Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 1 of 9 PageID #: 1289
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SLYDE ANALYTICS LLC,
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`Plaintiff,
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`v.
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`ZEPP HEALTH CORPORATION,
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`Defendant.
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`PLAINTIFF SLYDE ANALYTICS LLC’S SUR-REPLY IN FURTHER
`OPPOSITION TO DEFENDANT ZEPP HEALTH CORPORATION’S
`MOTION TO DISMISS PLAINTIFF’S AMENDED COMPLAINT
`UNDER FED. R. CIV. P. 12(b)(7) (DKT. 27)
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`Case No. 2:23-CV-00172-RWS-RSP
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`JURY TRIAL DEMANDED
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 2 of 9 PageID #: 1290
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`TABLE OF CONTENTS
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`I. ARGUMENT .......................................................................................................................... 1
`II. CONCLUSION ....................................................................................................................... 4
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`Page(s)
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`i
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 3 of 9 PageID #: 1291
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Arigna Tech. Ltd. v. Bayerische Motoren Werke AG,
`No. 2:21-CV-00173-JRG, 2023 WL 6606722 (E.D. Tex. Oct. 6, 2023) ...............................2, 3
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`AX Wireless LLC v. Lenovo Grp. Ltd.,
`No. 2:22-CV-00280-RWS-RSP, 2023 WL 7105701 (E.D. Tex. Sept. 6, 2023) .......................2
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`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`769 F.3d 1371 (Fed. Cir. 2014), vacated and remanded, 136 S. Ct. 1923
`(2016) .........................................................................................................................................4
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`Litecubes, LLC v. N. Light Prods., Inc.,
`523 F.3d 1353 (Fed. Cir. 2008)..................................................................................................2
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`Semcon IP Inc. v. Kyocera Corp.,
`No. 2:18-cv-00197-JRG, Dkt. 41 (E.D. Tex. May 3, 2019) ..................................................3, 4
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`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296 (Fed. Cir. 2010)..................................................................................................4
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`Statutes
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`35 U.S.C. § 271 ................................................................................................................................2
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`ii
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 4 of 9 PageID #: 1292
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`Slyde Analytics LLC (“Slyde” or “Plaintiff”) files this sur-reply response to Defendant
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`Zepp Health Corporation’s (“ZHC” or “Defendant”) Reply and in further opposition to the motion
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`to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(7) (Dkt. 27 or the “Motion”).
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`I.
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`ARGUMENT
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`Slyde’s position is and remains that ZHC conducts all infringing activities by selling,
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`offering to sell, and importing the Accused Products into the United States, either directly or
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`through intermediates, such as Anhui Huami Information Technology Co., Ltd. (“Anhui Huami”).
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`ZHC’s identification of Anhui Huami in the Reply is merely another attempt to muddle the facts
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`and cast blame for ZHC’s infringing acts. This does not render ZNA a necessary or indispensable
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`party warranting dismissal of the litigation. At most, ZHC identifies another intermediary, raises
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`factual disputes regarding the situs of its allegedly infringing sales, offers to sell, and import which
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`are largely irrelevant to its 12(b)(7), and would fail even if the Motion were filed under 12(b)(6).
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`The Motion should be denied.
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`ZHC’s identification of Anhui Huami and other foreign entities is a red herring and does
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`not somehow render ZNA a necessary and indispensable party. In any case, ZHC fails to refute
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`that they serve as mere intermediaries for ZHC, just as Slyde alleges. While ZHC frames Anhui
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`Huami or Beijing Huami as separate and distinct corporate entities from ZHC, they are actually
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`variable interest entities (VIEs) of ZHC that operate under ZHC’s direction and control.1
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`1 Indeed, while ZHC frames Anhui Huami or Beijing Huami as separate, this does not appear to
`be the case based on ZHC’s own statements. Ex. B. (“The Company conducts substantially all of
`its smart, wearable and technological devices business in the PRC through contractual
`arrangements with its VIEs, Anhui Huami and Beijing Huami and the VIEs’ subsidiaries. . . . The
`Company . . . has entered into the following contractual arrangements with Anhui Huami, Beijing
`Huami and their shareholders that enable the Company to (1) have power to direct the activities
`that most significantly affect the economic performance of the VIEs, and (2) receive the economic
`benefits of the VIEs that could be significant to the VIEs.”).
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 5 of 9 PageID #: 1293
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`ZHC also wrongly argues that Slyde has not pled infringement based on any acts of ZHC
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`that occur within the United States. A similar position was rejected in Arigna Tech. Ltd. v.
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`Bayerische Motoren Werke AG, No. 2:21-CV-00173-JRG, 2023 WL 6606722, at *8 (E.D. Tex.
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`Oct. 6, 2023). Slyde explicitly alleges that ZHC “has and continues to directly infringe [the
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`Asserted Patents], either literally or under the doctrine of equivalents, without authority and in
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`violation of 35 U.S.C. § 271, by making, using, offering to sell, selling, and/or importing into the
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`United States products that satisfy each and every limitation of one or more claims of [the Asserted
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`Patents].” Dkt. 16, ¶¶ 24, 35, 46, 57, 68, 78, 88; see also Resp. at 1. Slyde further pled that ZHC
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`has “directly or through subsidiaries or intermediaries, committed and continues to commit acts of
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`patent infringement in the State of Texas and in this Judicial District as alleged in this
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`Complaint[]”. See id., ¶ 4. ZHC’s arguments are nothing more than a factual dispute over whether
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`it, or one of its subsidiaries, conducts acts of infringement in the United States. This Court has
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`previously rejected such arguments, holding that similar allegations of direct infringement in the
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`United States, including against holding companies, are sufficient to overcome a motion to
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`dismiss. See, e.g., AX Wireless LLC v. Lenovo Grp. Ltd., No. 2:22-CV-00280-RWS-RSP, 2023
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`WL 7105701, at *1 (E.D. Tex. Sept. 6, 2023) (holding that allegations in the complaint alleging
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`that a purported holding company “has committed and continues to commit acts of direct
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`infringement of the Asserted Patents by making, using[,] selling, offering to sell, and/or importing
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`Accused Instrumentalities[]” . . . “through, or in consort with its subsidiaries, affiliates, or
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`intermediaries” was sufficient to plausibly maintain a claim of direct infringement) (internal
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`quotations omitted); see also Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1370 (Fed.
