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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`v.
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`Plaintiff,
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`Defendant.
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`Civil Action No.: 1:16-cv-04586 (LTS-HBP)
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`BROADSIGN INTERNATIONAL, LLC,
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`T-REX PROPERTY, AB,
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`T-REX’S REPLY MEMORANDUM IN SUPPORT OF ITS MOTION
`TO DISMISS BROADSIGN’S SECOND AMENDED COMPLAINT
`FOR FAILURE TO STATE A CLAIM
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`Steven R. Daniels
`Email: SDaniels@dickinsonwright.com
`DICKINSON WRIGHT PLLC
`303 Colorado Street, Suite 2050
`Austin, TX 78701-4653
`Telephone: (512) 770-4200
`Facsimile: (844) 670-6009
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`Jeffrey A. Lindenbaum
`Email: jlindenbaum@collenip.com
`COLLEN INTELLECTUAL PROPERTY LAW
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, New York 10562
`Telephone: (914) 941-5668
`Facsimile: (914) 941-6091
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`Attorneys for Defendant T-Rex Property, AB
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`I. 
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`II. 
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`III. 
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 2 of 16
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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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`D. 
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`E. 
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`BroadSign’s Arguments Rely On Overruled Case Law ......................................... 1
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`BroadSign’s Arguments Fail to Show that the SAC Pleads
`a Plausible Claim for Invalidity .............................................................................. 2
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`1. 
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`2. 
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`BroadSign Fails to Show That It Pled Sufficient Facts
`to State a Plausible Claim for Invalidity Under § 102
`and § 103 ..................................................................................................... 2
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`BroadSign Fails to Show That It Pled Sufficient Facts
`to State a Plausible Claim for Invalidity Under § 101
`and § 112 ..................................................................................................... 6
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`BroadSign’s Arguments Fail to Show that the SAC Pleads a
`Plausible Claim for Non-Infringement ................................................................... 7
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`BroadSign’s Arguments Fail to Show that the SAC Pleads a
`Plausible Claim for Equitable Intervening Rights .................................................. 9
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`The Court Should Condition Leave to Amend on BroadSign
`Reimbursing T-Rex’s Expenses in Bringing this Motion ..................................... 10
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`CONCLUSION ................................................................................................................. 10
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`CERTIFICATE OF SERVICE ..................................................................................................... 12 
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 3 of 16
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`TABLE OF AUTHORITIES
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`Cases
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`Ashcroft v. Iqbal,
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`556 U.S. 662 (2009) ................................................................................................... passim
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`Bell Atlantic Corp. v. Twombly,
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`550 U.S. 544 (2007) ................................................................................................... passim
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`Chou v. University of Chicago,
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`254 F.3d 1347 (Fed. Cir. 2001)........................................................................................... 2
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`Crye Precision LLC v. Duro Textiles, LLC,
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`112 F. Supp. 3d 69 (S.D.N.Y. 2015) ............................................................................... 4, 6
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`Disc Disease Solutions, Inc. v. VGH Solutions, Inc.,
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`888 F.3d 1256 (Fed. Cir. 2018)........................................................................................... 8
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`E.E.O.C. v. Port Auth. of N.Y. & N.J.,
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`768 F.3d 247 (2d Cir. 2014)................................................................................................ 5
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`Gen. Signal Corp. v. MCI Telecommunications Corp.,
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`66 F.3d 1500 (9th Cir. 1995) ............................................................................................ 10
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`Genedics, LLC v. Meta Co.,
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`No. CV 17-1062-CJB, 2018 WL 3991474 (D. Del. Aug. 21, 2018) .................................. 9
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`Graphic Packaging Int’l, Inc. v. C.W. Zumbiel Co.,
`No. 1:10-CV-3008-AT, 2011 WL 5829674 (N.D. Ga. Aug. 1, 2011) ............................... 4
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`Graphics, Inc. v. Static Control Components, Inc.,
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`No. CV 17-1167-DOC (JDEx) (C.D. Cal. Feb. 12, 2018) .................................................. 3
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`Iconfind, Inc. v. Google, Inc.,
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`No. 2:11-CV-00319, 2011 WL 4505779 (E.D. Cal. Aug. 2, 2011) .................................... 6
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`Polymer Tech., Inc. v. HemCon, Inc.,
