Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 1 of 8 PageID #: 2094
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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.
`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
`
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`Defendants.
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`JURY TRIAL DEMANDED
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`C.A. NO. 2:21-cv-00040-JRG
` LEAD CONSOLIDATED CASE
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`C.A. NO. 2:21-cv-00041-JRG
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`
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`PLAINTIFF GESTRURE TECHNOLOGY PARTNERS, LLC’S RESPONSE TO
`DEFENDANTS’ MOTION FOR LEAVE TO AMEND THEIR INVALIDITY CONTENTIONS
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 2 of 8 PageID #: 2095
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`Plaintiff Gesture Technology Partners, LLC (“GTP”) files this Response to Defendants
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Huawei Device Co., Ltd., and
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`Huawei Device USA, Inc.’s (“Defendants”) Motion for Leave to Amend Their Invalidity
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`Contentions (the “Motion” or “Mot.”), Dkt. No. 76. For the following reasons, the Motion should
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`be denied in its entirety.
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`I.
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`INTRODUCTION
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`The well-settled law of the Court provides that one of the four factors required to establish
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`good cause to amend invalidity contentions is the importance of the evidence that would be added
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`to the contentions. See, e.g., Uniloc 2017 LLC v. Google LLC, No. 2:18-CV-00550-JRG, 2020
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`U.S. Dist. LEXIS 25675, at *5 (E.D. Tex. Jan. 16, 2020) (Gilstrap, C.J.). “When a proposed
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`reference’s disclosures are substantively cumulative of the disclosures in other references that
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`have already been identified in a party’s invalidity charts, such proposed reference offers little or
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`no value probative value and is unlikely to be important.” Id. at *10-11. Defendants concede
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`on the first page of the Motion that their requested amendments “do not seek to add any new prior
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`art to the case, but rather provide further background and support regarding two prior art systems
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`Defendants disclosed previously.” Mot. at 1. Having conceded that the proposed amendments are
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`“substantively cumulative,” Defendants nonetheless ask the Court to indulge their request based
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`on unpersuasive arguments on the other three mandatory factors. Defendants fail to demonstrate
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`that good cause exists to amend their contentions, and the Motion should be denied.
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`II.
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`ARGUMENT
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`Amendments and additions to a party’s invalidity contentions are governed by Local Patent
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`Rule 3-6(b), which requires a showing of good cause. See P.R. 3-6(b) (“Amendment or
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`supplementation of any Infringement Contentions or Invalidity Contentions, other than as
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 3 of 8 PageID #: 2096
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`expressly permitted in P. R. 3-6(a), may be made only by order of the Court, which shall be entered
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`only upon a showing of good cause.”). The Court applies a four-factor test to evaluate good cause.
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`See e.g. Uniloc 2017 LLC v. Google LLC, No. 2:18-CV-00550-JRG, 2020 U.S. Dist. LEXIS
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`25675, at *5 (E.D. Tex. Jan. 16, 2020) (Gilstrap, C.J.). The four factors are “(1) the explanation
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`for the failure to meet the deadline; (2) the importance of the thing that would be excluded; (3)
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`potential prejudice in allowing the thing that would be excluded; and (4) the availability of a
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`continuance to cure such prejudice.” Id. All four factors, but particularly the lack of importance
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`of the proposed additional material, weigh against granting Defendants’ motion.
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`a. Defendants Fail To Show That They Exercised Diligence In Discovering And
`Disclosing The Proposed Amendments.
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`Defendants try to justify their proposed amendment by arguing that their proposed
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`amendments were “obtained only recently in response to . . . third-party subpoenas.” Mot. at 2.
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`The Motion also discloses that the third-party subpoenas in question were served on August 3 and
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`4, 2021, towards the end of the discovery period. Id. The materials were received on August 16
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`and September 1. Id. But Defendants did not advise Plaintiffs of their intent to seek leave to
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`amend until September 10, nearly a month after the first materials were received, and over a week
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`after the second materials. Id. Given that the proposed amendments consist of just “six
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`publications and one video clip,” it is unclear why Defendants needed so much time to decide
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`whether they merited an amendment, particularly when, according to Defendants, the materials
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`merely “provide further background and support for the prior art systems disclosed previously.”
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`Id. While Defendants attempt to cast their delay as one made by GTP, Defendants do not explain
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`why it took their 15 counsel of record nearly a month to decide that “six publications and one video
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`clip” were enough to seek leave to amend. See, e.g., “A party’s failure to provide an adequate
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`justification for its diligence materially weighs in favor of rejecting the proffered amended
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 4 of 8 PageID #: 2097
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`contentions, and ‘may even be sufficient standing alone to support exclusion’ in circumstances
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`where a party offers no substantial justification for its untimeliness.” Uniloc 2017 LLC, at *6
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`(emphasis in original). Defendants have not shown diligence in disclosing the proposed
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`amendments. This factor therefore weighs against granting leave to amend.
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`b. Defendants Concede That The Amendments Are Not Important.
