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I N T H E U N I T E D ST A T ES D IST R I C T C O U R T
E AST E R N D IST R I C T O F T E X AS
M A RSH A L L D I V ISI O N
INNOVATIVE DISPLAY
TECHNOLOGIES LLC,
Plaintiff,
v.
A C E R IN C. AND A C E R A M E RI C A
C O RP.,
Defendants.

C . A . No. 2:13-cv-522
(Consolidated L ead C ase)
JU R Y T R I A L D E M A N D E D

PL$,17,))6 MOTION TO STRIKE AMENDED INVALIDITY CONTENTIONS


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I. B A C K G R O U N D O F T H E D ISPU T E
On October 15, 2014, Defendants served Amended Invalidity Contentions (the QHZ
cRQWHQWLRQV 1 RQ3ODLQWLII RU,'7 This is the second time Defendants have attempted to amend
their invalidity contentions; the Court previously denied 'HIHQGDQWVILUVWDWWHPSW2
This time, mere days prior to the discovery deadline, 'HIHQGDQWVQHZFRQWHQWLRQVadd nine
new prior art patents RQWRSRIWKHSDWHQWVDQGSULQWHGSXEOLFDWLRQVOLVWHGLQ'HIHQGDQWVRULJLQDO
contentions.3 )XUWKHUPRUH'HIHQGDQWVQHZFRQWHQWLRQValso add nine alleged prior art products
WKDWZHUHQHYHUSUHYLRXVO\GLVFORVHGLQGHHG'HIHQGDQWVoriginal contentions contained no prior
at products at all.4 In total, this amendment attempts to introduce almost 140 new allegations that
asserted claims are anticipated anGDQXQWROGPDQ\PRUHFRPELQDWLRQVRISULRUDUWREYLRXVQHVV
combinations.5
Patent Rule 3-6 governs whether a party can amend its invalidity contentions in this
District, and that rule gives a party two options to amend: (1) after an unexpected claim
construction according to P.R. 3-6(a); or (2) after seeking leave and showing good cause to amend
under P.R. 3-6(b). 'HIHQGDQWV new contentions do not arise from an unexpected claim
construction, and Defendants did not seek leave to amend. Accordingly, Defendants should not be
permitted to amend their invalidity contentions at the eleventh hour. Such broad amendments on
the eve of the discovery deadline are antithetical to the rules and highly prejudicial to IDT.

Attached hereto as Appendix A.


Dkt. No. 71.
3
See Appendix A at 11 (including additional reference Nos. 48-56); cf. Defendants Invalidity Contentions, Feb. 14,
2014, attached as Appendix B at 6-9 (including reference Nos. 1-47).
4
See Appendix A at 11-12 (including products Nos. P1-P9); cf. Appendix B at 9-10.
5
See Appendix A at 14-17 (showing the new anticipation allegations for reference Nos. 48-56 and P1-P9); see also
id. DW  7KHVH SULRU DUW FRPELQDWLRQV DUH QRW H[KDXVWLYH UDWKHU WKH\ DUH LOOXVWUDWLYH H[DPSOHV RI WKH SULRU DUW
combinations disclRVHGJHQHUDOO\DERYH0DQ\PRUHFRPELQDWLRQVDUHSRVVLEOH 
2

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P A G E 1

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I I.

A R G U M E N TS A N D A U T H O R I T Y

A . Defendants cannot amend because there was no unexpected construction.


To amend its invalidity contentions, a party must meet the conditions of P.R. 3-6. Patent
Rule 3-6(a)(2)(B) allows amending invalidity contentions without leave LIWKHSDUW\RSSRVLQJD
claim of pateQWLQIULQJHPHQWEHOLHYHVLQJRRGIDLWKWKDWWKH&RXUWV&ODLP&RQVWUXFWLRQ5XOLQJVR
requires Rule 3-6(a)(2)(B) is the precise rule that Defendants allege authorizes their new
contentions.6 But that rule is intended to allow a party to respond to an unexpected claim
construction by the court.7 This does not mean that after every claim construction order, new
invalidity contentions may be filed. That would destroy the effectiveness of the local rules in
balancing the discovery rights and responsibilities of the parties discussed above.8
During an October 24 meet-and-confer, Plaintiff explained to Defendants that their new
contentions were improper because no unexpected construction occurred. 9 Defendants responded
by committing to send a letter to outline their bases for the new contentions.10 In their letter,
Defendants identified six groups of terms that they allege the Court construed unexpectedly: (1)
FRQWLQXRXV VLGH ZDOOV  WR >VXLWILW@ D SDUWLFXODU DSSOLFDWLRQ   the DLU JDS term; (4)
WUDQVLWLRQUHJLRQ  the SDWWHUQRIGHIRUPLWLHV termsDQG  SDVVWKURXJKDOLTXLGFU\VWDO
GLVSOD\ZLWKORZORVV11 Thus, Defendants argue that six of the twelve groups of terms construed

