Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`AIRE TECHNOLOGY LTD.,
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`Plaintiff,
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`Case No. 6:21-cv-01101-ADA
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`JURY TRIAL DEMANDED
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`APPLE INC.,
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`Defendant.
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`PLAINTIFF AIRE TECHNOLOGY LTD.’S MOTION TO
`AMEND PRELIMINARY INFRINGEMENT CONTENTIONS
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 2 of 10
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................................... 1
`LEGAL STANDARDS ....................................................................................................... 2
`ARGUMENT ....................................................................................................................... 3
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`Aire diligently sought amendment. ......................................................................... 3
`A.
`Importrance of adding claim 13 of the ’249 Patent. ................................................ 4
`B.
`There is no prejudice to Apple and any prejudice may be cured. ........................... 4
`C.
`CONCLUSION ................................................................................................................... 6
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`I.
`II.
`III.
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`IV.
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`i
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 3 of 10
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`Cases
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`TABLE OF AUTHORITIES
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`Garmin S & W Enters., L.L.C. v. Southtrust Bank of Alabama,
`315 F.3d 533, 535 (5th Cir. 2003) ............................................................................................... 2
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`Georgetown Rail Equip. Co. v. Holland L,
`No. 6:13-CV-366-JDL, 2014 WL 12703781, at *2 (E.D. Tex. Oct. 7, 2014) ............................. 2
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`GREE, Inc. v. Supercell Oy,
`No. 2:19-CV-00311-JRG-RSP, 2020 WL 7698831, at *3 (E.D. Tex. Dec. 28, 2020) ............... 4
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`Kinetic Concepts, Inc. v. BlueSky Med. Corp.,
` No. SA-08-CV-102-RF, 2009 WL 10664413, at *1 (W.D. Tex. Dec. 21, 2009). ..................... 2
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`Nidec Corp. v. LG Innotek Co.,
`No. 6:07-CV-108-LED-JDL, 2009 WL 3673253, at *2 (E.D. Tex. Sept. 2, 2009) .................... 5
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`TiVo, Inc. v. Verizon Commc’ns, Inc,
` No. 2:09-CV-257-JRG, 2012 WL 2036313, at *2 (E.D. Tex. June 6, 2012) ....................... 3,4,5
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 4 of 10
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`I.
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`INTRODUCTION
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`Plaintiff Aire Technology Ltd. (“Aire”) respectfully moves the Court for leave to amend
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`its preliminary infringement contentions (“PICs”) to add claim 13 of U.S. Patent No. 8,205,249
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`(“the ’249 Patent”). The ’249 Patent claims inventions concerning the ability for the exchange of
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`information between a “portable data carrier” (such as a chip card or mobile device) and a payment
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`“terminal” about the type of user authentication (i.e., passcode or biometric) utilized by a customer
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`to engage in a secure electronic transaction. Aire’s original PICs allege that a variety of Apple
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`iPhones that utilize near filed communication (NFC) technology and Apple Pay to engage in a
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`secure electronic transaction at a payment terminal infringe the claims of the ’249 Patent. The
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`asserted claims (with the exception of claim 13) are directed to a “portable data carrier” (i.e., the
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`iPhone used to authenticate a customer and make a purchase). In contrast, the new claim 13 Aire
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`seeks to add to its contentions is directed to a “terminal.”
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`During Summer 2022, Apple rolled out its new “Tap to Pay” feature only to certain retailers
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`and merchants, which allows a retailer to now use their Apple iPhone as a payment terminal in
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`the same way as a traditional credit card payment terminal. Hollander Decl. ¶ 2. After learning
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`that Apple’s Tap to Pay feature was now being employed by retailers and merchants, Aire promptly
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`investigated the operation of the feature and its use in real-world transactions to ensure that the
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`feature worked in the manner that Apple advertised. Id. ¶ 3. Immediately thereafter, Aire drafted
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`a claim chart mapping claim 13 of the ’249 Patent and shared that chart with Apple. Id. ¶ 4; Ex. 1
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`(’249 Patent claim 13 claim chart). Once Apple indicated that it opposed adding claim 13 to the
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`case, Aire promptly filed the instant motion. Id. ¶ 5; Ex. 2 (emails between D. Hollander and A.
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`Radsch). As such, Aire was diligent in seeking amendment.
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 5 of 10
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`Further, there is no prejudice to Apple by adding claim 13 of the ’249 Patent to the case at
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`this juncture. First, the scope of the accused products is not changed by the addition of claim 13—
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`the accused products are still Apple iPhones, which were already accused of infringement. Ex. 2
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`(D. Hollander Sept. 27, 2022 email). Second, per the Court’s amended Scheduling Order, the close
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`of fact discovery is on March 7, 2023, and the Markman hearing is set for May 16, 2023. Dkt. No.
