UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

DECURTIS LLC, 

Plaintiff,

v.

CARNIVAL CORPORATION,

Defendant.

CARNIVAL CORPORATION,

Plaintiff,

v.

DECURTIS CORPORATION and 

DECURTIS LLC,

Defendants.

Civil Action No. 20-22945-Civ-Scola

Civil Action No. 20-21547-Civ-Scola

DECURTIS’S REPLY STATEMENT OF MATERIAL FACTS IN SUPPORT OF ITS

MOTION FOR SUMMARY JUDGMENT

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 1 of 8
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ABBREVIATIONS

Abbreviation Document ECF

Opp. Carnival Corporation’s Opposition to DeCurtis LLC’s Motion 

for Summary Judgment

300

SMF DeCurtis’s Statement of Separate Statement of Material Facts 

in Support of Motion for Summary Judgment

291

CRSF Carnival Corporation’s Response to DeCurtis’s Statement of 

Facts

301 at 1-21

AF Carnival’s Statement of Additional Facts 301 at 22-26

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 2 of 8
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66. Undisputed that NCL sent this email to DeCurtis in November 2018, and immaterial. The 

basis for the Motion is that Carnival has not provided evidence sufficient to show (1) any actually 

implemented accused systems contain

(“Grounds for the Motion”). The November 

2018 email is not material to the Grounds for the Motion. 

67. Undisputed and immaterial to the Grounds for the Motion that DeCurtis 

claim 11 of the ’514 patent. Disputed that the does not avoid infringement, ECF294-

5 (Jakobsson Rebuttal) ¶¶ 47, 78-87 (opining that the is non-infringing), but 

immaterial to the Grounds of the Motion because while the identified is a separate 

reason DeCurtis does not infringe the ’514 patent, it was not one of the Grounds for the Motion. 

68. Disputed and immaterial. Carnival does not provide evidence showing that 

; rather, it provides evidence regarding 

only certain of them, and that evidence is insufficient to establish this purported “fact.” For 

example, a mere 

 ECF299-56 (Ex 195 (DeCurtis_01987959)). Moreover, 

. AF68 is 

also immaterial because even if true, it would be insufficient to prove infringement because (1) 

; and 

(2) . 

69. Disputed and immaterial. Carnival only cites an agreement. Carnival does not cite any 

evidence in this agreement, or otherwise, show DeCurtis . 

AF68 is also immaterial because even if true, it would be insufficient to prove infringement.

70. Disputed, to the extent Carnival is suggesting that DeCurtis provides 

. Carnival relies on (ECF 87 

at ¶ 37), which states “

” (emphasis added). The Lynde report refers to statements by third 

parties, not DeCurtis. ECF285-18 (“Lynde Report”) ¶¶ 13 (“

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 3 of 8
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 52 (noting that BCG, a consulting firm, asserted that “

”). That DeCurtis has an end-to-end software solution is 

immaterial because this does not undermine any of the Grounds for the Motion.

71. Disputed and immaterial to the Grounds for the Motion. This presentation 

” ECF299-54 (Ex 194 (DeCurtis_01946098) at -99). Even if accurate, Carnival 

offers no evidence that were ever 

implemented in the any Accused System. 

72. Disputed and immaterial. Carnival does not state which (if any) of the cited documents 

support AF72. AF72 is further disputed because the alleged infringing system includes 

. AF72 is further disputed because testing of 

some components of an alleged infringing system does not constitute . None 

of the cited documents indicate that anyone

. Indeed, Mr. de la Igelsia does not show that any claim is infringed by the activities 

described in the cited documents. ECF305-2 (Shoemake Rebuttal Rpt.) ¶¶ 67-82 (

). It is also immaterial 

that DeCurtis personnel . Neither 

is an act of infringement. See 35 U.S.C. 271(a). Finally, this testing is immaterial because it was 

conducted 

. ECF284-08 (Schwalb Dec.) ¶¶ 16-19. 

73. Disputed and immaterial to the Grounds for the Motion. The cited evidence establishes

merely that DeCurtis employees boarded Virgin’s Scarlet Lady ship. The cited evidence does not 

establish the remainder of AF73’s purported “fact.” AF73 is also immaterial because (a) 

“ ” does not constitute 

“making” an entire allegedly infringing system (Centrak, Inc. v. Sonitor Techs., Inc., 915 F.3d 

1360, 1371-72 (Fed. Cir. 2019) (“final assembler”-defendant liable for “making” the invention 

where defendant assembled each of the components of the invention)); and (b) even if it could 

Carnival has not provided evidence that 

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 4 of 8
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. ECF291 (DeCurtis’s 

Separate Statement of Material Facts) at 15, 17, 23, 24, 26, 28, 29, 35, 36, 37, 38. 