Appendix A at 1 SXUVXDQWWR3DWHQW/RFDO5XOHV-6(a)(2)(B), Defendants hereby amend their invalidity contentions


EHFDXVHWKH\EHOLHYHLQJRRGIDLWKWKH&RXUWVFODLPFRQVWUXFWLRQ2UGHUVRUHTXLUHV 
7
F inisar Corp. v. DirecTV Grp., Inc., 424 F. Supp. 2d 896, 901 (E.D. Tex. 2006) (Clark, J.); see also CoreLogic Info.
Solutions, Inc. v. F iserv, Inc. , No. 2:10-CV-132, 2012 WL 4051823, at *1 (E.D. Tex. Sept. 13, 2012)(Payne, M.J.)
'efendants have not shown wKDWZDVXQH[SHFWHGLQWKH&RXUWs claim construction ruling that necessitated any of
the amendments. Therefore, Patent Rule 36(a)(2) does not provide a bDVLVIRUSHUPLWWLQJ'HIHQGDQWVamendments. 
8
F inisar, at 901.
9
Declaration of T. William Kennedy at 5.
10
Declaration of T. William Kennedy at 6.
11
Letter from Beaber to Kimble, October 27, 2014, attached hereto as Appendix C.

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P A G E 2

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by the Court were somehow unexpected.12 Defendants amendments are almost exclusively
premised on the argument that, because Defendants lost their proposed constructions, that was
XQH[SHFWHGDQGthey should be allowed to amend their contentions.13 However, by losing their
claim constructions arguments, Defendants do not receive a consolation prize of carte blanche
authority to amend their invalidity contentions.14 6XFKDSROLF\ZRXOGHQFRXUDJHIXWXUHDFFXVHG
infringers to propose narrow constructions focused on non-infringement while sidelining potential
LQYDOLGLW\GHIHQVHVXQWLOWKH&RXUWLVVXHVLWVFODLPFRQVWUXFWLRQRSLQLRQ 15 Thus, the standard is
DQXQH[SHFWHGFRQVWUXFWLRQDQGQRQHRIWKHWHUPVLGHQWLILHGE\'HIHQGDQWVreceived unexpected
constructions that justify the sweeping amendments that Defendants seek.

1. &RQWLQXRXV6LGH:DOOV7R>6XLW)LW@D3DUWLFXODU$SSOLFDWLRQDQG Air Gap


The court construed three of the terms RQ'HIHQGDQWVOLVW FRQWLQXRXVVLGHZDOOVWR
[suit/fit] a particular apSOLFDWLRQDQGWKHDLUJDSWHUP DVplain PHDQLQJ16 A SODLQPHDQLQJ
construction cannot be unexpected because plain and ordinary meaning was the construction that
IDT argued for those terms.17 $V-XGJH&ODUNVWDWHGLQDVLPLODUFDVH'LUHF79GLGQRW adequately
H[SODLQKRZWKHFRXUWVGHILQLWLRQRIDQ\RIWKHWHUPVLQGLVSXWHZDVVRVXUSULVLQJor differed so
greatly from the proposals made by the parties, that it justifies admission of new prior art references

See Claim Construction Memorandum and Order, August 26, 2014, Dkt. No. 101 (construing twelve groups of
terms).
13
See generally, Exhibit C (discussed in more detail below).
14
F inisarDW $SDUW\FDQQRWDUJXHWKDWEHFDXVHLWVSUHFLVHSURSRVDOIRUDFRQVWUXFWLRQRIDFODLPWHUPLVQRW
adopted by the court, it is surprised and must prepare new invalidity defenses to meet claims of infringement. In the
first place, courts seldom simply adopt the construction of one party or the other. Secondly, accepting such an
argument would encourage parties to file narrow proposed constructions with an eye towards hiding important prior
DUWXQWLOVKRUWO\EHIRUHWULDO 
15
MASS Engineered Design, Inc. v. Ergotron, Inc. , 250 F.R.D. 284, 286 (E.D. Tex. 2008).
16
'NW1RDWDQG FRQVWUXLQJFRQWLQXRXVVLGHZDOOVWKHDLUJDSWHUPDQGWR>VXLWILW@DSDUWicular
DSSOLFDWLRQDVSODLQPHDQLQJ 
17
See id. DWDQG VKRZLQJ3ODLQWLIIVSURSRVHGFRQVWUXFWLRQs).
12

