ROPES & GRAY LLP
`1211 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036-8704
`WWW.ROPESGRAY.COM
`
`January 24, 2024
`
`Alexander E. Middleton
`T +1 212 596 9680
`alexander.middleton@ropesgray.com
`
`BY E-MAIL
`
`Christian Conkle
`Russ, August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`
`Re:
`
`Broadphone LLC v. Samsung Electronics Co., Ltd. et al (E.D. Tex. No. 2:23-cv-
`00001-JRG-RSP)
`
`Dear Christian:
`
`We write on behalf of Defendant Samsung as a follow up to Broadphone’s January 12, 2024, proposed
`Supplemental Disclosure of Asserted Claims and Infringement Contentions (“Supplemental
`Infringement Contentions”). The proposed Supplemental Infringement Contentions remain deficient
`despite generous extensions of time and Samsung’s written correspondence that clearly identifies
`those deficiencies.
`
`As a reminder, Broadphone’s infringement contentions were initially due September 14, 2023.
`Samsung agreed to a last-minute request for a three-week extension to October 5. Because
`Broadphone’s initial infringement contentions were deficient, Samsung initially identified the
`deficiencies in this letter (as well as others) on November 10, 2023. Broadphone never responded,
`and Samsung had to follow up on multiple dates (December 6, December 12, December 14, January
`4) and prepare to file a motion to strike before Broadphone finally agreed to a meet and confer. It
`was not until January 12 -- more than two months after Samsung first raised these issues, that
`Broadphone provided any sort of proposed supplementation. But, as explained below, the
`Supplemental Infringement Contentions continue to fail to address a number of clear deficiencies.
`
`Broadphone’s Infringement Contentions Fail to Chart the SmartTag Products
`
`As noted in our November 10, 2023 letter, the local rules require infringement contentions to include
`“[a] chart identifying specifically where each element of each asserted claim is found within each
`Accused Instrumentality.” Local Patent Rules 3-1(c). Broadphone’s Supplemental Infringement
`Contentions asserts in the introduction to each claim chart that “each Galaxy Tab and Galaxy mobile
`phone device uses the Android operating system, Samsung’s One UI, and the Play Store and Google
`
`SAMSUNG EXHIBIT 1077
`Samsung Electronics Co., Ltd. v. Broadphone LLC
`IPR2024-00155
`
`Page 1 of 4
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`Location Services,” and that “Accused Products use Samsung’s proprietary SLocation system.” But
`this does not address the accused SmartTag products.
`
`January 24, 2024
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` - 2 -
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`As Broadphone should be aware, the SmartTag is nothing like the accused tablet and mobile devices
`because the SmartTags do not have user interfaces, and do not support software features like the
`accused Reminder app and SmartThings find functionality. Moreover, while documents describing
`certain SmartTag functionality are including in your Supplemental Infringement Contentions, these
`documents appear to be included because they describe phone/tablet functionality.
`
`As we’ve previously noted, in order for Broadphone to rely on its exemplary claim chart, it “must
`provide an explanation of the technical and functional identity of the products represented.”
`UltimatePointer, LLC v. Nintendo Co., No. 6:11-cv-496, 2013 WL 12140173, at *3 (E.D. Tex. May
`28, 2013) (granting Defendants motion to enforce Rule 3-1 and ordering Plaintiff to supplement its
`infringement contentions); see also Alacritech Inc. v. Century Link, Inc., No. 2:16-cv-00693-JRG-
`RSP, 2017 WL 3007464, at *4 (E.D. Tex. Jul. 14, 2017) (ordering Plaintiff to explain “with specificity
`and supporting documentary or declaratory evidence, its assertions there are no material differences
`between the accused instrumentalities that affect its infringement theories for the uncharted
`products.”). Broadphone, has not attempted to do so for the SmartTag devices.
`
`Please confirm that Broadphone will further revise its proposed supplementation to delete SmartTag
`as an accused instrumentality.
`
`Broadphone Cannot Plead Infringement Under the Doctrine of Equivalents
`
`As we also noted in our November 10, 2023 letter, the local rules require that infringement
`contentions contain a disclosure of “[w]hether each element of each asserted claim is claimed to be
`literally present or present under the doctrine of equivalents in the Accused Instrumentality.” Local
`Patent Rule 3-1(d). Broadphone’s Supplemental Infringement Contentions still do not meet this
`requirement. Instead, Broadphone has left unchanged the language from its original Infringement
`Contentions. In particular, the Supplemental Infringement Contentions cover document simply
`states:
`
`Broadphone contends that each element of each Asserted Claim is
`literally present in each Accused Product. In the alternative,
`Broadphone contends that certain elements are present under the
`doctrine of equivalents, as set forth in its P.R. 3-1(c) claim charts. To
`the extent that Defendants identify specific elements of the Asserted
`Claims that they contend are not literally present in any Accused
`Product, Broadphone contends that such elements are present under
`the doctrine of equivalents.
