Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 1 of 16 PageID #: 7700
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`INC., and UNILOC
`UNILOC USA,
`LUXEMBOURG, S.A.,
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`v.
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`ADP, LLC, and BIG FISH GAMES, INC.
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`INC., and UNILOC
`UNILOC USA,
`LUXEMBOURG, S.A.,
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`v.
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`INC.,
`AVG TECHNOLOGIES USA,
`KASPERSKY LAB, INC., SQUARE ENIX,
`INC.,
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`Plaintiffs,
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`Defendant.
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`Plaintiffs,
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`Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ORDER
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`CIVIL ACTION NO. 2:16-CV-00741-RWS
`(LEAD CASE)
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`CIVIL ACTION NO. 2:16-CV-00393-RWS
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`Before the Court are three motions: Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg,
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`S.A.’s Motion for Discovery (Docket No. 3311), Defendant Big Fish Games’s Motion to Strike
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`Plaintiffs’ Infringement Contentions (Docket No. 335) and Plaintiffs’ Motion to Reconsider a
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`Portion of this Court’s Memorandum Opinion and Order Construing Certain Terms (Docket No.
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`344). The Court heard argument on the motions on January 28, 2020.
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`1 Citations are to the docket in the lead case, No. 2:16-cv-741.
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 2 of 16 PageID #: 7701
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`For the reasons set forth below, Uniloc’s Motion for Discovery is DENIED, Big Fish’s
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`Motion to Strike is GRANTED-IN-PART and DENIED-IN-PART, and Uniloc’s Motion to
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`Reconsider is DENIED.
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`BACKGROUND
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`In April 2016, Uniloc2 filed a series of cases in this Court asserting U.S. Patent Nos.
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`6,410,466 and 6,728,766 against several defendants. Those cases were consolidated under Uniloc
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`USA, Inc. v. AVG Technologies USA, Inc., Case No. 2:12-cv-393 (E.D. Tex.). Shortly thereafter,
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`Uniloc filed another series of cases against multiple defendants, including Big Fish, asserting
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`different combinations of the ʼ466 and ʼ766 patents as well as U.S. Patent Nos. 6,324,578 and
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`7,069,293. See Uniloc USA, Inc. v. Big Fish Games, Inc., Case No. 2:16-cv-858 (E.D. Tex.). This
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`second round of cases was consolidated under the above-captioned lead case. Defendants ADP
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`and Big Fish each filed motions to dismiss Uniloc’s complaint for failure to state a claim. Docket
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`Nos. 17, 80. The Court held a joint Markman hearing on August 10, 2017 (Docket No. 225),
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`entered its claim construction order on August 16, 2017 (Docket No. 233), and on September 28,
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`2017, granted the motions to dismiss (Docket No. 267). The Court found that the asserted claims
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`of all four patents-in-suit were drawn to patent-ineligible subject matter. Docket No. 267 at 3.
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`Uniloc appealed. Docket No. 271. The Federal Circuit affirmed the Court’s determination
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`that the asserted claims of the ’466 and ’766 patents were drawn to patent-ineligible subject matter
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`but reversed as to the ’578 and ’293 patents and remanded. Docket No. 317 at 3. The parties’
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`motions seek to define how the case will proceed.
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`2 “Uniloc” refers collectively to Plaintiffs Uniloc USA, Inc. and Uniloc Luxembourg, S.A. During
`the appeal to the Federal Circuit, a third entity, Uniloc 2017, acquired an interest in the patents-
`in-suit. See Docket No. 232 at 3–4. The Federal Circuit substituted Uniloc 2017 as a party, id.,
`but as of the date of this order, Uniloc 2017 has not been added to this lawsuit.
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`Page 2 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 3 of 16 PageID #: 7702
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`I.
