Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 1 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`
`
`
`CARBYNE BIOMETRICS, LLC,
`
`Civil Action No. 1:23-cv-00324
`
`Plaintiff,
`
`JURY TRIAL
`
`vs.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`DEFENDANT APPLE INC.’S REPLY IN SUPPORT OF ITS MOTION TO STRIKE
`PLAINTIFF CARBYNE BIOMETRICS, LLC’S INFRINGEMENT CONTENTIONS
`AS TO THE UNCHARTED APPLE VISION PRO PRODUCT
`
`
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 2 of 14
`
`TABLE OF CONTENTS
`
`CARBYNE’S CONTENTIONS DID NOT PUT APPLE ON NOTICE OF
`CARBYNE’S INFRINGEMENT THEORIES FOR VISION PRO .................................. 1
`
`ALL FACTORS WEIGH IN FAVOR OF STRIKING CARBYNE’S
`INFRINGEMENT CONTENTIONS AS TO VISION PRO .............................................. 3
`
`CONCLUSION ................................................................................................................... 7
`
`
`
`
`
`I.
`
`II.
`
`III.
`
`
`
`
`i
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 3 of 14
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`
`
`Cases
`
`Albritton v. Acclarent, Inc.,
`No. 3:16-cv-03340-M, 2019 WL 13026864 (N.D. Tex. Apr. 5, 2019) .....................................5
`
`Cutting Edge Vision, LLC v. TCL Tech. Grp. Corp.,
`No. W-22-cv-00285-ADA, 2023 WL 4002539 (W.D. Tex. June 14, 2023) .............................4
`
`Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co.,
`No. 4:14-cv-371 (E.D. Tex. Mar. 30, 2016) ..............................................................................5
`
`Welker Bearing Co. v. PHD, Inc.,
`550 F.3d 1090 (Fed. Cir. 2008)..............................................................................................6, 7
`
`Other Authorities
`
`Fed. R. Civ. P. 26 .............................................................................................................................5
`
`
`
`
`
`ii
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 4 of 14
`
`TABLE OF EXHIBITS
`
`Exhibit
`
`12
`
`13
`
`14
`
`15
`
`Description
`Excerpt of Exhibit A to Plaintiff Carbyne’s Preliminary Infringement
`Contentions – Apple iOS and iPadOS Infringement Contention Chart for
`U.S. Patent No. 10,929,512 (June 21, 2023)
`Excerpt of Exhibit B to Plaintiff Carbyne’s Preliminary Infringement
`Contentions – Apple Mac Infringement Contention Chart for U.S. Patent
`No. 10,929,512 (June 21, 2023)
`Ben Lang, “Vision Pro Deliveries Are Backordered Into March But In-
`Store Availability Remains,” (RoadTovr) (Jan. 28, 2024), available at
`https://www.roadtovr.com/apple-vision-pro-back-order-in-store-
`availability-stock/
`Letter from Caroline Burks RE: Carbyne Biometrics v. Apple: Discovery
`(Mar. 14, 2024) (redacted to omit portions not relevant to present motion)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 5 of 14
`
`
`
`Carbyne’s opposition confirms that Carbyne failed to put Apple on notice of how it
`
`believes Vision Pro infringes the Asserted Patents and that all four WSOU factors favor striking
`
`Vision Pro from Carbyne’s contentions.
`
`I.
`
`CARBYNE’S CONTENTIONS DID NOT PUT APPLE ON NOTICE OF
`CARBYNE’S INFRINGEMENT THEORIES FOR VISION PRO
`
`Carbyne’s opposition makes clear that it did not notify Apple “where in [Vision Pro] each
`
`element of the asserted claim(s) are found,” as required by the OGP. Standing Order Governing
`
`Proceedings—Patent Cases, Version 4.4 (Jan. 23, 2024) (“OGP”).