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`659 F.3d 1084 (Fed. Cir. 2011)........................................................................................... 9
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`Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
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`No. 14-CV-2061-H (BGS), 2016 WL 7319533 (S.D. Cal. Feb. 10, 2016) ........................ 9
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`Summers Mfg. Co., Inc. v. Tri-Cty. AG, LLC,
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`300 F. Supp. 3d 1025 (S.D. Iowa 2017) ......................................................................... 2, 5
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`ii
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 4 of 16
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`Wireless Ink Corp. v. Facebook, Inc.,
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`787 F. Supp. 2d 298 (S.D.N.Y. 2011) ................................................................................. 4
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`Statutes
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`35 U.S.C. § 101 ........................................................................................................................... 2, 6
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`35 U.S.C. § 102 ........................................................................................................................... 2, 3
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`35 U.S.C. § 103 ........................................................................................................................... 2, 3
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`35 U.S.C. § 112 ....................................................................................................................... 2, 4, 6
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`Rules
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`Federal Rule of Civil Procedure 12(b)(6) ..................................................................................... 10
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`Federal Rule of Civil Procedure 15 .............................................................................................. 10
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`iii
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 5 of 16
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`I.
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`INTRODUCTION
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`In its Motion to Dismiss the Second Amended Complaint (D.I. 55, “SAC”) of Plaintiff
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`BroadSign International, LLC (“BroadSign”) for failure to state a claim, Defendant T-Rex
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`Property, AB (“T-Rex”) showed that the SAC failed to plead sufficient facts to make BroadSign’s
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`invalidity, non-infringement, and equitable intervening rights claims plausible as required by Bell
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`Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).
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`Significantly, in its opposition brief, BroadSign does not dispute that:
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`It did not plead any facts regarding the content of the prior art references or
`regarding the motivation to combine the references;
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`It did not plead any facts showing that the claims are directed to an abstract idea;
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`It did not plead any facts showing that the claims are indefinite or contain improper
`means-plus-function limitations;
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`It did not plead any facts regarding the design or operation of its products to show
`that they do not infringe;
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`It did not plead any facts regarding any of the factors identified by the Federal
`Circuit as relevant to a determination of equitable intervening rights.
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`Instead, BroadSign argues that it is not required to provide any such facts. However, the cases
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`BroadSign relies upon were all decided prior to the December 1, 2015 abrogation of Federal
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`Rule of Civil Procedure 84 and the Appendix of Forms. The case law since the abrogation of
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`these forms confirms that BroadSign’s pleadings are insufficient and should be dismissed.
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`II.
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`ARGUMENT
`A.
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`BroadSign’s Arguments Rely On Overruled Case Law
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`In its Legal Standards section, BroadSign erroneously relies upon a 2001 Federal Circuit
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`case for the proposition that “[t]he dismissal of a claim is only proper, if, ‘after drawing all
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`reasonable inferences in [plaintiff’s] favor, it is clear that the [plaintiff] can prove no set of facts
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`consistent with [plaintiff’s] claims that would entitle [plaintiff] to relief.’” D.I. 65 at 9 (quoting
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`1
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 6 of 16
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`Chou v. University of Chicago, 254 F.3d 1347, 1355 (Fed. Cir. 2001). However, in Twombly,
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`the Supreme Court explicitly rejected the “no set of facts” language when it held that “[t]he
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`phase is best forgotten as an incomplete, negative gloss on an accepted pleading standard.”
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`Twombly, 550 U.S. at 563. BroadSign’s reliance on this erroneous statement of the law, despite
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`its repudiation by the Supreme Court over ten years ago, thoroughly undermines its argument
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`regarding the sufficiency of the SAC.
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`B.
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`BroadSign’s Arguments Fail to Show that the SAC Pleads a
`Plausible Claim for Invalidity
`1.