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`Uniloc’s Motion for Discovery (Docket No. 331)
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`DISCUSSION
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`Uniloc seeks to reopen fact discovery for 90 days, with renewed expert discovery deadlines
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`to follow thereafter. See Docket No. 331 at 2. Uniloc contends that reopening discovery without
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`limitation is appropriate because, first, circumstances have changed since the Court dismissed the
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`case more than two years ago, and second, the parties were unable to agree on any boundaries to
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`post-remand discovery. Id. at 3–6. In Uniloc’s view, the following changed circumstances render
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`unfettered fact discovery appropriate: (1) Uniloc 2017’s acquisition of the patents-in-suit and
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`Aristocrat Technologies’ 2018 acquisition of Big Fish; (2) the Federal Circuit’s characterization
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`of the subject matter of the patents and the expiration of the ’578 patent; and (3) possible changes
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`to the accused systems during the pendency of the appeal. Id. at 3–4. Uniloc further contends that
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`neither party found the other’s discovery proposal workable, so the Court should reopen discovery
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`and allow the parties to explore topics as they see fit. Id. at 4–7.
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`Big Fish opposes Uniloc’s request and characterizes it as an attempt to obtain a “do-over”
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`of fact discovery. Docket No. 332 at 1. Big Fish argues that Uniloc’s request contravenes this
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`Court’s instructions that the parties meet and confer on specific areas of discovery agreement and
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`that Uniloc file a motion seeking discovery that the parties could not agree on. Id. at 1–3. Big
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`Fish contends that Uniloc has not only failed to establish good cause for reopening discovery but
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`that it also did not even acknowledge the correct governing standard. Id. at 3–4. And in Big Fish’s
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`view, Uniloc’s “changed circumstances” do not justify reopening discovery. Big Fish argues that
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`(1) the parties have not changed in a manner that would justify unfettered discovery because
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`Aristocrat Technologies is not a party to the case; (2) the situation of the patents has not changed
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`and the expiration of the ’578 patent simplifies the case; and (3) any changes to the accused system
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`do not justify unrestricted discovery. Id. at 5–6. Finally, Big Fish contends that Uniloc
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`Page 3 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 4 of 16 PageID #: 7703
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`misrepresents the parties’ discussions leading up to Uniloc’s motion and that Uniloc in fact
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`demonstrated an unwillingness to negotiate. Id. at 6–7.
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`A.
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`Applicable Law
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`A party seeking leave to amend a court’s scheduling order or, as here, reopen fact discovery
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`must show “good cause.” FED. R. CIV. P. 16(b); S & W Enters., L.L.C. v. Southtrust Bank of
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`Alabama, 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
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`party needing the extension.” S & W Enters., L.L.C., 315 F.3d at 535 (internal quotations omitted).
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`Trial courts have broad discretion to allow scheduling order modifications and should consider
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`four elements when determining whether to allow a modification: (1) the explanation for the failure
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`to meet the deadline; (2) the importance of the thing that would be excluded; (3) potential prejudice
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`in allowing the thing that would be excluded; and (4) the availability of a continuance to cure such
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`prejudice. Id. at 535–36. Under the first element, a party's failure to meet a deadline due to mere
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`inadvertence “is tantamount to no explanation at all.” Id. at 536.
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`B.
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`Analysis
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`Uniloc has not shown that good cause exists to reopen discovery. In fact, Uniloc has not
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`applied the above factors to its request. See generally Docket Nos. 331, 333. This is not to say
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`that the case should proceed without any discovery. Though neither party acknowledged it in their
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`briefing, both parties are obligated to supplement written discovery and document productions
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`throughout the case. See FED. R. CIV. P. 26(e) (applying to written discovery); Docket No. 106 at
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`¶ 8 (extending duty to supplement to document production). The discovery order requires the
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`parties to produce materials “relevant to the pleaded claims or defenses involved in this action” or
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`that are the basis for any computation of damages. Docket No. 106 at ¶¶ 3(b), (c). The correct
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`analysis, therefore, is to examine whether Uniloc has shown good cause for discovery beyond
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`Page 4 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 5 of 16 PageID #: 7704
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`supplementation of past discovery. It has not. Aristocrat Technologies is not a party to this case,
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`but if its acquisition of Big Fish in 2018 produced material relevant to damages, Big Fish must
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`produce that information. Claim construction is closed, and Uniloc does not explain how the
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`Federal Circuit’s characterization of the patents is relevant to this action. Further, the expiration
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`of the ’578 patent only affects the damages period. Finally, material detailing changes to the
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`accused systems would also fall under Big Fish’s duty to supplement.
