Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 1 of 9 PageID #: 2217
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`v.
`
`Plaintiff,
`
`
`
`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
`
`
`Defendants.
`
`
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff,
`
`v.
`
`
`
`
`
`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`
`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`DEFENDANTS’ REPLY IN SUPPORT OF MOTION FOR LEAVE TO AMEND
`INVALIDITY CONTENTIONS
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 2 of 9 PageID #: 2218
`
`
`
`
`
`It is undisputed that the MERL and MDScope prior art systems were described and charted
`
`in Defendants’ original invalidity contentions, and the supplementations at issue here are based on
`
`materials newly-obtained from third-party subpoenas. Defendants were as diligent as could have
`
`been expected in discovering and disclosing the materials, and GTP cannot articulate any actual
`
`prejudice. Unable to challenge these facts, GTP misstates Defendants’ position to argue that the
`
`supplementations are not “important” because they are “substantively cumulative.” Opp. at 2. The
`
`materials are not “cumulative” additional prior art, but rather are additional evidence to help
`
`explain and clarify how MERL and MDScope invalidate the Asserted Patents. Defendants have
`
`endeavored to proceed as the letter and spirit of the Court’s local rules require, undertaking diligent
`
`and sincere efforts to ensure “timely discovery” and providing GTP more than “adequate notice
`
`and information with which to litigate . . . .” Personalized Media Commc’ns, LLC v. Apple, Inc.,
`
`No. 2:15-cv-01366-JRG, 2021 U.S. Dist. LEXIS 16909, at *10–11 (E.D. Tex. Jan. 29, 2021).
`
`Defendants request that the Court grant their motion for leave to amend.
`
`I.
`
`DEFENDANTS HAVE DEMONSTRATED DILIGENCE
`
`Defendants were diligent in discovering the new materials, serving third-party subpoenas
`
`on the creators of MERL and MDScope just a month after serving Defendants’ original invalidity
`
`contentions. Mot. at 2. GTP claims Defendants served the subpoenas “towards the end of the
`
`discovery period,” Opp. at 3, but the calendar refutes that claim. Defendants served the subpoenas
`
`11 weeks before the close of fact discovery.1 Further, unlike patents and technical publications,
`
`information on physical systems like MERL and MDScope is difficult to obtain because there is
`
`no centralized database cataloging such systems. See Maxell Ltd. v. Apple, Inc., No. 5:19-cv-
`
`00036-RWS, 2020 U.S. Dist. LEXIS 257203, at *6–7 (E.D. Tex. Feb. 24, 2020). There were thus
`
`
`1 This is only 4 weeks into the 15 week period separating the original invalidity contentions (week
`of July 4) and the close of fact discovery (week of October 11).
`
`1
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 3 of 9 PageID #: 2219
`
`
`
`“practical limitations” to Defendants’ diligent efforts to discover the full set of available materials
`
`on these two systems. See CEATS, Inc. v. Cont’l Airlines, Inc., No. 6:10-cv-00120, Dkt. 633 at 4
`
`(E.D. Tex. Aug. 5, 2011). This Court is familiar with the challenges defendants face when
`
`discovering relevant art held and controlled by third-parties. Seven Networks, LLC v. Google LLC,
`
`No. 2:17-cv-004442-JRG, 2018 U.S. Dist. LEXIS 112210 (E.D. Tex. Jul. 6, 2018).
`
`Defendants were also diligent in disclosing the new materials. GTP fails to mention that
`
`Defendants disclosed the new materials to GTP just nine days (MDScope) and one day (MERL)
`
`after obtaining the materials. Mot. at 3. The “relative speed” with which Defendants passed along
`
`the third-party production to GTP demonstrates diligence. Seven, 2018 U.S. Dist. LEXIS 112210,
`
`at *8. Rather than pursuing serial motions for leave to amend (i.e., one for MERL and one for
`
`MDScope), Defendants prepared a single proposed supplementation and provided it to GTP on
`
`September 10, 2021, less than two weeks after obtaining the materials in full. Id. See Maxell,
`
`2020 U.S. Dist. LEXIS 257203, at *7–8 (finding disclosure within “three weeks” to be diligent).2
`
`GTP’s argument that Defendants were not diligent in pursuing discovery, or in disclosing
`
`the newly-obtained materials, rests on the misguided notion that if Defendants had been even more
`
`diligent they might have discovered and disclosed the materials a few days earlier. But perfection
`
`is neither possible nor required. Defendants have exhibited ample good faith and diligence.
`
`II.
