Case 2:21-cv-00275-JRG-RSP Document 54 Filed 07/08/22 Page 1 of 5 PageID #: 1077
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No.: 2:21-cv-00275-JRG-RSP
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`ACQIS LLC,
` Plaintiff,
`vs.
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`ACER INC.,
` Defendant.
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`DEFENDANT ACER INC.’S MOTION FOR LEAVE TO AMEND ITS ANSWER
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`Defendant Acer Inc. (“Acer”) moves for leave to add a single sentence to its Fourth
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`Affirmative Defense of Estoppel.1 That sentence reads: “ACQIS is precluded from pursuing its
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`claims against Acer by the doctrine of collateral estoppel (issue preclusion) in light of the Federal
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`Circuit’s decision in ACQIS v. EMC.” Good cause exists for this amendment and this motion
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`should be granted.
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`As the Court is aware, the District of Massachusetts issued a claim construction order
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`regarding closely related ACQIS patents, and as a consequence of those constructions granted
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`summary judgment of noninfringement in favor of EMC. The Federal Circuit affirmed that
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`decision—and, specifically, those claim constructions—in May. Soon thereafter, Acer brought
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`the EMC decision to the Court’s attention by way of a motion to amend the Court’s claim
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`construction order. ECF 49.
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`As an adjunct to that motion, Acer asked ACQIS for leave to amend its answer to
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`specifically assert issue preclusion as a defense. Declaration of David S. Bloch ¶ 2, Ex. A at 4.
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`1 Acer also makes non-substantive edits on the following paragraphs: ¶¶ 75, 104, 130, 152 to
`conform and make the paragraph numbering accurate.
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`Case 2:21-cv-00275-JRG-RSP Document 54 Filed 07/08/22 Page 2 of 5 PageID #: 1078
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`ACQIS responded that the preclusion issue was pled as estoppel by Samsung and already had been
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`considered and rejected by this Court. Id. at 3. This is wrong—Samsung ruled on the preclusive
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`effect of a sister district court judgment, not preclusive from the Federal Circuit —but because
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`Acer too had included an affirmative defense of estoppel, we responded that the issue seemed to
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`have been amicably resolved. Id. at 2; see also Fed. Cir. Internal Operating Procedures, #9.8
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`(“Nonprecedential opinions and orders and Rule 36 judgments shall not be employed as binding
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`precedent by this court, except in relation to a claim of res judicata, collateral estoppel, or law of
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`the case, and shall carry notice to the nonprecedential effect.”). ACQIS disagreed, for reasons that
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`are not entirely clear, see id., and this motion followed.
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`A party can amend its pleadings for good cause shown. “The good cause standard requires
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`the ‘party seeking relief to show that the deadlines cannot reasonably be met despite the diligence
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`of the party needing the extension.” S&W Enterpriese, LLC v. Southtrust Bank of Alabama, NA,
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`315 F.3d 533, 535 (5th Cir. 2003) (citations omitted). Given ACQIS’s position that merely
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`pleading “estoppel” is not enough, there is good cause to allow Acer to amend its affirmative
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`defense to specifically allege collateral estoppel aka issue preclusion.
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`As the Court knows, ACQIS originally sued EMC in this Court. That case was transferred
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`to the District of Massachusetts. ACQIS filed claims against 11 other hardware makers in the
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`Eastern and Western Districts of Texas. All of these cases turn on whether products that practice
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`newer standards (PCIe and USB 3.0) infringe claims directed to earlier PCI or USB standards.
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`ECF 101 at 2.
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`While the Texas cases were pending, the District of Massachusetts construed several terms
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`common to the ACQIS patents, and then granted summary judgment to EMC, adopting EMC’s
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`argument that products using the PCIe standard never generate a PCI bus transaction to serial form,
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`Case 2:21-cv-00275-JRG-RSP Document 54 Filed 07/08/22 Page 3 of 5 PageID #: 1079
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`and never communicate all bits – particularly control bits – of a serialized PCI bus transaction over
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`a serial channel and thus could not satisfy the claim construction. Acqis LLC v. EMC Corp., 2021
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`WL 1088207, at *3-6. ACQIS appealed the EMC Markman and summary judgment orders to the
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`Federal Circuit. On May 18, 2022, the Federal Circuit upheld the construction of “PCI bus
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`transaction,” “encoded…PCI bus transaction,” and “related terms,” and also affirmed the district
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`court’s grant of summary of judgment. Acqis LLC v. EMC Corp., 2022 WL 1562847 at *1 (Fed.