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P A G E 3

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WZRZHHNVEHIRUH)LQVDUs deadline to suEPLWUHEXWWDOH[SHUWUHSRUWV18 +HUHWKHSODLQPHDQLQJ


FRQVWUXFWLRQDGRSWHGE\WKH&RXUWEDUHO\GLIIHUVIURPWKHSODLQDQGRUGLQDU\ PHDQLQJSURSRVHG
by Plaintiff, and therefore the construction cannot be unexpected by Defendants.
)RUERWKFRQWLQXRXVVLGHZDOOVDQGWKHDLUJDSWHUP'HIHQGDQWVDUJXHWKDWEHFDXVH
the Court did not accept 'HIHQGDQWVattempts WRLPSRUWOLPLWDWLRQVLQWRWKHFODLPVWKDWWKHSODLQ
PHDQLQJFRQVWUXFWLRQVZHUHXQH[SHFWHG19 The fact that Defendants lost their constructions that
were narrowly tailored for non-infringement purposes, does not now mean that Defendants can
DPHQGWKHLULQYDOLGLW\FRQWHQWLRQV$V-XGJH'DYLVVWDWHG>V@XFKDSROLF\ZRXOGHQFRXUDJHIXWXUH
accused infringers to propose narrow constructions focused on non-infringement while sidelining
potential invalidity defenses until the Court issues its claim construction opinion. Such
JDPHVPDQVKLSLVQRWWROHUDWHGLQWKLV&RXUWDQGWKH&RXUWVUXOHVDUHLQWHQGHGWRDYRLGWKLVW\SH
of chicDQHU\20

2. 7UDQVLWLRQ5HJLRQ
)RUWUDQVLWLRQUHJLRQ,WKH&RXUWFRQVWUXHGWKHWHUPDVa region configured to transmit
OLJKW21 'HIHQGDQWVRZQSURSRVHGFRQVWUXFWLRQZDVDUHJLRQWKDWVSUHDGVDQGWUDQVPLWVOLJKW
The differences between the two are minor, and cannot justify the substantial amendments that
Defendants seek. Judge Clark summarized this issue well in F inisar :

F inisar, at 901 (emphasis added); see also MASS Engineered Design, Inc. v. Ergotron, Inc. , 250 F.R.D. 284, 286
(E.D. Tex. 2008) (Davis, J.) GHQ\LQJDQDUJXPHQWIURPDQDOOHJHGLQIULQJHUWKDWLWGLGQRWDQWLFLSDWHWKHFRXUWVFODLP
FRQVWUXFWLRQV EHFDXVH WKH &RXUW DGRSWHG DOO RI >SDWHQW RZQHUV@ SURSRVHG FRQVWUXFWLRQV ZLWKRXW PDMRU
PRGLILFDWLRQ 
19
Appendix &DW DUJXLQJWKDWWKHWHUPFRQWLQXRXVVLGHZDOOVZDVXQH[SHFWHGEHFDXVHWKH&RXUWUHIXVHGWRLPSRUW
the limitations that required the (1) uninterrupted walls; (2) that are free of breaks; and (3) on the side of the tray); see
also id. at 3- DUJXLQJWKDWWKHDLUJDSWHUPZDVXQH[SHFWHGEHFDXVHLWGRHVQRWLPSRUWWKHFRQWLQXRXVOD\HURIDLU
limitation that Defendants sought; note that Appendix C glosses over the full extent of the limitation sought by
Defendants, which required that, for air gap to exist between two things, they could never touch at any point D
continuous layer of air between the sheet, film, plate or substrate and the panel member such that they have no direct
SK\VLFDOFRQWDFW 
20
MASS Engineered, at 286.
21
Dkt. No. 101 at 22.
18

