Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`IDENTITY SECURITY LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`APPLE INC.,
`
`
`Defendant.
`
`
`
`
`Civil Action No. 1:22-cv-58-LY
`
` Jury Trial Demanded
`
`
`
`
`
`DEFENDANT APPLE INC.’S OPPOSED MOTION FOR FURTHER CLAIM
`CONSTRUCTION AND STAY PENDING MARKMAN, OR, ALTERNATIVELY, TO
`STRIKE PLAINTIFF’S NEWLY ADDED CLAIMS
`
`

`

`
`
`I.
`
`II.
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 2 of 15
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT .........................................1
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`STATEMENT OF FACTS ..................................................................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Plaintiff Asserted Only One Claim From Each Patent-in-Suit In Its
`Preliminary Infringement Contentions. ...................................................................2
`
`Apple Relied On Plaintiff’s Identification Of Four Asserted Claims When
`Preparing Its Invalidity Contentions And Throughout The Markman
`Process. ....................................................................................................................2
`
`Plaintiff Improperly Attempted To Add Additional Claims Without
`Seeking The Required Leave Of Court. ...................................................................3
`
`More Than Four Months After The Court’s Markman Order, Plaintiff
`Belatedly Added New Claims And New Infringement Theories. ...........................4
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`E.
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`The Parties’ Meet-And-Confer Process. ..................................................................5
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`III.
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`ARGUMENT .......................................................................................................................6
`
`A.
`
`B.
`
`C.
`
`D.
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`Plaintiff’s Newly Asserted Claims And Infringement Theories Require
`Further Claim Construction. ....................................................................................6
`
`Apple’s Motion For Further Claim Construction Is Timely. ...................................7
`
`The Case Should Be Stayed Until Issuance Of A Second Markman Order
`Resolving The Parties’ Claim Construction Disputes Concerning The
`Newly Asserted Claims............................................................................................8
`
`In The Alternative, The Court Should Strike Plaintiff’s Newly Added
`Claims. .....................................................................................................................9
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`IV.
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`CONCLUSION ..................................................................................................................10
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`
`
`i
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 3 of 15
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`TABLE OF AUTHORITIES
`
`Pages
`
`
`
`Cases
`
`Berger v. Rossignol Ski Co., Inc.,
`No. C 05-02523-CRB, 2006 WL 1095914 (N.D. Cal. Apr. 25, 2006) ............................... 3
`
`Crossroads Sys., Inc. v. Dot Hill Sys. Corp.,
`No. 1-13-cv-00800, WL 3773014 (W.D. Tex. Jun. 15, 2015) .......................................... 10
`
`Estech Sys., Inc. v. Howard Midstream Energy Partners,
`No. 6-20-cv-00777, Dkt. 141 (W.D. Tex. Aug. 31, 2022) ................................................. 6
`
`Mondis Tech. Ltd. v. Top Victory Elecs. (Taiwan) Co.,
`No. 2:08-CV-478 (TJW), 2010 WL 3025243 (E.D. Tex. July 29, 2010) ........................... 7
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)........................................................................................... 8
`
`Quartz Auto Techs. v. Lyft, Inc.,
`No. 1:20-CV-719-LY, Dkt. 125 (W.D. Tex. June 24, 2022) ............................................ 10
`
`Ravgen, Inc. v. Natera, Inc., et al.,
`No. 1:20-CV-692-LY, Dkt. 247 (W.D. Tex. May 31, 2022) ............................................ 10
`
`STMicroelectronics, Inc. v. Motorola, Inc.,
`307 F. Supp. 2d 845 (E.D. Tex. 2004) ................................................................................ 3
`
`TC Tech. LLC v. T-Mobile USA, Inc.,
`No. 6-20-cv-00899-ADA, 2021 WL 8083373 (W.D. Tex. Dec. 7, 2021) ........................ 10
`
`VideoShare, LLC v. Meta Platforms Inc.,
`No. 6-21-cv-00254-ADA, 2022 WL 2718986 (W.D. Tex. July 12, 2022) ...................... 10
`
`ii
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 4 of 15
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`
`
`I.
