Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`IDENTITY SECURITY LLC,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`Civil Action No. 1:22-cv-58-DII
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` Jury Trial Demanded
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`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS OPPOSED MOTION FOR
`FURTHER CLAIM CONSTRUCTION AND STAY PENDING MARKMAN, OR,
`ALTERNATIVELY, TO STRIKE PLAINTIFF’S NEWLY ADDED CLAIMS
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 2 of 10
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`TABLE OF CONTENTS
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`Page
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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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`Plaintiff’s Belated Addition Of New Claims Frustrates The Purpose Of
`This Court’s Procedural Rules. ................................................................................1
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`Plaintiff’s New Claims Require Construction. ........................................................2
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`Consistent With This Court’s Practice, The Case Should Be Stayed Until
`The Court Issues A New Markman Order. ..............................................................3
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`D.
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`This Court’s Rules Support Apple’s Motion To Strike. ..........................................4
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`CONCLUSION ....................................................................................................................5
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`I.
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`II.
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`III.
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`i
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 3 of 10
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Ambato Media, LLC v. Clarion Co.,
`No. 2:09-CV-242-JRG, 2012 WL 194172 (E.D. Tex. Jan. 23, 2012) ................................ 4
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`Augustus v. Bd. of Pub. Instruction of Escambia Cnty., Fla.,
`306 F.2d 862 (5th Cir. 1962) .............................................................................................. 4
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`Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001)........................................................................................... 3
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`Cellular Commc’ns Equip. LLC v. HTC Corp.,
`No. 6:16-CV-475-KNM, 2018 WL 4261194 (E.D. Tex. May 8, 2018) ............................. 4
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`Charles E. Hill & Assocs., Inc. v. Abercrombie & Fitch Co.,
`No. 2:07-CV-234, 2009 WL 10677490 (E.D. Tex. July 17, 2009) .................................... 5
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`Finesse Wireless, LLC v. AT&T Mobility, LLC,
`No. 2:21-CV-316-JRG-RSP, 2022 WL 18141571 (E.D. Tex. Dec. 21, 2022)................... 4
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`Kruse Tech. P’ship v. Volkswagen AG,
`544 F. App’x 943 (Fed. Cir. 2013) ..................................................................................... 5
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`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) ................................................................................ 4
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`Summit 6, LLC v. Samsung Elecs. Co.,
`802 F.3d 1283 (Fed. Cir. 2015)........................................................................................... 3
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`Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns AB,
`No. 6:12-CV-221-LED-JDL, 2014 WL 4494479 (E.D. Tex. Jan. 14, 2014) ..................... 4
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`USC IP P’ship, L.P. v. Facebook, Inc.,
`No. 6-20-CV-00555-ADA, 2021 WL 6201200 (W.D. Tex. Aug. 5, 2021) ....................... 4
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`Wright & Miller, Federal Practice and Procedure § 1380 ............................................................ 4
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`OTHER AUTHORITIES
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`Fed. R. Civ. P. 12(f) ........................................................................................................................ 4
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`RULES
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 4 of 10
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`I.
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`INTRODUCTION
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`This Court stays fact discovery until it issues a Markman order, which allows the parties
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`to proceed through the case with the benefit of the Court’s claim constructions. D.I. 63 (“The way
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`it then works in my court is the stay that I have imposed is still in effect after we conclude the
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`Markman hearing, and we will get out a Markman order as quickly as we can get out a Markman
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`order.”). Plaintiff’s belated addition of new claims post-Markman has frustrated that purpose.
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`Now, Plaintiff seeks to deprive Apple of the benefit of the Court’s claim construction rulings on
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`the newly added claims until after Apple serves its final invalidity contentions and—at best—late
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`into (or after) fact discovery. Accordingly, Apple submits that the Court should: (1) stay the case
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`while the Court resolves the parties’ new claim construction disputes before the parties proceed
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`through final contentions and the latter stages of fact discovery; or (2) strike Plaintiff’s newly
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`added claims so that the parties can proceed on the four claims asserted in Plaintiff’s preliminary
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`infringement contentions.
