IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

UNIFICATION TECHNOLOGIES LLC,

Plaintiff,

v.

PHISON ELECTRONICS 

CORPORATION,

Defendant.

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C.A. No. 2:23-cv-00266-JRG-RSP

(LEAD CASE)

JURY TRIAL DEMANDED

UNIFICATION TECHNOLOGIES LLC,

Plaintiff,

v.

SILICON MOTION, INC.,

Defendant.

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C.A. No. 2:23-cv-00267-JRG-RSP

(MEMBER CASE)

JURY TRIAL DEMANDED

DEFENDANT SILICON MOTION INC.’S REPLY IN SUPPORT OF ITS 

MOTION TO DISMISS AND STRIKE CERTAIN ALLEGATIONS

Case 2:23-cv-00266-JRG-RSP Document 26 Filed 09/13/23 Page 1 of 8 PageID #: 336
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Unification Technologies LLC’s (“Plaintiff” or “UTL”) Response (Dkt. No 23) makes at 

least five admissions that are fatal to its claims for willfulness, inducement, and accusations of 

egregious behavior. Throughout its Response, UTL relies upon a hyper-formalistic understanding 

of “notice” that other courts have called a “ploy” (Marble Voip Partners LLC v. Zoom Video 

Commc’ns, --- F.Supp.3d ----, Case No. 22-CV-2247-JAR-ADM, 2023 WL 3055323, at *11 (D. 

Kan. Apr. 24, 2023)) and “de minimis” (Sapphire Crossing LLC v. Robinhood Mkts., No. 181717-

MNCJBCONSOLIDA, 2021 WL 149023, at *6 (D. Del. Jan 15, 2021)). It is clear from the 

pleadings that Silicon Motion, Inc. (“SMI”) had no meaningful pre-suit notice or knowledge of 

UTL’s allegations. Further, UTL’s response makes clear that the language SMI argues should be 

struck is redundant and immaterial.

I. SMI Had No Meaningful Notice of UTL’s Allegations that Would Support a Claim 

for Willful or Indirect Infringement

This Court should dismiss UTL’s claims for willfulness and indirect infringement for two 

reasons. 

First, UTL admits that, under the most favorable view of the facts, its letter (which UTL 

purports, and SMI contests, gave proper notice to SMI) did not provide SMI meaningful notice of 

its allegations. UTL’s minute-by-minute parsing of the timeline of the sending and receiving of 

its letter and its filing of the complaint is telling—under the most favorable view of the facts to 

UTL, SMI had de minimis time to review, analyze, consider, and respond to UTL’s 

correspondence. According to UTL’s telling of the facts, SMI received its notice letter at its 

Taiwan address at 10:04 PM central time on June 1, 2023. Then, fifteen-hours and twelve minutes

later, UTL served its complaint in Texas.1

 UTL makes no effort to show how this was sufficient 

1 Even if the correspondence instantaneously appeared at SMI three days prior to suit (the date of 

the letter), it would not have provided reasonable opportunity to consider UTL’s allegations and 

its license offer. But even if that were not so, and one entertains UTL’s proposed technicality of 

Case 2:23-cv-00266-JRG-RSP Document 26 Filed 09/13/23 Page 2 of 8 PageID #: 337
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notice for SMI to analyze UTL’s allegations, approach UTL for a license (if the allegations were 

valid, which they are not), or do anything about its alleged infringement. Instead, it relies upon a 

formalistic description of the timeline.

UTL offers only one case in support of its hyper-literal argument that SMI received notice. 

Unfortunately, even there it elides the facts of the case. UTL cites Malibu Boats, LLC v. 

MasterCraft Boat Co., LLC, No. 3:16-CV-82-TAV-HBG, 2016 U.S. Dist. LEXIS 183202, at *15 

(E.D. Tenn. Oct. 28, 2016) for the proposition that “courts have even held that claims for willful 

infringement may be appropriate even where suit was brough on the day the patent issued.” See 

Dkt No. 23 at 8. However, to the extent that case is relevant to what notice a party has received, 

the defendant in Malibu Boats received a notice letter thirteen days before the suit was filed. See 

Malibu Boats, 2016 U.S. Dist. LEXIS 183202, at *3-4 (court explaining that the patent issued and 

suit commenced on February 16, but defendant received notice on February 3). 

