Exhibit D

Case 6:20-cv-00490-ADA Document 68-4 Filed 04/23/21 Page 1 of 6
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Jeff Huang

From: josh@joshuayipatentlaw.com

Sent: Wednesday, April 14, 2021 12:45 PM

To: Lavenue, Lionel

Cc: mark waltfairpllc.com; Robert Earle; Hines, Lisa; IPTeam; Schulz, Bradford; Leonard, 

Katherine

Subject: Re: WSOU v. ZTE - 6:20-cv-487- 497 - Issue Concerning Markman Briefing

Counsel,

Thank for your thorough emails. Robby will separately respond to the venue discovery issues.

With respect to whether written description and enablement issues can be raised during claim construction, the Court's 

general practice is to separate 112, 1/a issues from claim construction, and take up the former as a summary judgment 

motion.

IIRC, in Flash-Control, the parties agreed to accelerate the written description summary judgment motion and combine it 

with the claim construction briefs. The parties then approached the Court about doing so and the Court signed off on 

that approach.

As such, with respect to written description, to the extent that the parties agree to address written description issues 

during claim construction, please file the necessary motion. (If the parties disagree, the Court will likely deny such an 

opposed motion.) With respect to enablement, given the need to gather facts that are relevant to the Wands factors, 

the Court does not believe that it is proper to take up enablement issues until after fact discovery has opened.

If you have any questions, please let me know. Thanks.

-Josh

Joshua J. Yi, Ph.D.

The Law Office of Joshua J. Yi, PLLC

13492 Research Blvd; Ste. 120 – #445

Austin, TX 78750-2254

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On Apr 12 2021, at 6:33 pm, Lavenue, Lionel <lionel.lavenue@finnegan.com> wrote: 

Josh and Robby,

The ZTE Defendants respectfully respond. 

Case 6:20-cv-00490-ADA Document 68-4 Filed 04/23/21 Page 2 of 6
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The ZTE Defendants have been very clear at every stage of this Markman briefing process that ZTE raises claim 

construction issues per 35 U.S.C. § 112(a)/(1), as to enablement and written description. 

In fact, Defendants clearly identified these claim construction issues during the January-March claim term 

identification and reduction dispute. WSOU had ample time to consider the § 112(a)/(1) enablement and written 

description claim construction terms—yet, WSOU first raised issue in its opening claim construction brief, by the 

refusal to brief the issues. WSOU had an opportunity to address these issues, but WSOU refused to do so, and as 

such, WSOU has waived any objection.

1. First, this Court has addressed § 112(a)/(1) enablement and written description issues at the claim 

construction (Markman) stage. For instance, this Court permits enablement and lack of written description 

analysis at the Claim Construction phase. See Flash-Control, LLC v. Intel Corporation, 2020 WL 4561591 (W.D. 

Tex. July 21, 2020) (Judge Albright ruling on enablement and lack of written description issues in Claim 

Construction Order). Thus, it is clear that this Court considers enablement and lack of written description 

issues ripe for analysis during claim construction.

2. Second, WSOU incorrectly relies on other courts’ judgments and holds them up as precedent for this Court

by alleging that briefing of § 112(a)/(1) issues at this Markman stage is “improper under the practice and 

precedent of this Court.” See e.g., WSOU -492 Case, Dkt. 59 at 7; see also USB Bridge Sols., LLC v. Buffalo Inc., 

1-17-CV-001158-LY, 2020 WL 1906898, at *5 (W.D. Tex. Apr. 17, 2020). As addressed above (see #1), this 

Court addresses § 112(a)/(1) issues at the claim construction phase.

3. Third, Defendants already raised these § 112(a)/(1) issues for this Court, and Defendants made it clear that 

Defendants sought interpretation of several § 112 issues (including means-plus-function, written 

support/enablement, and indefiniteness) during the claim construction phase. As such, the Court did not 

reject Defendants’ understanding of briefing for Markman—that it includes § 112(a)/(1) issues. For instance, 

in Defendants’ March 2, 2021 position for the Markman term limit dispute, Defendants made it clear that 

their understanding of the term count included § 112(a)/(1) enablement and written support issues. See -

487 Case, Dkt. 60, Ex. 2 (“ZTE Defendants request an opportunity to address both those terms for 

construction and the § 112 terminology (i.e. MPF/support/indefiniteness) issues, for these complex and 

voluminous claims . . . Thus, as shown in the chart, unless WSOU reduces the number of asserted claims 

(current 140 claims from 11 patents), then ZTE Defendants’ request of 55 terms for construction, and the 

additional § 112 terms for interpretation (43 MPF terms and 70 indefinite/written support terms), are 

entirely reasonable.”). WSOU knew of Defendants’ position. And, so did the Court. Defendants’ term count 

for construction was known by both WSOU and this Court, and nothing was said on the issues.

