Case 2:13-cv-00522-JRG Document 212 Filed 12/01/14 Page 1 of 8 PageID #: 4353

IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INNOVATIVE DISPLAY
TECHNOLOGIES LLC,
Plaintiff,
v.
ACER INC. AND ACER AMERICA
CORP.,
Defendants.

C.A. No. 2:13-cv-522

(Consolidated Lead Case)
JURY TRIAL DEMANDED

PLAINTIFFS REPLY IN SUPPORT OF ITS MOTION TO STRIKE AMENDED

INVALIDITY CONTENTIONS

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Plaintiff (IDT) replies to Defendants Opposition (Dkt. No. 202) (Response).

Defendants Response does not show that the Courts constructions warrant Defendants amended
contentions. The Court should see Defendants amended contentions for what they are: an
improper attempt to supplement contentions under the guise of unexpected claim constructions.
A. Defendants begin their Response with irrelevant arguments.
Instead of beginning their Response by explaining their arguments on the merits of whether
any constructions were unexpected, Defendants Response begins by arguing irrelevant
distinguishing points for the cases cited by IDT. Defendants argue that Mass Engineering is
inapplicable because the defendant in that case allegedly did not prepare any invalidity defense
until after claim construction.1 That point is irrelevant to ultimate issue of this motion: that P.R. 36(a)(2)(B) is intended to allow a party to respond to an unexpected claim construction by the
court.2 Defendants take a similar tact in hopes of distinguishing Finisar. Defendants argue that
their situation is different because they are only adding 18 prior art references here instead of
the 58 prior art references at issue in Finisar.3 Again, that distinction fails to consider the true
issue at hand whether any of the constructions were unexpected. Defendants also incorrectly
argue that the Alexsam case stands for the proposition that a claim construction may be
unexpected within the context of P.R. 3-6(a) even if the Court adopts the claim constructions of
the patentee.4 But nothing in the cited order in Alexsam stands for that proposition. Alexsam is a
one-page order that does not address the unexpected analysis, does not discuss the construed

Response at 5.
Finisar Corp. v. DirecTV Grp., Inc., 424 F. Supp. 2d 896, 901 (E.D. Tex. 2006) (Clark, J.) (emphasis added); see
also CoreLogic Info. Solutions, Inc. v. Fiserv, Inc., No. 2:10-CV-132, 2012 WL 4051823, at *1 (E.D. Tex. Sept. 13,
2012)(Payne, M.J.).
3
Response at 6.
4
Id. at 4 (citing Alexsam Inc. v. Evolution Benefits, Inc. et al., Case No. 2:07-cv-00288-TJW, Dkt. No. 132 (E.D.
Tex. Oct. 7, 2009) (attached hereto as Exhibit A).
2

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terms in any detail, and occurred back when this District allowed Preliminary Invalidity
Contentions.5 Defendants also argue that the Court in Finisar allowed two new references,6 but
fail to note that they were allowed only in response to Plaintiffs corresponding new infringement
arguments,7 not because, as Defendants imply, the low number of references somehow outweighed
the issue of whether the constructions were unexpected.
B. The Low Loss Terms
It is clear that Defendants are using the low loss term to try to fix holes in their invalidity
contentions, which, until these proposed amendments, did not contain any prior art products. Now
Defendants want to add nine prior art products to the case. But Defendants never show how their
understanding of the possible constructions of low loss would have led to the exclusion of these
products (and prior art reference) from the original contentions.8 Instead Defendants argue it
would have been difficult to show low loss in an actual prior art deviceand likely even
requiring testing of some kind.9 The fact that locating prior art might have been difficult is not an
excuse for Defendants to now add prior art products to this case, when Defendants had previously
identified zero prior art products until now.10 As the Finisar court explained,[i]t is difficult to
argue that these [products] were the result of exhaustive research that could only have been
triggered by the courts surprising construction of a claim.11