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`INTRODUCTION AND SUMMARY OF THE ARGUMENT
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`More than a year after the March 9, 2022 Markman hearing (D.I. 65) and more than four
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`months after the Court’s November 2, 2022 Markman Order (D.I. 77), Plaintiff Identity Security
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`LLC’s (“Plaintiff”) March 17, 2023 Amended Complaint (D.I. 91) adds eight new asserted claims
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`that contain new terms that were never briefed by the parties or construed by the Court. The
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`addition of those new claims directly contravenes this Court’s past guidance against adding new
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`allegations post-Markman. See, e.g., Ex. 2 [Collabo Innovations, Inc. v. Advanced Micro Devices,
`
`Inc., 18-cv-00552-LY, Transcript of Initial Pretrial Conference (D.I. 29) at 33 (W.D. Tex. Feb. 11,
`
`2019)] (“I don’t want anybody adding new patents or new allegations that would affect the
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`Markman . . . .”).
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`Plaintiff’s late addition of previously unasserted claims requires further claim construction.
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`In particular, the parties dispute the proper scope and meaning of two terms recited in the newly
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`asserted claims: (1) “an interface configured to enable the digital identity device to communicate
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`with an external device”; and (2) “input/output port.” Those terms are not recited in the four claims
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`that were asserted in Plaintiff’s Preliminary Infringement Contentions and therefore were never
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`construed by the Court. Accordingly, Defendant Apple Inc. (“Apple”) respectfully requests that
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`the Court conduct further claim construction regarding the disputed terms in Plaintiff’s newly
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`added claims, and stay fact discovery pending a Markman Order to allow the parties to incorporate
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`the Court’s constructions into their forthcoming final infringement and invalidity contentions.
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`Alternatively, to the extent that the Court does not wish to conduct further claim
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`construction, Apple submits that the Court should strike Plaintiff’s newly added claims.
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 5 of 15
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`
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`II.
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`STATEMENT OF FACTS
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`A.
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`Plaintiff Asserted Only One Claim From Each Patent-in-Suit In Its
`Preliminary Infringement Contentions.
`
`The four Patents-in-Suit1 generally relate to a device that uses microprocessor identity
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`information (a hardware identifier that uniquely identifies a microprocessor or device) and digital
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`identity data (data that identifies the device’s owner) to “create a unique digital identity.” See D.I.
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`1 Exs. 1-4. In its July 23, 2021 Preliminary Infringement Contentions, Plaintiff asserted only four
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`total claims across the Patents-in-Suit: claim 1 of the ’497 Patent; claim 1 of the ’008 Patent; claim
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`5 of the ’895 Patent; and claim 1 of the ’948 Patent. Ex. 3.
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`B.
`
`Apple Relied On Plaintiff’s Identification Of Four Asserted Claims When
`Preparing Its Invalidity Contentions And Throughout The Markman
`Process.
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`On September 17, 2021, pursuant to the Scheduling Order in place at the time (D.I. 25),
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`Apple served its Preliminary Invalidity Contentions, showing how the four claims asserted in
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`Plaintiff’s Preliminary Infringement Contentions are invalid in view of the prior art. Ex. 4.
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`The Parties exchanged proposed terms for construction on October 1, 2021. Ex. 5. Apple
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`identified terms recited in the four claims identified and charted in Plaintiff’s Preliminary
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`Infringement Contentions. Id. The parties then exchanged proposed claim constructions and
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`identified extrinsic evidence in support of those constructions in October 2021. Exs. 6, 7, and 8.
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`Throughout that process, Plaintiff never identified any claims beyond the four it had asserted in its
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`Preliminary Infringement Contentions. On November 5, 2021, Apple filed its Opening Claim
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`Construction Brief, addressing the disputed terms recited in the same four claims that Plaintiff
`
`asserted in its Preliminary Infringement Contentions. See D.I. 32 at 3.
`
`
`1 The “Patents-in-Suit” are U.S. Patent Nos. 7,493,497 (the “’497 patent”), 8,020,008 (the “’008
`patent”), 8,489,895 (the “’895 patent”), and 9,507,948 (the “’948 patent”).
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`
`
`2
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 6 of 15
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`
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`C.
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`Plaintiff Improperly Attempted To Add Additional Claims Without Seeking
`The Required Leave Of Court.
