Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 1 of 10
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`RFCYBER CORP.,
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`v.
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`APPLE, INC.,
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Case No. 6:21-cv-00916-ADA
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`JURY TRIAL DEMANDED
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`Defendant.
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`RFCYBER CORP.’S REPLY IN SUPPORT OF ITS MOTION
`FOR LEAVE TO FILE SECOND AMENDED COMPLAINT
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 2 of 10
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`TABLE OF CONTENTS
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`A.
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`B.
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`C.
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`D.
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`The Amendment is Important and Presents an Exceptionally Strong Case ............ 2
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`RFCyber Was Diligent in Pursuing Discovery ....................................................... 4
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`Apple Would Not Be Unfairly Prejudiced By the Amendment ............................. 5
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`No Continuance is Required ................................................................................... 5
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 3 of 10
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Atlas Glob. Techs., LLC v. Sercomm Corp.,
`No. 6-21-CV-00818-ADA, 2022 WL 16557650 (W.D. Tex. Oct. 31, 2022)............................3
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`BillJCo, LLC v. Apple Inc.,
`583 F. Supp. 3d 769 (W.D. Tex. 2022) ..................................................................................3, 4
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`USC IP P’ship, L.P. v. Facebook, Inc.,
`No. 6:20-CV-00555-ADA, 2021 WL 3134260 (W.D. Tex. July 23, 2021) ..........................3, 4
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`VLSI Tech., LLC v. Intel Corp.,
`No. 6:19-CV-000254-ADA, 2019 WL 11025759 (W.D. Tex. Aug. 6, 2019) .......................3, 4
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`ii
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 4 of 10
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`Apple’s Opposition resorts to a firehose of mischaracterizations and baseless accusations
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`of misrepresentation. These dramatics indicate the weakness of Apple’s position. RFCyber
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`uncovered evidence that Apple knew of the asserted patents, and either knew of or was willfully
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`blind to infringement. Apple’s purportedly complete interrogatory responses omitted key
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`information regarding its knowledge, and Mr. Lasker’s deposition was the first time these details
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`came to light. There is no unfair prejudice to Apple and no continuance is required because Apple
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`has already taken discovery of these communications, and of RFCyber’s non-involvement despite
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`Dr. Zheng’s false claims to represent RFCyber. Each good cause factor therefore favors the
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`amendment alleging willfulness and pre-suit indirect infringement.
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`Apple’s central argument assumes the false premise that new evidence of its pre-suit
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`indirect infringement and willfulness is the same as that before the Court when those claims were
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`dismissed without prejudice. But the evidence showing that Apple knew of the asserted patents
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`and that it infringed them, or was willfully blind to infringement, is new. First, Mr. Lasker admitted
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`that Apple knew of the asserted patents. Dkt. 133-6, 128:9-129:1, 126:3-13. Second, Mr. Lasker
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`testified
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` Ex. V, Lasker Dep. 105:14-107:1. Third, Mr. Lasker testified regarding that process,
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` Dkt. 133-6, 110:18-111:3 (emphasis added). Fourth, Mr. Lasker testified that
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` Dkt. 133-6, 117:16-25. Fifth,
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`Finally, in view of Mr. Lasker’s admissions, the Dr. Zheng’s emails show that Apple knew
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`of its infringement or was willfully blind. Dr. Zheng stated that
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 5 of 10
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`” Dr. Zheng also made a claim chart available to Apple, which Apple declined to review.
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`See Dkt. 133-4. Contrary to Apple’s suggestion, these emails were not before the Court when the
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`renewed motion to dismiss was decided because Apple did not produce them until afterwards, and
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`their significance was not clear until Mr. Lasker admitted to Apple’s review and knowledge based
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`on those emails. Each good cause factor therefore weighs in favor of granting the Motion.
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`A. The Amendment is Important and Presents an Exceptionally Strong Case
`Apple does not dispute that renewal of RFCyber’s knowledge and willfulness claims would
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`be important. Instead, Apple takes the extreme position that these claims are futile. But Apple
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`ignores the substance of the newly discovered evidence, and falsely asserts that new evidence of
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`record is the same as when RFCyber’s claims were dismissed without prejudice. It is not.