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`Cir. 2008) (“[T]he ’selling’ of an infringing article has both a physical and a conceptual dimension
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`to it. . . . [I]t is possible to define the situs of the tort of infringement-by-sale either in real terms
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`2
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 6 of 9 PageID #: 1294
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`as including the location of the seller and the buyer and perhaps the points along the shipment
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`route in between, or in formal terms as the single point at which some legally operative act took
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`place, such as the place where the sales transaction would be deemed to have occurred as a matter
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`of commercial law.”).
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`On Reply, ZHC does not even substantively address ZHC’s allegedly infringing U.S. sales
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`to ZNA. Even for products ultimately resold to retailers, ZHC’s evidence suggests at most that
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`ZNA is an intermediary. The Amended Complaint identifies that ZHC “‘itself’ engages in these
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`activities” and “[a]ccepting these well-pled allegations as true, [Slyde] has pled enough facts to
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`state a claim for infringement.” Arigna Tech., 2023 WL 6606722, at *9; Semcon IP Inc. v. Kyocera
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`Corp., No. 2:18-cv-00197-JRG, Dkt. 41 at 5 (E.D. Tex. May 3, 2019) (“[T]his Court need not
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`accept Kyocera’s legal conclusion that Kyocera’s sale of or offers to sell smartphones to Kyocera
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`International are not U.S. sales or offers to sell.”). While ZHC argues that it does not have U.S.
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`locations and attaches ZNA’s agreements, it conspicuously fails to address its own agreements
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`pertaining to the Accused Products, including those pertaining to delivery in the United States.
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`In any case, the exemplary agreements which ZHC identifies for the first time on Reply
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`are irrelevant to ZHC’s sales to ZNA and others. Nor are the agreements evidence that ZHC has
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`not directly sold to others in the United States. ZHC’s attempt to distinguish its SEC filings are
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`similarly unavailing. At most, it shows a factual dispute that must be resolved in Slyde’s favor.
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`ZHC can point to no such distinction in its SEC filings, such that any statements made by ZHC in
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`these filings cannot be attributed to ZHC, instead relying on its own self-serving arguments. Reply
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`at 2. Exemplary citations to two contracts demonstrating ZNA’s sales to third-party entities do
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`not demonstrate that every activity is attributed to ZNA. Further, ZHC’s statement that if it had
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`sold or offered to sell a product “it would have done so in the Cayman Islands and/or the People’s
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`3
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 7 of 9 PageID #: 1295
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`Republic of China,” is not supported by any evidence. Moreover, “[s]uch a determination is
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`necessarily a highly factual inquiry.” Semcon, No. 2:18-cv-00197-JRG, Dkt. 41 at 5; see also id.
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`at n.1 (“However, the situs of Kyocera’s smartphone sales is a legal conclusion that is subject to
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`dispute.”).2
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`II.
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`CONCLUSION
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`For the foregoing reasons, Plaintiff respectfully requests that the Court deny Defendant’s
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`Motion to Dismiss pursuant to Rule 12(b)(7) (Dkt. 27).
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`Dated: April 17, 2024
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue, Ste 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`2 ZHC’s reliance on Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371 (Fed. Cir. 2014), vacated
`and remanded, 136 S. Ct. 1923 (2016) is inapposite. There, under the “offer for sale” within the
`United States theory, the court noted that “with respect to [defendant’s] customers, there is no
`evidence that the products at issue were contemplated to be sold within the United States.” Id. at
`1381; see also Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.,
`617 F.3d 1296, 1309 (Fed. Cir. 2010) (“In order for an offer to sell to constitute infringement, the
`offer must be to sell a patented invention within the United States.”). Here, however, it is
`uncontroverted that ZHC, either directly or through intermediaries, intended for its products to be
`imported and sold within the United States. See Opp. at 9 (“Anhui Huami also sells products to
`Zepp North America Inc. and Zepp Netherlands Trading B.V. through an independent customs
`clearance agency for the products to be distributed to local distributors and consumers in the U.S.
`and Europe, respectively.”).
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`4
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 8 of 9 PageID #: 1296
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`
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`John Andrew Rubino
`NY Bar No. 5020797
`Email: jarubino@rubinoip.com
`Michael Mondelli III
`NY Bar No. 5805114
`Email: mmondelli@rubinoip.com
`RUBINO IP
`51 J.F.K. Parkway
`Short Hills, NJ 07078
`Telephone: (973) 535-0920
`Facsimile: (973) 535-0921
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF,
`SLYDE ANALYTICS LLC
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`5
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`Case 2:23-cv-00172-RWS-RSP Document 45 Filed 04/17/24 Page 9 of 9 PageID #: 1297
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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 April 17, 2024.
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`/s/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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`1
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