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`On November 19, 2021, four months after preliminary infringement contentions were due
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`and two weeks after Apple filed its Opening Claim Construction Brief, Plaintiff served “Amended
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`Infringement Contentions” that attempted to add claims 2, 4, 6, and 7 of the ’008 patent—but not
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`claims 3, 4 and 12 of the ’497 patent or claims 3 and 9 of the ’008 patent, which Plaintiff seeks to
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`add now. See Ex. 9. Plaintiff did not seek leave of Court to add new claims, in contravention of
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`the Scheduling Order requiring leave for “[a]ny amendment to add patent claims.” D.I. 25 at 1.
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`Instead, Plaintiff said that it had “inadvertently omitted” those claims from its Preliminary
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`Infringement Contentions and noted that it was open to supplemental Markman briefing on those
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`additional claims. Ex. 10.
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`Apple immediately responded that Plaintiff had not sought leave to amend its contentions
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`to add new claims, as required by the Scheduling Order, and that Plaintiff’s inadvertent omission
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`was not a basis to belatedly add claims. Ex. 11 (citing Berger v. Rossignol Ski Co., Inc., No. C
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`05-02523-CRB, 2006 WL 1095914, at *4-5 (N.D. Cal. Apr. 25, 2006) (denying leave to add
`
`mistakenly omitted infringement contentions because “[c]arelessness or mere errors . . . are
`
`insufficient to establish good cause.”); and STMicroelectronics, Inc. v. Motorola, Inc., 307 F.
`
`Supp. 2d 845, 850-51 (E.D. Tex. 2004) (denying leave to add additional asserted claims to
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`infringement contentions, noting that “a party’s failure to meet a deadline due to mere inadvertence
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`‘is tantamount to no explanation at all.’”) (internal citations omitted)). Apple further explained
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`that should the Court allow Plaintiff to belatedly add those new claims, the parties would need to
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`adjust the schedule to allow Apple sufficient time to prepare invalidity contentions and for the
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`parties to engage in another round of Markman briefing. Ex. 11. Plaintiff never responded to
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`Apple’s email and never sought leave from the Court to add the new claims.
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`3
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 7 of 15
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`The parties completed Markman briefing on December 31, 2021. D.I. 44. This Court held
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`a Markman hearing on March 9, 2022 and issued its Markman Order on November 2, 2022. D.I.
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`65; D.I. 77. The Markman proceedings concerned only terms from the original four asserted
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`claims. D.I. 77. At no point did Plaintiff ever seek leave to add new claims. Nor did it raise this
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`issue at the Court’s January 19, 2023 scheduling conference. As such, throughout this case, Apple
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`proceeded with the understanding that the only asserted claims were the four identified in
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`Plaintiff’s Preliminary Infringement Contentions.
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`D. More Than Four Months After The Court’s Markman Order, Plaintiff
`Belatedly Added New Claims And New Infringement Theories.
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`On March 17, 2023, Plaintiff filed an Amended Complaint, adding claims 3, 4, and 12 of
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`the ’497 patent and claims 2, 3, 6, 7, and 9 of the ’008 patent. D.I. 91. Those new claims include
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`two new terms that are not recited in the four originally asserted claims: (1) “an interface
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`configured to enable the digital identity device to communicate with an external device” (’497
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`patent claim 3; ’008 patent claim 2); and (2) “input/output port” (’497 patent claim 4; ’008 patent
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`claim 3).
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`Plaintiff also introduced new infringement theories for both new claim terms that contradict
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`the patents’ specifications. For the first term (“an interface configured to enable the digital identity
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`device to communicate with an external device”), Plaintiff mapped the claimed “digital identity
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`device” to the Secure Enclave; the claimed “external device” to a “Secure Nonvolatile Storage”
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`and “Intel CPU” (both of which are, in fact, internal to the Apple devices); and the claimed
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`“interface” to a “I2C bus.” D.I. 91 Ex. 5 at 21-23. Those apparent interpretations directly
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`contradict the patents’ specifications. In particular, the specification common to all Patents-in-
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`Suit consistently describes the claimed digital identity device as connected to a physically separate
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`second device, such as another computer. See, e.g., ’497 patent, 3:29-31 (“The computer card 110
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`4
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 8 of 15
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`
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`contains the digital identity device 105. The computer card 110 has input/output capabilities for a
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`connection to a separate computer.”); 3:52-55.
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`For the second term (“input/output port”), Plaintiff, citing a technical dictionary as support
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`for its purported “plain and ordinary meaning” construction, mapped the claimed “input/output
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`port” to the “connection between the I2C bus and the nonvolatile storage.” D.I. 91 Ex. 5 at 23-25.