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`The new evidence supports an exceptionally strong case for pre-suit indirect infringement
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`and willfulness. The evidence establishes Apple knew of the patents, and that Apple knew of its
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`infringement of those patents at least based on: (1) Dr. Zheng’s communications; (2) Apple’s
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`review of those patents when it cited to them in its own patent applications; and (3) Apple’s review
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`. The evidence also establishes a strong case for
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`willful blindness, at least because: (1) Apple deliberately structured its patent acquisition
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` and designed policies
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`disseminating information regarding its infringement
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` and against
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`turn a blind eye toward infringement; (2) Apple declined to review the claim chart that Dr. Zheng
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`prepared to avoid learning more about its infringement; (3) Apple continued to avoid review of
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`those patents even after it cited them while prosecuting its own patents; and (4) Apple conducted
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`patent searches regarding mobile payments which it is withholding.
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 6 of 10
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`Based on this new evidence, a jury could easily conclude that Apple both knew of the
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`Asserted Patents (e.g., based on Mr. Lasker’s admissions), and knew that its acts (or induced acts
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`of customers) constituted infringement (e.g., based on Dr. Zheng’s statements that
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`). A jury could also conclude that Apple was willfully blind to infringement
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`by taking deliberate actions to avoid learning of infringement (e.g., by declining to review Dr.
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`Zheng’s claim charts and avoiding consultation with technical personnel) while subjectively aware
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`of a high probability that it infringed (e.g., from its numerous reviews, and Dr. Zheng’s statements)
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`Apple’s arguments that the amendment is futile boil down to evidentiary quibbles, not
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`issues with RFCyber’s prima facie case. For example, Apple argues that it could have thought that
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`the claim chart that Dr. Zheng made available for review was somehow directed to infringement
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`by a different company. Dkt. 137 at 13. Apple’s interpretations strain credulity and cannot negate
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`RFCyber’s prima facie case for pre-suit indirect infringement and willfulness. Apple further
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`mischaracterizes RFCyber’s position in an attempt to equate it with inapposite case law concerning
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`bare knowledge of the existence of a patent (citing Atlas Glob. Techs.), or complaints which did
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`not actually allege knowledge of infringement based on notice letters (citing BillJCo).
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`But unlike Atlas Glob. Techs., which concerned bare knowledge that a portfolio existed,
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`here Apple was given notice that the asserted patents concerned mobile payments shortly after it
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`launched Apple Pay, and were
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` Atlas Glob. Techs., LLC, 2022 WL 16557650, at *5; Dkt. 133-2. Unlike VLSI and USC
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`IP, which turned on mere existence of a policy or practice of not reviewing others patents, this
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`case concerns Apple’s much more egregious decisions not to review claim charts it was given
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`access to, and not to consult with its own technical personnel, even when it was both notified that
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 7 of 10
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`patents were
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` shortly after launching Apple Pay,
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`and when it cited those patents in its own patents concerning Apple Pay. VLSI Tech., LLC, 2019
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`WL 11025759; USC IP P’ship, L.P., 2021 WL 3134260. A jury should be allowed to evaluate
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`Apple’s outlandish claims that it thought Dr. Zheng’s claim charts could pertain to another
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`company’s products. Finally, unlike BillJCo, RFCyber specifically asserts that Apple knew of, or
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`was willfully blind to, its products infringement. BillJCo, LLC, 583 F. Supp. 3d 769. Indeed, Dr.
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`Zheng’s brochure identified the portfolio as
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` Dkt. 133-3
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`(emphasis added). The court’s decision in BillJCo was also based on the peculiar fact that “the
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`Court…[was] not privy to the June 2019 letter or its contents.” BillJCo, 583 F. Supp. 3d at 777.
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`Finally, Apple’s suggestion
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`that RFCyber somehow “disavowed” Dr. Zheng’s
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`communications is both incorrect, and legally unsupported. Apple apparently conflates whether
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`Dr. Zheng communications were offers for purposes of licensing (he admits he was not authorized,
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`and RFCyber had no knowledge of those discussions until discovery in a prior action) with whether
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`he provided notice for purposes of willfulness and indirect infringement (he did). Knowledge of
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`the asserted patents does not need to come from an authorized representative, and Dr. Zheng’s
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`authority is irrelevant to Apple’s knowledge of the patents and its willful infringement.