`
`Authentication Patents: Regarding the Authentication Patents, Carbyne does not dispute
`
`that it neither charted Vision Pro nor alleged that the products it did chart were representative of
`
`Vision Pro. Carbyne also does not dispute that it took the position in the parties’ meet and confer
`
`that only those charts that reference Vision Pro are representative of Vision Pro. As the
`
`Authentication Patents charts do not reference Vision Pro or otherwise assert that the charted
`
`products are representative of Vision Pro, Apple could not have been on notice of how Carbyne
`
`contends Vision Pro purportedly infringes these patents.
`
`In an attempt to distract from the omissions in its contentions, Carbyne makes three
`
`arguments, but each is a red herring. First, Carbyne tries to explain post hoc how it believes Vision
`
`Pro is similar to the other accused products (Opp. at 4-5), but Carbyne cannot use its brief to fill
`
`the holes in its contentions. Second, Carbyne incorrectly states that it “made clear” in the parties’
`
`“last” meet and confer that Vision Pro infringes the Asserted Patents in the same way as the
`
`exemplary charted products. Opp. at 5. Regardless of whether Carbyne took that position, a
`
`statement in a meet and confer weeks after final contentions were due is no substitute for making
`
`this disclosure in its final contentions by the deadline. Third, Carbyne claims that Apple must not
`
`dispute that Vision Pro infringes in substantially the same way as the charted products because
`
`1
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 6 of 14
`
`
`
`Apple does not in its motion identify a non-infringement argument that is unique to Vision Pro
`
`(Opp. at 5)—but Carbyne’s logic conflates non-infringement with disputes over whether the
`
`charted products are representative. The question is not about infringement or non-infringement
`
`but whether Carbyne’s contentions as to Vision Pro should be struck because Carbyne failed to
`
`put Apple on notice of its contentions as to that product. Carbyne’s position that the scanned
`
`“biometric is utilized by the Secure Enclave Processor in the same way,” Opp. at 8, is belied by
`
`Carbyne’s choice to separately chart Apple products that employ Face ID and Apple products that
`
`employ Touch ID for this patent family, even though both sets of products also use the Secure
`
`Enclave Processor. E.g., Ex. 12 at 1, 10-15; Ex. 13 at 1, 18-22. None of Carbyne’s arguments
`
`suggest that Carbyne gave Apple fair and timely notice of its infringement theories for Vision Pro.
`
`Fraud Reduction Patents: Regarding the Fraud Reduction Patents, Carbyne does not
`
`dispute that (1) it argues that the “technological improvement [of these patents] over prior
`
`authentication techniques” is “determin[ing] that the user is alive,” (Mot. at 2-3); (2) it argues that
`
`Face ID determines whether a user is alive using depth mapping and detecting the user’s attention
`
`(Mot. at 3); (3) Optic ID does not use depth mapping or attention awareness (Mot. at 6-7); and (4)
`
`Carbyne has never identified how it believes Optic ID determines that the user is alive (Mot. at 6-
`
`7)—it does not. As such, Carbyne failed to put Apple on notice of how it believes Vision Pro
`
`purportedly meets this critical limitation or infringes any asserted claim.
`
`In its opposition, Carbyne insists that the differences between Face ID and Optic ID are
`
`“immaterial” because one scans a user’s face and the other scans a user’s iris (Opp. at 5), but
`
`Carbyne conflates two different limitations at issue in the Fraud Reduction Patents—the use of a
`
`biometric scan and determining whether the user is alive. The use of or type of biometric scan
`
`captured is separate and distinct from determining whether the user is alive, a fact confirmed by
`
`2
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 7 of 14
`
`
`
`Carbyne’s citing specific Face ID processes—depth maps and attention awareness—as allegedly
`
`satisfying the requirement of determining that the user is alive, rather than relying on Face ID’s
`
`overall biometric functionality. Despite this, Carbyne does not identify what particular Optic ID
`
`processes meet the determining the user is alive limitation. To the extent Carbyne now contends
`
`that mere scan of an iris meets this limitation—i.e., that merely performing a biometric scan
`
`satisfies this limitation—Carbyne has unforeseeably altered its interpretation of this limitation.
