Case 1:22-cv-01331-MSN-JFA Document 67 Filed 05/19/23 Page 1 of 4 PageID# 754
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
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`GEOSCOPE TECHNOLOGIES PTE. LTD.,
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`GOOGLE LLC,
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`Plaintiff,
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`Defendant.
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`v.
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`Civil Action No. 1:22-cv-01331-MSN-JFA
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`JURY TRIAL DEMANDED
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`MEMORANDUM IN SUPPORT OF PLAINTIFF GEOSCOPE TECHNOLOGIES PTE.
`LTD.’S UNOPPOSED MOTION FOR LEAVE TO AMEND ITS CLAIM ELECTION
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`Pursuant to the Joint Discovery Plan (Dkt. No. 50), Plaintiff Geoscope Technologies Pte.
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`Ltd. (“Geoscope”) respectfully requests leave to amend its election of asserted claims to include
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`claim 13 and related dependent claims 15-17 and 20 from U.S. Patent No. 8,320,264 (“the ’264
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`Patent”). Google has indicated that it does not oppose this motion.
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`On May 5, 2023, Geoscope served its Pre-Markman claim election, identifying 40 asserted
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`claims on which it intends to proceed. Dkt. No. 50 at 14. As explained in further detail below,
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`shortly thereafter on May 10, 2023, Geoscope provided Google with notice that it intended to
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`amend its election to identify five additional claims from the ’264 Patent while dropping five
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`claims across the asserted patents from its prior election to remain at the presumptive 40-claim
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`limit. The Joint Discovery Plan states that, in connection with the Pre-Markman Claim Election,
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`“Plaintiff’s election of asserted claims is without prejudice to Plaintiff requesting, by an
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`appropriate motion, to assert additional claims upon a showing of good cause.” Id. Geoscope
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`submits this motion to assert these additional claims, while remaining at the presumptive 40-claim
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`limit, to provide clarity to the parties and the Court on the scope of the upcoming claim
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`construction proceedings in this case.
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`Case 1:22-cv-01331-MSN-JFA Document 67 Filed 05/19/23 Page 2 of 4 PageID# 755
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`Good cause exists for Geoscope’s amendment, which arises directly out of recently learned
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`facts regarding the functionality of the Accused Instrumentality (i.e., Google Location Services
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`and the components and software comprising it). Geoscope’s review of Google’s source code has
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`provided Geoscope with newly-learned facts regarding the details of how the Accused
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`Instrumentality makes and uses path loss determinations in a manner that Geoscope alleges
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`infringes claims 13, 15-17, and 20 of the ’264 Patent. In particular, these newly-learned facts relate
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`to how the Accused Instrumentality makes and uses path loss determinations not just to locate
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`devices at unknown locations, but also as part of generating and updating information maintained
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`by Google that is used for subsequent location determinations of devices.
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`In evaluating good cause in similar circumstances, courts look to several factors, including
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`the reason for the delay, the diligence of the moving party, and the potential prejudice if the Court
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`allows the amendment. See, e.g., O2 Micro v. Monolithic Power Sys., 467 F.3d 1355, 1363 (Fed.
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`Cir. 2006); Tactile Feedback Tech. LLC v. Samsung Elecs. Am., Inc., No. 2:14-cv-940, 2015 WL
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`13469637, at *1 (E.D. Tex. July 31, 2015); Volterra Semiconductor LLC v. Monolithic Power Sys.,
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`Inc., No. 19-2240-CFC-SRF (D. Del. Nov. 30, 2021), Dkt. 297 at 6 (finding good cause where
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`amendment to infringement contentions arose out of defendant’s recent production of nonpublic
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`information). All factors weigh in favor of Geoscope here.