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`Plaintiff had not cited that technical dictionary definition in its disclosure of extrinsic evidence
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`during the first round of Markman exchanges. Exs. 7, 8. Nor had Plaintiff ever previously accused
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`the “I2C bus” as allegedly satisfying any asserted claim limitation. See D.I. 1 Exs. 1-4. And
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`mapping an “input/output port” to a purely internal connection is contrary to the patents’
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`specifications, which describe input/output capabilities as a connection to a physically separate
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`computer. See, e.g., ’497 patent, 3:29-35 (“The computer card 110 contains the digital identity
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`device 105. The computer card 110 has input/output capabilities for a connection to a separate
`
`computer.”). Accordingly, Plaintiff’s application of the newly asserted claims to Apple’s products
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`implicates claim construction disputes that require resolution.
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`E.
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`The Parties’ Meet-And-Confer Process.
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`On March 31, 2023, Apple notified Plaintiff that Plaintiff’s newly added claims would
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`require further claim construction and a stay pending a second Markman order. Ex. 12. On April
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`3, 2023, Plaintiff responded that it “disagree[d] on all counts.” Ex. 13. On April 5, 2023, Apple
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`requested a formal meet-and-confer. Ex. 14. The parties held a meet-and-confer on April 7, 2023,
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`where Plaintiff maintained its opposition.
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`The following day, on April 8, 2023, Plaintiff reversed course and stated that it would not
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`oppose Apple’s request for further claim construction if Apple would “not seek a stay of the
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`litigation based on any alleged need for additional claim construction.” Ex. 15. On April 10, 2023,
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`Apple explained why Plaintiff’s conditions were not acceptable. Ex. 16. First, Apple explained
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`5
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 9 of 15
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`that, absent a stay, the parties would not have the benefit of the Court’s constructions of the newly
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`added claims until after final contentions and likely late into fact discovery. Id. Second, Apple
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`explained that it would move to stay the case pending final resolution of granted ex parte
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`reexamination (“EPR”) proceedings, and that the factors considered by this District include the
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`need for further claim construction, which is now necessitated by Plaintiff’s post-Markman-order
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`addition of new claims.2 Id.
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`III. ARGUMENT
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`A.
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`Plaintiff’s Newly Asserted Claims And Infringement Theories Require
`Further Claim Construction.
`
`
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`Plaintiff identified only four claims in its Preliminary Infringement Contentions: claim 1
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`of the ’497 patent, claim 5 of the ’895 patent, claim 1 of the ’008 patent, and claim 1 of the ’948
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`patent. Ex. 3. Pursuant to the Standing Order Governing Proceedings in force at the time, Plaintiff
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`was required to chart “each element of the asserted claim(s).” D.I. 31 at 1. The purpose of
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`infringement contentions is to give Apple notice of Plaintiff’s asserted claims and infringement
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`theories. See, e.g., Estech Sys., Inc. v. Howard Midstream Energy Partners, No. 6-20-cv-00777,
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`Dkt. 141 at 6 (W.D. Tex. Aug. 31, 2022) (“The purpose of infringement contentions is to provide
`
`notice to the defendant of the plaintiff’s infringement theory.”); Mondis Tech. Ltd. v. Top Victory
`
`Elecs. (Taiwan) Co., No. 2:08-CV-478 (TJW), 2010 WL 3025243, at *2 (E.D. Tex. July 29, 2010)
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`(“It is the infringement contentions, and not the complaint, that is the vehicle by which the plaintiff
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`gives notice of its specific infringement theories.”). Accordingly, Apple relied on Plaintiff’s
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`Preliminary Infringement Contentions in searching for prior art, preparing its Preliminary
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`Invalidity Contentions, and selecting and briefing terms for claim construction.
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`2 Apple previewed its forthcoming motion to stay pending EPRs in the Proposed Scheduling Order
`(D.I. 78 at 7) and at the January 19, 2023 scheduling conference (D.I. 81).
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`
`
`6
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 10 of 15
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`Plaintiff’s belated addition of eight new claims in its Amended Complaint—which contain
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`terms never construed by the Court—runs directly afoul of this Court’s guidance and fails to
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`provide the notice at the heart of infringement contention disclosure requirements. See, e.g., Ex.