4. Fourth, WSOU even acknowledged and accounted for these § 112 (a)/(1) terms in its opposition to 

Defendants’ March 2, 2021, term consolidation count for construction. See -487 Case, Dkt. 69, Ex. 6 (WSOU’s 

created summary chart of terms for construction). WSOU’s accounting of the § 112(a)/(1) terms when 

identifying and requesting a reduction in terms for briefing before this Court demonstrates WSOU’s now 

disingenuous position in claiming briefing these terms are improper. WSOU cannot fairly now complain, 

when WSOU had ample and adequate notice of this issues. 

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5. Fifth, WSOU only first objected to the § 112(a)/(1) enablement and written support issues, only in its 

opening Markman brief—well after Defendants reduced the terms for claim construction twice. Defendants 

even identified the § 112(a)/(1) terms in its January 22, 2021 Proposed Terms for Claim Construction (see -

487 Case, Dkt. 69, Ex. 1), the February 12, 2021 Proposed Claim Constructions (Ex. 2), the February 19, 2021 

Disclosure of Extrinsic Evidence (Ex. 3), the February 26, 2021 Narrowed Claim Terms (Ex. 4), and the March 

2, 2021 Second Narrowed Claim Terms (Ex. 5). Not once did WSOU raise concern. The proper time for 

objection—if at all—was the months prior to these claim construction briefings. As such, WSOU has waived 

any objection here.

6. Sixth, WSOU was not disadvantaged by the claim construction briefing limits. Each of WSOU’s opening 

claim construction briefs were well under the page limit and WSOU had the option (see #5 above) to address 

the § 112(a)/(1) issues. WSOU simply refused to brief the § 112(a)/(1) issues. Rather, Defendants were 

disadvantaged and were forced to reduce its briefing for terms under the page limit, in order to address all 

of the terms. In view of this Court’s Flash-Control ruling, and in view of this Court’s March 2, 2021 guidance 

and rulings on the Markman term reduction disputes, Defendants counted the § 112(a)/(1) terms in its 

reduced number for briefing. WSOU never requested additional briefing pages—of any kind (in the form of 

Summary Judgement briefing or otherwise)—and only after Defendants already reduced the terms for 

construction did WSOU raise this issue (thereby disadvantaging Defendants for the briefing and the terms 

for construction).

Defendants respectfully request that this Court deny the untimely relief that WSOU seeks. WSOU knew of the issues 

but remained intentionally silent. WSOU waived any right to complain now.

Regards,

Lionel

From: mark waltfairpllc.com <mark@waltfairpllc.com> 

Sent: Monday, April 12, 2021 6:25 PM

To: josh@joshuayipatentlaw.com; Robert Earle <Robert_Earle@txwd.uscourts.gov>

Cc: Lavenue, Lionel <lionel.lavenue@finnegan.com>; Hines, Lisa <Lisa.Hines@finnegan.com>; IPTeam 

<IPTeam@etheridgelaw.com>; Schulz, Bradford <Bradford.Schulz@finnegan.com>; Leonard, Katherine 

<Katherine.Leonard@finnegan.com>

Subject: WSOU v. ZTE - 6:20-cv-487- 497 - Issue Concerning Markman Briefing

EXTERNAL Email:

Case 6:20-cv-00490-ADA Document 68-4 Filed 04/23/21 Page 4 of 6
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Dear Josh & Robby:

We wanted to bring to the Court’s attention that ZTE is briefing both lack of written description and enablement in 

the context of their claim construction briefs. Thus, ZTE is seeking a determination on the merits of these issues 

through the Markman process. 

In WSOU’s Opening Claim construction briefs, we noted that this is improper under the practice and precedent of 

this Court. E.g., -492 Case, Dkt. 59 at 7. In response, ZTE has relied on this Court’s decision in Flash-Control. E.g., -

492 Case, Dkt. 66 at 6. But in Flash-Control, the Court will recall that the defendant raised the invalidity defense for 

lack of written description “filed a Motion for Summary Judgment pursuant to FED. R. CIV. P. 56(a) alongside its 

opening construction brief .” Flash-Control, Slip Op. at *2. Flash-Control expressly tethers the Court’s ruling on the 

written description issue to the separately-briefed summary judgment motion. Id. No such summary judgment 

briefs have been filed here.

ZTE cites to no authority, and WSOU is not aware of any, where this Court ruled on written description or 

enablement outside the context of a motion for summary judgment, where the party with the burden of proof 

raised the issue in a response brief addressing claim construction. WSOU believes that it is procedurally improper for 

ZTE to raise these issues in claim construction. As you and the Court are aware, WSOU’s response to such arguments 

would be limited to a reply brief, which is limited to half the page count as the opening briefing. 

WSOU respectfully seeks guidance from the Court as to whether the Court will entertain ZTE’s arguments regarding 

written description and enablement through these Markman proceedings.

Sincerely,

Mark Siegmund 

Walt Fair, PLLC

mark@waltfairpllc.com

1508 North Valley Mills Drive

Waco, Texas 76710-4462

Telephone: (254) 772-6400

Fax: (254) 772-6432

waltfairpllc.com 

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