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`II.
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`ARGUMENT
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`A.
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`Plaintiff’s Belated Addition Of New Claims Frustrates The Purpose Of This
`Court’s Procedural Rules.
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`Plaintiff attempts to excuse its post-Markman addition of eight new claims by arguing that
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`“[t]here is no dispute” that it complied with the applicable rules. Resp. at 3. But there is a dispute.
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`Under either the prior Standing Order that required Plaintiff to seek leave to add new claims, or
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`this Court’s past warnings to plaintiffs prohibiting the addition of new claims post-Markman,
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`Plaintiff failed to comply. Mot. at 6-7 (quoting D.I. 99 Ex. 2 (“I don’t want anybody adding new
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`patents or new allegations that would affect the Markman because I’m going [to] tell you I’m not
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`likely [to] reopen a Markman hearing.”)). Plaintiff’s arguments to the contrary fail for three
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`reasons.
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 5 of 10
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`First, Plaintiff attempts to diminish the import of Judge Yeakel’s previous statements,
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`characterizing them as “a snippet pulled from one page of the transcript of an unpublished pretrial
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`conference held more than four years ago in another case.” Resp. at 3. But the Court has
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`adjudicated this case under the same principle—that fact discovery should not proceed until
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`Markman is complete. See Mot. at 8. Plaintiff has now done exactly what this Court warned
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`previous plaintiffs not to do.
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`Second, Plaintiff argues that the Waco Division’s rules—prohibiting the addition of claims
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`without leave—do not apply to its Amended Complaint and that the current Scheduling Order
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`permitted Plaintiff to amend its complaint without leave. Resp. at 2-4. But the portion of the
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`Scheduling Order that Plaintiff cites does not address improper expansion of the case by adding
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`new claims post-Markman. And Plaintiff does nothing to explain why it should be treated
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`differently from past plaintiffs in this Court (other than dismissing the Court’s prior instructions
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`as a “snippet” that “do[es] not control” this case). See Resp. at 3-4.
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`Third, Plaintiff suggests that Apple moved to transfer this case to Austin because it
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`strategically sought to avoid the rules of the Waco Division. Resp. at 4. That is incorrect. Apple
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`moved to transfer this case to Austin because neither Apple nor Plaintiff—indeed, nothing relevant
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`in this case—has any ties to Waco, whereas multiple relevant Apple employees live and work in
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`Austin. D.I. 27 at 5-9; D.I. 55 at 4-9.
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`B.
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`Plaintiff’s New Claims Require Construction.
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`Plaintiff states that it is amenable to further claim construction (Resp. at 1) but then argues
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`that further claim construction is “unnecessary” (Resp. at 4). Plaintiff cannot deprive Apple of the
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`right to seek construction of disputed terms merely because Plaintiff unilaterally declares that those
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`terms do not require construction. As Apple explained in its motion, a concrete dispute concerning
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`2
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 6 of 10
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`the scope of previously unconstrued terms (recited in Plaintiff’s belatedly added claims) has arisen
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`and requires resolution. Mot. at 4-5, 7.1
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`Plaintiff’s cited cases do not support its argument that further claim construction is
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`unnecessary. In both cited cases, the Court resolved the parties’ disputes through claim
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`construction—exactly what Apple asks of this Court. See Biotec Biologische Naturverpackungen
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`GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (resolving the “evidence
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`and argument on both sides of the question” through claim construction); Summit 6, LLC v.
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`Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015) (on post-trial appeal, declining to revisit
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`construction of a term already considered during Markman).
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`C.
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`Consistent With This Court’s Practice, The Case Should Be Stayed Until The
`Court Issues A New Markman Order.