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P A G E 4

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A party cannot argue that because its precise proposal for a construction of a claim
term is not adopted by the court, it is surprised and must prepare new invalidity
defenses to meet claims of infringement. In the first place, courts seldom simply
adopt the construction of one party or the other. Secondly, accepting such an
argument would encourage parties to file narrow proposed constructions with an
eye towards hiding important prior art until shortly before trial. Finally, one of the
goals of the Federal Rules of Procedure and the Local Patent Rules is to speed up
the litigation process and make it less expensive. A party simply cannot wait until
shortly before trial to prepare its case. Invalidity is an affirmative defense, and the
party which does not properly investigate applicable prior art early enough to timely
meet disclosure requirements risks exclusion of that evidence.22
Defendants cannot argue that, merely because their SUHFLVHSURSRVDOIRUWUDQVLWLRQUHJLRQZDV
not adopted, Defendants are surprised and must prepare new invalidity defenses.

3. The 3DWWHUQRI'HIRUPLWLHV Terms


The Court construed the SDWWHUQ RI GHIRUPLWLHV WHUPV DV a pattern of deformities,
LQFOXGLQJEXWQRWOLPLWHGWRDUDQGRPSODFHPHQWSDWWHUQRUDYDULDEOHSDWWHUQ23 This is nearly
LGHQWLFDOWRWKH3ODLQWLIIVSURSRVDOVRQWKese terms, both of which contained language reciting a
random placement pattern DQGDYDULDEOHSDWWHUQ24 Nevertheless, Defendants argue that the
FRQVWUXFWLRQZDVXQH[SHFWHGEHFDXVHWKH&RXUWEURDGO\FRQVWUXHGDSDWWHUQRIGHIRUPLWLHVWR
LQFOXGHDUDQGRPRUYDULDEOHSDWWHUQ25 But the inclusion of a random and variable pattern cannot
be unexpected to Defendants because it tracks 3ODLQWLIIV H[SOLFLW SURSRVHG FRQVWUXFWLRQV26
FXUWKHUPRUHDVQRWHGLQ 3ODLQWLIIVEULHILQJ'HIHQGDQWV QHYHUGLVSXWHGWKH direct intent of the
inventor to include random placement patterns and variable patterns in his definition for these
terms.27 ,QWKHHQG'HIHQGDQWVSosition that the construction of these terms was unexpected is
disingenuous the &RXUWVconstruction includes patterns that the inventor explicitly intended to

F inisar, at 901-02.
Dkt No. 101 at 11.
24
Id. at 7.
25
Appendix C at 5.
26
See, e.g., Dkt. 101 at 7; Dkt. 86 at 3-4.
27
See Dkt 82 at 1-2.
22
23

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P A G E 5

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include; Defendants did not and could not refute that fact in their briefing; and those same patterns
ZHUHSDUWRI3ODLQWLIIVSURSRVHGFRQVWUXFWLRQV

4. 7KH/RZ/RVV7HUPV
The Court construed the term pass through a liquid crystal display with low loss as
DQDORJRXVWRDZKHUHE\FODXVH>WKDW@GRHVQRWOLPLWWKHFODLPVLQZKLFKLWDSSHDUV 28 For this
term, Defendants do not point to any particular art that they contend is now applicable because
that art previously did not previously PHHWWKHORZORssOLPLWDWLRQHere, the Court did not add
DQDGGLWLRQDOXQH[SHFWHGOLPLWDWLRQWRWKHSDUWLHVFRQVWUXFWLRQ$QG'HIHQGDQWVZKROO\IDLOWR
GHPRQVWUDWH KRZ DQ\ RI LWV H[LVWLQJ DUW PHW LWV FRQVWUXFWLRQ RI ORZ ORVV EXW QRZ PXVW EH
supplemented due to an unexpected construction. To the contrary, Defendants merely argued at

Markman WKDWORZORVVZDVLQGHILQLWHDQGLQFDSDEOHRIFRQVWUXFWLRQ29 Having taken the position


WKDW ORZ ORVV ZDV QRW FDSDEOH RI FRQVWUXFWLRQ 'HIHQGDQWV FDQQRW EH KHDUG WR DUJXH WKDW WKH
&RXUWVILQGLQJWKDWORZORVVGRHVQRWOLPLWWKHFODLPVQRZVRPHKRZSHUPLWV'HIHQGDQWVWRDGG
a flood of untimely references. Indeed, just as Defendants submitted that there was no construction
for the low loss term, the UHVXOWRIWKH&RXUWVKROGLQJVLPLODUO\SURYLGHVQRFRQVWUXFWLRQWRWKH
ORZORVVWHUP7KRXJKWKH reasoning differs, the result for these purposes does not.
Indeed, Defendants do not and cannot show that they previously submitted any art that
GLVFORVHGD ORZORVVOLPLWDWLRQ EXW WKDWPXVWQRZEH DOWHUHGRUVXSSOHPHQWHGEHFDXVHRI DQ
XQH[SHFWHGFRQVWUXFWLRQRIORZORVV7KH&RXUWKDVDGGHGno new limitations that Defendants
must now find in the art.