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`In its reply, Uniloc proposed an alternative approach to discovery focused on discrete
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`topics. See Docket No. 333 at 4. While the Court does not ordinarily consider arguments raised
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`for the first time in a reply brief, Intellectual Ventures II LLC v. Sprint Spectrum, L.P., No. 2:17-
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`cv-00662, 2019 WL 2959568, at *3 (E.D. Tex. Apr. 18, 2019), the Court notes that, if the topics
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`Uniloc proposes are relevant to the pleaded claims or defenses or to damages computations, they
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`would fall under the parties’ duty to supplement.
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`Ultimately, Uniloc has not shown good cause for discovery beyond supplementation.
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`Uniloc’s request is therefore DENIED. The parties are ORDERED to supplement their document
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`production and written discovery responses within 21 days of the date of this order. The parties
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`must produce any material relevant to the action, regardless of date. To account for relevant
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`changes in the accused products and/or damages computations, the parties are further ORDERED
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`to supplement their opening expert reports 21 days after the deadline for discovery
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`supplementation. The parties shall submit to the Court a proposed amended Docket Control Order
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`within seven days of the date of this order, incorporating the dates set forth below.
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`II.
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`Big Fish’s Motion to Strike Infringement Contentions (Docket No. 335)
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`Big Fish moves to strike the portions of Uniloc’s Supplemental Infringement Contentions
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`(“SICs”) that are directed to means-plus-function claims and Uniloc’s Final Infringement
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`Contentions (“FICs”) in their entirety. Big Fish contends that the SICs do not comply with Local
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 6 of 16 PageID #: 7705
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`Patent Rule 3-1(c) because the charts do not include the algorithms disclosed in the patents’
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`specifications for performing the claimed functions. Id. at 10–12. Absent this information, Big
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`Fish argues, the SICs fail to put Big Fish on notice of Uniloc’s infringement theories. Id. at 12.
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`Big Fish next contends that the FICs should be stricken because they are untimely, include new
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`theories of infringement and Uniloc never sought leave to amend. Docket No. 335 at 16–17. Big
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`Fish asserts that Uniloc cannot show good cause to amend because Uniloc had no basis for serving
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`new contentions two months after reviewing Big Fish’s source code, striking the contentions
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`would not be fatal to Uniloc’s case, Big Fish is prejudiced by being forced to defend against new
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`theories and a continuance would not be appropriate. Id. at 17–18.
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`In response, Uniloc argues that P.R. 3-1(c) only requires that the SICs identify structure in
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`the Accused Instrumentalities. Docket No. 339 at 15. Uniloc points to the claim construction
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`deadlines, which are later than those for infringement contentions, for support. Id. (citing P.R. 4-
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`1(a) and 4-2). Uniloc further argues that its FICs were properly submitted pursuant to the
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`discovery order because Big Fish’s delayed discovery rendered Uniloc unable to confirm how the
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`source code operated until well after the 30-day window had closed. Docket No. 339 at 15–16.
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`Uniloc also argues that, under P.R. 3-6(a), it had until September 15, 2017, to supplement its
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`contentions and did so only seven days later. Id. at 16. Uniloc further contends that, because the
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`FICs were “part and parcel” of Uniloc’s opening expert reports, they contained more detail than
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`necessary. Id. at 17. Finally, Uniloc argues that the four good-cause factors favor Uniloc: Big
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`Fish’s discovery behavior caused all of Uniloc’s delays; Uniloc provided the FICs out of an
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`abundance of caution; Big Fish is not prejudiced because it has possessed the FICs for more than
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`two years; and a continuance is available because this case is not on a schedule. Id. at 17–19.
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`Page 6 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 7 of 16 PageID #: 7706
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`A.
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`Applicable Law
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`This District’s Patent Rules require plaintiffs to serve infringement contentions at the outset
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`of a case. See P.R. 3-1. The contentions must include “[a] chart identifying specifically where
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`each element of each asserted claim is found within each Accused Instrumentality, including for
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`each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the
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`structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed
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`function.” P.R. 3-1(c). With narrow exceptions, the patent owner may amend its infringement
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`contentions only by order of the Court upon a showing of “good cause.” P.R. 3-6(b); see also
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`Keranos, LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015). The Court
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`determines whether the plaintiff has shown good cause to amend by considering the four factors
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`set forth above in Section I.A. See Harris Corp. v. Huawei Device USA, Inc., Civil Action No.
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`2:18-cv-439, 2019 WL 4247067, at *1 (E.D. Tex. Sept. 6, 2019).
