Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 1 of 7 PageID #: 1675
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
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`Plaintiff,
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`v.
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`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
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`Defendants.
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
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`Plaintiff,
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`v.
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`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
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`JURY TRIAL DEMANDED
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`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
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`JURY TRIAL DEMANDED
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`Defendants.
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`DEFENDANTS’ MOTION FOR LEAVE TO AMEND INVALIDITY CONTENTIONS
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`Defendants Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Huawei
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`Device Co., Ltd.; and Huawei Device USA, Inc. (“Defendants”) seek leave, pursuant to Local
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`Patent Rule 3-6(b), to amend their Invalidity & Subject-Matter Eligibility contentions (“Invalidity
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`Contentions”) for good cause. Plaintiff opposes this motion.
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`This is Defendants’ first request to amend their Invalidity Contentions. These amendments
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`do not seek to add any new prior art to the case, but rather provide further background and support
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`regarding two prior art systems Defendants disclosed previously: (1) TV Controller Using Hand
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`Gestures and Related Interactive Computer Graphics Applications (“MERL”), and (2) 3D Image
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 2 of 7 PageID #: 1676
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`Control with Hand Gestures, including Control of Molecular Biology Modeling (“MDScope”).
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`These amendments consist of six publications and one video clip, all of which Defendants obtained
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`only recently in response to their third-party subpoenas.
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`Good cause exists for Defendants to amend their Invalidity Contentions because they were
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`diligent in discovering the additional evidence and in seeking to amend. Keranos, LLC v. Silicon
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`Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015). Further, Defendants believe the
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`publications and video clip are important evidence supporting their previously disclosed invalidity
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`positions, and Plaintiff will not suffer any unfair or other prejudice as a result of the amendments.
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`Defendants’ motion thus satisfies the factors this Court considers in determining whether a party
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`has shown good cause under P.R. 3-6(a).
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`I.
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`THE LENGTH OF THE DELAY AND THE IMPACT ON THE PROCEEDINGS
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`Defendants file this motion ten weeks after serving their original Invalidity Contentions on
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`July 6, 2021. Fox Decl., ¶ 2. Defendants served third-party subpoenas to the Mitsubishi Electric
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`Research Laboratories, Inc. (“Mitsubishi Labs”) and the Beckman Institute at the University of
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`Illinois at Urbana-Champaign (“Beckman Institute”) on August 3 and 4, respectively. Defendants
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`received the subject materials in response to their subpoenas on August 16 (Beckman Institute)
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`and September 1 (Mitsubishi Labs). On September 10, after appropriate analysis of the subject
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`materials, Defendants advised Plaintiff of their intent to seek leave to amend and requested
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`Plaintiff’s position. Fox Decl., ¶ 6. Defendants followed up diligently and repeatedly with
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`Plaintiff on September 15 and again on September 17. Id. ¶¶ 8–9. Plaintiff, however, did not
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`respond until today and merely stated that it opposes. Id. ¶ 9. Moreover, neither the publications
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`nor the video clip will impact the parties’ claim construction positions. Rather, the publications
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`and video clip provide further background and support for the prior art systems disclosed
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`previously.
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`2
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 3 of 7 PageID #: 1677
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`II.
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`THE REASON FOR THE DELAY AND EXERCISE OF DILIGENCE
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`Defendants discovered the publications and video clip only after receiving responses to
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`their subpoenas to third-parties Mitsubishi Labs and the Beckman Institute, the respective creators
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`of the MERL and MDScope systems. Defendants provided the subpoenas to Plaintiff on the day
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`they were served (August 3 and 4, respectively). Defendants received the third-party discovery
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`from the Beckman Institute on August 16, and from Mitsubishi Labs on September 1. Fox Decl.,
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`¶¶ 4–5. Defendants immediately produced the discovery to Plaintiff. On September 10, shortly
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`over one week after receiving the third-party discovery in full and following appropriate analysis,
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`Defendants informed Plaintiff of their intent to seek leave to amend. Id. ¶ 6. Defendants have
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`exercised diligence from the outset and any delay is solely the result of Plaintiff’s foot-dragging
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`as to its position on the proposed amendments.
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`III. THE IMPORTANCE OF THE MATTER
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`These amendments are important, as Defendants expect to rely on MERL and MDScope
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`for their invalidity positions at trial. The publications and video clip will help further explain and
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`clarify for the jury how these two prior art systems either anticipate or render obvious the alleged
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`inventions of the Asserted Patents. Specifically regarding the video clip, it will provide jurors a
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`visual representation of the MERL prior art system, helping the trier-of-fact understand how that
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`system invalidates the alleged inventions.