28
29

Dkt No. 101 at 54.


Id. at 51.

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P A G E 6

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'HIHQGDQWVDUWIXOO\VWDWHWKDWDODXQGU\OLVWRIUHIHUHQFHVQRZ do not need to disclose this


OLPLWDWLRQEXWLQVWHDGRQO\QHHGWRGLVFORVHWKHUHTXLUHGVWUXFWXUH30 But that is not an argument
that the new prior art never disclosed ORZ ORVV DQG Vo it is now relevant under the &RXUWV
construction when it was irrelevant before. Instead, Defendants argue that it was too difficult to
locate art that met WKHORZORVVOLPLWDWLRQV
Defendants would have needed to show that the prior art products had the structure
LQWKHFODLPVWKDWFDXVHGOLJKWWREHHPLWWHGZLWKORZORVV)LUVWWKLVZRXOGKDYH
required finding functioning products and performing tests to measure the light
emitted. Second, the specification of the patents never defines what level of loss
ZDVORZORVVDQGWKHUHIRUHWKLVZRXOGKDYHEHHQLPSRVVLEOHWRPHDVXUH31
The fact that locating prior art might have been difficult is not an excuse for Defendants to now
flood the Court and their contentions with previously undisclosed prior art.32
Importantly, the structure that causes low loss was never construed by the Court as nonlimiting. For example, the prior art still must have a film/sheet/substrate as recited by this limitation
IURPFODLPRIWKHSDWHQWat least one film, sheet or substrate overlying at least a portion
of one of the sides of the panel member to change the output distribution of the emitted light such
that the light will pass through a liquid crystal display with low loss.(emphasis added). Before
WKH&RXUWVFRQVWUXFWLRQDefendants should have at least timely identified this particular structure
in the art.
Moreover, the Defendants could have made Section 103(a) prior art combinations and
Section 102 inherency arguments even without the explicit ORZORVVdisclosures in the art they
now seek to add. Defendants cannot justify why these references and products were not timely
disclosed under Section 103(a) combinations and Section 102 inherency arguments.

30

Appendix C at 6.
Id.
32
MASS EngineeredDW :KLOHLQYDOLGLW\DUJXPHQWVPD\SURYHWREHDFRVWO\HQGHDYRU WKLV&RXUWVUXOHVREOLJH
>DQDFFXVHGLQIULQJHU@WRDVVHUWVXFKDGHIHQVHHDUO\LQWKHOLWLJDWLRQLILWLVJRLQJWRDVVHUWWKHGHIHQVHDWDOO 
31

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P A G E 7

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Ultimately, the &RXUWVKRXOGVHHWKH'HIHQGDQWVQHZFRQWHQWLRQVIRUZKDWWKH\DUHDQ


untimely attempt to add numerous references and products under the guise that the claim
construction order requires it. Nowhere is this more apparent than in the products that Defendants
seek to add. In their original contentions, Defendants identified no products. Now Defendants seek
to add nine alleged prior art products to the case. These products were available for Defendants to
find well before this late stage of the case. Similarly, the nine prior art patents were also available
for Defendants to find before this late stage of the case. Defendants were not diligent in locating
those references, and they should not be allowed to add them under the pretense of unexpected
claim constructions.
Defendants own delay, not unexpected constructions, are the reason they now seek to add
this prior art. For example, starting in late September, Defendants issued at least 30 subpoenas to
third-party companies looking for prior art products.33 Those subpoenas came over seven months
after Defendants deadline to serve their invalidity contentions. Ignoring that deadline, Defendants
continue to assert their intention to add even more prior art on top of their new contentions. 34
Defendants should not be allowed to delay until this late stage of the case and then add prior art
that it could have found within the deadlines ordered by this Court.
B. Defendants H ave Not, and C annot, Show Good C ause for L eave to A mend.
Because P.R. 3-6(a) does not authorize 'HIHQGDQWV new invalidity contentions, P.R. 3-6(b)
requires that Defendants seek leave to serve them. But Defendants did not ask this Court for leave
to amend their contentions, presumably because they cannot satisfy their burden to show JRRG
FDXVHIRUleave to amend under P.R. 3-6(b).