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`B.
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`Analysis
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`1.
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`The Supplemental Infringement Contentions Are Sufficient
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`The SICs comply with the Patent Rules. When asserted claims include means-plus-
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`function terms, infringement contentions must identify “the structure(s), act(s), or material(s) in
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`the Accused Instrumentality that performs the claimed function.” P.R. 3-1(c) (emphasis added).
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`The SICs do so. Nothing in P.R. 3-1(c)’s plain language requires Uniloc to tie the structure(s),
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`act(s), or material(s) in the Accused Instrumentalities to the patent’s specification. See id. The
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`SICs provide notice to Big Fish by identifying what aspect of the Big Fish products Uniloc
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`contends infringe each claim element. Optis Wireless Tech., LLC v. Huawei Techs. Co. Ltd., Case
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`No. 2:17-cv-123, 2018 WL 3375192, at *2 (E.D. Tex. July 11, 2018) (finding that the theory of
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`infringement “must identify the part of the accused product that satisfies each claim element”).
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`Page 7 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 8 of 16 PageID #: 7707
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`Big Fish asserts that, because the scope of a means-plus-function claim term is limited to
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`disclosed structures and algorithms and equivalents thereof, Uniloc’s contentions must describe
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`what the claim element is to properly identify where it can be found in the accused products.
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`Docket No. 348 at 3. Such a requirement, however, would conflate infringement contentions with
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`preliminary constructions because claim scope is a question of claim construction. See Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). Big Fish does not explain why means-plus-
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`function claim terms require earlier disclosure of claim construction contentions than other types
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`of claim terms. Taken to its logical extreme, Big Fish’s position would require a plaintiff to define
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`the scope of all asserted claim terms in its infringement contentions. But the Patent Rules specify
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`deadlines for claim construction later than those for infringement contentions. See P.R. 4-1, 4-2.
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`The Court declines to read P.R. 3-1(c) in a way that would require patent owners to disclose their
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`proposed constructions for any claim element in advance of the relevant deadlines.
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`Big Fish also claims that the SICs cannot put it on notice of Uniloc’s infringement theories
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`because “Uniloc indiscriminately cross-references” to steps of the method claims. Docket No. 335
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`at 11. This too is unavailing. The SICs disclose structure and/or algorithms that perform each step
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`of the claimed method. See, e.g., Docket No. 335-2 at 4, 38, 40, 56. And as counsel for Big Fish
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`acknowledged at the claim construction stage, “[t]he means-plus-function claims . . . perform the
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`exact method steps found in the method claims. There’s only minor differences in terminology. .
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`. . That is, the systems claims are merely covering the same ground that the method claims have
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`covered.” Markman Hrg Tr. at 88:19–25. The SICs therefore provide notice of Uniloc’s
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`infringement theories to Big Fish.
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`Big Fish’s motion to strike the supplemental infringement contentions is DENIED.
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`Page 8 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 9 of 16 PageID #: 7708
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`2.
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`The Final Infringement Contentions Will Be Stricken
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`Uniloc’s FICs are untimely. Uniloc does not dispute that it served the FICs after every
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`relevant deadline had expired. See Docket No. 339 at 16 (admitting to serving the FICs seven days
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`after the P.R. 3-6(a) deadline). Uniloc was therefore required to seek the Court’s leave to amend
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`its contentions. It did not.
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`To the extent Uniloc now seeks leave to amend, Uniloc has not shown good cause. Three
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`of the four good-cause factors weigh against Uniloc. The reason for Uniloc’s delay—Big Fish’s
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`discovery delays—is a matter of some dispute. While Big Fish appears to have been less than
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`forthcoming in discovery, repeatedly amending its initial disclosures and delaying its document
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`production, this does not excuse Uniloc’s two-month delay in serving the FICs after reviewing Big
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`Fish’s source code. Uniloc claims that it needed to depose witnesses to understand how the source
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`code worked. See Docket No. 339 at 16. But because Uniloc does not explain what aspects of the
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`source code were unclear from its review or what it needed to confirm prior to revising its
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`contentions, it fails to tie Big Fish’s discovery delays to Uniloc’s delays in preparing the FICs.
