WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 223

SUR-REPLY to Reply to Response to Motion re 209 Opposed SEALED MOTION FOR LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS filed by HTC America, Inc., HTC Corporation, Sony Mobile Communications (USA) Inc., Sony Mobile Communications AB. (Wynne, Richard)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

WI-LAN INC.,
Plaintiff,
v.

CIVIL ACTION NO. 6:10–CV–521–LED

ALCATEL–LUCENT USA INC., et al.,
Defendants.

THE SONY MOBILE AND HTC DEFENDANTS’ SURREPLY TO WI-LAN INC.’S
MOTION FOR LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS

Bruce S. Sostek
Richard L. Wynne, Jr.

Stephen S. Korniczky
Martin R. Bader

THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, Texas 75201
Tel.: [phone]
Fax: [phone]

SHEPPARD MULLIN RICHTER & HAMPTON LLP
12275 El Camino Real, Suite 200
San Diego, California 92130
Tel.: [phone]
Fax: [phone]

COUNSEL FOR SONY MOBILE
COMMUNICATIONS AB AND SONY MOBILE
COMMUNICATIONS (USA) INC.

COUNSEL FOR HTC CORPORATION,
HTC AMERICA, INC., AND EXEDEA, INC.

Wi-LAN’s argument fails for three reasons. First, Wi-LAN cannot show good cause to
supplement without first showing diligence. Second, merely identifying the Additional Products
in May 2012, without seeking leave to supplement, is not proof of diligence. And third, Sony
Mobile and HTC could not have known, as Wi-LAN presumes, that Wi-LAN would attempt to
retroactively accuse the Additional Products before it first identified them in May 2012.
Wi-LAN’s Reply skips over Defendants’ factual and legal arguments in favor of unfounded
accusations and a final effort to shift the blame for its tardiness onto the Defendants — as if
Defendants should have accused their own products — leaving no clear basis for finding good
cause to supplement at this late stage of the case.

ARGUMENTS
A.

Wi-LAN’s lack of diligence precludes a showing of good cause.
Wi-LAN contends it can show good cause to supplement without diligence. Reply at 3. But

neither of the two cases it cites on this issue supports such a contention. To the contrary,
Arbitron held “[a] good cause analysis on a motion to amend must include a determination of
diligence on the part of the movant.” Arbitron, Inc. v. Int’l Demographics, Inc., No. 2:07-cv-434,
2009 WL 166555, at *1 (E.D. Tex. Jan. 16, 2009) (emphasis added). And in MacLean-Fogg, the
court considered the issue of prejudice only after finding the plaintiff “demonstrated diligence”
and “was diligent in requesting discovery in furtherance of its intention to supplement.” McLeanFogg Co. v. Eaton Corp., No. 2:07-cv-472, 2008 WL 4601476, at *2 (E.D. Tex. Oct. 6, 2008).
Further, Wi-LAN does not even address, much less distinguish, the cases cited in
Defendants’ Response holding that good cause to amend or supplement infringement contentions
“requires a showing of diligence.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1366 (Fed. Cir. 2006) (emphasis added); see also S&W Enters., L.L.C. v. Southtrust Bank
of Ala., NA, 315 F.3d 533, 535 (5th Cir. 2003) (“The good cause standard requires the party

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seeking relief to show that the deadlines cannot reasonably be met despite the diligence of the
party needing the extension.” (emphasis added)); STMicroelectronics, Inc. v. Motorola, Inc., 307
F. Supp. 2d 845, 851 (E.D. Tex. 2004) (holding that “the good cause standard unambiguously
centers on . . . diligence” and that a party seeking leave to amend “must show that ‘the deadlines
cannot reasonably be met despite the diligence of the party needing the extension’”) (quoting
S&W Enters., 315 F.3d at 535). In light of this precedent, Wi-LAN’s delay of at least six months
(and in many cases much longer) before seeking leave to supplement precludes a finding of
diligence.
B.

Wi-LAN is not entitled to supplement without leave.
Wi-LAN says that it acted diligently by naming the Additional Products in May and

supplementing its infringement contentions, without leave to do so, in June. Reply at 3. But
under Patent Rule 3–6(b), a party must seek leave to accuse additional instrumentalities.
Nevertheless, Wi-LAN continues to insist that it properly served the supplemental contentions
without leave. Reply at 3 (“Wi-LAN served what it believes are procedurally proper and
operative infringement contentions adding those Additional Products in June.”). Of course, WiLAN provides no authority for that assertion, which is directly contrary to the express language
of P.R. 3–6(a).
Accordingly, there is no basis for finding that Wi-LAN acted diligently.
C.

