Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 1 of 6 Page ID #:387
`
`
`
`William E. Thomson, Jr. (SBN 47195)
`BROOKS KUSHMAN P.C.
`6005 S. Figueroa Street, Suite 2080
`Los Angeles, California 90017-5726
`Phone: (213) 622-3003 / Fax: (213) 622-3053
`E-Mail: wthomson@brookskushman.com
`
`Marc Lorelli (Admitted pro hac vice)
`mlorelli@brookskushman.com
`John P. Rondini (Admitted pro hac vice)
`jrondini@brookskushman.com
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Phone: (248) 358-4400 / Fax: (248) 358-3351
`
`Attorneys for Plaintiff
`Ancora Technologies, Inc.
`
`
`
`
`
`ANCORA TECHNOLOGIES,
`INC.
`
`
`
`
`
`
`Plaintiffs,
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`Case No. 8:19-cv-02192-GW-ASx
`(LEAD CASE)
`
`Consolidated Case No.:
`Case No. 2:20-cv-01252-GW-ASx
`
`[Hon. George H. Wu]
`
`
`SUR-REPLY TO TCL’S MOTION TO
`DISMISS THE FIRST AMENDED
`COMPLAINT
`
`
`
`
`
`v.
`
`TCT MOBILE (US) INC.,
`HUIZHOU TCL MOBILE
`COMMUNICATION CO.,
`LTD., and SHENZHEN TCL
`CREATIVE CLOUD
`TECHNOLOGY CO., LTD.,
`
`
`
`
`Defendants.
`
`
`
` *
`
` RELATED CASE 2:20-cv-01252
`
`SURREPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`

`

`Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 2 of 6 Page ID #:388
`
`
`
`1
`
`Plaintiff Ancora Technologies, Inc. (“Ancora”) provides this Sur-Reply to
`
`2
`
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co., Ltd., and
`
`3
`
`Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively “TCL”) Motion
`
`4
`
`to Dismiss the First Amended Complaint as permitted by this Court’s order. (Dkt.
`
`5
`
`#41.)
`
`6
`
`Counsel for Ancora and TCL conducted a meet and confer telephonically on
`
`7
`
`Monday April 13, 2020. Based on this conference, the parties believe that all
`
`8
`
`issues raised in TCL’s motion have been resolved. Specifically, as set forth in detail
`
`9
`
`below, Ancora is willing to file a Second Amended Complaint (“SAC,” Ex. 1) which
`
`10
`
`addresses all outstanding issues as outlined below. Ancora also provided this SAC
`
`11
`
`to TCL’s counsel on April 15th and there was no indication that the SAC did not fully
`
`12
`
`address all the outstanding issues.
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`Whether Ancora is willing to specify in a further amended complaint
`
`whether it is accusing (i) Smart phones, (ii) servers, (iii) software,
`
`and/or (iv) some combination of (i) through (iii) of being capable of
`
`infringing the asserted patent. The Court agrees with TCL that Ancora's
`
`representations in its opposition in this regard are not fully consistent
`
`with the allegations made in the FAC as far as what constitutes an
`
`“accused product” or instrumentality.
`
`20
`
`
`
`The ‘941 Patent includes method claims and confusion arose regarding the
`
`21
`
`term “Accused Product” used within the complaint. Any ambiguity regarding
`
`22
`
`Ancora’s contentions should now be resolved by Ancora’s Preliminary Infringement
`
`23
`
`Contentions that were served on April 1, 2020. Ancora is further willing to correct
`
`SUR-REPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`1
`
`24
`
`25
`
`26
`
`

`

`Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 3 of 6 Page ID #:389
`
`
`
`1
`
`this issue by submission of a Second Amended Complaint (“SAC”). (See, e.g., Ex.
`
`2
`
`1 at ¶ 32.) Specifically, Ancora’s SAC now alleges an “Accused Process” as the
`
`3
`
`process used by TCL to update TCL Smartphones. The SAC also alleges how the
`
`4
`
`Accused Process includes TCL servers to provide TCL software that is installed on
`
`5
`
`TCL Smartphones which results in infringement of the ‘941 Patent claims.
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`Whether Ancora is willing to specify (again) in a further amended
`
`complaint what conduct listed under 35 U.S.C. § 27l(a) it is alleging in
`
`this case insofar as infringement (i.e., are Ancora’s actions of “making,
`
`using, selling, importing,” etc. the accused instrumentality considered
`
`the basis for the alleged infringing conduct?). TCL’s reply casts doubt
`
`on what type of conduct Ancora is alleging, based on the statements
`
`and representations made in Ancora’s opposition.
`
`13
`
`
`
`Ancora is asserting claims of direct infringement under 35 U.S.C. § 271(a) by
`
`14
`
`TCL’s use of the Accused Process. Again, Ancora is willing to file the attached
`
`15
`
`SAC that addresses this issue. (See, e.g., Ex. 1 at ¶ 26.)
`
`Whether Ancora is willing to specify in a further amended complaint
`
`what theory or theories of infringement (direct, indirect, joint, etc.) it is
`
`alleging in this case. The FAC does not explicitly state one way or the
`
`other (it does not use the words “direct,” “indirect,” or “joint” at all),
`
`and the Court agrees with TCL that some of the language in the FAC
`
`tracks, for example, the legal requirements of a joint infringement
`
`claim, even though it is not otherwise pled and Ancora’s opposition
`
`denies joint infringement is being alleged.
`
`SUR-REPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`2
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`