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`The importance factor also weighs against Uniloc. Uniloc states that the FICs were
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`“provided in an abundance of caution” and “are separately incorporated into the expert report on
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`infringement.” Id. at 18. By downplaying the FICs’ effect, however, Uniloc has downplayed the
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`FICs’ importance.
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`By the same token, the prejudice to Uniloc is minimal. The Court has denied Big Fish’s
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`motion to strike the SICs, so those contentions remain in the case. Big Fish, meanwhile, would
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`suffer prejudice were Uniloc granted leave to amend in a form “that typically flows from allowing
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`an opposing party to disregard pretrial timing requirements—the party’s loss of an opportunity to
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`use discovery to explore the opposing party’s theories and the loss of time to develop responses to
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`those theories.” Sycamore IP Holdings LLC v. AT&T Corp., Case No. 2:16-cv-588, 2017 WL
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`Page 9 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 10 of 16 PageID #: 7709
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`4517953, at *5 (E.D. Tex. Oct. 10, 2017). This is true even though Uniloc served the FICs more
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`than two years ago—Big Fish received the FICs after the close of fact discovery, so it could not
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`have conducted responsive discovery even if the case continued. More importantly, the Court
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`dismissed the action shortly after Uniloc served the FICs, so Big Fish had no reason to consider
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`them until the Federal Circuit remanded, at which point Big Fish promptly moved to strike.
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`Finally, while the lack of a schedule in this case would allow for a continuance, reopening
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`discovery would not be appropriate for the reasons set forth above. This single factor does not
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`overcome Uniloc’s failure to show good cause.
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`Big Fish’s motion to strike Uniloc’s Final Infringement Contentions is GRANTED.
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`III. Uniloc’s Motion to Reconsider (Docket No. 344)
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`Uniloc asks the Court to reconsider its constructions of two terms: “application launcher
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`program” and “application program.” Docket No. 344 at 1. The Court construed “application
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`launcher program” to mean “a program distributed to a client to initially populate a user desktop
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`and to request an instance of the application for execution at the client.” Docket No. 233 at 27–
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`31. The Court construed “application program” to mean “the code associated with the underlying
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`program functions that is a separate application from a browser interface and does not execute
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`within the browser window.” Id. at 19–23.
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`Uniloc asserts that, in reaching these constructions, the Court erred in three respects: first,
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`in consulting the prosecution history of the ’466 patent to interpret the claims of the unrelated ’578
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`and ’293 patents; second, in referring to statements in the prosecution history of the ’766 patent to
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`construe the claims of the earlier-issued ’578 patent; and third, by not adopting constructions that
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`reflect the ordinary meaning of “application launcher” or “application program.” See generally
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`Docket No. 344. In support of this third argument, Uniloc submits the declaration of Dr. Michael
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`Shamos, seven prior art references and an article.
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`Page 10 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 11 of 16 PageID #: 7710
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`Big Fish opposes Uniloc’s request. Docket No. 352. Big Fish first contends that Uniloc
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`waived its right to reconsideration by not raising claim construction on appeal. Docket No. 352 at
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`8. Big Fish next argues that Uniloc’s motion is improper because it reargues positions that Uniloc
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`raised and lost at the claim construction stage. Id. at 8–9. Big Fish further objects to Uniloc’s
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`expert declaration as untimely and improper. Id. at 9–11. Fourth, Big Fish contends that Uniloc
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`failed to acknowledge the standard for reconsideration and did not articulate an argument that
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`would satisfy it. Id. at 11–12. Finally, Big Fish argues that the Court properly considered the
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`prosecution histories of the patents. Id. at 12–19.
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`A.
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`Applicable Law
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`“Motions for reconsideration serve the narrow purpose of allowing a party to correct
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`manifest errors of law or fact or to present newly discovered evidence.” Solid State Storage
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`Solutions, Inc. v. STEC, Inc., 2:11-CV-391, 2012 WL 12904107, at *1 (E.D. Tex. Sept. 27, 2012)
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`(citing Texas Instruments, Inc. v. Hyundai Elecs. Indus. Co. Ltd., 50 F. Supp. 2d 619, 621 (E.D.