Wi-LAN’s original infringement contentions do not accuse the Additional Products.
Finally, Wi-LAN tries to shift the blame for its delay onto Sony Mobile and HTC by

asserting that they should have known that its original contentions suggested an intent to accuse
the Additional Products with the catchall, “any Sony Mobile or HTC smartphone ‘complying
with at least 3GPP rel. 5, et seq., HSDPA, HSUPA, or HSPA.’” Reply at 1. According to WiLAN, this broad language shifted the burden of identifying accused products to Sony Mobile and
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HTC, and Wi-LAN now complains that their interrogatory responses should have filled in the
blanks of Wi-LAN’s infringement contentions. But the Additional Products were all publicly
known before those interrogatories were answered — in fact, many were being marketed even
before Wi-LAN filed its original infringement contentions. And in their interrogatory responses,
both Sony Mobile and HTC objected to Wi-LAN’s definition of “accused products” and
specifically limited the scope of their responses to the products identified in Wi-LAN’s
infringement contentions. Wi-LAN did not seek to compel a broader response. Indeed, while
those interrogatory responses were served in January 2012, Wi-LAN did not complain about
them until now. Wi-LAN’s argument thus boils down to an assertion that one unexplained delay
— its delay in complaining about the interrogatory responses — justifies another unexplained
delay — its delay in bringing the present motion. This is certainly not proof of diligence.
Wi-LAN’s argument also fails because its original infringement contentions do not provide
sufficient notice of Wi-LAN’s infringement theories. Wi-LAN does not deny that it failed to
“specifically explain how each accused instrumentality meets the asserted claim elements.” Eon
Corp. IP Holdings, LLC v. Sensus USA Inc., No. 6:09-cv-116, 2010 WL 346218, at *3 (E.D.
Tex. Jan. 21, 2010). It cannot, because Wi-LAN’s claim charts link the asserted claim elements
to 3GPP standard specifications and general textbook materials, not to actual products.
Such charts do not meet the notice requirement of the Patent Rules, as Wi-LAN tacitly
admits by not distinguishing the cases on this issue cited in Defendants’ Response.1 Under those

1

Global Sessions LP v. Travelocity.com LP, No. 6:10-cv-671, 2012 WL 1903903, at *4
(E.D. Tex. May 25, 2012) (all accused products must be separately charted, even if they are
reasonably similar to products that have already been charted); id. (merely stating that products
are reasonably similar “does nothing to notify [the accused infringer] as to which functionality of
each of the [accused products] correspond to which elements of the asserted claims.”);
SmartPhone Techs., LLC v. HTC Corp., No. 6:10-cv-580, 2012 WL 1424173, at *4 (E.D. Tex.
Mar. 16, 2012) (“[T]he Court finds it troubling that SmartPhone’s original infringement
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cases, Sony Mobile and HTC had no notice that Wi-LAN contended the Additional Products
might be implicated before Wi-LAN first identified them in May. See, e.g., Global Sessions,
2012 WL 1903903, at *5 (“[M]erely naming the accused websites gives Travelocity little to no
notice of how each of the Amended Travelocity Websites infringe the patents-at-issue.”).
Wi-LAN, on the other hand, had the information it needed to accuse the Additional
Products many months before it first identified them. And even after it finally identified these
products in May, it refused to comply with the Court’s rules requiring a motion for leave to
supplement until late July. Throughout this two-month break, Wi-LAN refused to explain its
delay. That is, until it apparently realized that although this motion is — in its words — “not
necessary,” it would be too risky to flout the Local Patent Rules so openly without at least asking
for permission. Opening Br. 10.

CONCLUSION
Because Wi-LAN still offers no explanation for its delay in seeking leave to supplement its
infringement contention, it has failed to make the necessary showing of good cause. Sony Mobile
and HTC therefore respectfully renew their request that the Court deny its motion for leave to
assert claims against the Additional Products.

contentions used representative devices to demonstrate the infringement theories to be applied to
all accused products . . . .”); id. at *4 (“[I]t is improper to simply chart to standards . . . to
illustrate how representative products satisfy claim limitations.”) (citing Linex Tech., Inc. v.
Belkin Int’l, Inc., 628 F. Supp. 2d 703, 708 (E.D. Tex. 2008)); Linex, 628 F. Supp. 2d at 708
(“While using [a] standard as the starting point for infringement is permissible,” a plaintiff must
still link each accused product to the standard.); Connectel, LLC v. Cisco Sys., Inc., 391 F. Supp.
2d 526, 528 (E.D. Tex. 2005) (holding that the plaintiff was “not in compliance with Patent Rule
3–1” because its claim charts did “not refer in their text to a single structure, process, algorithm,
feature or function of any accused product”).

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Dated: September 4, 2012

Respectfully submitted,
/s/ Richard L. Wynne, Jr.
Bruce S. Sostek (Lead Attorney)
State Bar No. 18855700
[e-mail]
Richard L. Wynne, Jr.
State Bar No. 24003214
[e-mail]
THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, Texas 75201
214.969.1700
214.969.1751 (facsimile)
ATTORNEYS FOR DEFENDANTS
SONY MOBILE COMMUNICATIONS AB and
SONY MOBILE COMMUNICATIONS (USA), INC.

/s/Martin R. Bader (with permission)
Stephen S. Korniczky (pro hac vice)
Martin R. Bader (pro hac vice)
SHEPPARD MULLIN RICHTER & HAMPTON LLP
12275 El Camino Real, Suite 200
San Diego, California 92130
Tel.: [phone]
Fax: [phone]
COUNSEL FOR HTC CORPORATION,
HTC AMERICA, INC., AND EXEDEA, INC.

CERTIFICATE OF SERVICE
I certify that the foregoing document was served electronically on all counsel of record on
September 4, 2012.
/s/ Richard L. Wynne, Jr.
Richard L. Wynne, Jr.
5257566.1

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