74. Disputed. AF74 implies that “ ” in this diagram reflects what was 

but Carnival presents no evidence that is so. DeCurtis’s production of this 

document does not authenticate the document, nor does it 

. The evidence shows that . ECF284-

08 (Schwalb Dec.) ¶¶ 12-15; ECF299-02 (Engebretsen Dep.) at 63:12-64:9, 70:15-72:9, 79:13-

81:10, 148:25-150:18, 168:4-169:17, 269:9-13, 269:22-270:12, 279:11-280:6; ECF284-18 (Ex. R., 

de la Iglesia Reb. Rept.) at ¶¶ 396-398; ECF305-2 (Shoemake Reb. Rpt.) at ¶¶ 241-248. 

75. Disputed and immaterial to the Grounds of the Motion. This purported “fact” is not a fact at 

all; it is an argument. To the extent Carnival is saying that the diagram referenced in AF74 meets 

limitation, that is wrong both as a matter of law and fact. A diagram of a component is 

insufficient to demonstrate the existence of a purportedly infringing system. Brocade Commc’ns 

Sys., Inc. v. A10 Networks, Inc., 843 F. Supp. 2d 1018, 1029 (N.D. Cal. 2012) (technical document 

insufficient to create issue of material fact regarding infringement). Carnival has provided no 

evidence that the diagram reflects the allegedly infringing systems. DeCurtis also incorporates its 

response to AF74 here. 

76. Disputed and immaterial. AF76 implies that DeCurtis’s October 29, 2020 non-infringement 

contentions relied on “

” of the “ ” limitation. This is untrue. DeCurtis contended, consistent 

with its motion, that 

 ECF299-10 (Ex. 150) at 37; ECF299-11 (Ex. 151) at 21, 29, 

46. DeCurtis’s citation of this document at the beginning of discovery does not authenticate it or 

admit that its contents . Lam Research Corp. v. Schunk 

Semiconductor, 65 F. Supp. 3d 863, 870-71 (N.D. Cal. 2014) (patent contentions are not judicial 

admissions of fact ) DeCurtis also incorporates its response to AF74 here. 

77. Undisputed but immaterial. As AF 77 concedes, this document was cited in reference to a 

limitation and there is no evidence (unlike with the diagram identified in AF74) that 

the portions cited do not accurately represent 

. DeCurtis also incorporates its response to AF74 here. 

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 5 of 8
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78. Disputed and immaterial. These emails explicitly state that 

. Assa Abloy states that “

.” ECF299-03 (Ex. 143). AF78 is immaterial because Carnival 

presents no evidence that the depicted (1) 

, or (2) . 

79. Disputed and immaterial. The name of the file sent to is “

.” ECF299-53 (Ex. 193); ECF299-12 (Ex. 152). Mr. DeCurtis also 

expressly informs that the attachment is a “ .” ECG299-19 (Ex. 159). 

AF79 is also immaterial for the same reasons as AF74 and AF78. 

80. Disputed and immaterial. AF80 cites no evidence that the email or its attachments were 

received by . AF80 is immaterial for the same reasons as AF74 and AF78. 

81. Undisputed but immaterial for the same reasons as AF74 and AF78. 

82. Disputed and immaterial for the same reasons as AF74 and AF78. ECF299-22 (Ex. 162) 

does not include any attachments. 

83. Disputed and immaterial. Topic No. 2, seeking information about “[t]he features, design, 

specifications, function, and operation of the Allure system” was not time-limited, nor are Topics 

16-18 (seeking information about documents that “refer or relate to the Patents-in-Suit or the 

Related Patents and Applications”) and thus all four are directed to non-prior art topics.

84. Undisputed that Mr. Engebretsen acknowledged a lack of personal knowledge in response 

to certain questions but immaterial. Mr. Engebretsen was designated as a FRCP 30(b)(6) witness 

who 

. 