33

Declaration of T. William Kennedy at 7.


Appendix $DW )XUWKHULQOLJKWRIWKLUGSDUW\GLVFRYHU\'efendants reserve the right to revise, amend, and/or
supplement the information provided herein, including identifying, charting, and relying on additional references,
VKRXOG'HIHQGDQWVIXUWKHUVHDUFKDQGDQDO\VLV\LHOGDGGLWLRQDOLQIRUPDWLRQRUUHIHUHQFHV 
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P A G E 8

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To determine whether good cause exists, this Court has considered four factors: (1) the
H[SODQDWLRQIRUWKHSDUW\VIDLOXUHWRPHHWWKHGHDGOLQH  WKHLPSRUWDQFHRIWKHDPHQGPHQW  
potential prejudice from allowing the amendment; and (4) the availability of a continuance to cure
such prejudice.35 None of those factors weigh in favor of new contentions.

1. Defendants cannot explain why they failed to meet the original deadline to disclose
the alleged prior art to ID T.
Defendants cannot explain why they failed to disclose the new references and products
when their invalidity contentions were originally due. In the GeoTag case, when much less time
elapsed between service of invalidity contentions and a motion for leave to amend, this Court
denied the motion because the defendants did not adequately explain why they missed the
deadline.36 In GeoTag, the defendants served their invalidity contentions on August 17, 2012.37
Three months later, the defendants moved for leave to supplement their invalidity contentions.38
2QHRIWKHGHIHQGDQWVFRXQVHOhad gone through some old boxes of books while cleaning out his
garage and came across [an early AOL User Guide]ZKLFKEHFDPH one of the references the
defendants sought to add.39 7KHGHIHQGDQWVthereafter searched for earlier versions of the AOL
User Guide, as well as additional similar references relating to online Internet service providers
which became other references that the defendants sought to add.40 Ultimately, this Court held,
'HIHQGDQWV only explanation for its untimely invalidity contentions is that counsel
happened upon a reference while cleaning out his garage. Such happenstance
discovery in these circumstances does not demonstrate the diligence necessary to
support the late supplementatLRQ QRZ UHTXHVWHG ,Q WKH &RXUWs view, to hold

35

*HR7DJ,QFY)URQWLHU&RPPFQV&RUS, No. 2:10-CV-265, 2013 WL 2637141, at *1 (E.D. Tex. June 12, 2013)
(Gilstrap, J.) (citing S & W Enters., L.L.C. v. Southtrust Bank of Ala., NA , 315 F.3d 533, 536 (5th Cir. 2003)).
36
See GeoTag, 2013 WL 2637141, *1.
37
Id.
38
Id.
39
Id.
40
Id.

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P A G E 9

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RWKHUZLVHZRXOGUHQGHUthe explanation for the partyVIDLOXUHWRPHHWWKHGHDGOLQH


a nonfactor.41
Here, Defendants do not even have such a story of happenstance discovery in a garage.
Defendants are attempting to amend their contentions to include patents and products that were
publicly available for them to discover since the filing of this lawsuit. Defendants cannot offer a
legitimate explanation as to why those patents and products were not part of their invalidity
contentions in the first place.

2. I D T would be prejudiced by the amendment to include the new contentions.


Allowing the new contentions would undermine this DistricWV PDndate on full, timely
GLVFRYHU\DQGWKHUHE\SUHMXGLFH,'77KHORFDOSDWHQWUXOHVH[LVWWRIXUWKHUWKHJRDORIIXOOWLPHO\
discovery and provide all parties with adequate notice and information with which to litigate their
cases, not to create supposed loopholes through which parties may practice litigation by
DPEXVK42
$GGLQJ QHZ SULRU DUW DW WKLV SRLQW ZLOO QHJDWH ,'7V DOUHDG\ FRQVLGHUDEOH HIIRUWV LQ
developing its claim construction positions upon which the Court has already ruled.43 IDT has
spent significant time developing its litigation strategy to determine which claim terms need
construction, what those constructions should be, and how important those constructions are to its
case. After those determinations, IDT prepared its case on claim construction in full. IDT has
already revealed its hand on claim construction pursuant to the Local Rules, and Defendants should