`
`
`
`THE NEWLY OBTAINED MATERIALS ARE IMPORTANT
`
`The newly-obtained MERL and MDScope materials do not “only” provide background
`
`and support for Defendants’ existing contentions on those prior art systems. Opp. at 4. Rather,
`
`
`2 While diligence in filing their motion is not strictly a factor, Defendants note that GTP waited a
`full week to state its opposition to the supplementation, during which time Defendants followed
`up with GTP twice for a response. Mot. at 6 (Certificate of Conference). Defendants prepared
`and filed their motion within roughly a week. GTP’s claim that “Defendants waited to try to amend
`until three days before” the September 20 claim construction hearing is misleading.
`
`2
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 4 of 9 PageID #: 2220
`
`
`
`the materials will help explain and clarify for the jury just how MERL and MDScope invalidate
`
`the Asserted Patents. Mot. at 3. “Clarity to the trier of fact is important.” Maxell, 2020 U.S. Dist.
`
`LEXIS 257203, at *10. For example, the MERL video clip will give the jury “a plain and
`
`understandable explanation of [Defendants’] invalidity defense.” Id. at *9. Both MERL and
`
`MDScope are prior art systems created over twenty years ago. Prototypes do not exist. The video
`
`clip will bring the MERL system to life and provide powerful evidence for the trier of fact.3
`
`
`
`Moreover, both Dr. William Freeman (one of the inventors of MERL) and Dr. Vladimir
`
`Pavlovic (one of the inventors of MDScope) will provide deposition testimony before the close of
`
`fact discovery. The MERL video clip relates directly to Dr. Freeman’s work, and two of the
`
`MDScope publications were authored by Dr. Pavlovic. While Drs. Freeman and Pavlovic will
`
`certainly testify about other publications that were included in Defendants’ original invalidity
`
`contentions, their testimony regarding the newly-obtained materials is no less important, as the
`
`video clip and these two publications provide unique perspectives on the MERL and MDScope
`
`systems. The other three MDScope publications4 also offer unique contributions to Defendants’
`
`already-disclosed theories: “Prototype Speech Recognition Interface for VMD” describes speech
`
`recognition technology, which can be used in contradistinction to gesture recognition technology;
`
`
`3 GTP suggests that, rather than seek leave pursuant to the Court’s local rules, Defendants should
`simply seek to have the new materials admitted into evidence at trial. Opp. at 4. But if GTP will
`not object to their admission, its opposition to Defendants’ supplementation serves no purpose but
`to consume Court and party resources; and if GTP will (as expected) object to their admission, its
`suggestion that Defendants should try to do so without seeking leave is non-serious. Defendants
`timely “crystallized” their invalidity theories with respect to MERL and MDScope in their original
`invalidity contentions, and seek to supplement with newly-obtained materials that further support
`and evidence those theories, thereby ensuring that GTP is “sufficiently notified” as to the materials
`and their importance. Personalized Media, 2021 U.S. Dist. LEXIS 16909, at *10–12.
`4 Defendants have determined that the sixth publication, “Dynamic Bayesian Networks for
`Information Fusion with Applications to Human-Computer Interfaces,” is included in their original
`invalidity contentions and thus, while maintaining it in their contentions, withdraw that publication
`from their requested supplementation. Exhibit A (video clip); Exhibit B (publications).
`
`3
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 5 of 9 PageID #: 2221
`
`
`
`“Molecular Dynamics Studies of the Protein Bacteriohodopsin” and “Simplified Expression of
`
`Message-Driven Programs and Quantification of Their Impact on Performance” describe
`
`biological structures and computations abilities, respectively, for the molecular modeling system
`
`that was the subject of Dr. Pavlovic’s gesture detection system.
`
`
`
`In sum, the supplemental video clip and publications (1) will bring clarity to the trier of
`
`fact, (2) will be the subject of live testimony for two key fact witnesses; and (3) will offer unique
`
`contributions to Defendants’ invalidity theories. The supplemental materials are important.
`
`III. DEFENDANTS’ SUPPLEMENTATION DOES NOT PREJUDICE GTP
`
`
`
`The newly-obtained materials can be both “important” and not prejudicial. Cf. Uniloc 2017
`
`LLC v. Google LLC, No. 2:18-cv-00550-JRG-RSP, 2020 U.S. Dist. LEXIS 25675, at *8–11 (E.D.
`
`Tex. Jan. 16, 2020). Despite the materials’ importance, GTP’s prejudice claims are notably weak.
`
`
`
`First, the new materials do not alter Defendants’ invalidity theories with respect to MERL
`
`and MDScope, which were timely described and charted in their original invalidity contentions.
`
`GTP’s opposition ignores the crucial fact that the video clip and publications do not add a single
`
`new theory to Defendants’ original invalidity contentions. GTP’s reliance on Innovation Display
`
`is thus grossly inapt. Opp. at 4-5. There, defendant sought to add four prior art references that
`
`would result in “five new claim charts.” Innovative Display Techs. LLC v. Acer Inc., No. 2:13-cv-
`
`00522-JRG-RSP, Dkt. 63 at 4–5 (E.D. Tex. May 20, 2014). The new prior art affected 22 claims
`
`across four asserted patents and required plaintiff “to develop its case anew.” Id., Dkt. 65 at 6–7
`
`(E.D. Tex. Jun. 3, 2014). Here, in contrast, the video clip and publications will not affect “the
`
`scope and combination of the specific prior arts disclosed in [Defendants’] invalidity contentions.”