ECF299-02 (Engebretsen Dep.) at 15:7-16:18, 151:5-10, 160:17-161:14, 279:11-280:6; Christie 

v. Royal Caribbean Cruises, Ltd., 2021 WL 2940251, at *5 (S.D. Fla. July 13, 2021) (“[I]t is well 

established in the Eleventh Circuit that the scope of a Rule 30(b)(6) deposition is not strictly 

confined to the topics set forth in the notice”).

85. Disputed. The citations show only that DeCurtis 

; they do not establish the remainder of AF85’s “fact.”

86. Disputed and immaterial for the same reasons as AF72. 

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 6 of 8
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87. Disputed. Carnival did not file an exhibit in support of AF87; nevertheless, it is immaterial 

to the Grounds for the Motion because the Motion does not rely on the at issue. 

88. Disputed and immaterial. Mr. Curtis did not . He testified 

that 

. ECF285-38 (DeCurtis Dep. Vol. 2) at 495:9-20, 

518:5-519:2. It is immaterial because the Motion does not rely on . 

89. Undisputed but immaterial because the subcontractor 

90. Undisputed that DeCurtis characterized an email (DeCurtis_01491115) in this manner. 

91. Disputed and immaterial because the cited evidence does not support AF91. AF91 is 

immaterial because Carnival does not rely on to show infringement.

92. Disputed. The cited material does not support AF92. DeCurtis did not 

. DeCurtis informed Carnival that ECF285-55 

. ECF285-54. DeCurtis 

also offered to make a “

. ECF284-41; see also ECF155 at ¶¶ 98-100 (where DeCurtis takes the same position.)

93. Disputed because the cited material does not support AF93 and for the same reasons set 

forth in response to AF92. Additionally, ECF285-54 doesn’t mention MSA enforceability. 

94. Disputed. The cited material does not support AF94’s speculative assertion that 

pursuant to ECF284-12 because before DeCurtis’s 

offered document collection, review, and production began, the parties filed suit. Carnival cannot 

establish 

, because Carnival 

95. Disputed. The cited material does not support AF95’s speculative assertion that 

pursuant to ECF284-12. DeCurtis restates its 

response set forth in response to AF94 as if fully set forth herein.

96. Disputed. The cited material does not support AF96’s speculative assertion that 

pursuant to ECF284-12. DeCurtis restates its 

response set forth in response to AF94 as if fully set forth herein. 

Case 1:20-cv-22945-RNS Document 318 Entered on FLSD Docket 05/16/2022 Page 7 of 8
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Dated: May 16, 2022 DECURTIS LLC & DECURTIS 

CORPORATION

By: /s/ Jason P. Stearns

One of their attorneys

David C. Gustman (pro hac vice)

Jeffery M. Cross (pro hac vice)

Jill C. Anderson (pro hac vice)

Andrew C. Nordahl (pro hac vice)

Freeborn & Peters LLP

311 S. Wacker Drive, Suite 3000

Chicago, IL 60606

Tel. (312) 360-6000

Jason P. Stearns

Florida Bar No. 059550

Freeborn & Peters LLP

201 N. Franklin Street

Suite 3550

Tampa, FL 33602

Tel. (813) 488-2920 

E-mail: jstearns@freeborn.com

Scott L. Watson (pro hac vice)

Justin C. Griffin (pro hac vice) 

Patrick T. Schmidt (pro hac vice)

Quinn Emanuel Urquhart & Sullivan LLP

865 S. Figueroa St., 10th Floor

Los Angeles, CA 90017

Tel. (213) 443-3000

Jeffrey Wu, Ph.D. (pro hac vice)

Quinn Emanuel Urquhart & Sullivan LLP

2755 E. Cottonwood Parkway, Suite 430

Salt Lake City, Utah 84121

Tel. (801) 515-7300

Jared Kneitel (pro hac vice)

Quinn Emanuel Urquhart & Sullivan LLP

1109 First Avenue, Suite 210

Seattle, WA 98101

Tel. (206) 905-7000

Attorneys for Plaintiff DeCurtis LLC & 

DeCurtis Corporation

CERTIFICATE OF SERVICE

I hereby certify that on May 16, 2022, I filed the foregoing DeCurtis’s Reply Statement of 

Material Facts in Support of Its Motion for Summary Judgment via CM/ECF which will serve all 

attorneys of record.

DECURTIS LLC & DECURTIS

CORPORATION

By: /s/ Jason P. Stearns

One of their attorneys

5985007

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