Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Plaintiff,
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`v.
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`Case No. 6:21-cv-00898-ADA
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`JURY TRIAL DEMANDED
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`ALMONDNET, INC.,
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`AMAZON.COM, INC.; AMAZON.COM
`SERVICES LLC; and AMAZON WEB
`SERVICES, INC.,
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`Defendants.
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`PLAINTIFF ALMONDNET, INC.’S REPLY IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT OF DEFENDANT AMAZON’S
`SIXTEENTH AFFIRMATIVE DEFENSE OF DEDICATION TO THE PUBLIC
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`I.
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`II.
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 2 of 10
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 1
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`A.
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`B.
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`C.
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`AlmondNet is entitled to judgment as a matter of law because
`Amazon admits that it adduced no material facts in support of its
`dedication defense which could give rise to any dispute. ....................................... 1
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`Amazon’s eleventh-hour request to attempt to develop facts in
`support of its dedication defense during post-trial briefing
`improperly and prejudicially requires re-opening discovery in
`violation of the Court’s Scheduling Order and Rule 26. ........................................ 2
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`Amazon’s attempts to “shift the blame” to AlmondNet should be
`rejected. ................................................................................................................... 4
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`III.
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`CONCLUSION ................................................................................................................... 5
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 3 of 10
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`Cases
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`TABLE OF AUTHORITIES
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`PSC Computer Prod., Inc. v. Foxconn Int’l, Inc.,
`355 F.3d 1353 (Fed. Cir. 2004) .................................................................................................. 3
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`Rules
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`Fed. R. Civ. P. 26 ........................................................................................................................ 2, 4
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`Fed. R. Civ. P. 37 ........................................................................................................................ 2, 4
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`Fed. R. Civ. P. 56 ............................................................................................................................ 1
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 4 of 10
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`I.
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`INTRODUCTION
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`Amazon admits that it did not develop any facts or provide any expert opinions relating
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`to its dedication defense. Dkt. No. 156 (“Opposition”). And because those facts and opinions do
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`not exist, there can be “no genuine dispute as to any material fact.” Fed. R. Civ. P. 56. Thus,
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`AlmondNet “is entitled to judgment as a matter of law.” Id.; Dkt. No. 125 (“Motion”) at 1-2.
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`Acknowledging its failure to pursue its defense, Amazon asks the Court to flout its own
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`Scheduling Order and permit additional costly and time-consuming discovery as part of post-trial
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`briefing (Opp. at 3-4)—discovery that this Court already provided for in its Scheduling Order.
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`Dkt. No. 120. While Amazon purports to request this “in the interests of fairness and efficiency”
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`(Opp. at 3), re-opening discovery post-trial, after the parties and this Court have invested
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`significant time, energy, and resources is the antithesis “of fairness and efficiency.” Moreover,
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`this is a problem of Amazon’s own making, as it failed to update its discovery responses when it
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`knew that DOE theories may become part of this case. Amazon’s request should be denied, and
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`AlmondNet’s motion should be granted.
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`II.
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`ARGUMENT
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`A.
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`AlmondNet is entitled to judgment as a matter of law because Amazon
`admits that it adduced no material facts in support of its dedication defense
`which could give rise to any dispute.
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`Amazon admits that it did not develop any facts or provide any expert opinions relating
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`to its dedication defense during discovery in this case. Indeed, in its summary of “Pertinent Facts,”
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`Amazon does not identify a single fact to support the positions it might take as part of its
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`dedication disclosure defense. Opp. at 1. Nor does Amazon provide any citation to any expert
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`opinion to support its dedication defense. Opp. at 2-4. Moreover, Amazon has not served
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`supplemental interrogatory responses. Instead, Amazon argues that AlmondNet’s motion should
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`be denied so that “the parties could submit supplemental expert declarations” during post-trial
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 5 of 10
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`briefing. Opp. at 4. However, the time for obtaining discovery and developing expert opinions
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`has passed. Dkt. No. 120 at 2 (the Court’s Scheduling Order setting the “Close of Fact Discovery”
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`for June 2, 2023, and the “Close of Expert Discovery” for August 15, 2023). Despite the
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`Scheduling Order providing adequate time to obtain discovery, Amazon did not develop any facts
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`or opinion to support its dedication defense. Mot. at 1-2. Amazon cannot now develop new facts
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`or theories to support its dedication defense here. Mot. at 3-4; Fed. R. Civ. P. 26 and 37. On this
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`basis alone, AlmondNet is entitled to judgment as a matter of law because no material facts exist
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`that would give rise to any dispute to preclude summary judgment here.