See Exhibit A.
Response at 6.
7
Finisar, 424 F. Supp. at 900.
8
In fact, Defendants argue that each of the six unexpected constructions would allow all nine of the new products
to be added. See Defendants Exhibit A at 2. But, with only one exception, Defendants do not address the specifics
of the disclosures of any of these products with any detail to allow the Court to evaluate the merits why those products
were not identified in the first place.
9
Response at 7.
10
MASS Engineered Design Inc. v. Ergotron, Inc., 250 F.R.D. 284, 286 (E.D. Tex. 2008) (While invalidity arguments
may prove to be a costly endeavor, this Courts rules oblige [an accused infringer] to assert such a defense early in the
litigation if it is going to assert the defense at all.).
11
Finisar, 424 F. Supp. at 901.
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Defendants argue that the construction of the low loss terms was unexpected because the
Court construed them as analogous to a whereby clause [that] does not limit the claims in which
it appears.12 But Defendants never sufficiently explain why that construction should allow them
to expand upon their previous efforts to identify prior art. Defendants argued that low loss was
indefinite and incapable of construction.13 The Courts holding that low loss does not limit the
claims had no practical effect on the scope of Defendants realm of prior art. Because of
Defendants indefiniteness position, they should have searched the broadest possible swath of prior
art to meet this limitation given that they contended that the term was so broad it was indefinite.
Because Defendants cannot show that any of the products or references would have been
excluded from Defendants original contentions under the expected constructions of low loss,
and because the Courts construction had no practical effect on Defendants obligation to search
for prior art under their own interpretation of low loss (indefinite), the Court should not permit
substantial new prior art under the pretense that the low loss construction was unexpected.
C. Continuous Side Walls; To [Suit/Fit] a Particular Application; and Air Gap
The Court construed three of the terms in Defendants Response (continuous side walls;
to [suit/fit] a particular application; and the air gap term) as plain meaning.14 A plain
meaning construction cannot be unexpected because plain and ordinary meaning was the
construction that IDT argued for those three terms.15 For the air gap term, Defendants argue that
they are entitled to amend their contentions to address an alleged ambiguity that Defendants
allege arises from the Courts explanation of its plain meaning construction.16 But Defendants

12

Response at 6-7.
Dkt. No. 101 at 51.
14
See id. at 17, 35, and 57 (construing continuous side walls, the air gap term, and to [suit/fit] a particular
application as plain meaning.).
15
See id. at 11, 30, and 54 (showing Plaintiffs proposed constructions).
16
Response at 10.
13

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cite to no case-law that stands for the proposition that a Courts explanation can transform an
otherwise expected construction (plain meaning) into an unexpected one. The reason no such
case-law exists is because, under Defendants argument, every claim construction order would
result in the right to amend invalidity and infringement contentions. Every party could point to
commentary in a claim construction order, twist that commentary into something unexpected, and
then amend its contentions.
For continuous side walls, Defendants only argument that the construction was
unexpected is that IDT did not propose plain and ordinary meaning until its opening claim
construction brief.17 But Defendants cite to no cases that show that a construction offered by a
party during its opening brief should be ignored in the unexpected construction analysis. The
fact remains that Defendants have been aware of IDTs position that this term deserved its plain
and ordinary meaning since at least June 16, 2014, and that a plain meaning construction cannot
therefore be unexpected to Defendants.
For to suit/fit a particular application, Defendants again argue that the Courts
commentary on the plain and ordinary meaning necessitates their amendments.18 Moreover,
Defendants do not show how their new products (all LCD laptops) or references (Melby, Bauer,
Farchmin, or Tscuhiyama) are only now covered by the plain meaning of to suit/fit a particular
application even though LCD back lighting or lighting in general are both explicit examples of
applications in the specification.19 Again, nothing here was unexpected.

17

Id. at 8.
Id. at 10.
19
See Dkt. No. 69 (citing 194 patent at col. 9, ll. 1-12) (may be used for a great many different applications
including for example LCD back lighting or lighting in general ).
18

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D. Transition Region and Pattern of Deformities Terms

For transition region, Defendants argue that because their precise proposal was not
adopted, the construction was unexpected.20 But 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.21 Defendants never show how
the prior art that they seek to add was inapplicable before the Courts construction but now applies
under the Courts construction.
For pattern of deformities, Defendants again argue that Plaintiffs proposal from its
Markman briefing (nearly identical to the Courts construction) was not its original construction
during the initial phases of the exchange of constructions.22 Again, there is no case-law that states
that only the first-proposed constructions are considered for the unexpected analysis. Moreover,
Defendants argument that the Courts construction here was unexpected is disingenuous because
Defendants never disputed the direct intent of the inventor to include random placement patterns
and variable patterns in his definition for these terms.23 Defendants now argue that those very same
patterns are the reason the construction was unexpected.
E. Defendants Have Not, and Cannot, Show Good Cause for Leave to Amend.
Defendants cannot satisfy their burden to show good cause for leave to amend under P.R.
3-6(b) as shown in Plaintiffs Motion.24 Defendants have no good explanation for failing to meet
the original deadline; IDT would be severely prejudiced by this last-minute amendment; the
amendments alleged importance does not outweigh that prejudice; and a continuance is
unavailable.
20

Response at 12.
Finisar, at 901.
22
Response at 11.
23
Dkt No. 82 at 1-2.
24
Dkt. No. 170 at 8-12.
21

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Dated: December 1, 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
Bragalone 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
Ward & Smith Law Firm
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

INNOVATIVE DISPLAY
TECHNOLOGIES LLC

REPLY IN SUPPORT OF PLAINTIFFS MOTION TO STRIKE AMENDED INVALIDITY CONTENTIONS

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served this 1st day of December, 2014, with a copy of this
document via electronic mail pursuant to Local Rule CV-5(d).
/s/ T. William Kennedy

REPLY IN SUPPORT OF PLAINTIFFS MOTION TO STRIKE AMENDED INVALIDITY CONTENTIONS