Id.
Computer Acceleration Corp. v. Microsoft Corp. , 503 F. Supp. 2d 819, 822 (E.D. Tex. 2007) (Clark, J.) (citation
omitted).
43
See, e.g., MacroSolve, 2013 WL 3833079, *5 (stating in its discussion that defendants failed to show no prejudice,
+aving [plaintiff] contend with an additional seven references, which Defendants do not show to be noncumulative,
would needlessly detract from time spent on claim construction as well as the already disclosed references see also
Computer Acceleration Corp. v. Microsoft Corp. , 481 F. Supp. 2d 620, 623 (E.D. Tex. 2007) The patent holder
wants to know about every possible prior art reference that might invalidate its patent, so that it can carefully craft
proposed definitions that make its patenWFRYHUDJHDVEURDGDVSRVVLEOH without being so broad as to be invalidated
by soPHSULRUDUWUHIHUHQFH 
41
42

P L A I N T I F F S M O T I O N T O S T R I K E A M E N D E D I N V A L I D I T Y C O N T E N T I O NS

P A G E 10

!aaassseee 222:::111333---cccvvv---000000555222222---JJJRRRGGG DDDooocccuuummmeeennnttt 111777000 FFFiiillleeeddd 111111///000333///111444 PPPaaagggeee 111222 ooofff 111555 PPPaaagggeeeIIIDDD ###::: 333555888999

not be allowed the benefit of hindsight to bring new art into this case. Defendants could have
discovered the new patents and products within the reasonable time frame and sequence of
disclosure set forth by this Court and its Local Rules.
At this advanced stage of the litigation, IDT has developed its case in reliance on
'HIHQGDQWVLQYDOLGLW\FRQWHQWLRQV7KLVLQFOXGHV,'7VVWUDWHJLFGecisions to focus its efforts on
certain patents among the patents-in-suit and certain claims of those patents. For those claims, IDT
has spent substantial effort developing its positions on infringement, validity, and damages. An
amendment at this stage cRXOGQXOOLI\,'7VSULRUHIIRUWVDQGUHTXLUH,'7WRGHYHORSLWVFDVHDQHZ
'HIHQGDQWV DWWHPSW WR DPHQG WKHLU FRQWHQWLRQV LQ WKLV ODZVXLW RQO\ WZHOYH GD\V EHIRUH
opening expert reports is so late that the prejudice to Plaintiff is clear. In the Macrosolve case, the
motion to amend invalidity contentions was filed five months before the claim construction
hearing, and the court found prejudice.44 In GeoTag, this Court denied a motion to amend filed
three months before the claim construction hearing.45 In both of those cases, the defendants filed
motions amend much earlier than would occur here.

3. Defendants cannot offer any details explaining why the amendment they seek is
important.
Without any evidence to the contrary, the new contentions should be considered merely
cumulative of those in DefendantsSULRULQYDOLGLW\FRQWHQWLRQV. Thus, they should be considered
unimportant.46

44

2013 WL 3833079 (July 23, 2013), at *1-2, 5 (motion filed on April 16, 2013; claim construction hearing scheduled
for September 26, 2013, prejudice found).
45
2013 WL 2637141 (June 12, 2013), at *1 (motion filed on Nov. 17, 2012, motion denied) and Dkt. No. 417 (showing
Markman hearing occurring on Feb. 12, 2013).
46
See MacroSolve, Inc. v. Antenna Software, Inc. , No. 6:11-CV-287, 2013 WL 3833079, *3 (E.D. Tex. July 23, 2013)
(Love, M.J.) (in a discussion holding that defendants had failed to prove that prior art references were important,
GEICO fails to show the distinctive value of the recently discovered prior art references. In other words, GEICO
does not show the seven references are not cumulative in light of the other 250 prior art references already asserted

P L A I N T I F F S M O T I O N T O S T R I K E A M E N D E D I N V A L I D I T Y C O N T E N T I O NS

P A G E 11

!aaassseee 222:::111333---cccvvv---000000555222222---JJJRRRGGG DDDooocccuuummmeeennnttt 111777000 FFFiiillleeeddd 111111///000333///111444 PPPaaagggeee 111333 ooofff 111555 PPPaaagggeeeIIIDDD ###::: 333555999000

4. A Continuance Would Not Alleviate the Prejudice to I D T.


'HIHQGDQWVRZQIDLOXUHWRGLVFover publicly available prior art patents and products during
the eight months they had to prepare invalidity contentions is not a compelling reason to delay
,'7VFDVH$FRQWLQXDQFHXQGHUWKRVHFLUFXPVWDQFHVZRXOGRQO\IXUWKHUSUHMXGLFH,'7Rebuttal
expert reports are due on November 24, 2014, and jury selection is set for March 9, 2015. In

Macrosolve, a case that was much less progressed than this one, the court held that a continuance
would not alleviate the potential prejudice to plaintiff.47
I V.