`
`Finally, the third-party source that Carbyne claims proves Face ID and Optic ID are “in this
`
`respect… pretty similar” does no such thing (Opp. at 5-6, discussing Ex. 2); the article does not
`
`discuss the underlying processes for either Face ID or Optic ID. As such, Apple is still in the dark
`
`as to how Carbyne contends Vision Pro allegedly infringes the Fraud Reduction Patents.
`
`II.
`
`IN FAVOR OF STRIKING CARBYNE’S
`ALL FACTORS WEIGH
`INFRINGEMENT CONTENTIONS AS TO VISION PRO
`
`Factor One: Carbyne’s opposition confirms that its own lack of diligence was the cause of
`
`its delay in accusing and identifying infringement theories for Vision Pro. As a threshold matter,
`
`Carbyne does not dispute that (1) Apple announced Vision Pro before Carbyne’s preliminary
`
`infringement contentions were due (Mot. at 2), (2) Carbyne’s preliminary infringement contentions
`
`did not identify Vision Pro as an accused product (Mot. at 2), (3) Carbyne mentioned Vision Pro
`
`for the first time in its amended contentions, over eight months after it was announced and nearly
`
`two weeks after it was released (Mot. at 3), (4) Carbyne’s amended contentions neither charted
`
`Vision Pro nor contended the charted products were representative of Vision Pro (Mot. at 3), (5)
`
`Vision Pro was released before Carbyne’s final contentions were due (Mot. at 3), (6) nevertheless,
`
`Carbyne’s final contentions (again) did not chart Vision Pro for either patent family and (again)
`
`did not claim the Authentication Patents charts were representative (Mot. at 3-4), and (7) nothing
`
`prevented Carbyne from properly charting Vision Pro as there was much information publicly
`
`3
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 8 of 14
`
`
`
`available about Vision Pro (Mot. at 7). Carbyne thus does not dispute that it had the time, the
`
`opportunity, and the resources over a nine-and-a-half-month period to properly and timely identify
`
`its infringement theories for Vision Pro but repeatedly failed to do so.
`
`Carbyne’s attempts to shift the blame on Apple only emphasize Carbyne’s own lack of
`
`diligence. First, Carbyne never identifies when it purchased and received a Vision Pro. Instead,
`
`Carbyne complains generally that Vision Pro was backordered but does not state that its own
`
`Vision Pro was backordered. Many customers obtained Vision Pro in stores and others with
`
`backordered units received Vision Pro in early March—before Carbyne’s final contentions were
`
`due. See Ex. 14. Moreover, Carbyne never asked for an extension of the final contentions deadline
`
`or conveyed to Apple that it needed more time, whether because Vision Pro was purportedly
`
`backordered or any other reason. Second, Carbyne’s delay cannot be blamed on Apple’s alleged
`
`“refusal” to provide discovery on Vision Pro. The scope of technical discovery is driven by
`
`infringement charts of the accused products, which Carbyne had not provided for Vision Pro.
`
`Cutting Edge Vision, LLC v. TCL Tech. Grp. Corp., No. W-22-cv-00285-ADA, 2023 WL
`
`4002539, at *3 (W.D. Tex. June 14, 2023) (“Infringement contentions serve the critical function
`
`of defining the scope of discovery and narrowing the issues in patent litigation.”) (citation
`
`omitted). Moreover, Carbyne delayed requesting discovery on Vision Pro until March 14, 2024—
`
`one week before final contentions were due. Ex. 15 at 2 (requesting Vision Pro source code).