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`BroadSign Fails to Show That It Pled Sufficient Facts to State
`a Plausible Claim for Invalidity Under § 102 and § 103
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`BroadSign argues that the “SAC provides the specific grounds for invalidity based on 35
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`U.S.C. §§ 101, 102, 103, and/or 112.” D.I. 65 at 10. However, merely identifying the legal
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`grounds without identifying any facts that render those grounds plausible is insufficient to satisfy
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`the Twombly/Iqbal standard. For example, BroadSign points to its identification of particular
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`prior art references as the basis for its invalidity claims under §§ 102 and 103. But BroadSign
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`does not dispute that it failed to provide any facts at all regarding the contents of those references
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`or regarding a motivation to combine those references. And BroadSign provides no explanation
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`for how an invalidity argument based on prior art could be considered plausible without any
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`recitation of facts regarding what is contained in those references.
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`BroadSign argues that it “is not required at the pleading stage to allege facts regarding the
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`contents of these prior art references in greater detail.” D.I. 65 at 11. However, that exact
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`argument has been rejected by the courts. In Summers Mfg. Co., Inc. v. Tri-Cty. AG, LLC, 300 F.
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`Supp. 3d 1025, 1040-41 (S.D. Iowa 2017), the defendant specifically identified certain prior art
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`references as the basis for its invalidity counterclaims under §§ 102 and 103 and argued that this
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`2
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 7 of 16
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`was sufficient to place the plaintiff on notice of both the basis for its invalidity counterclaims and
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`the facts supporting such assertions. The court explicitly rejected this argument:
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`Tri–County has failed to assert sufficient facts demonstrating any elements
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`of the European Patent can be found in any other element of Summers’s patents,
`as required under § 102. Although Tri–County identifies the European Patent as
`invalidating prior art, Tri–County does not analyze or even describe the European
`Patent. Consequently, Summers has not been put on notice of a single limitation
`Tri–County contends the European Patent and Summers’s patents share. Merely
`stating the patents are invalid “in view of at least [the] European Patent” is
`conclusory and devoid of any facts upon which the Court may infer the European
`Patent does, in fact, invalidate Summers’s patents under § 102. ECF No. 41 at 12.
`Similarly, Tri–County has not stated any facts suggesting how the European
`Patent, either alone or in combination with other references, makes Summers’s
`patents obvious to a person of ordinary skill in the art, as required under § 103.
`Without more, Summers cannot respond to the allegations that any of the
`referenced prior art renders its patents obvious. Because Tri–County’s
`counterclaims are devoid of any specific fact comparing or analyzing either the
`European Patent or the prior art references they assert invalidate Summers’s
`patents under §§ 102 and 103, Tri–County has failed to sufficiently state a claim
`under Twombly and Iqbal.
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`Id. at 1041. Similarly, in Aster Graphics the court rejected the exact same argument. See Aster
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`Graphics, Inc. v. Static Control Components, Inc., No. CV 17-1167-DOC (JDEx), at 11 (C.D.
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`Cal. Feb. 12, 2018) (attached as D.I. 61-4) (“Aster asserts that a prior reference—a reference
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`called the ‘Li reference’— renders the ’742 Patent and ’949 Patent invalid for anticipation and
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`obviousness. . . . However, Aster provides no further factual allegations about the Li reference
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`that explain how the Li reference . . . plausibly render the patents invalid for anticipation or
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`obviousness. Thus, Aster’s allegations are too conclusory and do not provide sufficient factual
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`support to state a claim for invalidity.”) (internal citations omitted).