C O N C L USI O N

Plaintiff respectfully asks this Court to strike the new contentions. Defendants cannot show
that the new contentions are proper amendments under P.R. 3-6. In their original contentions,
Defendants identified no products. Now Defendants seek to add nine alleged prior art products to
the case. These products were available for Defendants to find before this late stage of the case.
Similarly, the nine prior art patents were also available for Defendants to locate and identify well
before this late stage of the case. Defendants simply were not diligent in obtaining those references,
and they should not be allowed to add them under the pretense of unexpected claim constructions.

See :/  the Court is not persuaded that a continuance extending the deadlines prior to the
claim construction hearing would alleviate the potential prejudice to >SODLQWLII@0DFUR6ROYH 
47

P L A I N T I F F S M O T I O N T O S T R I K E A M E N D E D I N V A L I D I T Y C O N T E N T I O NS

P A G E 12

!aaassseee 222:::111333---cccvvv---000000555222222---JJJRRRGGG DDDooocccuuummmeeennnttt 111777000 FFFiiillleeeddd 111111///000333///111444 PPPaaagggeee 111444 ooofff 111555 PPPaaagggeeeIIIDDD ###::: 333555999111

Dated: November 3, 2014

Respectfully submitted,

/s/ Jeffrey R. Bragalone


Jeffrey R. Bragalone (lead attorney)
Texas Bar No. 02855775
Patrick J. Conroy
Texas Bar No. 24012448
Justin B. Kimble
Texas Bar No. 24036909
T. William Kennedy, Jr.
Texas Bar No. 24055771
Daniel F. Olejko
Pennsylvania Bar No. 205512
B ragalone Conroy PC
2200 Ross Avenue
Suite 4500W
Dallas, TX 75201
Tel: (214) 785-6670
Fax: (214) 785-6680
jbragalone@bcpc-law.com
pconroy@bcpc-law.com
jkimble@bcpc-law.com
bkennedy@bcpc-law.com
dolejko@bcpc-law.com
T. John Ward Jr.
Texas Bar No. 00794818
Claire Abernathy Henry
Texas Bar No. 24053063
W ard & Smith L aw F irm
1127 Judson Road, Suite 220
Longview, TX 75601
Tel: (903) 757-6400
Fax: (903) 757.2323
jw@wsfirm.com
claire@wsfirm.com
Attorneys for Plaintiff
I N N O V A T I V E D ISP L A Y
T E C H N O L O G I ES L L C

D E F E N D A N T S M O T I O N T O S T R I K E A M E N D E D I N V A L I D I T Y C O N T E N T I O NS

!aaassseee 222:::111333---cccvvv---000000555222222---JJJRRRGGG DDDooocccuuummmeeennnttt 111777000 FFFiiillleeeddd 111111///000333///111444 PPPaaagggeee 111555 ooofff 111555 PPPaaagggeeeIIIDDD ###::: 333555999222

C E R T I F I C A T E O F SE R V I C E
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served this 3rd day of November, 2014, with a copy of
this document via electronic mail pursuant to Local Rule CV-5(d).

/s/ T. William Kennedy

C ERTIFICAT E O F C ONFERENCE
I hereby certify that counsel for Plaintiff has conferred in good faith with counsel for
Defendants on the relief sought in this Motion at an in-person meet and confer between lead and
local counsel for all parties, held on October 24, 2014. The parties conferred for over two hours.
The conference was attended by the undersigned as counsel for IDT, Jamie Beaber as lead counsel
for Dell and HP, and Gil Gillam, as local counsel for HP, and Peter Kerr, as local counsel for Dell,
attended for Defendants. Despite these efforts, the parties have been unable to resolve the dispute,
and the parties are at impasse.

/s/ Jeffrey R. Bragalone


/s/ T. John Ward, Jr.

D E F E N D A N T S M O T I O N T O S T R I K E A M E N D E D I N V A L I D I T Y C O N T E N T I O NS

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