`
`Supplemental Infringement Contentions at 4.
`
`Page 2 of 4
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`Then, in each claim chart, Broadphone makes the following assertion:
`
` - 3 -
`
`January 24, 2024
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`However, to the extent any claim limitation is not met literally, it is
`nonetheless met under the doctrine of equivalents because the
`differences between the claim limitation and each Accused Product
`would be insubstantial, and each Accused Product performs
`substantially the same function, in substantially the same way, to
`achieve the same result as the claimed invention.
`
`Ex. 1 at 1; Ex. 2 at 1; Ex. 3 at 1.
`
`These bare bones assertions are insufficient and fail to meet the requirements of L.P.R. 3-1(d). See
`Davis-Lynch, Inc. v. Weatherford Int’l, Inc., No. 6:07-cv-559, 2009 WL 81874, at *6 (E.D. Tex. Jan.
`12, 2009) (holding plaintiff “failed to comply with Rule 3–1(d)” by merely asserting “that there is
`both literal infringement and infringement through the doctrine of equivalents”), denying
`reconsideration, 2009 WL 10677797 (E.D. Tex. Feb. 20, 2009); Sycamore IP Holdings LLC v. AT&T
`Corp. 2018 WL 1695231, at *3 (E.D. Tex., 2018) (“[T]he doctrine of equivalents theories must be
`set forth in detail; boilerplate allegations, such as those contained in [plaintiff’s] initial disclosures,
`are insufficient.”). Moreover, Broadphone’s failure to provide anything more than boilerplate
`allegations of infringement under the doctrine of equivalents, Broadphone has forfeited the
`opportunity to assert the doctrine of equivalents. Sycamore, at *10 (“[B]y failing to comply with the
`Local Patent Rules, [plaintiff] has forfeited its opportunity to assert the doctrine of equivalents.”).
`
`Please confirm that Broadphone’s will withdraw its doctrine of equivalents contentions.
`
`Broadphone’s Infringement Contentions Fail to Chart with the Required Specificity
`
`Additionally, Broadphone’s continues to fail to provide charts with the required specificity in the
`following ways:
`
`1. ’698 Patent
`
`• Claim 12 recites “the signal characteristic is the signal's phase.” For this element,
`Broadphone identifies no Samsung documents, and instead identifies a third party science
`webpage that describes the relationship between phase shift and time difference. Merely
`identifying the physical relationship between phase shift and time difference does not inform
`Samsung in any way how the accused products use a phase shift value as required by the
`claims, or where that phase shift value is located in the accused products.
`2. ’811 Patent
`
`• Claim 24 recites “the device-specific target location is a shop and the location-based action
`relates to a coupon redeemable at the shop.” For this claim, Broadphone identifies no
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`Page 3 of 4
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`January 24, 2024
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`Samsung documents, and instead identifies two third party webpages (a blog and Wikipedia)
`that describes general functionality that is known, but does not specify any particular
`functionality, including any functionality in Samsung products.
`• Claim 25 recites “wherein the location-based action causes incoming calls on the portable
`RF communications device to be directed to a landline telephone within proximity of the
`device-specific target location.” For this claim, Broadphone points to a third party call
`forwarding app that Broadphone makes no attempt to tie to the accused products.
`Please confirm that Broadphone will withdraw its assertion of these dependent claims.
`
`Broadphone Cannot Amend its Infringement Contentions Without Seeking Leave
`
`Broadphone is not permitted to amend its Infringement Contentions without first seeking leave of the
`Court. See Traxcell Technologies, LLC v. AT&T, Inc., E.D. Texas Case No. 2:17-cv-00718-RWS-
`RSP, Dkt. No. 18 (August 13, 2018) (“In short, plaintiffs that rely on ‘amended’ or ‘supplemental’
`infringement contentions without moving for leave to amend do so at their own peril. Because of the
`clarity of the rule, any ambiguity as to whether contentions have been accepted by agreement of the
`parties will likely be resolved in the defendant’s favor. The better practice is for the plaintiff to always
`move for leave to amend”). Samsung’s products, and information about them, are publicly available,
`Samsung has produced technical documents describing how the accused functionality operates (to the
`extent Samsung can discern the accused functionality), and Broadphone has had more than ample
`time to prepare its infringement contentions after initiating this lawsuit more than a year ago.
`
`Please confirm by January 29, 2024, that Broadphone will withdraw their doctrine of equivalent
`contentions, their assertion of infringement against the SmartTag products and their assertion of claim
`12 of the ’698 and claims 24 and 25 of the ’811 patent. If Broadphone does not agree, Samsung
`requests a meet and confer next week in connection with any Broadphone motion for leave to serve
`its Supplemental Infringement Contentions and/or a motion to strike at least the deficient
`infringement allegations raised in this letter.
`
`
`
`Sincerely,
`
`
`
`Alexander Middleton
`
`Page 4 of 4
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`