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`Tex. 1999)). “A motion for reconsideration should not be used to raise arguments ‘that could, and
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`should, have been made before entry of judgment or to re-urge matters that have already been
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`advanced by a party.’ ” De Leon v. Flavor & Fragrance Specialties, Inc., 6:12-CV-327, 2014 WL
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`12601029, at *1 (E.D. Tex. Sept. 15, 2014). “[L]itigants are expected to present their strongest
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`case when the matter is first considered. A motion to reconsider based on recycled arguments only
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`serves to waste the resources of the court.” State of Louisiana v. Sprint Comms. Co., 899 F. Supp.
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`282, 284 (M.D. La. 1995).
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`B.
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`Analysis
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`The Court begins with the question of whether Uniloc may seek reconsideration of the
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`Court’s claim construction. The law-of-the-case and waiver doctrines are distinct but related. See
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`Med. Center Pharm. v. Holder, 634 F.3d 830, 834 (5th Cir. 2011). “The law-of-the-case doctrine
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`posits that when a court decides upon a rule of law, that decision should continue to govern the
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`same issue in subsequent stages in the same case.” United States v. Castillo, 179 F.3d 321, 326
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`(5th Cir. 1999) (quotations omitted). “Therefore, an issue of law decided on appeal may not be
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`reexamined by the district court on remand or by the appellate court on a subsequent appeal.”
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`Holder, 634 F.3d at 834. The waiver doctrine, meanwhile, “holds that an issue that could have
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`been but was not raised on appeal is forfeited and may not be revisited by the district court on
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`remand.” Id. (emphasis original).
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`Neither the law-of-the-case nor the waiver doctrines apply here. The Federal Circuit did
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`not rely on the Court’s constructions of “application program” or “application launcher program”
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`to conclude that the ’578 and ’293 patents are directed to patent-eligible subject matter. See
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`generally Docket No. 317. Accordingly, the constructions are not part of the law of the case.
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`Holder, 634 F.3d at 834 (“[A]n issue that is not expressly or implicitly decided on appeal does not
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`become part of the law of the case”). Nor has Uniloc committed waiver. The Federal Circuit
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`“support[s] a district court’s discretion to permit parties to change their positions over the course
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`of litigation.” WiLAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1385 (Fed. Cir. 2016). And district
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`courts “may engage in rolling claim construction, in which the court revisits and alters its
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`interpretation of the claim terms as its understanding of the technology evolves.” Guttman, Inc. v.
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`Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002). The Court does not discern a reason
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`why an interim appeal of an unrelated issue should deprive a party of its right, or the Court of its
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`ability, to ensure that claims are properly construed.
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`Turning to the merits, the Court analyzes motions to reconsider under Federal Rule of Civil
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`Procedure 59(e). Blue Spike, LLC v. Juniper Networks, Inc., Case No. 6:17-cv-16, 2018 WL
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`4261316, at *1 (E.D. Tex. May 16, 2018). Under Rule 59(e), a court may reconsider a ruling due
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 13 of 16 PageID #: 7712
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`to (1) an intervening change in controlling law; (2) the availability of new evidence not previously
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`available; or (3) the need to correct a clear error of law or prevent manifest injustice. In re
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`Benjamin Moore & Co., 318 F.3d 626, 629 (5th Cir. 2002). Uniloc does not argue that the law has
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`changed. And the evidence Uniloc submits with its motion—the expert declaration of Dr. Shamos
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`and the eight references attached to it—is not new. Uniloc does not explain why the evidence was
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`previously unavailable. The Court will therefore not consider it. This leaves the third prong.
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`Uniloc’s motion advances arguments that Uniloc previously presented to the Court. See,
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`e.g., Docket No. 165 at 7–8 (“We can disregard the prosecution history of the ’466 patent because
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`the claim construction issue is limited to claims of the ’578 and ’293 patents. . . . As all parties
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`agree, the claims of the ’466 patent require execution at the client. But that requirement does not
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`arise from a ‘definition’ of ‘application.’ . . . Defendants have a similar problem with statements
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`from the ’766 prosecution history, because that prosecution also forms no part of the prosecution
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`history of the ’578 or ’293 patents.”); Docket No. 210 at 3 n.5 (repeating position on ’466 patent
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`claims); Docket No. 220 at 2 (characterizing as “the central issue” “whether a limitation, clearly
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`expressed in specific language in the claims of the ‘466 patent (‘providing an instance of the
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`…application…to the client for execution’), should be read into claims of other patents that omit
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`that language.”); id. at 3 (clarifying that statements in unrelated prosecution histories may be
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`considered only as extrinsic evidence). The Court has already considered and rejected these
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`assertions. Docket No. 233 at 11–14. Uniloc’s attempt to relitigate prior issues, albeit with new
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`arguments, is not a proper basis for the Court to reconsider its ruling. See De Leon, 2014 WL
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`12601029, at *1 (“A motion for reconsideration should not be used to raise arguments that could,
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`and should, have been made . . . or to re-urge matters that have already been advanced by a party”).