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`B.
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`Amazon’s eleventh-hour request to attempt to develop facts in support of its
`dedication defense during post-trial briefing improperly and prejudicially
`requires re-opening discovery in violation of the Court’s Scheduling Order
`and Rule 26.
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`Admitting that it has failed to meet its obligations under this Court’s Scheduling Order
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`and Rule 26, Amazon now asks this Court to re-open discovery “in the interests of fairness and
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`efficiency.” Opp. at 3-4. But re-opening discovery in this case is the opposite of “fairness and
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`efficiency.” Amazon’s eleventh-hour request to proceed with its dedication defense flouts this
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`Court’s Scheduling Order, will inject significant delay and cost into the post-trial process, and
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`will severely prejudice AlmondNet. Amazon’s request should be denied.
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`Amazon had ample time under the Court’s Scheduling Order to develop facts and opinions
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`to support its dedication defense. Dkt. No. 120. Indeed, Amazon plead its dedication disclosure
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`defense in its Answer at the outset of this case. Mot. at 1. But instead of pursuing its affirmative
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`defense and abiding by the deadlines in the Court’s Scheduling Order, Amazon asks this Court to
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`ignore those deadlines and allow Amazon to proceed with re-opening discovery so that “the
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`parties could submit supplemental expert declarations” as part of post-trial briefing. Opp. at 4.
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`Amazon should not be allowed a do-over during the post-trial process.
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`Further, Amazon’s request to re-open discovery during post-trial proceedings will inject
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`significant delay and costs that could have and should have been avoided. At a minimum,
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`Amazon’s requested relief will require the expert declarations Amazon requests as well as
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`depositions regarding the opinions in those declarations. Opp. at 4. And while AlmondNet agrees
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`that the “Court is certainly capable of reading” the patent documents, Amazon’s dedication
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`defense is certainly “more complicated than that.”1 Opp. at 4. Indeed, Amazon does not dispute
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`that its dedication defense requires that “one of ordinary skill in the art should be able to read a
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`patent, to discern which matter is disclosed and discussed in the written description, and to
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`recognize which matter has been claimed.” PSC Computer Prod., Inc. v. Foxconn Int’l, Inc., 355
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`F.3d 1353, 1359 (Fed. Cir. 2004). This is squarely within an expert’s purview and will require the
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`parties to undertake expert discovery.
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`Amazon’s vague and unsubstantiated dedication defense may also require additional fact
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`discovery as well as resolving potential claim construction disputes. These risks are particularly
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`acute here because the law requires that the claims be evaluated in light of the written description.
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`PSC Comput. Prod., Inc., 355 F.3d at 1359. The meaning of the claims, and the underlying
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`support which might include patent documents in the priority chain of each patent at issue, are
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`critical issues that will require further analysis and resolution in light of Amazon’s ambiguously
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`asserted dedication defense. But Amazon already had the opportunity to litigate these issues. It
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`should not be allowed a do-over at this late stage regarding a defense Amazon had control over
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`from the outset of this case, but that it chose not to pursue here.
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`1 The Court previously recognized the complexity of the technology in the patents at issue here,
`appointing a Technical Advisor in this case because “[f]ull appreciation of the parties’
`upcoming arguments requires a detailed understanding of electrical engineering or computer
`science.” Dkt. No. 65 (Order Appointing Technical Advisor) at 4.