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`Defendants have failed to demonstrate that the proposed amendments are important. From
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`the outset of the Motion, Defendants themselves characterize the amendments as “further
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`background and support” for the prior art systems they have already disclosed. Mot. at 1. The
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`fact that these additions are only to provide “further background and support” is an admission that
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`there is nothing new or unique about the additions that would make them important or necessary.
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`Defendants claim these publications and video clip would “explain and clarify” issues for the jury.
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`Mot. at 3. But if that is the goal, Defendants can seek to have these items admitted as evidence.
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`Defendants have provided no reason of significance to disturb the invalidity contentions, which
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`were served on July 6, 2021, and upon which GTP has been relying to prepare its case. Defendants
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`have conceded the proposed amendments’ lack of importance, demonstrating the Motion’s lack of
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`merit. This factor therefore weighs strongly against granting leave to amend.
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`c. GTP Would Be Unfairly Prejudiced By The Proposed Amendments.
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`Defendants waited to try to amend until three days before the September 20, 2021 claim
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`construction hearing and less than one month before the October 15, 2021 close of fact discovery—
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`despite having had access to the materials since late August and early September. In an instructive
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`case, where amendments were submitted after the Joint Claim Construction Statement (and two
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`months before the claim construction hearing), the Court found that “[a]llowing Defendants to
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`amend the invalidity contentions so close to the Claim Construction Hearing, and after the parties
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 5 of 8 PageID #: 2098
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`have largely formulated their respective positions, would force Plaintiff to spend more time and
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`resources in modifying its existing construction.” Innovative Display Techs. LLC v. Acer Inc.,
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`Civil Action No. 2:13-cv-00522-JRG, 2014 U.S. Dist. LEXIS 83196, at *7 (E.D. Tex. June 19,
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`2014) (Gilstrap, J.). Here, the claim construction hearing has already occurred. By the time the
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`amendments would be effective, discovery in the case will have already closed, and expert reports
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`will have been served. It would be prejudicial to GTP for Defendants to have the opportunity to
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`shoehorn the amendments into their invalidity contentions without having the opportunity to
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`present argument on these amendments to the Court in the context of the claim construction
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`hearing, as Defendants’ own cited authority plainly states. See Maxell Ltd. v. Apple Inc., No. 5:19-
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`CV-00036-RWS, 2020 U.S. Dist. LEXIS 257203, at *10 (E.D. Tex. Feb. 24, 2020) (Schroeder, J.)
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`(“Amendments to invalidity contentions after parties have disclosed and argued for their claim
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`constructions positions are prejudicial.”). This factor therefore weighs against granting leave to
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`amend.
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`d. The Availability of a Continuance.
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`The trial of this case is fast approaching. Discovery closes on October 15, 2021, and
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`opening expert reports are due the same day. See Dkt. No. 69. Trial is set for March 7, 2022. Id.
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`Neither party here seeks a revision of the discovery schedule, and the trial date would not allow
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`for such a revision. A continuance would not be appropriate in these circumstances, given the
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`Defendants’ concession that the requested amendments are unimportant. This factor thus weighs
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`in favor of denying the Motion.
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 6 of 8 PageID #: 2099
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`III. CONCLUSION
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`For the foregoing reasons, Defendants’ Motion for Leave to Amend Their Invalidity
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`Contentions should be denied because Defendants have failed to show good cause for any
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`amendment.
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`Dated: October 1, 2021
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`
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`Respectfully submitted,
`By: /s/ Fred I. Williams
`Fred I. Williams
`Texas State Bar No. 00794855
`Michael Simons
`Texas State Bar No. 24008042
`Robert Daniel Garza
`Texas State Bar No. 24097730
`Robert Rhodes
`Texas State Bar No. 24116958
`WILLIAMS SIMONS & LANDIS PLLC
`327 Congress Ave., Suite 490
`Austin, TX 78701
`Tel: 512-543-1354
`fwilliams@wsltrial.com
`msimons@wsltrial.com
`dgarza@wsltail.com
`rrhodes@wsltrial.com
`
`Todd E. Landis
`State Bar No. 24030226
`WILLIAMS SIMONS & LANDIS PLLC
`2633 McKinney Ave., Suite 130 #366
`Dallas, TX 75204
`Tel: 512-543-1357
`tlandis@wsltrial.com
`
`John Wittenzellner
`Pennsylvania State Bar No. 308996
`WILLIAMS SIMONS & LANDIS PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Tel: 512-543-1373
`johnw@wsltrial.com
`
`Kevin S. Kudlac
`Texas Bar No. 00790089
`Kudlac PLLC
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`-6-
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 7 of 8 PageID #: 2100
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`1916 Wimberly Lane
`Austin, TX 78735
`Tel: 512-656-5743
`kevin@kudlacIP.com
`
`Attorneys for Plaintiff Gesture Technology
`Partners, LLC
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`Case 2:21-cv-00040-JRG Document 90 Filed 10/01/21 Page 8 of 8 PageID #: 2101
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on October 1, 2021 the undersigned caused a copy
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`of the foregoing document to be served on all counsel of record, via electronic mail, pursuant to
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`the Federal Rules of Civil Procedure.
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`By: /s/ Fred I. Williams
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