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`Contrary to Plaintiff’s allegations (Resp. at 5), Apple seeks only that this Court apply its
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`routine practice and stay the case until the conclusion of the Markman process—as it has already
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`done. See Exs. 1-2 (staying cases before Markman); D.I. 57; D.I. 63 (“The way it then works in
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`my court is the stay that I have imposed is still in effect after we conclude the Markman hearing,
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`and we will get out a Markman order as quickly as we can get out a Markman order.”). Plaintiff’s
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`scattershot arguments fail to show that a departure from this Court’s practice is warranted.
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`First, Plaintiff asserts that there is “ample time for any additional targeted discovery”
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`without a stay. Resp. at 6. Plaintiff is incorrect. Absent a stay, even under Plaintiff’s accelerated
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`schedule, the parties would not even complete claim construction briefing—let alone receive a
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`Markman order—until after the deadline for final invalidity contentions and only 9 weeks before
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`1 Plaintiff also argues that Apple has not proposed constructions for the disputed terms in its
`motion. Resp. at 4. Apple is ready to exchange and brief the constructions. But this motion is not
`Apple’s Markman brief. Rather, Apple’s motion is the first step and merely seeks leave to engage
`in further claim construction on a schedule consistent with the prior Markman proceedings.
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`3
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 7 of 10
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`the close of fact discovery. Resp. at 6. And even if this Court were to issue a Markman order
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`within a month after the conclusion of briefing, the parties would have nearly completed fact
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`discovery without any construction of Plaintiff’s newly asserted claims.
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`Second, Plaintiff contends that the case should not be stayed because the parties have
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`“engaged in substantial merits discovery.” Resp. at 7. That misstates the facts. As summarized
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`in Apple’s Reply in support of its Motion To Stay Pending Ex Parte Reexaminations (“EPRs”),
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`the bulk of the work—including more than half of fact discovery, expert discovery, summary
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`judgment, and trial—remains to be done. D.I. 116 at 2-3. And the fact that this case has previously
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`been stayed has no bearing on whether a stay to resolve claim construction disputes—that
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`Plaintiff’s belated addition of claims necessitated—is warranted. See Cellular Commc’ns Equip.
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`LLC v. HTC Corp., No. 6:16-CV-475-KNM, 2018 WL 4261194, at *2 (E.D. Tex. May 8, 2018)
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`(“[M]otions to stay are considered on a case-by-case basis.”).2
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`D.
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`This Court’s Rules Support Apple’s Motion To Strike.
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`Finally, Plaintiff argues that Apple’s alternative request to strike Plaintiff’s newly added
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`claims is untimely and unsupported under Rule 12(f). Resp. at 8-10. But Apple does not bring its
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`motion under Rule 12(f).3 Rather, Apple’s motion is premised on the rules and guidance of both
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`2 Plaintiff’s cited cases are inapposite because each of those cases was much closer to trial than
`the parties are here. See Finesse Wireless, LLC v. AT&T Mobility, LLC, No. 2:21-CV-316-JRG-
`RSP, 2022 WL 18141571, at *10 (E.D. Tex. Dec. 21, 2022) (refusing to reconstrue an already-
`construed term at summary judgment); Unifi Sci. Batteries, LLC v. Sony Mobile Commc’ns AB,
`No. 6:12-CV-221-LED-JDL, 2014 WL 4494479, at *3 (E.D. Tex. Jan. 14, 2014) (denying stay
`where trial was ten months away); Soverain Software LLC v. Amazon.com, Inc., 356 F. Supp. 2d
`660, 663 (E.D. Tex. 2005) (denying stay where discovery closed in less than a month and trial was
`six months away); USC IP P’ship, L.P. v. Facebook, Inc., No. 6-20-CV-00555-ADA, 2021 WL
`6201200, at *2 (W.D. Tex. Aug. 5, 2021) (denying stay where trial was four months away);
`Ambato Media, LLC v. Clarion Co., No. 2:09-CV-242-JRG, 2012 WL 194172, at *1 (E.D. Tex.
`Jan. 23, 2012) (denying stay where trial was six months away).