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`61. To that end, there is more than sufficient time to address any new discovery that may be
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`necessary. Additionally, while Aire does not believe the addition of claim 13 introduces any new
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`claim construction issues, Apple has ample time to brief any additional terms for construction well
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`in advance of the May 16, 2023 Markman date. Accordingly, because amending Aire’s PICs will
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`not prejudice Apple, the Court should grant Aire’s Motion to assert this single additional claim.
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`II.
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`LEGAL STANDARD
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`A party must demonstrate good cause for a Court to grant leave to amend infringement or
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`invalidity contentions. See Kinetic Concepts, Inc. v. BlueSky Med. Corp., No. SA-08-CV-102-RF,
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`2009 WL 10664413, at *1 (W.D. Tex. Dec. 21, 2009). “The good cause standard requires the
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`movant to show that, ‘despite its exercise of diligence, it cannot reasonably meet the scheduling
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`deadlines.’” Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366-JDL, 2014 WL
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`12703781, at *2 (E.D. Tex. Oct. 7, 2014) (quoting Garmin S & W Enters., L.L.C. v. Southtrust
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`Bank of Alabama, 315 F.3d 533, 535 (5th Cir. 2003)). “The following factors are used to determine
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`whether to allow a party to supplement infringement contentions: (1) the reason for the delay and
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`whether the party has been diligent; (2) the importance of what the court is excluding and the
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`availability of lesser sanctions; (3) potential prejudice in allowing the amendment; and (4) the
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`availability of a continuance to cure such prejudice.” Id.
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 6 of 10
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`III.
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`ARGUMENT
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`All four factors for evaluating good cause weigh in favor of granting Aire’s motion.
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`A. Aire diligently sought amendment
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`Aire has been diligent in seeking to amend its PICs to add claim 13 of the ’249 Patent. The
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`originally asserted claims of the ’249 Patent are directed to a “portable data carrier” (such as a chip
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`card or mobile device), and Aire alleged that Apple’s iPhones are infringing “portable data
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`carriers.” Ex. 3 (’249 Patent PIC Chart). In contrast, Apple’s new “Tap to Pay” feature allows a
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`merchant to utilize an iPhone as a traditional payment “terminal” (such as a credit card reader) and
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`claim 13 is directed to a “terminal.” Ex. 1. Aire’s PICs were served on January 20, 2022, before
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`Apple’s Tap to Pay feature was released—meaning, Aire could not have included claim 13 in its
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`PICs.
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`Although Apple first announced the introduction of its “Tap to Pay” feature sometime in
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`February 2022, the feature was not rolled out to limited retailers and merchants until Summer
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`2022.1 Hollander Decl. ¶ 2; see also TiVo, Inc. v. Verizon Commc’ns, Inc., No. 2:09-CV-257-
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`JRG, 2012 WL 2036313, at *2 (E.D. Tex. June 6, 2012) (“Although Verizon identified the product
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`as being sold sometime in the future in May 2010, Tivo did not learn of the sale until January
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`2011….”) (emphasis added). To that end, Aire was unable to investigate the real-world use of
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`Apple’s Tap to Pay feature until late Summer 2022—and even then, its availability for inspection
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`was difficult given how limited the roll out has been. Hollander Decl. ¶¶ 2, 3. As soon as the
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`feature was available for investigation, Aire promptly examined the details its operation and its
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`use in the marketplace to confirm that the Tap to Pay feature infringes claim 13. Id. Immediately
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`1 Indeed, Square has only integrated the feature into its payment application as of September 28,
`2022. Hollander Decl. ¶ 2.
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 7 of 10
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`thereafter on September 8, 2022, Aire sent Apple an exemplary claim chart mapping Apple’s Tap
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`to Pay feature to claim 13 of the ’249 Patent and asked whether Apple opposed the instant motion.
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`Id. ¶ 4; Ex. 1. Despite the parties’ best efforts to avoid burdening the Court with motion practice,
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`Apple indicated on September 28 that it opposed Aire’s supplement and Aire promptly filed the
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`instant motion. Id. ¶ 5, Ex. 2; see also Tivo, Inc., 2012 WL 2036313, at *2 (“Tivo diligently
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`attempted to join the Cisco product to the suit upon agreement. When no agreement could be
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`reached, Tivo filed the instant motion.”). Based on the forgoing, Aire was diligent in seeking to
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`amend its PICs to add claim 13 of the ’249 Patent.
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`B.