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`Next, BroadSign asserts that “[i]n numerous cases, courts have held that allegations of
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`invalidity such as those pled by BroadSign are sufficiently detailed and have denied motions to
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`dismiss.” D.I. 65 at 12. However, all of the cases cited by BroadSign pre-date the abrogation of
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`the Federal Appendix of Forms. Since Form 18 allowed a barebones pleading of infringement,
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`3
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 8 of 16
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`the courts often allowed similarly barebones allegations of invalidity. See, e.g., Graphic
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`Packaging Int’l, Inc. v. C.W. Zumbiel Co., No. 1:10-CV-3008-AT, 2011 WL 5829674, at *4
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`(N.D. Ga. Aug. 1, 2011) (“Zumbiel’s invalidity pleadings are also sufficient because they
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`provide a degree of factual detail similar to the disclosures the Federal Circuit has found to be
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`sufficient [under Form 18] to state an infringement claim. To require Zumbiel to meet a higher
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`pleading standard on its invalidity counterclaims and affirmative defenses than GPI must meet in
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`pleading its infringement claims would be illogical and inequitable.”). However, after the
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`abrogation of the forms, the courts have routinely dismissed conclusory invalidity pleadings such
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`as BroadSign’s SAC. See, e.g., Summers Mfg., 300 F. Supp. 3d at 1041; Aster Graphics, No. CV
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`17-1167-DOC (JDEx), at 11.
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`BroadSign also reveals its fundamental misapprehension of the current state of the law in
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`its discussion of Form 18. BroadSign argues that “the Second Circuit has not expressly ruled on
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`whether Form 18 or Twombly/Iqbal pleading standards apply in patent cases.” D.I. 65 at 12 n.3.
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`However, Form 18 was abrogated along with the rest of the forms almost three years ago.
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`BroadSign also attempts to distinguish the cases cited by T-Rex. For example,
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`BroadSign argues that Crye Precision LLC v. Duro Textiles, LLC, 112 F. Supp. 3d 69 (S.D.N.Y.
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`2015) and Wireless Ink Corp. v. Facebook, Inc., 787 F. Supp. 2d 298 (S.D.N.Y. 2011) are
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`distinguishable because the defendants there failed to identify the prior art in their invalidity
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`pleadings. D.I. 65 at 13. However, the fact that the pleadings in those cases were even more
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`deficient than BroadSign’s SAC fails to show that the SAC states a plausible claim for relief.
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`Indeed, the court’s reasoning in Crye Precision that the “pleading does not ‘assert nonconclusory
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`factual matter sufficient to nudge its claims across the line from conceivable to plausible’”
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`4
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 9 of 16
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`counsels the same result here. 112 F. Supp.3d at 79 (quoting E.E.O.C. v. Port Auth. of N.Y. &
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`N.J., 768 F.3d 247, 253–54 (2d Cir. 2014)).
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`BroadSign also attempts to distinguish Summers Mfg. on the grounds that there “the court
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`dismissed invalidity counterclaims because they were ‘devoid of any specific fact comparing or
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`analyzing either the [prior art] or prior art references [defendant] assert[s] invalidate [plaintiff’s]
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`patents under 102 and 103.’” D.I. 65 at 13. However, BroadSign fails to explain how this point
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`distinguishes this case at all. Indeed, this quotation only further demonstrates the deficiency of
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`BroadSign’s SAC. Just like the deficient pleading in Summers Mfg., BroadSign’s SAC is
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`“devoid of any specific fact comparing or analyzing either the [prior art] or prior art references
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`[defendant] assert[s] invalidate [plaintiff’s] patents under 102 and 103.’” Summers Mfg., 300 F.
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`Supp. 3d at 1041.
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`BroadSign also argues that paragraphs 1-49 of the SAC provide support for its invalidity
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`claims (D.I. 65 at 14), but BroadSign fails to offer any explanation for how those paragraphs
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`actually provide any such factual support. Indeed, BroadSign only discusses a few of those
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`paragraphs and acknowledges that those paragraphs merely relate to complaints filed by T-Rex
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`in other litigations.
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`BroadSign suggests that T-Rex should be familiar with BroadSign’s invalidity theories
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`based on earlier proceedings BroadSign filed with the Patent Trial and Appeal Board (“PTAB”).
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`D.I. 65 at 14. However, BroadSign cites no authority for the proposition that the sufficiency of a
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`pleading should be judged based on information provided in some other proceeding. Moreover,
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`the fact that the PTAB declined to even institute trial proceedings in response to BroadSign’s
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`petitions calls into question whether BroadSign can even plead a plausible claim for invalidity.