`
`Innovative Display Techs. LLC v. Acer Inc., No. 2:13-cv-00522-JRG, 2014 U.S. Dist. LEXIS
`
`83196, at *7 (E.D. Tex. Jun. 19, 2014). Plaintiff also misreads Maxell. Opp. at 5. There, the
`
`defendant sought to add a wholly new item of prior art (i.e., the Casio Camera). Maxell, 2020 U.S.
`
`4
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 6 of 9 PageID #: 2222
`
`
`
`Dist. LEXIS 257203, at *8–9. Here, in contrast, the video clip and publications are not new items
`
`of prior art. There is no risk that GTP will need to account for additional or different obviousness
`
`combinations. Cf. Uniloc, No. 2:18-cv-00550-JRG-RSP, Dkt. 102 at 1–2 (E.D. Tex. Dec. 3, 2019)
`
`(“Google’s requested addition . . . results in Google’s invalidity contentions jumping from a timely
`
`disclosed 60 combinations to a new 120 total combinations. This is prejudicial to Uniloc . . . .”);
`
`Seven, 2018 U.S. Dist. LEXIS 112210, at *5 (“[T]he prejudice faced by SEVEN will be minimal,
`
`as this prior art will be in the case regardless.”).
`
`
`
`Second, GTP cannot credibly allege its claim construction or other substantive positions
`
`have been or would be affected by the supplementation. Indeed, GTP made no effort to change
`
`any such positions on this basis. Despite hand waving about claim construction, Opp. at 5, GTP
`
`has not provided any clue as to which of its claim construction or other positions would supposedly
`
`be affected by the supplementation. Nor could it credibly do so.5
`
`IV. A CONTINUANCE IS AVAILABLE BUT UNNECESSARY
`
`While Defendants would of course be amenable to a continuance of any deadline should
`
`the Court find it necessary or appropriate, Defendants see no need for any continuance.
`
`V.
`
`CONCLUSION
`
`For the reasons set forth herein and in their motion, Defendants respectfully request that
`
`the Court grant their Motion for Leave to Amend Invalidity Contentions.
`
`
`5 GTP either provided a boilerplate excuse or wholly failed to account for this Court’s precedent
`when considering supplementations that do not alter a defendant’s invalidity theories. Uniloc,
`2020 U.S. Dist. LEXIS 25675, at *10 n.3 (“Uniloc does not explain how the Three Proposed
`References would have changed its claim construction briefing or otherwise had a prejudicial
`effect.”); Maxell, 2020 U.S. Dist. LEXIS 257203, at *11–12 (“Maxell did not allege any specific
`claim construction arguments that would be affected by the supplemental invalidity contentions.”);
`Seven, 2018 U.S. Dist. LEXIS 112210, at *8 (“Given that the prior art will be in the case regardless,
`and SEVEN will have accounted for its teachings in developing its claim construction positions,
`the Court finds that there is minimal prejudice.”).
`
`5
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 7 of 9 PageID #: 2223
`
`
`
`DATED: October 12, 2021
`
`
`Respectfully submitted,
`
`
`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
`
`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
`
`Robert Laurenzi
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`Melissa R. Smith (TX Bar No. 24001351)
`GILLAM & SMITH, LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`Telephone: (903) 934-8450
`
`6
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 8 of 9 PageID #: 2224
`
`
`
`
`
`
`
`
`
`
`
`
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`Attorneys for Defendants Samsung Electronics
`Co., Ltd and Samsung Electronics America, Inc.
`
`
`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)
`
`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
`
`Matthew S Warren
`Erika Hart Warren
`Jennifer A Kash
`WARREN LEX LLP
`2261 Market Street, No. 606
`San Francisco, CA 94114
`415-895-2940
`Fax: 415-895-2964
`matt@warrenlex.com
`erika@warrenlex.com
`jen@warrenlex.com
`
`
`Attorneys for Defendants Huawei Device Co.,
`Ltd., Huawei Device USA, Inc.,
`
`
`
`7
`
`

`

`Case 2:21-cv-00040-JRG Document 94 Filed 10/12/21 Page 9 of 9 PageID #: 2225
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was filed
`
`electronically in compliance with Local Rule CV-5 on October 12, 2021. As of this date, all
`
`counsel of record had consented to electronic service and are being served with a copy of this
`
`document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A).
`
` /s/ Christopher W. Kennerly
`Christopher W. Kennerly
`
`
`
`
`8
`
`