`3 Plaintiff’s cited cases are distinguishable on this basis alone. See Wright & Miller, Federal
`Practice and Procedure § 1380 (discussing motions to strike under Rule 12(f)); Augustus v. Bd. of
`Pub. Instruction of Escambia Cnty., Fla., 306 F.2d 862, 868 (5th Cir. 1962) (same).
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`4
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 8 of 10
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`the pre-transfer court and this Court, which consistently prohibit parties from adding new claims
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`post-Markman. See D.I. 31 (requiring leave for “[a]ny amendment to add patent claims” after
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`preliminary infringement contentions); D.I. 99 Ex. 2 (“I don’t want anybody adding new patents
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`or new allegations that would affect the Markman . . . ”). Plaintiff dismisses this Court’s guidance
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`(Resp. at 3), but there is good reason for it: a party should not be permitted to add new claims that
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`the other party could not have sought to construe or received the benefit of the Court’s
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`constructions prior to serving its final contentions and well into (or after) fact discovery. See Kruse
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`Tech. P’ship v. Volkswagen AG, 544 F. App’x 943, 953 (Fed. Cir. 2013) (denying amendments to
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`contentions because “a change to the theory of infringement [] would likely have meant re-opening
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`of Markman proceedings and extending discovery”); Charles E. Hill & Assocs., Inc. v.
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`Abercrombie & Fitch Co., No. 2:07-CV-234, 2009 WL 10677490, at *4 (E.D. Tex. July 17, 2009)
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`(“allowing the [claim] substitution would likely result in re-opening claim-construction to address
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`the new term”). Indeed, the reason to stay fact discovery until a Court issues a Markman order is
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`so that the parties can proceed through discovery with the benefit of the Court’s constructions.
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`Plaintiff also argues that four of its eight newly added claims do not implicate the parties’
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`claim construction disputes. Resp. at 9-10. But the addition of those claims at the very least
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`contravenes the prior Standing Order and injects new infringement and invalidity issues into the
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`case, well after Plaintiff was required to serve its preliminary infringement contentions (which are
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`supposed to define the scope of the case). Mot. at 6-7. Accordingly, the Court should strike all of
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`Plaintiff’s newly added claims, but at the very least should strike the claims that have created a
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`new claim construction dispute (i.e., ’497 patent claims 3 and 4; ’008 patent claims 2 and 3).
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`III. CONCLUSION
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`Apple requests that the Court grant the relief sought in Apple’s motion. Mot. at 10.
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`5
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 9 of 10
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`Dated: May 17, 2023
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`By:
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`6
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`/s/ Melissa R. Smith
`Melissa R. Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`
`James Travis Underwood
`Texas Bar No. 24102587
`GILLAM & SMITH, LLP
`102 N. College, Suite 800
`Tyler, Texas 75702
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: travis@gillamsmithlaw.com
`
`John M. Desmarais (pro hac vice)
`Cosmin Maier (pro hac vice)
`Leslie M. Spencer (pro hac vice)
`Edward Geist (pro hac vice)
`Michael Wueste (pro hac vice)
`Joze Welsh (pro hac vice)
`Amy Wann (pro hac vice)
`Eli Balsam (pro hac vice)
`Asim Zaidi (pro hac vice forthcoming)
`
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Tel: 212-351-3400
`Fax: 212-351-3401
`jdesmarais@desmaraisllp.com
`cmaier@desmaraisllp.com
`lspencer@desmaraisllp.com
`egeist@desmaraisllp.com
`mwueste@desmaraisllp.com
`jwelsh@desmaraisllp.com
`awann@desmaraisllp.com
`ebalsam@desmaraisllp.com
`azaidi@desmaraisllp.com
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`Attorneys for Defendant Apple Inc.
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`Case 1:22-cv-00058-ADA Document 119 Filed 05/17/23 Page 10 of 10
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the above and foregoing document has been
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`served on May 17, 2023, to all counsel of record who are deemed to have consented to electronic
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`service via the Court’s CM/ECF system.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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` .
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`7
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