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`5
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 10 of 16
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`2.
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`BroadSign Fails to Show That It Pled Sufficient Facts to
`State a Plausible Claim for Invalidity Under § 101 and § 112
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`In its opposition brief, BroadSign does not even attempt to point to any facts in its SAC
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`that would render its bare assertions of invalidity under § 101 and § 112 plausible. Instead,
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`BroadSign merely argues that T-Rex did not cite any cases in which similar pleadings were
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`dismissed. D.I. 65 at 15. However, BroadSign is simply incorrect.
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`In its opening brief, T-Rex cited to Iconfind, Inc. v. Google, Inc., which dismissed
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`conclusory allegations of invalidity under § 101 No. 2:11-CV-00319, 2011 WL 4505779, at *1
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`(E.D. Cal. Aug. 2, 2011) (“Google alleges that the ’459 patent is invalid under 35 U.S.C. § 101
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`because the patent ‘seeks to claim an ‘abstract idea.’’ This conclusory allegation is insufficient
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`under the pleading standard since it does not contain factual allegations sufficient to support
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`drawing a reasonable inference that ’459 patent does not contain patentable ideas.”). Similarly,
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`T-Rex cited to Aster Graphics, which dismissed conclusory allegations of invalidity under § 112.
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`No. CV 17-1167-DOC (JDEx), at 11 (“As an initial matter, Aster does not allege any facts
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`related to Sections 101 or 112 of the Patent Act. Accordingly, Aster’s counterclaims for
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`invalidity as to Sections 101 and 112 must be dismissed.”) (internal citations omitted).
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`Moreover, BroadSign fails to cite any cases supporting its position that the mere
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`allegation of invalidity as an abstract idea under § 101 or as an improper means-plus-function
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`limitation under § 112 is sufficient under Twombly and Iqbal.1
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`1 BroadSign also argues that T-Rex’s theory would require “any declaratory judgment
`plaintiff, to have fully formed non-infringement and invalidity contentions, as well as proposed
`claim constructions at the time a suit is commenced” and then asserts “[t]hat is simply not the
`law.” D.I. 65 at 1-2. On the contrary, Twombly and Iqbal require that the pleading contain
`sufficient facts to make a claim of invalidity or non-infringement plausible. Indeed, the courts
`have rejected BroadSign’s argument that the factual basis can be omitted from the pleading
`merely because the facts will be provided later in the form of invalidity contentions or non-
`infringement contentions. See, e.g., Crye Precision, 112 F. Supp. 3d at 79-80 (rejecting
`argument that “holding invalidity counterclaims to the Twombly/Iqbal plausibility standard
`6
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 11 of 16
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`C.
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`BroadSign’s Arguments Fail to Show that the SAC Pleads a
`Plausible Claim for Non-Infringement
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`BroadSign argues that its non-infringement pleading is sufficient under Twombly and
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`Iqbal because it identifies specific products, representative claims, and provides a specific reason
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`the products do not meet at least one limitation of each of those claims. D.I. 65 at 15-16. As an
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`example, BroadSign points to ¶ 54 in which BroadSign alleges that it does not infringe claims 25
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`and 26 because “BroadSign’s products do not ‘receiv[e] control instructions from at least one
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`external information mediator’ as required by the claim.” Id. 16-17 (quoting SAC ¶ 54).
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`However, merely quoting a claim limitation and alleging that the products do not practice that
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`limitation does not constitute a factual pleading, but rather, a legal conclusion. Indeed, the courts
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`have rejected BroadSign’s argument that it is sufficient to simply assert that a particular
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`limitation is missing. See, e.g., Aster Graphics, No. CV 17-1167-DOC (JDEx), at 10 (dismissing
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`non-infringement claim where patent challenger “merely identifies a claim element, and
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`alleges—with no explanation as to how or why—that each element is absent from [its]
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`products”); Comcast Cable Commc’ns, LLC v. OpenTV, Inc., 319 F.R.D. 269, 273 (N.D. Cal.