`
`Indeed, that Carbyne belatedly served amended contentions that chart Vision Pro (after the final
`
`contentions deadline) indicates Carbyne did not need any Vision Pro discovery from Apple to
`
`prepare infringement theories, as Vision Pro discovery has not been provided to Carbyne. Third,
`
`that Apple objected to Carbyne’s contentions a little over a month after Vision Pro was accused
`
`was not an unreasonable delay on Apple’s part, particularly when the final contention deadline fell
`
`4
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 9 of 14
`
`
`
`during that month and Carbyne appeared to be diligently working to supplement on that date. In
`
`sum, Carbyne’s arguments show that any delay was Carbyne’s own doing. Albritton v. Acclarent,
`
`Inc., No. 3:16-cv-03340-M, 2019 WL 13026864, at *4 (N.D. Tex. Apr. 5, 2019) (finding movant
`
`responsible for delay where “it is clear that [movant] has been aware of the information it seeks to
`
`include in its amended contentions for a very long time.”); Imperium IP Holdings (Cayman), Ltd.
`
`v. Samsung Elecs. Co., No. 4:14-cv-371, at *3 (E.D. Tex. Mar. 30, 2016) (finding factor one
`
`weighed against plaintiff moving to amend infringement contentions to add a new product where
`
`information regarding the product had been publicly available).
`
`Factor Two: Carbyne vaguely claims that Vision Pro is important to Carbyne because of
`
`its damages case, citing large prospective sales and unit sold numbers without tying any of that
`
`value to the Asserted Patents—and Carbyne has not provided any damages calculations as required
`
`by Rule 26 either. See Fed. R. Civ. P. 26. Thus, Carbyne is only speculating as to how Vision Pro
`
`may affect its damages. Carbyne’s assertion that striking Vision Pro “will significantly impact”
`
`its damages case further underscores its lack of diligence in adding Vision Pro to this case after it
`
`was publicly introduced. Opp. at 7.
`
`Factor Three: Carbyne fails to rebut Apple’s showing of prejudice. First, Carbyne
`
`(incorrectly) claims that Apple would not be prejudiced because it has not identified a specific
`
`thing it would have done differently had Carbyne properly and timely provided its infringement
`
`theories for Vision Pro. Opp. at 7-8. Apple identified multiple things it would have done
`
`differently, Mot. at 8, and Apple could not have been any more specific about what it would have
`
`done (e.g., identify specific noninfringement and invalidity theories) when Carbyne failed to
`
`provide any specific infringement theories for Vision Pro. Moreover, Carbyne does not address
`
`its changed interpretation (first set forth in its defense of its Vision Pro contentions, Opp. at 5) of
`
`5
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 10 of 14
`
`
`
`the limitation directed to determining whether the user is alive—the purported point of novelty
`
`previously identified by Carbyne, (Pltf. Opp. to Apple’s Mot. to Dismiss, ECF No. 30 at 15; see,
`
`e.g., Ex. 4 at 11-13)—nor the implications for Apple’s own invalidity contentions. Contrary to
`
`Carbyne’s position, Opp. at 7-8, the law does not demand that Apple identify every specific
`
`invalidity or noninfringement theory it would have raised had disclosure been timely—that is
`
`putting the cart before the horse. See Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095 (Fed.
`
`Cir. 2008) (“[T]he burden remains with the patentee to prove infringement, not on the defendant
`
`to disprove it.”). Carbyne’s reliance on Trustees of Purdue Univ. v. STMicroelectronics, Inc. is
`
`inapposite, as the plaintiff there “[did] not add new theories, products, or claims” to its contentions.
`
`No. W-21-cv-00727-ADA, 2023 WL 4923972, at *2 (W.D. Tex. Aug. 1, 2023). Carbyne’s
`
`contentions, on the other hand, expressly added a new product that operates in a different manner
`
`from those charted. And Carbyne’s repeated attempts after its final contentions at explaining the
`
`similarities between Vision Pro and the other accused products only highlight that Carbyne failed
`
`to timely provide those disclosures. As already discussed, Apple was not and is not on notice of
`
`how Vision Pro allegedly infringes the Asserted Patents.