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`Importance of adding claim 13 of the ’249 Patent
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`The inclusion of claim 13 of the ’249 Patent is necessary to ensure the dispute between the
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`parties is fully resolved. See TiVo, Inc., 2012 WL 2036313, at *2 (“Without inclusion, the entire
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`dispute between the parties will not be adjudicated….”). To that end, if claim 13 is not included,
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`Aire would be required to file a separate lawsuit which is a waste of both the parties’ and the
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`Court’s resources. Id. (explaining that “a subsequent lawsuit may be necessary” without
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`permitting amendment). Ultimately, “[c]onsiderations of judicial economy weigh heavily in favor
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`of allowing [Aire]’s amendment.” Id.; see also GREE, Inc. v. Supercell Oy, No. 2:19-CV-00311-
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`JRG-RSP, 2020 WL 7698831, at *3 (E.D. Tex. Dec. 28, 2020) (“For the sake of judicial economy,
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`it would be very advantageous to include the amended infringement contentions to avoid another
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`suit.”).
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`C. There is no prejudice to Apple and any prejudice may be cured
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`Apple is not prejudiced by the inclusion of claim 13 of the ’249 Patent. First, the addition
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`of claim 13 does not involve any new accused products—the same iPhones accused of infringing
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`the other claims of the ’249 Patent are the same products accused of infringing claim 13. Ex. 2
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 8 of 10
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`(D. Hollander Sept. 27, 2022 email). Further, pursuant to the Court’s amended Scheduling Order,
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`fact discovery is not set to close until March 7, 2023. Dkt. No. 61. The remaining five months of
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`fact discovery is more than sufficient time for Apple to prepare any defenses specific to the
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`allegations concerning claim 13. See, e.g., TiVo, Inc., 2012 WL 2036313, at *2 (“Because fact
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`discovery has yet to close and the parties have engaged in extensive discovery already related to
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`the Cisco DVR, the Court finds there is no real prejudice to Verizon in allowing an amendment to
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`Tivo’s infringement contentions.”); Nidec Corp. v. LG Innotek Co., No. 6:07-CV-108-LED-JDL,
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`2009 WL 3673253, at *2 (E.D. Tex. Sept. 2, 2009) (“The Markman hearing in this case is
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`scheduled in October and trial in May 2010. The parties will have ample time to adjust their
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`strategies and prepare for these deadlines.”). Additionally, Aire has already indicated to Apple
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`that it would not oppose an extension of the final invalidity contentions deadline to provide ample
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`time for Apple to prepare its invalidity contentions for claim 13 of the ’249 Patent. Hollander
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`Decl. ¶ 6. As such, Apple is not prejudiced by the addition of claim 13 to the case.
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`Apple may argue that the addition of claim 13 of the ’249 Patent introduces new claim
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`construction issues. But the Markman hearing has been postponed until May 16, 2023. Dkt. No.
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`61. Thus, to the extent Apple insists that claim 13 contains any unique terms not found in the
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`claims already asserted (and briefed), Aire has already indicated to Apple that it does not object to
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`briefing additional terms for construction prior to the Court’s May 16 Markman hearing.
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`Hollander Decl. ¶ 6. Accordingly, Apple will not suffer any prejudice through the claim
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`construction process through the addition of claim 13.
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`Finally, there is no need for a continuance because Apple is not prejudiced by the addition
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`of claim 13. See, e.g., Tivo, 2012 WL 2036313, at *2 (“Because the Court finds that Verizon will
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`not be prejudiced by the amendment, the Court need not address the availability of a continuance
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`5
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 9 of 10
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`to cure prejudice.”). Additionally and alternatively, the Court’s recent amended Scheduling Order
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`obviates the need to evaluate whether a continuance would cure any supposed prejudice to Apple—
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`there is ample time left in the schedule before the close of fact discovery and the Markman Hearing.
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`And, Aire is already agreeable to a reasonable extension of Apple’s final invalidity contentions
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`deadline to account for the addition of claim 13. Because any supposed prejudice can be cured
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`during the course of the current amended Scheduling Order, Aire’s motion should be granted.
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`IV. CONCLUSION
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`For the foregoing reasons, Aire respectfully requests that the Court grant Aire’s Motion to
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`Amend its Preliminary Infringement Contentions to add claim 13 of the ’249 Patent.
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`Dated: September 30, 2022
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`Respectfully submitted,
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`By: /s/ Brett E. Cooper
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`Brett E. Cooper (NY SBN 4011011)
`bcooper@bc-lawgroup.com
`Seth Hasenour (TX SBN 24059910)
`shasenour@bc-lawgroup.com
`Drew B. Hollander (NY SBN 5378096)
`dhollander@bc-lawgroup.com
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`BC LAW GROUP, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`Tel.: (212) 951-0100
`Fax: (646) 293-2201
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`Attorneys for Plaintiff Aire Technology
`Limited
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`Case 6:21-cv-01101-ADA Document 63 Filed 09/30/22 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I certify that this document is being served upon counsel of record for Defendant on
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`September 30, 2022 via electronic service.
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`/s/ Brett E. Cooper
`Brett E. Cooper
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