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`2 [Collabo Innovations, Inc. v. Advanced Micro Devices, Inc., 18-cv-00552-LY, Transcript of
`
`Initial Pretrial Conference (D.I. 29) at 33 (W.D. Tex. Feb. 11, 2019)] (“I don’t want anybody
`
`adding new patents or new allegations that would affect the Markman because I’m going [to] tell
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`you I’m not likely [to] reopen a Markman hearing.”).
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`The Court should construe these terms because the parties dispute their scope. Apple
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`submits that the two new terms require construction; Plaintiff contends that no construction is
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`necessary. Ex. 13. In particular, Plaintiff’s mapping of an “external device” and “input/output
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`port” to internal components of Apple’s products is inconsistent with the patents’ specifications.
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`See supra at 4-5. This Court should resolve the parties’ disputes regarding the scope of the claims.
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`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“When
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`the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty
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`to resolve it.”).
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`B.
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`Apple’s Motion For Further Claim Construction Is Timely.
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`Apple’s motion is timely because Plaintiff filed its Amended Complaint and introduced
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`new claims and new infringement theories only four weeks ago, on March 17, 2023. Apple
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`notified Plaintiff that Apple intended to seek additional claim construction for the new terms in
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`Plaintiff’s newly asserted claims only two weeks after Plaintiff filed its Amended Complaint. Ex.
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`12. The parties met and conferred shortly thereafter (Ex. 14), and Apple timely filed this motion
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`three days after the parties’ meet-and-confer correspondence concluded (Exs. 17 and 18).
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`Moreover, resolution of the parties’ disputes over the scope of Plaintiff’s newly asserted
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`claims is warranted now. Plaintiff must serve its Final Infringement Contentions on May 19, 2023,
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`7
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 11 of 15
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`and Apple’s Final Invalidity Contentions are due on July 10, 2023.3 Those final contentions will
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`necessarily depend upon the proper scope of the claims, once construed by the Court. As such,
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`Apple’s motion is timely.
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`C.
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`The Case Should Be Stayed Until Issuance Of A Second Markman Order
`Resolving The Parties’ Claim Construction Disputes Concerning The Newly
`Asserted Claims.4
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`Consistent with this Court’s previous Order, the case should be stayed until the additional
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`claim construction disputes are resolved. See D.I. 57; D.I. 63 (“The way it then works in my court
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`is the stay that I have imposed is still in effect after we conclude the Markman hearing, and we
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`will get out a Markman order as quickly as we can get out a Markman order.”). The parties have
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`yet to engage in substantial and costly discovery or exchange final infringement and invalidity
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`contentions. Both the discovery practice and the final contentions will be more efficient after the
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`Court resolves the parties’ dispute over the proper scope of the newly asserted claims. As such,
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`Apple respectfully requests the Court stay the case and adopt Apple’s proposed schedule for the
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`claim construction exchanges and briefing (attached as Ex. 1).
`
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`3 The Scheduling Order sets the deadline for Plaintiff’s Final Infringement Contentions and
`Apple’s Final Invalidity Contentions on May 5, 2023 and June 19, 2023, respectively. D.I. 82.
`However, the parties have agreed to move those respective deadlines to May 19, 2023 and July 10,
`2023. The parties did not submit a filing to the Court reflecting those new deadlines per the Court’s
`instruction at the January 19, 2023 scheduling conference. Jan. 19, 2023 Hr’g Tr. at 22:3-10.
`
` 4
`
` Apple also intends to file a motion to stay the case pending resolution of ex parte reexamination
`proceedings granted by the United States Patent and Trademark Office. In particular, on April 3,
`2023, the Examiner granted Apple’s requests for reexamination for claims 1–3, 12, and 13 of the
`’497 patent; claims 1, 2, 4, 6, and 7 of the ’008 patent; claims 1-4, 6, 7, 9-13, and 15-16 of the ’895
`patent; and claim 1 of the ’948 patent (which includes all four claims asserted in Plaintiff’s
`Preliminary Infringement Contentions). Exs. 19-22. To the extent the Court grants Apple’s
`forthcoming motion to stay, Apple’s request for further claim construction can be resolved with
`an appropriate scheduling order post-stay, if any of the claims containing the disputed terms
`survive reexamination.
