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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

JAWBONE INNOVATIONS, LLC,

 Plaintiff,

v.

PANASONIC HOLDINGS 

CORPORATION et al,

 Defendants.

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CIVIL ACTION NO. 2:23-CV-00081-JRG-RSP

(Lead Case)

REPORT AND RECOMMENDATION

Before the Court is the Rule 12(b)(6) Motion to Dismiss filed by Defendant HTC 

Corporation. Case No. 2:23-cv-00077, Dkt. No. 22.

1 For the following reasons, Defendant HTC’s 

Motion should be DENIED without prejudice. 

I. BACKGROUND

Jawbone originally filed Case No. 2:23-cv-00077 accusing HTC of direct, indirect, and 

willful infringement of U.S. Patent Nos. 8,019,091; 7,246,058; 10,779,080; 11,122,357; 

8,467,543; 8,503,691; 8,321,213; and 8,326,611 (collectively the “Asserted Patents”). Case No. 

2:23-cv-00077, Dkt. No. 1. The case was then consolidated with Lead Case 2:23-cv-00081. Case 

No. 2:23-cv-00077, Dkt. No. 23. 

1 HTC’s Motion was filed prior to consolidation, with responsive briefing being filed in the now lead case 2:23-cv00081. Hereinafter, Motion refers to 2:23-cv-00077, Dkt. No. 22; Response refers to 2:23-cv-00081, Dkt. No. 35;

Reply, 2:23-cv-00081, Dkt. No. 39; and Sur-reply, 2:23-cv-00081, Dkt. No. 52. All other docket references are to 

2:23-cv-00081.

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II. ANALYSIS

A. Sufficiency of the Responsive Briefing Under the Local Rules

HTC argues that “Jawbone’s failure to respond to HTC’s statement of the issues as required 

by the Local Rules leads to the presumption that Jawbone does not controvert HTC’s statement of 

the issues” and as a result falls within L.R. CV-7(d) as a failure to oppose the Motion. Reply at 4 

(citing L.R. CV-7(a)(1), CV-7(d); Hanson v. Werner Enters., No. 2:21-cv-00245, 2022 U.S. Dist. 

LEXIS 228808, at *4–5 (E.D. Tex. 2022)).

The Local Rules in relevant part outline:

[(a)(1)] Case dispositive motions shall contain a statement of the issues to be 

decided by the court. Responses to case dispositive motions must include a response 

to the movant's statement of issues.

* * *

[d.] A party’s failure to oppose a motion in the manner prescribed herein creates a 

presumption that the party does not controvert the facts set out by movant and has 

no evidence to offer in opposition to the motion.

LR CV-7(a)(1), CV-7(d). The Court is not persuaded that the result HTC seeks, that the entirety 

of the Motion be found uncontroverted, is supported by the Local Rules. Hanson is distinguishable 

due to a lack of opposition which is not present here. Instead, Plaintiff has not included a recitation 

of the issues to be decided by the Court but does provide responses to Defendant’s single issue to 

be decided in the Motion. Compare Hanson, 2022 U.S. Dist. LEXIS 228808, at *4–5, with

Response. Ultimately, the Court is not persuaded to make the jump between CV-7(a)(1) and CV7(d) considering the briefing presented.

B. Necessity of Claim Construction

HTC asserts that “no claim construction, nor any discovery is needed” to determine patenteligibility of the patents-in-suit. Motion at 22; Dkt. No. 30-1 at 2. HTC contends that construction 

would not change that “the claims recite unpatentable signals” since “virtual microphones are 

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simply combinations of ‘signals’ output by physical microphones.” Dkt. No. 30-1 at 2. Plaintiff 

responds that construction of at least “virtual microphone” is necessary to determine patenteligibility. Response at 12–13; Dkt. No. 30-1 at 3–6. Plaintiff asserts that their construction 

position would be “a virtual microphone is a device, i.e. a microphone, and not merely a signal” 

referencing claim construction briefing that occurred in a separate case involving the patents-insuit. Response at 13; see Jawbone v. Samsung Elecs. Co., 2:21-cv-00186, Dkt. No. 119.

The Court finds that claim construction is necessary to determine whether the patents-insuit contain patent-eligible subject matter. Defendant asserts that claim construction is not 

necessary but relies on the patents’ specifications to determine what the claims encompass––

analysis that is best undertaken in the claim construction process. See Dkt. No. 30-1 at 2. At a 

minimum, to decide the Motion presented the Court would have to consider whether the previous 

construction should be applied in this case, which, without the benefit of claim construction 

briefing, would be premature at this stage. Phoenix Licensing, LLC v. Aetna, Inc., 2012 WL 

12937525, at *1 (E.D. Tex. 2012) (C.J., Gilstrap) (citing In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 

2008)); see Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1273–74 (Fed. 

Cir. 2012). 

III. CONCLUSION

Accordingly, it is recommended that HTC’s Motion to Dismiss be DENIED without 

prejudice such that it may be re-urged if appropriate after claim construction briefing has been 

considered by the Court. 

A party’s failure to file written objections to the findings, conclusions, and 

recommendations contained in this report within 14 days bars that party from de novo review by

the District Judge of those findings, conclusions, and recommendations and, except on grounds of 

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plain error, from appellate review of unobjected-to factual findings and legal conclusions accepted 

and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto. 

Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc). Any objection to this Report and 

Recommendation must be filed in ECF under the event “Objection to Report and 

Recommendations [cv, respoth]” or it may not be considered by the District Judge.

____________________________________

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE SIGNED this 3rd day of January, 2012. SIGNED this 7th day of March, 2024.

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