal. Oct. 10, 2013) (limiting
`prior references to nine per patent and no more than twenty-five total).
`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 4
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 5 of 9 PageID #: 3021
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`eliminating needless discovery regarding issues that will likely be dropped prior to trial and
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`allow[s] the Court to dedicate its resources to truly dispositive and meritorious issues.” Unified
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`Messaging, 2012 WL 11606516, at *1. Accordingly, in the interest of the efficient resolution of
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`this case, Samsung should be required to assert only those theories and supporting prior art
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`references that are reasonably necessary for this case.
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`B. Samsung’s Voluminous Invalidity Contentions Contravene the Local Patent Rules.
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`The Local Patent Rules “exist to further the goal of full, timely discovery and provide all
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`parties with adequate notice and information with which to litigate their cases.” Computer
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`Acceleration Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 822 (E.D. Tex.2007). Applying the
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`Local Patent Rules in the context of invalidity contentions, this Court has held that excessive
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`invalidity contentions “do not put the plaintiffs on real or useful notice” and amount to “an
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`attempt to end run the rules.” Saffran v. Johnson & Johnson, 2009 WL 8491495 at * 1 (E.D. Tex.
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`Feb. 24, 2009).
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`Samsung’s voluminous invalidity contentions hide the ball and deprive CyWee of any
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`reasonable notice of Samsung’s actual defenses and the evidence it anticipates using at trial. If
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`Samsung is permitted to maintain excessive prior art references when discovery will soon close
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`and expert reports will be due, CyWee will be unfairly prejudiced in its ability to prepare its
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`validity expert reports. As it stands, CyWee’s experts will have to study and analyze each and
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`every reference and opine on their potential applicability, while Samsung continues to hold an
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`unfair advantage by knowing exactly which invalidity theories and prior art references it really
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`intends to use for dispositive motions or at trial. Such gamesmanship is precisely the kind of
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`tactic that the Local Patent Rules are intended to prevent, and Samsung should not be permitted
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`to circumvent the rules by asserting excessive invalidity contentions.
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 5
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 6 of 9 PageID #: 3022
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`Additionally, Local Patent Rule 3-3(b) provides that “[i]f a combination of items of prior
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`art makes a claim obvious, each such combination, and the motivation to combine such items,
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`must be identified.” (Emphasis added). Each combination must be identified, and language
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`purporting to make invalidity contentions illustrative is prohibited. Saffran, 2009 WL 8491495 at
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`* 1. Here, in addition to the numerous prior art references and combinations identified,
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`Samsung’s invalidity contentions fail to identify all combinations and, instead, rely on broad and
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`imprecise language that provides only the vaguest notion of what Samsung is asserting. For
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`example, Samsung asserts that the combinations are “not intended to be exhaustive” but
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`“exemplary” and do “not exclude other combinations.” Rafilson Decl., at 2. Samsung further
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`contends that “any of these references” (i.e., all eighty-three references) can be combined to
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`arrive at the claimed invention. Id. (emphasis added). In attempting to capture all possible
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`combinations to invalidate the patents, without actually identifying such combinations, Samsung
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`forces CyWee and its experts to guess which combinations Samsung intends to rely on, in
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`violation of the terms and purpose of Local Patent Rule 3-3(b). Hence, in addition to being
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`required to reasonably limit its prior art references to three references per claim, Samsung should
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`be required to disclaim any combinations not expressly identified, consistent with Local Patent
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`Rule 3-3(b).
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`C. CyWee Has Asserted a Reasonable Number of Claims.
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`During the parties’ meet and confer, Samsung refused to reduce its invalidity contentions
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`unless CyWee limited the number of asserted claims in an attempt to strong arm CyWee into
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`abandoning valid and infringed claims. See Rafilson Decl. ¶ 3. Contrary to Samsung’s position,
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`however, this Court has limited the number of claims only when an unreasonable and
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`unmanageable number of claims were asserted. For example, in Unified Messaging and
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 6
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 7 of 9 PageID #: 3023
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`MOSAID, the plaintiffs asserted fifty-two and 183 claims, respectively. Here, CyWee is asserting
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`only eleven total claims across two patents. A total of eleven claims is neither unreasonable nor
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`unmanageable by any standard. Hence, Samsung’s refusal to limit its invalidity contentions
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`except on reduction of CyWee’s claims serves only to further demonstrate Samsung’s bad faith
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`and gamesmanship in making such excessive contentions.
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`III. CONCLUSION
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`For the foregoing reasons, because Samsung’s voluminous invalidity contentions and
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`excessive prior art references unfairly prejudice CyWee and obstruct the stated intent and
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`purpose of the Local Patent Rules, CyWee respectfully requests that the Court limit Samsung’s
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`invalidity arguments and prior art references to no more than three references per claim. In
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`addition, CyWee requests the Court order Samsung, within seven days of the Court’s order on
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`CyWee’s motion, to provide Amended Invalidity Contentions that reflect the reduced number of
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`invalidity arguments and prior art references and provide, as to those prior art references,
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`complete disclosure regarding their invalidity contentions as required under Local Patent
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`Rule 3-4.
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 7
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 8 of 9 PageID #: 3024
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`Date: May 24, 2018
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`Respectfully submitted,
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`/s/ William Ellerman
`Michael W. Shore
`Texas State Bar No. 18294915
`mshore@shorechan.com
`Alfonso Garcia Chan
`Texas State Bar No. 24012408
`achan@shorechan.com
`Christopher L. Evans
`Texas State Bar No. 24058901
`cevans@shorechan.com
`Ari B. Rafilson
`Texas State Bar No. 24060456
`arafilson@shorechan.com
`William D. Ellerman
`Texas State Bar No. 24007151
`wellerman@shorechan.com
`Paul T. Beeler
`Texas State Bar No. 24095432
`pbeeler@shorechan.com
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`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
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`Attorneys for Plaintiff
`CyWee Group Ltd.
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 8
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`Case 2:17-cv-00140-WCB-RSP Document 101 Filed 05/24/18 Page 9 of 9 PageID #: 3025
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
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`electronic service are being served with a copy of this document via the Court’s CM/ECF system
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`per L.R. CV-5(a)(3) on May 24, 2018.
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`/s/ William Ellerman
`William Ellerman
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rule CV-7(h), counsel for the parties have conferred on April 18, 2018
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`and April 26, 2018. An agreement could not be reached because Defendants refuse to reduce the
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`number of invalidity arguments and prior art references cited in their invalidity contentions.
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`Defendants are opposed to the relief requested herein, leaving the issue open for the Court to
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`resolve.
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`/s/ Ari B. Rafilson
`Ari Rafilson
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`PLAINTIFF’S MOTION TO LIMIT DEFENDANTS’ INVALIDITY ARGUMENTS AND PRIOR ART REFERENCES
`– Page 9
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