UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`Before the Honorable
`Administrative Law Judge Thomas B. Pender
`
`
`
`In the Matter of
`
`CERTAIN DOCUMENT CAMERAS AND
`SOFTWARE FOR USE THEREWITH
`
`
`
`
`
`
`Investigation No. 337-TA-1045
`
`
`
`
`RESPONDENTS’ UNOPPOSED MOTION FOR LEAVE TO AMEND
`GROUND RULE 7.5 DISCLOSURE OF INVALIDITY CONTENTIONS
`PURSUANT TO GROUND RULE 7.6
`
`Pursuant to the Ground Rule 7.6 (Order No. 3), Respondents AVer Information, Inc.,
`
`IPEVO, Inc., and Lumens Integrations, Inc. (collectively, “Respondents”) move for leave to
`
`supplement their Ground Rule 7.5 Disclosure of Invalidity Contentions to include citations to
`
`and documentation of prior art products captured by a USB traffic sniffer. Pursuant to Ground
`
`Rule 5.1.2, Respondents certify that they conferred with Complainant Pathway Innovations and
`
`Technologies, Inc. (“Pathway” or “Complainant”) on August 2, 2017 and produced proposed
`
`supplemental invalidity contentions to Pathway on August 4, 2017 in an effort to resolve this
`
`matter. Complainant does not oppose this motion.
`
`I.
`
`BACKGROUND
`
`The parties exchanged invalidity contentions and infringement contentions on July 21,
`
`2017. Along with its infringement contentions, Pathway produced videos of each accused
`
`product performing a zoom operation while connected to a USB protocol analyzer and USB
`
`traffic sniffer. Pathway’s Ground Rule 7.4.1(3) infringement charts cited the USB protocol
`
`analyzer in support of multiple claim limitations. See, e.g., Exhibit 1 (Infringement Contentions)
`
`
`
`1
`
`

`

`at Claim Limitation 1b (“A USB protocol analyzer and USB traffic sniffer confirmed that the
`
`resolution of the frame images received from the document camera (frame images) does not change
`
`during a zoom operation.”). This was the first time that Respondents received notice that Pathway
`
`intended to rely on data from a USB protocol analyzer and traffic sniffer in support of its
`
`infringement theories. Compare Exhibit 1 (Infringement Contentions) with Complaint at Exhibits 3-
`
`5 (Preliminary Infringement Charts).
`
`Respondents’ invalidity contentions identified and charted multiple prior art products,
`
`including the IPEVO POV Document Camera, IPEVO P2V Document Camera, Logitech
`
`QuickCam Pro 9000, and Elmo TT-02s. See Exhibit 2 (Invalidity Contentions) at 6-7. These
`
`prior art products have been available for inspection since Respondents served their July 21,
`
`2017 invalidity contentions. Id. at 6 n.2.
`
`After reviewing Pathway’s infringement contentions and accompanying production,
`
`Respondents connected the IPEVO POV Document Camera, IPEVO P2V Document Camera,
`
`Logitech QuickCam Pro 9000, and Elmo TT-02s prior art products to a USB protocol analyzer
`
`and recorded data from the USB protocol analyzer while performing zooming and other
`
`manipulations with the prior art products. Respondents produced videos of the prior art products
`
`performing these operations while connected to the USB protocol analyzer and the data collected
`
`from the USB protocol analyzer on August 4, 2017, two weeks after receiving Pathway’s
`
`infringement contentions. Respondents also produced proposed supplemental invalidity
`
`contentions and supplemental invalidity charts for the IPEVO P2V Document Camera, Logitech
`
`QuickCam Pro 9000, and Elmo TT-02s prior art products on August 4, 2017. Complainant
`
`informed Respondents on August 7, 2017 that it did not opposed the motion for leave to amend
`
`Respondents’ invalidity contentions. Redlines of the Respondents’ proposed supplemental
`
`invalidity contentions and charts are attached as Exhibits 3-11.
`
`
`
`2
`
`