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`This factor therefore weighs strongly in favor of allowing the amendment.
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`B. RFCyber Was Diligent in Pursuing Discovery
`RFCyber diligently investigated Apple’s pre-suit knowledge of the asserted patents, and
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`pre-suit knowledge of its infringement. But Apple waited until after the Court decided its renewed
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`motion to dismiss to produce highly relevant email correspondence with Dr. Zheng, and omitted
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`important details from purportedly complete interrogatory responses. See Ex. W; Dkt. 133-12 at
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 8 of 10
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`23-24, 35. RFCyber had no way of knowing Apple’s review procedures, and deliberate avoidance
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`of information regarding infringement until Mr. Lasker’s deposition. Apple’s suggestion that
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`RFCyber should have moved for leave to amend earlier, or somehow known to ask for this
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`information before Mr. Lasker’s deposition, is a practical impossibility. Apple’s suggestion that
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`RFCyber somehow failed to collect these emails is a distraction; Apple waited to produce them
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`until after the Court decided Apple’s own motion, and neither RFCyber nor Dr. Zheng had access
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`to the communications. This factor therefore weighs in favor of granting leave to amend.
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`C. Apple Would Not Be Unfairly Prejudiced By the Amendment
`Apple’s argument regarding this factor boils down to an assertion that it could be
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`prejudiced if it were found to indirectly or willfully infringe, and that it “would need time to
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`prepare its defense to indirect and willful infringement claims.” Dkt. 137 at 14. But Apple fails to
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`address how any such prejudice would be unfair. It would not be, particularly as Apple has actively
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`prepared its defenses, and pursued relevant discovery (including by deposing Dr. Zheng).
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`D. No Continuance is Required
`The amendment would not require any continuance, or even any additional discovery.
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`Apple does not actually allege it would need a continuance. Nor can Apple identify specific
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`“additional discovery” which it has not already taken. This is because Apple already subpoenaed
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`Dr. Zheng, took his deposition on these exact issues, and issued relevant interrogatories. Dkt. 133-
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`13 at 11. While Apple suggests it may require additional discovery from Dr. Zheng, he already
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`searched his records and testified on these topics in a seven-hour deposition. Apple’s mudslinging
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`accusations of spoliation based on the unsurprising fact that Dr. Zheng does not possess emails
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`exchanged approximately seven years ago are unfounded and meritless. Any discovery would
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`similarly be duplicative of that already taken. This factor favors leave to amend the complaint.
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`RFCyber respectfully requests that the Court grant the Motion.
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 9 of 10
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`Dated: February 28, 2023
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`Respectfully submitted,
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` /s/ Jacob Ostling
`Raymond W. Mort, III
`Texas State Bar No. 00791308
`Email: raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Avenue, Suite 2000
`Austin, Texas 78701
`Tel/Fax: 512-865-7950
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`OF COUNSEL:
`
`Alfred R. Fabricant (Admitted Pro Hac Vice)
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos (Admitted Pro Hac Vice)
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III (Admitted Pro Hac Vice)
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`Richard M. Cowell (Admitted Pro Hac Vice)
`NY Bar No. 4617759
`Email: rcowell@fabricantllp.com
`Jacob Ostling (Admitted Pro Hac Vice)
`NY Bar No. 5684824
`Email: jostling@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`ATTORNEYS FOR PLAINTIFF
`RFCYBER CORP.
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`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 10 of 10
`Case 6:21-cv-00916-ADA Document 146 Filed 03/13/23 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
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`being served with a copy of this documentvia electronic mail on February 28, 2023.
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`Talso herebycertify that all counsel of record who have consentedto electronic service are
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`being served with a notice offiling of this document, under seal, pursuant to L-.R. CV-5(a)(7) on
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`February 28, 2023.
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`/s/ Jacob Ostling
`Jacob Ostling
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`