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`
`
`8
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`

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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 12 of 15
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`A stay to allow the Court to issue a Markman Order concerning the newly asserted claims
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`would not unduly prejudice Plaintiff. Plaintiff admittedly does not practice any of the Patents-In-
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`Suit or make or sell any products, and does not compete with Apple; rather, Plaintiff exists only to
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`engage in litigation and (allegedly) patent licensing. See Ex. 23. Moreover, all of the Patents-in-
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`Suit have expired and, therefore, no injunctive relief is available to Plaintiff. D.I. 1 Exs. 1-4.
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`Accordingly, in the event that Plaintiff ultimately prevails in this litigation, it can be made whole
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`by monetary damages and the delay inherent in a stay alone cannot constitute undue prejudice.
`
`VideoShare, LLC v. Meta Platforms Inc., No. 6-21-cv-00254-ADA, 2022 WL 2718986, at *1
`
`(W.D. Tex. July 12, 2022) (“A mere delay in collecting damages ‘does not constitute undue
`
`prejudice.’”) (citing Crossroads Sys., Inc. v. Dot Hill Sys. Corp., No. 1-13-cv-00800, WL 3773014,
`
`at *2 (W.D. Tex. Jun. 15, 2015)); TC Tech. LLC v. T-Mobile USA, Inc., No. 6-20-cv-00899-ADA,
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`2021 WL 8083373, at *2 (W.D. Tex. Dec. 7, 2021) (finding patent owner’s general interest in
`
`enforcing its rights “insufficient to defeat a motion to stay”); Quartz Auto Techs. v. Lyft, Inc., No.
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`1:20-CV-719-LY, Dkt. 125 at 3 (W.D. Tex. June 24, 2022) (finding plaintiff’s “ability to recover
`
`monetary damages” would be unaffected by a stay); Ravgen, Inc. v. Natera, Inc., et al., No. 1:20-
`
`CV-692-LY, Dkt. 247 at 3 (W.D. Tex. May 31, 2022) (finding no undue prejudice in granting stay
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`where “[p]laintiff does not seek lost profits or preliminary-injunctive relief”).
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`D.
`
`In The Alternative, The Court Should Strike Plaintiff’s Newly Added
`Claims.
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`To the extent that the Court does not wish to conduct further claim construction, Apple
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`respectfully requests that the Court strike Plaintiff’s newly added claims so that the case can
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`proceed with only the four claims asserted in Plaintiff’s Preliminary Infringement Contentions.
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`As explained above, the Scheduling Order in force at the time Plaintiff served its Preliminary
`
`Infringement Contentions required leave of Court to add new claims. D.I. 25. Plaintiff never
`
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`
`9
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 13 of 15
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`sought leave. Although this Court stated that standing orders that were in force prior to transfer
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`no longer apply (Feb. 3, 2022 Hr’g Tr. at 4), that portion of the prior Scheduling Order is consistent
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`with this Court’s past guidance warning parties against adding new claims that would implicate
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`claim construction after the Court issues its Markman Order. See Ex. 2 [Collabo Innovations, Inc.
`
`v. Advanced Micro Devices, Inc., 18-cv-00552-LY, Transcript of Initial Pretrial Conference (D.I.
`
`29) at 33 (W.D. Tex. Feb. 11, 2019)] (“I don’t want anybody adding new patents or new allegations
`
`that would affect the Markman . . . .”).
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`IV. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests that the Court grant Apple’s Motion
`
`for Further Claim Construction, stay the case until the Court issues its Markman Order concerning
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`the newly asserted claims, and adopt Apple’s proposed schedule for the claim construction
`
`exchanges and briefing (attached as Ex. 1). Alternatively, if the Court does not wish to conduct
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`further claim construction, Apple respectfully requests that the Court strike Plaintiff’s newly added
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`claims, so that the case can proceed with only the four claims that were the subject of the prior
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`Markman proceedings.
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`10
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`Case 1:22-cv-00058-ADA Document 99 Filed 04/14/23 Page 14 of 15
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`Dated: April 14, 2023
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`By:
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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
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`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
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`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)
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`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 99 Filed 04/14/23 Page 15 of 15
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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 April 14,2023 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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`CERTIFICATE OF CONFERENCE
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`I hereby certify that Apple’s counsel conferred in good faith with opposing counsel
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`pursuant to Local Civil Rule 7(g), and Identity Security is opposed to the relief sought.
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`Accordingly, this Motion and the relief requested herein are submitted to the court for resolution.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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