`

`Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 4 of 6 Page ID #:390
`
`
`
`
`
`1
`
`Ancora’s direct infringement allegations are against a single infringer, TCL.
`
`2
`
`Ancora also identified that the legal support for its direct infringement claim stems
`
`3
`
`from cases such as SiRF Tech., Inc. v. lnt’l Trade Comm’n, 601 F.3d 1319, 1331
`
`4
`
`(Fed. Cir. 2010). Ancora is willing to file the attached SAC that clearly identifies
`
`5
`
`this theory (See, e.g., Ex. 1 at ¶ 42.)
`
`6
`
`As an alternative, Ancora did plead facts to support infringement with TCL
`
`7
`
`and TCL’s customers being responsible for joint infringement as a single entity. The
`
`8
`
`legal support for this direct infringement claim stems from cases such as Travel
`
`9
`
`Sentry, Inc. v. Tropp, 877 F.3d 1370, 1378 (Fed. Cir. 2017). Ancora is willing to
`
`10
`
`file the attached SAC that clearly identifies this theory. (See, e.g., Ex. 1 at ¶ 44.)
`
`11
`
`For example, the Accused Process allows TCL the ability to allow customer’s the
`
`12
`
`ability to delay TCL updates on TCL smartphones for a given period.
`
`Whether Ancora would agree to incorporate into a further amended
`
`complaint certain information that appears in its opposition, but is not
`
`exactly reflected in its FAC. For example, Ancora should explain
`
`whether it would agree to amend its complaint to add claim charts or
`
`additional
`
`information
`
`linking
`
`the
`
`functioning of
`
`the accused
`
`instrumentalities to the claim limitations, similar to the claim charts
`
`and explanation set forth in its opposition. Ancora should also explain
`
`whether it would be willing to provide additional information without
`
`Court involvement beyond what was provided in its opposition; for
`
`instance, whether it would be willing to provide additional allegations
`
`regarding the “using an agent” step of Claim 1 of the asserted patent.
`
`SUR-REPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`3
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`

`

`Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 5 of 6 Page ID #:391
`
`
`
`
`
`1
`
`As noted above, Ancora already served its Preliminary Infringement
`
`2
`
`Contentions which includes a detailed 142-page claim chart. Ancora incorporates
`
`3
`
`these Contentions in its SAC by reference. (See, e.g., Ex. 1 at ¶ 32.) During the
`
`4
`
`parties meet-and-confer, the parties agreed that this item is likely resolved based on
`
`5
`
`the preliminary infringement contentions.
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`Whether, based on its meet and confer with TCL, Ancora believes the
`
`parties can resolve their differences regarding the relevant legal
`
`authority governing accusations of patent infringement by defendant-
`
`owned software being run on a third-party device; specifically, their
`
`dispute with respect to Ricoh Co., Ltd. v. Quanta Computer Inc., 550
`
`F.3d 1325, 1335 (Fed. Cir. 2008), SiRF Tech., Inc. v. lnt’l Trade
`
`Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010), and related legal
`
`authority. Ancora should also state whether it would be willing to file
`
`a further amended complaint based on a resolution of that dispute.
`
`Otherwise, Ancora may provide a brief response to TCL’s reply
`
`arguments on the issue.
`
`17
`
`
`
`Based on the parties meet and confer, this item is resolved. Specifically, while
`
`18
`
`there was ambiguity regarding “sale” previously, Ancora clarified that its direct
`
`19
`
`infringement allegations are based on “use” and not “sale.” Accordingly, Ancora’s
`
`20
`
`infringement theory aligns with SiRF. The allegations in Richo were directed to “the
`
`21
`
`sale or offer for sale of software.” 550 F.3d at 1334. The SAC was amended to refer
`
`22
`
`only to use of the Accused Process.
`
`SUR-REPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`4
`
`23
`
`24
`
`25
`
`26
`
`

`

`Case 8:19-cv-02192-GW-AS Document 42 Filed 04/16/20 Page 6 of 6 Page ID #:392
`
`
`
`
`
`1
`
`For the reasons set forth above, all issues raised in TCL’s Motion to Dismiss
`
`2
`
`have been resolved. The requested clarity was provided in the parties’ meet and
`
`
`
`confer, Ancora’s Preliminary Infringement Contentions, and the attached SAC.
`
`
`
`
`Date: April 16, 2020
`BROOKS KUSHMAN P.C.
`
`By: /s/ John P. Rondini
`Marc Lorelli (Admitted pro hac vice)
`mlorelli@brookskushman.com
`John P. Rondini (Admitted pro hac vice)
`jrondini@brookskushman.com
`Mark A. Cantor (Admitted pro hac vice)
`mcantor@brookskushman.com
`John S. LeRoy (Admitted pro hac vice)
`jleroy@brookskushman.com
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Phone: (248) 358-4400
`Fax: (248) 358-3351
`
`William E. Thomson, Jr. (SBN 47195)
`6005 S. Figueroa Street, Suite 2080
`Los Angeles, California 90017-5726
`Phone: (213) 622-3003
`Fax: (213) 622-3053
`wthomson@brookskushman.com
`
`Attorneys for Plaintiff
`Ancora Technologies, Inc.
`
`
`
`
`
`
`
`
`
`SUR-REPLY TO TCL’S MOTION TO DISMISS
`FIRST AMENDED COMPLAINT
`Case No. 8:19-cv-02192-JLS-ADS
`
`5
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`