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`2017) (“Comcast responds that allegations identifying (1) the asserted patent, (2) the accused
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`products or services, and (3) at least one limitation not met by said products or services are
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`sufficient under Twombly/Iqbal. This order disagrees and concludes that, under Twombly/ Iqbal,
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`the complaint must contain factual allegations sufficient to show how or why a claim limitation
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`is not met.”) (internal citations omitted).
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`BroadSign argues that “[t]o require more in a complaint would be to require BroadSign to
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`prove the negative, i.e., that its products do not have these elements.” D.I. 65 at 17. But that is
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`would be inconsistent with the Local Patent Rules, which create a process for disclosing the
`specifics of the invalidity claim.”).
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`7
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 12 of 16
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`exactly what BroadSign is asking for—a declaration that its products do not infringe because
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`they do not practice these elements. Furthermore, it need not prove non-infringement by a
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`preponderance of the evidence at the pleading stage, it merely needs to plead enough facts to
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`make it plausible that its products do not infringe.
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`BroadSign also argues that it does not need to provide a claim chart level of detail or
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`proof that it is entitled to judgment. Id. 17. However, T-Rex never asserted such a requirement.
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`Rather, T-Rex merely argued that, in accordance with Twombly and Iqbal, BroadSign must
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`provide sufficient factual allegations to make its non-infringement claims plausible.
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`BroadSign also asserts that T-Rex has not identified a single case in which a declaratory
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`judgment plaintiff was required to plead non-infringement on a claim by claim, element by
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`element basis, with specific reasons why it does not infringe. Id. 17. First, T-Rex has never
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`argued that the complaint must plead non-infringement on a claim-by-claim, element-by-element
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`basis. Second, contrary to BroadSign’s assertion, T-Rex did in fact cite several cases where the
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`courts required the party seeking a declaratory judgment of non-infringement to plead the
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`specific reasons why it does not infringe. See, e.g., Aster Graphics, No. CV 17-1167-DOC
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`(JDEx), at 10; Comcast Cable, 319 F.R.D. at 273. Notably, BroadSign does not present any
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`argument to distinguish these cases. Instead, it simply argues that they are not binding on this
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`Court. D.I. 65 at 17. However, even if not binding, those decisions constitute persuasive
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`authority for why this Court should reach the same result here, especially when BroadSign fails
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`to identify any error in their analysis. Moreover, BroadSign fails to cite any cases in support of
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`its own position that merely identifying claim limitations is sufficient to make its non-
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`infringement claims plausible.2
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`2 In support of its argument, BroadSign relies on the Federal Circuit’s decision in Disc
`Disease Solutions, Inc. v. VGH Solutions, Inc., 888 F.3d 1256 (Fed. Cir. 2018). D.I. 65 at 15-16.
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 13 of 16
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`D.
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`BroadSign’s Arguments Fail to Show that the SAC Pleads a
`Plausible Claim for Equitable Intervening Rights
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`BroadSign argues that since equitable intervening rights is inherently fact intensive, it is
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`not appropriate for disposition at the pleading stage. D.I. 65 at 18. However, that is only true
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`when the pleading alleges sufficient facts to make the claim plausible. When the pleading fails
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`to allege sufficient facts, dismissal is required under Twombly and Iqbal. Next, BroadSign
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`argues that it has sufficiently pled a claim by alleging that the patent was substantively amended
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`during reissue and that BroadSign was selling the product prior to the reissuance. Id. at 18-19.
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`Although that might be enough to plead a claim for absolute intervening rights, that fails to
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`constitute a sufficient pleading for equitable intervening rights which requires consideration of a
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`variety of factors including whether the accused infringer relied on the original patent scope in
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`making preparations to manufacture the infringing products. See Marine Polymer Tech., Inc. v.