`

`II.
`
`ARGUMENT
`
`A. Amendment to Respondents’ Invalidity Contentions Will Not Prejudice
`Pathway
`
`As a preliminary matter, Pathway does not oppose Respondents’ motion for leave to
`
`amend their invalidity contentions. Further, such leave to amend does not prejudice Pathway
`
`because Respondents identified the IPEVO POV Document Camera, IPEVO P2V Document
`
`Camera, Logitech QuickCam Pro 9000, and Elmo TT-02s products in their initial July 21, 2017
`
`invalidity contentions. See Certain Wearable Activity Tracking Devices, Systems, and
`
`Components Thereof, 337-TA-973, Order No. 19 (June 1, 2016) (“there is little prejudice to the
`
`parties as they have long known about the . . . prior art”).
`
`In addition, Pathway has had the ability to inspect these prior art products at any time
`
`since July 21, 2017. Respondents’ amendments to their invalidity contentions merely apply
`
`Pathway’s recently disclosed infringement theories to the prior art in a manner that Pathway can
`
`verify through its own inspection of the prior art products. As fact discovery does not close until
`
`September 22, 2017 and expert discovery does not close until October 13, 2017, Pathway still
`
`has the opportunity for discovery relating to the functionality of IPEVO POV Document Camera,
`
`IPEVO P2V Document Camera, Logitech QuickCam Pro 9000, and Elmo TT-02s prior art
`
`products. See Certain Cases for Portable Electronic Devices, Inv. No. 337-TA-861, Order No.
`
`14 (Sept. 5, 2013) (allowing amendment of invalidity contentions after exchange of initial expert
`
`reports to add prior art that Complainant was previously aware of because expert discovery was
`
`still ongoing).
`
`B. Good Cause Exists Because Respondents Worked Diligently to Supplement
`Their Invalidity Contentions to Apply Pathway’s Infringement Theory
`
`Respondents produced the USB protocol analyzer and traffic sniffer prior art videos and
`
`data two weeks after Pathway served its July 21, 2017 infringement contentions. Before July 21,
`
`
`
`3
`
`

`

`2017, there was no indication that Pathway would rely on a USB protocol analyzer and traffic
`
`sniffer in support of its infringement contentions. Respondents therefore worked diligently to
`
`produce additional documentation as soon as they receive notice regarding Pathway’s intention
`
`to rely on USB protocol analyzer and traffic sniffer data for its infringement analysis.
`
`Moreover, Respondents’ requested amendments are a straightforward application of
`
`Pathway’s infringement analysis to the prior art. It is well known that claims must be construed
`
`the same way for the purpose of determining infringement and invalidity. See Amgen Inc. v.
`
`Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003); Bristol-Myers Squibb Co.
`
`v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001); W.L. Gore & Assoc., Inc. v. Garlock,
`
`Inc., 842 F.2d 1275, 1279 (Fed. Cir. 1988); SmithKline Diagnostics, Inc. v. Helena Laboratories
`
`Corp., 859 F. 2d 878, 889 n.7 (Fed. Cir. 1988); Kimberly-Clark Corp. v. Johnson & Johnson,
`
`745 F.2d 1437, 1449 (Fed.Cir.1984). Respondents’ requested invalidity contentions
`
`amendments are therefore not only timely but also relevant to the infringement and invalidity
`
`analysis in this investigation. The amendments will therefore be helpful to the experts and
`
`Administrative Law Judge for the purpose of determining patent invalidity.
`
`Finally, during the June 26, 2017 discovery conference, the Administrative Law Judge
`
`ordered infringement contentions and invalidity contentions due on the same day--July 21, 2017.
`
`When Respondents raised a concern that Pathway may include infringement contentions that
`
`Respondents would need to address in their invalidity contentions, the Administrative Law Judge
`
`suggested that Respondents would be afforded an opportunity to amend their invalidity
`
`contentions to address new infringement theories. June 26, 2017 Discovery Status Conference
`
`Call Transcript at 15:12-16:14.
`
`
`
`4
`
`