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`IV. DANGER OF UNFAIR PREJUDICE
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`As noted above, the publications and video clip do not disclose any new prior art. Rather,
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`they provide further background and support for the MERL and MDScope prior art systems that
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`Defendants disclosed previously in their original Invalidity Contentions. These amendments will
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`not unfairly or otherwise prejudice Plaintiff. See Maxell Ltd. v. Apple Inc., No. 5:19-cv-00036-
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`RWS, 2020 WL 10456917, at *3 (E.D. Tex. Feb. 24, 2020).
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`3
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 4 of 7 PageID #: 1678
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`V.
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`CONCLUSION
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`For the reasons set forth herein and for any others that may appear to the Court, Defendants
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`respectfully request that the Court grant their Unopposed Motion for Leave to Amend Invalidity
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`Contentions.
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`DATED: September 17, 2021
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`Respectfully submitted,
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`By: /s/ Christopher W. Kennerly
`Christopher W. Kennerly (TX Bar No. 00795077)
`chriskennerly@paulhastings.com
`Radhesh Devendran (pro hac vice)
`radheshdevendran@paulhastings.com
`Boris Lubarsky
`borislubarsky@paulhastings.com
`David M. Fox
`davidfox@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
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`Allan M. Soobert
`allansoobert@paulhastings.com
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`Telephone: 202-551-1700
`Facsimile: 202-551-1705
`
`Elizabeth L. Brann
`elizabethbrann@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
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`Robert Laurenzi
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
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`4
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 5 of 7 PageID #: 1679
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`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
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`Melissa R. Smith (TX Bar No. 24001351)
`GILLAM & SMITH, LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
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`Attorneys for Defendants Samsung Electronics
`Co., Ltd and Samsung Electronics America, Inc.
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`By: /s/ J. Mark Mann
`J. Mark Mann
`State Bar No. 12926150
`mark@themannfirm.com
`G. Blake Thompson
`State Bar No. 24042033
`blake@themannfirm.com
`MANN TINDEL & THOMPSON
`201 E. Howard Street
`903.657.8540
`903.657.6003 (fax)
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`Kent E. Baldauf, Jr. (PA ID No. 70793)
`Bryan P. Clark (PA ID No. 205708)
`THE WEBB LAW FIRM
`One Gateway Center
`420 Ft. Duquesne Blvd., Suite 1200
`Pittsburgh, PA 15222
`412.471.8815
`412.471.4094 (fax)
`kbaldaufjr@webblaw.com
`bclark@webblaw.com
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`Matthew S Warren
`Erika Hart Warren
`Jennifer A Kash
`WARREN LEX LLP
`2261 Market Street, No. 606
`San Francisco, CA 94114
`415-895-2940
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 6 of 7 PageID #: 1680
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`Fax: 415-895-2964
`matt@warrenlex.com
`erika@warrenlex.com
`jen@warrenlex.com
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`Attorneys for Defendants Huawei Device Co.,
`Ltd., Huawei Device USA, Inc.,
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`CERTIFICATE OF CONFERENCE
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`Pursuant to Local Rules CV-7(h) and (i), counsel for the Defendants attempted in good
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`faith to resolve the matters raised by this motion. On September 10, 2021, Defendants provided
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`their amended Invalidity Contentions to Plaintiff, and asked Plaintiff to provide its position by
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`September 15. Fox Decl., ¶ 6. Plaintiff did not respond. On September 15, having received no
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`response, Defendants followed-up with Plaintiff, again asking for its position and stating that
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`Defendants would file their motion on September 17. Id. ¶ 8. Plaintiff did not respond. On
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`September 17, having received no response, Defendants followed up with Plaintiff once again,
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`asking for its position and stating that Defendants would file their motion on September 17. At
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`5:22 pm CT today, Plaintiff stated its opposition without explanation. Defendants respectfully
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`submit that they have endeavored in good faith to satisfy the Court’s meet and confer requirements
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`with respect to this motion, and that these discussions have conclusively ended in an impasse and
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`leave an open issue for the Court to resolve.
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` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
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`Case 2:21-cv-00040-JRG Document 76 Filed 09/17/21 Page 7 of 7 PageID #: 1681
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing document was filed
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`electronically in compliance with Local Rule CV-5 on September 17, 2021. As of this date, all
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`counsel of record had consented to electronic service and are being served with a copy of this
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`document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A).
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` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
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