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`Moreover, Amazon’s requested relief will severely prejudice AlmondNet. As discussed
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`above, AlmondNet will be required to undertake additional costly and time-consuming discovery
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`into issues that could have been litigated earlier. And by choosing not to pursue its dedication
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`defense during the timeline prescribed by the Court, Amazon failed to put AlmondNet on notice
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`of the contentions which underly this purported dedication defense. Indeed, Amazon notes that
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`its dedication defense will only apply if AlmondNet “successfully proves infringement under
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`DOE” at trial. Opp. at 3. Amazon’s failure to put AlmondNet on notice is critical here because
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`Amazon’s requested relief would allow it to wait until after AlmondNet’s presentation at trial to
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`decide how to proceed with its theories during post-trial briefing before having to disclose those
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`theories to AlmondNet in advance of trial. Amazon’s approach here is precisely the kind of
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`ambush tactic that this Court’s practices and the Federal Rules are designed to protect against.
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`See, e.g., Fed. R. Civ. P. 26 and 37; Dkt. No. 104 at 4 (“Court MIL No. 23: No expert witness
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`may testify to expert opinions outside the established parameters of her/his expert report”).
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`C.
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`Amazon’s attempts to “shift the blame” to AlmondNet should be rejected.
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`Amazon attempts to shift the blame onto AlmondNet for alleged belated disclosure of its
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`DOE theories, but AlmondNet’s supplemental expert report containing its DOE theories was
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`precipitated by Amazon’s failure to properly and timely identify its non-infringement positions.
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`See Dkt. No. 134 (Plaintiff’s Motion to Exclude Certain Opinions of Dr. Henry Houh and to Strike
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`Portions of His Expert Report) at 14-20. AlmondNet has moved to exclude under Daubert as well
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`as strike the non-infringement theories that necessitated the supplemental expert report; if that
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`motion to strike is granted, this motion for summary judgment is moot, as there would
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`undisputedly be no DOE theories remaining in the case. Id. (moving for leave to serve the
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`supplemental expert report containing the DOE theories only if the motion to strike is denied).
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`Moreover, “Amazon does not complain of notice” regarding AlmondNet’s DOE theories and
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`“Amazon does not” and “will not object to AlmondNet advancing [DOE] at trial.” Opp. at 1, 4
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`(emphasis in original); see also Dkt. No. 163 (Amazon’s Opposition to Plaintiff’s Motion to
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`Exclude Certain Opinions of Dr. Henry Houh and to Strike Portions of His Expert Report) at 15,
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`19 (indicating that Amazon does not oppose grant of a motion for leave for AlmondNet to serve
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`the supplemental expert report). Even so, none of this allays Amazon’s failure to pursue its
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`defense or excuse the improper and prejudicial relief Amazon now seeks. Indeed, once Amazon
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`knew that DOE issues may be in the case⎯even if that was after the close of fact discovery, if it
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`desired to develop its dedication defense, it should have promptly supplemented its interrogatory
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`response. It failed to do this simple task, and instead chose to lay behind the log and propose a
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`burdensome and prejudicial post-trial scheme. Amazon’s failure to comply with its ongoing Rule
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`26 obligations should not be rewarded.
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`III. CONCLUSION
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`Amazon’s failure to pursue its dedication defense should not be borne by this Court or
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`AlmondNet. Amazon did not develop any facts or opinions to support its dedication defense. And
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`Amazon’s late-breaking request to re-open this case and pursue this defense as part of post-trial
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`briefing is improper and prejudicial. AlmondNet respectfully requests that the Court grant
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`AlmondNet’s motion for summary judgment and deny Amazon’s request to re-open discovery.
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 9 of 10
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`Date: September 15, 2023
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`Respectfully submitted,
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`By: /s/ Jason M. Wietholter
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`Reza Mirzaie
`Marc A. Fenster
`Benjamin T. Wang
`Adam Hoffman
`James A. Milkey
`Amy E. Hayden
`James S. Tsuei
`Jonathan Ma
`Daniel B. Kolko
`Jason M. Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bwang@raklaw.com
`ahoffman@raklaw.com
`jmilkey@raklaw.com
`ahayden@raklaw.com
`jtsuei@raklaw.com
`jma@raklaw.com
`dkolko@raklaw.com
`jwietholter@raklaw.com
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`Counsel for Plaintiff ALMONDNET, INC.
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`Case 6:21-cv-00898-ADA Document 202 Filed 09/21/23 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on September 15, 2023, all counsel of record who have appeared in this case are being served
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`with a copy of the foregoing via email.
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`/s/ Jason M. Wietholter
` Jason M. Wietholter
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