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`HemCon, Inc., 659 F.3d 1084, 1095 (Fed. Cir. 2011) (listing relevant factors). In short,
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`BroadSign simply failed to plead any facts showing that equitable considerations would justify
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`allowing continued manufacture of infringing products.3
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`However, that case dealt with the sufficiency of an infringement claim rather than a non-
`infringement claim. Furthermore, in holding that an infringement allegation was sufficient when
`it identified the accused products and attached photos that showed that each of the claim
`limitations were met, the Federal Circuit relied on the fact that “the case involves a simple
`technology.” Subsequent cases have declined to extend its holding to other more complex
`technologies. See, e.g., Genedics, LLC v. Meta Co., No. CV 17-1062-CJB, 2018 WL 3991474,
`at *12 n.15 (D. Del. Aug. 21, 2018) (“There can be little doubt, however, that the patents at issue
`here concern subject matter that is much more technologically sophisticated than in Disc
`Disease. And so the Court will look to the factual allegations in the body of the Complaint to
`help discern whether plausible claims of infringement have been set out.”).
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`3 BroadSign argues that Presidio Components, Inc. v. Am. Tech. Ceramics Corp., No. 14-
`CV-2061-H (BGS), 2016 WL 7319533 (S.D. Cal. Feb. 10, 2016) supports the sufficiency of its
`pleading. In that case, however, the patent owner only disputed whether the scope of the claims
`had changed during reexamination and did not otherwise dispute the sufficiency of the pleading.
`Id. at *15.
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 14 of 16
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`E.
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`The Court Should Condition Leave to Amend on BroadSign
`Reimbursing T-Rex’s Expenses in Bringing this Motion
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`In its opposition, BroadSign requests that the Court grant leave to submit a third amended
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`complaint if the Court determines that the SAC is deficient. D.I. 65 at 19-20. T-Rex does not
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`oppose BroadSign’s request provided that BroadSign reimburses T-Rex’s expenses in bringing the
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`present motion. District courts have the authority to condition leave to amend on reimbursement
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`of the opposing party’s expenses. See, e.g., Gen. Signal Corp. v. MCI Telecommunications Corp.,
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`66 F.3d 1500, 1514 (9th Cir. 1995) (“[W]e have held that a district court, in its discretion, may
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`impose costs pursuant to Rule 15 as a condition of granting leave to amend in order to compensate
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`the opposing party for additional costs incurred because the original pleading was faulty.”). Here,
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`T-Rex brought the pleading deficiencies to BroadSign’s attention via a letter and a meet-and-
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`confer. BroadSign could have avoided the need for T-Rex to bring the present motion by
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`voluntarily agreeing to correct the pleading deficiencies in its SAC. Instead, BroadSign refused
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`to amend and forced T-Rex to incur the expense of the present motion. Moreover, BroadSign’s
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`opposition relied almost entirely on outdated and overruled case law. Since BroadSign could have
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`avoided imposing these expenses on T-Rex, this Court should condition leave to amend on
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`BroadSign reimbursing T-Rex’s fees and costs incurred in bringing this motion.
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`III. CONCLUSION
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`For the forgoing reasons, the Court should dismiss BroadSign’s SAC under Federal Rule
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`of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted.
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 15 of 16
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`Dated: September 6, 2018
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`Respectfully submitted,
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`/s/ Steven R. Daniels
`Steven R. Daniels
`Email: SDaniels@dickinsonwright.com
`DICKINSON WRIGHT PLLC
`303 Colorado Street, Suite 2050
`Austin, TX 78701-4653
`Telephone: (512) 770-4200
`Facsimile: (844) 670-6009
`
`Jeffrey A. Lindenbaum
`Email: jlindenbaum@collenip.com
`COLLEN INTELLECTUAL PROPERTY LAW
`The Holyoke-Manhattan Building
`80 South Highland Avenue
`Ossining, New York 10562
`Telephone: (914) 941-5668
`Facsimile: (914) 941-6091
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`Attorneys for Defendant T-Rex Property, AB
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`Case 1:16-cv-04586-LTS-HBP Document 66 Filed 09/06/18 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 6, 2018, I electronically filed the foregoing filing with
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`the Clerk of Court using the CM/ECF system which will send notification of such filing via
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`electronic mail to all counsel of record.
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`/s/ Steven R. Daniels
`Steven R. Daniels
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`SUNNYVALE 79900-2 94v2
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