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`Cir. May 18, 2022). Now that the Federal Circuit has ruled, issue preclusion applies: 1) the issue
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`in this case is identical to EMC case, 2) the issue in EMC case was actually litigated, and 3) the
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`determination of the issue in EMC case was necessary part of the judgment in EMC case. See
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`RecoverEdge L.P. v. Pentecost, 44 F. 3d 1284, 1290 (5th Cir. 1995).
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`A “court should freely give leave [to amend pleadings] when justice so requires.” Fed. R.
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`Civ. P. 15(a)(2). “The policy of the federal rules is to permit liberal amendment to facilitate
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`determination of claims on the merits and to prevent litigation from becoming a technical exercise
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`in the fine points of pleading.” Dussouy v. Gulf Coast Investment Corp., 660 F.2d 594, 598 (5th
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`Cir. 1981). “Thus, unless there is a substantial reason to deny leave to amend, the discretion of the
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`district court is not broad enough to permit denial.” Id. at 598. An affirmative defense not
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`affirmatively pled is waived. Fed. R. Civ. P. 12 (h). But Acer could not plead this defense when
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`it filed its answer (ECF 15) or even before the November 13, 2021 deadline for responsive pleading
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`under Fed. R. Civ. P. 12(a) because the Federal Circuit’s EMC decision had not yet issued. Where
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`a defense comes into being during litigation, leave should be given to add that defense to the
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`pleadings. Ferdin v. Toyotetsu TTTX, 2019 WL 12598992, at *3 (W.D. Tex. Apr. 8, 2019)
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`(permitting a new affirmative defense raised for the first time in a motion for summary judgment:
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`“the Fifth Circuit has found more than one year before trial is pragmatically sufficient time and
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`3
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`Case 2:21-cv-00275-JRG-RSP Document 54 Filed 07/08/22 Page 4 of 5 PageID #: 1080
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`has also found raising the issue during trial to be pragmatically sufficient”) (citation omitted); see
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`also Lucas v. United States, 807 F.2d 414, 418 (5th Cir. 1986) (permitting an affirmative defense
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`when raised for the first time at trial). So Acer should be granted leave to amend its answer to add
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`affirmative defenses of issue preclusion/collateral estoppel.).
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`For the foregoing reasons, Acer asks the Court to grant leave for it to add a sentence to its
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`affirmative defenses specifically asserting collateral estoppel / issue preclusion.
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`Dated: July 8, 2022
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`Respectfully submitted,
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`By: /s/ Eric H. Findlay
`Harold Davis (pro hac vice)
`David Bloch (pro hac vice)
`GREENBERG TRAURIG, L.L.P.
`101 Second Street, Suite 2200
`San Francisco, CA 94105
`Telephone: 415-655-1300
`Email: davish@gtlaw.com
`Email: blochd@gtlaw.com
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`Callie J. Sand (pro hac vice)
`GREENBERG TRAURIG, L.L.P.
`77 West Wacker Drive
`Suite 3100
`Chicago, IL 60601
`Telephone: 312-456-8400
`Email: sandc@gtlaw.com
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`Eric H. Findlay, State Bar No. 00789886
`Brian Craft, State Bar No. 04972020
`FINDLAY CRAFT, P.C.
`102 N. College Ave. Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`efindlay@findlaycraft.com
`bcraft@findlaycraft.com
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`Craig Kaufman (pro hac vice)
`Kai Tseng (pro hac vice)
`Jerry Chen (pro hac vice)
`TECHKNOWLEDGE LAW GROUP LLP
`20660 Stevens Creek Blvd., Suite 381
`Cupertino, CA 95014
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`Attorneys for Defendant Acer Inc.
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`Case 2:21-cv-00275-JRG-RSP Document 54 Filed 07/08/22 Page 5 of 5 PageID #: 1081
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` Pursuant to Local Rule CV-7(h)-(i), I hereby certify that I conferred with opposing counsel
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`CERTIFICATE OF CONFERENCE
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`beginning on May 18, 2022, and continuing through June 30, 2022. Counsel for ACQIS indicated
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`that it opposed Acer’s motion for leave to amend to assert affirmative defenses of collateral
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`estoppel/issue preclusion without explaining why.
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` /s/ David S. Bloch
` David S. Bloch
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure, I hereby certify that all counsel of record
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`who are deemed to have consented to electronic service are being served with a copy of the
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`foregoing document via the Court’s CM/ECF system on July 8, 2022.
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` /s/ Eric H. Findlay
` Eric H. Findlay
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