`

`III. CONCLUSION
`
`For the foregoing reasons Respondents’ respectfully request that the Administrative Law
`
`Judge grant them leave to amend their invalidity contentions in accordance with Exhibits 3-11.
`
`
`
`
`
`
`Dated: August 7, 2017
`
`
`
`
`
`
`Dated: August 7, 2017
`
`
`
`Dated: August 7, 2017
`
`
`
`
`
`
`By: /s/ Eric C. Rusnak
`ERIC C. RUSNAK
`
`K&L GATES LLP
`1601 K Street, N.W.
`Washington, DC 20006
`
`Counsel for Respondent
`AVER INFORMATION, INC.
`
`By: /s/ Harold H. Davis, Jr.
`HAROLD H. DAVIS, JR.
`
`K&L GATES LLP
`Four Embarcadero Center, Suite 1200
`San Francisco, CA 94111
`
`Counsel for Respondent
`IPEVO, INC.
`
`By: /s/Vid R. Bhakar
`VID R. BHAKAR
`
`SINGULARITY LLP
`555 Twin Dolphin Drive, Suite 610
`Redwood Shores, CA 94065
`
`Counsel for Respondent
`LUMENS INTEGRATION, INC.
`
`
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`
`I, Perry C. Brooks, hereby certify that on this day, August 7, 2017, true and correct copies
`of the foregoing, RESPONDENTS’ UNOPPOSED MOTION FOR LEAVE TO AMEND
`GROUND RULE 7.5 DISCLOSURE OF INVALIDITY CONTENTIONS PURSUANT TO
`GROUND RULE 7.6, have been served upon the following as indicated:
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC 20436
`
`
`
`
`
`
`
`
`
`
`
`The Honorable Thomas B. Pender
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, DC 20436
`Email: michael.turner@usitc.gov
`
`James V. Fazio, III
`Trevor Q. Coddington, Ph.D.
`David M. Beckwith
`San Diego IP Law Group LLP
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Tel: 858.792.3446
`Fax: 858.792.3501
`Email: pathway-1045@sandiegoiplaw.com
`
`Attorneys for Complainant
`Pathway Innovations and Technologies, Inc.
`
`
`X Via Electronic filing (EDIS)
`
`Via Hand Delivery
`
`Via First Class Mail
`
`Via Electronic Mail
`
`Via Overnight Courier
`
`Via Hand Delivery (2 Copies)
`
`Via First Class Mail
`
`X Via Electronic Mail
`X Via Overnight Courier (2 Copies)
`
`Via Hand Delivery
`
`Via First Class Mail
`
`X Via Electronic Mail
`
`Via Overnight Courier
`
`

`

`Via Hand Delivery
`
`Via First Class Mail
`
`X Via Electronic Mail
`
`Via Overnight Courier
`
`Via Hand Delivery
`
`Via First Class Mail
`
`X Via Electronic Mail
`
`Via Overnight Courier
`
`
`
`
`
`
`
`
`
`Ronald Lemieux
`Vidya Bhaker
`Frank Bernstein
`Michelle McLeod
`Singularity LLP
`555 Twin Dolphin Drive, Suite 610
`Redwood Shores, CA 94065
`Tel: 650.720.4656
`Fax: 650.720.4662
`Email: lumens_1045@ipsingularity.com
`
`Andrew F. Pratt
`Venable LLP
`600 Massachusetts Ave, NW
`Washington, DC 20001
`Tel: 202.344.4389
`Fax: 202.344.8300
`Email: Lumens-1045@venable.com
`
`Attorneys for Respondent Lumens
`Integrations, Inc.
`
`Michael E. Zeliger
`Jackson Ho
`Audrey Lo
`Min Wu
`K&L Gates LLP
`630 Hansen Way
`Palo Alto, CA 94304
`Tel: 650.798.6700
`Fax: 650.798.6701
`
`Email: AverInfo-1045@klgates.com
`
`Eric C. Rusnak
`K&L Gates LLP
`1601 K Street, N.W.
`Washington, DC 20006
`Tel: 202.778.9000
`Email: AverInfo-1045@klgates.com
`
`Jay C. Chiu
`K&L Gates LLP
`1 Park Plaza
`Twelfth Floor
`Irvine, CA 92614
`Email: AverInfo-1045@klgates.com
`
`

`

`
`Attorneys for Respondent Aver Information,
`Inc.
`
`Howard Chen
`Harold H. Davis, Jr.
`Rachel E. Burnim
`K&L Gates LLP
`Four Embarcadero Center
`Suite 1200
`San Francisco, CA 94111
`Tel: (415) 882-8200
`Fax: (415) 882-8220
`Email: IPEVO-1045@klgates.com
`
`Jay C. Chiu
`K&L Gates LLP
`1 Park Plaza
`Twelfth Floor
`Irvine, CA 92614
`jay.chiu@klgates.com
`
`Min Wu
`K&L Gates LLP
`630 Hansen Way
`Palo Alto, CA 94304
`min.wu@klgates.com
`
`Attorneys for Respondent IPEVO, Inc.
`
`
`
`
`
`
`
`
`
`
`Via Hand Delivery
`
`Via First Class Mail
`
`X Via Electronic Mail
`
`Via Overnight Courier
`
`
`
`
`
`
`
`/s/ Perry C. Brooks
`Perry C. Brooks
`K&L Gates LLP
`(415) 882-8095
`
`