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`Page 13 of 16
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`Case 2:16-cv-00741-RWS Document 364 Filed 02/05/20 Page 14 of 16 PageID #: 7713
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`Uniloc’s reliance on Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002), is
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`misplaced. Abbott deals with patents that are wholly unrelated. Abbott Labs., 287 F.3d at 1105.
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`Here, the patents specifically state that they are related. See ’578 patent at 1:6–13; ’466 patent at
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`1:6–12, 11:17–26. These representations led the Court to conclude that the prosecution histories
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`were relevant. Docket No. 233 at 14. Uniloc does not address why that was clear error.
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`One new argument that Uniloc advances is that the Court’s construction of “application
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`program” does not read on a preferred embodiment disclosed in the ’578 patent. See Docket No.
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`344 at 12. Specifically, Uniloc contends that the ’578 patent describes an embodiment in which
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`the application is literally executed within the browser window:
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`It is further to be understood that, in the JAVA™ environment,
`currently available web browser applications are known to those of
`skill in the art which provide a user interface and allow hardware
`independent communication such as that currently specified by
`Internet protocols. Thus, the application launcher programs may be
`applets which display the icon which are associated with a web
`browser Universal Resource Locator (URL) which points to the
`location of the applet to be executed. Upon selection of the icon
`displayed by the application launcher, the selected application is
`“launched” by requesting the URL of the application from the on-
`demand server. Such requests may be made utilizing conventional
`HyperText Transfer Protocol (HTTP) communications or other
`suitable protocols.
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`’578 patent at 8:7–20. This excerpt, however, only describes the user interface. Neither the
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`disclosure nor Dr. Shamos’s declaration explain where the application is launched after the URL
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`is requested. And Uniloc does not explain how the disclosure is inconsistent with the prosecution
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`history statements previously relied upon by the Court which explain that “an instance of the
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`application program is requested through the desktop but executes locally at the client as a
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`separate application from the browser interface.” See Docket No. 233 at 20 (emphasis original).
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`Uniloc’s arguments are not enough to show clear error in the Court’s construction or to disturb the
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`Court’s prior order.
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`Uniloc has not demonstrated that the Court committed clear error or that its constructions
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`would work manifest injustice. The Motion to Reconsider is DENIED.
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`CONCLUSION
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`For the reasons set forth above, the Court DENIES Uniloc’s Motion for Discovery (Docket
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`No. 331). The Court GRANTS-IN-PART Defendant’s Motion to Strike Infringement
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`Contentions (Docket No. 335) with respect to Uniloc’s Final Infringement Contentions and
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`DENIES-IN-PART with respect to Uniloc’s Supplemental Infringement Contentions. Uniloc’s
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`Motion for Reconsideration (Docket No. 344) is DENIED. The parties are
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`ORDERED to supplement their document productions and written discovery responses
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`within 21 days of the date of this order and to supplement their opening expert reports 21 days
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`thereafter. The parties shall further prepare and submit a proposed docket control order within
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`seven days of the date of this order. It is hereby
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`ORDERED that the following schedule of deadlines shall be incorporated into the
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`proposed docket control order:
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`Jury Trial
`
`Jury Selection
`
`Pre-trial Conference
`
`Dispositive and Daubert
`Motion Hearing
`
`Dispositive and Daubert
`Motion Deadline
`
`
`
`
`*June 15, 2020, immediately following jury selection in Marshall,
`Texas
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`*June 17, 2020, at 9:00 a.m. in Marshall, Texas
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`*June 2, 2020, at 10:00 a.m. in Texarkana, Texas
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`*May 28, 2020, at 10:00 a.m. in Texarkana, Texas
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`*April 3, 2020
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`Page 15 of 16
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`Page 16 of 16
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`.
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`
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 5th day of February, 2020.
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`