`
`Next, the fact that just under two months of fact discovery remain is insufficient to alleviate
`
`the prejudice to Apple. Carbyne ignores that Apple would have to conduct a new search for art,
`
`prepare revised invalidity contentions, including additional charts and combination contentions,
`
`move for leave to amend based on Carbyne’s belated Vision Pro contentions, serve additional
`
`third-party subpoenas, meet and confer with those third parties, review their documents, depose
`
`their witnesses, and potentially move for leave to amend yet again to encompass information
`
`received from third parties, all within eight weeks, on top of the likely extensive upcoming
`
`deposition practice and in parallel with preparing invalidity expert reports, all because Carbyne
`
`6
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 11 of 14
`
`
`
`failed to timely serve Vision Pro charts for no discernable reason. This additional work is all the
`
`more prejudicial as Apple has already served fifteen invalidity-related subpoenas on third parties,
`
`starting as early as December 2023, based on Carbyne’s original and amended contentions, and
`
`has been diligently working with third parties for months to collect documents and schedule
`
`depositions. Uniloc 2017 LLC v. Google LLC does not indicate otherwise. No. 2:18-cv-493-JRG-
`
`RSP, 2019 WL 6465318, at *2 (E.D. Tex. Dec. 2, 2019). The court in Uniloc did not consider the
`
`amount of time remaining in fact discovery in its analysis of this factor as the parties had months
`
`remaining for claim construction and fact and expert discovery. Id.
`
`Factor Four: For the reasons already stated, although a continuance is available, it would
`
`result in a brief delay in the judicial proceedings. Carbyne contends that Apple can simply
`
`complete its Vision Pro discovery and finalize its theories over the next two months before fact
`
`discovery closes, but as discussed above, the remaining eight weeks are not sufficient. Moreover,
`
`the theories in the parties’ contentions should be final before depositions—which are expected to
`
`start in two weeks—to prevent prejudice. In order to investigate and finalize its theories before
`
`depositions, a continuance will be needed, albeit a brief one.
`
`Because all four factors weigh in favor of striking Vision Pro, Apple respectfully requests
`
`this Court strike Carbyne’s final infringement contentions as to Vision Pro.
`
`III. CONCLUSION
`
`For the foregoing reasons, Apple respectfully requests the Court strike Vision Pro from
`
`Carbyne’s infringement contentions with prejudice.
`
`
`
`
`
`7
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 12 of 14
`
`
`
`
`
`
`
`Dated: May 7, 2024
`
`
`
`
`
`
`
`
`
`
`/s/ Andrew Radsch
`
`
`Brian C. Nash
`Regan J. Rundio
`MORRISON & FOERSTER LLP
`300 Colorado St., Suite 1800
`Austin, TX 78701
`BNash@mofo.com
`RRundio@mofo.com
`
`James R. Batchelder (pro hac vice)
`Andrew Radsch
`James Mack
`ROPES & GRAY LLP
`1900 University Avenue
`East Palo Alto, CA 94303-2284
`Tel: 650-617-4000
`Fax: 650-617-4090
`James.Batchelder@ropesgray.com
`Andrew.Radsch@ropesgray.com
`James.Mack@ropesgay.com
`
`Cassandra Roth (pro hac vice)
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`Phone: +1-212-596-9000
`Fax: +1-212-596-9090
`Cassandra.Roth@ropesgray.com
`
`Allen S. Cross (pro hac vice)
`Nicole Pobre (pro hac vice)
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, DC 20006
`Telephone: (202) 508-4600
`Facsimile: (202) 508-4650
`Allen.cross@ropesgray.com
`Nicole.Pobre@ropesgray.com
`
`S. Lara Ameri (pro hac vice)
`
`8
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 13 of 14
`
`
`
`
`
`Ropes & Gray LLP
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`Phone: +1-617-951-7000
`Fax: +1-617-951-7050
`Lara.Ameri@ropesgray.com
`
`Attorneys for Defendant, Apple Inc.
`
`9
`
`

`

`Case 1:23-cv-00324-ADA Document 100 Filed 05/07/24 Page 14 of 14
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused to be served copies of the foregoing has been served on all
`
`counsel of record via the Court’s ECF system or via electronic mail service on May 7, 2024.
`
`
`
`
`
`/s/ Andrew Radsch
`
`
`
`
`
`
`