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`Geoscope’s diligence in seeking this amendment is clear. Although Geoscope’s
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`preliminary identification of asserted claims served on March 27th pursuant to the Joint Discovery
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`Plan (see Dkt. No. 50 at 2) did not include these newly-asserted claims, that preliminary
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`identification was made without the benefit of any non-public information regarding the Accused
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`Instrumentality. Since then, Google has produced source code and other nonpublic technical
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`documents, which Geoscope has endeavored to review as expeditiously as possible. Geoscope’s
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`source code reviewers inspected the source code produced by Google for the entirety of the weeks
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`of April 24th and May 1st. However, in view of the large volume of source code produced and
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`iterative nature of source code review, it has taken time for Geoscope and its reviewers to
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`understand the code and confirm that understanding. Just days after completing its initial review
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`of Google’s source code on May 5th—during which Geoscope first uncovered facts warranting this
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`amendment—Geoscope notified Google that it was amending its election of claims to include
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`claim 13 and related dependent claims 15-17 and 20 of the ’264 Patent and remove other
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`previously-elected claims to remain at the presumptive 40-claim limit. Ex. 1, May 10, 2023 Email
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`from S. Desai to Google’s Counsel. Because such information was discovered during Geoscope’s
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`initial review of Google’s source code that was completed on May 5th, the timing of this
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`amendment—which Geoscope gave notice of on May 10th—is not for Geoscope’s lack of
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`diligence. Likewise, there was no unreasonable delay in Geoscope’s analysis of Google’s source
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`code, its notification to Google of its new claim assertions, or its subsequent filing of this motion
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`to amend.
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`Moreover, the assertion of these claims will not prejudice Google, who has already been
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`provided with Geoscope’s first supplemental infringement contentions that include detailed
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`information regarding the newly-asserted claims. Google will have the opportunity to analyze
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`these supplemental contentions before it provides its non-infringement contentions, and if
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`necessary, will have the opportunity to supplement its invalidity contentions to address the newly-
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`asserted claims per the parties’ agreement. Ex. 2, May 18, 2023 Email from S. Desai to M. Liu.
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`Additionally, no materially different claim terms exist in newly-asserted claim 13 of the ’264
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`Patent as compared to previously-asserted claims, such as claims 1 and 11, so this amendment is
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`unlikely to have any impact on the upcoming claim construction proceedings. In any event, if
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`Case 1:22-cv-01331-MSN-JFA Document 67 Filed 05/19/23 Page 4 of 4 PageID# 757
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`necessary, Google will have the opportunity to supplement its claim construction positions to
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`address the newly-asserted claims. Id. There will also be no prejudice to Google with respect to
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`claim narrowing as Geoscope will be substituting five of its previously-asserted claims for the five
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`’264 Patent claims, keeping with the pre-Markman claim narrowing contemplated in the Joint
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`Discovery Plan. Dkt. No. 50 at 14.
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`Accordingly, Geoscope respectfully requests that the Court grant its motion for leave to
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`amend its claim election to include claim 13 and related dependent claims 15-17 and 20 of the
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`’264 Patent.
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`Dated: May 19, 2023
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`Respectfully submitted,
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`/s/ Saunak K. Desai
`John M. Erbach (VSB No. 76695)
`Chris Bascom (VSB No. 87302)
`SPOTTS FAIN, P.C.
`Renaissance Centre
`411 East Franklin Street, Suite 600
`Richmond, Virginia 23219
`Tel: (804) 697-2044
`Fax: (804) 697-2144
`jerbach@spottsfain.com
`cbascom@spottsfain.com
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`Timothy K. Gilman (pro hac vice)
`Saunak K. Desai (pro hac vice)
`Gregory R. Springsted (pro hac vice)
`Alexandra J. Cho (pro hac vice)
`SCHULTE ROTH & ZABEL LLP
`919 Third Avenue
`New York, NY 10022
`Tel: (212) 756-2000
`Fax: (212) 593-5955
`tim.gilman@srz.com
`saunak.desai@srz.com
`gregory.springsted@srz.com
`alexandra.cho@srz.com
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`Attorneys for Plaintiff Geoscope Technologies
`Pte. Ltd.
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