Conversely, the District of Delaware held that fifteen hours’ notice, the same period of 

time that elapsed in this case between UTL’s letter and filing of this suit, was “the most de minimis

claim of willful infringement in this Court’s history” and dismissed a claim for willfulness based 

upon such a short notice period. Sapphire Crossing 2021 WL 149023, at *6 (granting motion to 

dismiss willfulness allegations where plaintiff provided notice of the patent 15 hours before filing 

complaint). Other courts have held that “less than twenty-four hours” notice before commencing 

an action was “not enough time to provide “an alleged infringer a meaningful opportunity to cease 

infringing or negotiate a license.” Sonos, Inc. v. Google LLC, 591 F. Supp.3d 638, 646 (N.D. Cal. 

prior notice and standardizes the time that the letter arrived at SMI to Central Time, it would be 

reasonable to treat such receipt in a manner consistent with the Local Rules of this district. For

example, Local Rule CV-5(d), which pertains to facsimile and electronic service on parties to

disputes before the court, instructs that “[s]ervice after 5:00 p.m. Central Time shall be deemed

served on the following day for purposes of calculating responsive deadlines.”

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2022). Indeed, the Sonos court held that a plaintiff “not plausibly alleged [an alleged infringer] 

had the requisite knowledge” with such few hours’ notice. In the indirect infringement context, 

other courts have similarly held that twenty-four hours’ notice is insufficient to be proper notice 

and is nothing more than a “ploy to ‘gin up’ a factual basis’” for pleading purposes. Marble Voip 

Partners LLC, 2023 WL 3055323, at *11. Accordingly, and on this basis alone, this Court can 

and should likewise dismiss UTL’s claims for willfulness and inducement.

Second, in its Response, UTL attempts to remedy its inadequate pleading by introducing 

new allegations from outside of its Complaint. UTL now claims that “SMI received notice of the 

Asserted Patents in connection with discovery requests in Unification Technologies LLC v. Micron 

Tech., Inc., 6:20-cv-500 (W.D. Tex. 2020) that caused or should have caused it to investigate the 

Asserted Patents.” Dkt No. 23 at 7. UTL makes no showing as to how discovery requests 

concerning other patents than the ones asserted in this action could constitute proper notice of the 

allegations it makes in this lawsuit. Mere knowledge of a patent is insufficient to allege willfulness 

without an allegation of intentional or deliberate infringement of that patent. Plano Encryption 

Techs., LLC v. Alkami Tech., Inc., 2017 WL 8727249, at *2 (E.D. Tex. Sept. 22, 2017). But even

UTL’s new allegations were true, they are not properly before the court because “[w]hen ruling on 

a motion to dismiss . . . the court does not consider additional facts that are alleged in a response 

brief but not in the complaint.” Wilson v. Deutshe Bank Trust Co. Americas, No. 3:18-cv-0854, 

2019 WL 2578625, at * 4 (N.D. Tex. June 24, 2019) (citing Leal v. McHugh, 731 F.3d 405, 407 

n.2 (5th Cir. 2013)). 

For each of these two independent bases, this Court should dismiss UTL’s claims for 

willfulness and indirect infringement. 

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II. This Court Should Strike the Redundant and Immaterial Language in UTL’s 

Complaint

This Court should strike the cited redundant and immaterial language in UTL’s Complaint 

for two reasons. 

First, UTL admits that it considers the language SMI seeks to strike is distinct from its 

allegations invoking willfulness. Dkt No. 23 at 11-12. As cited in SMI’s opening brief, the 

language to be stricken neither asserts a claim nor raises any issue of fact or law. Dkt No. 18 at 

10-13. However, it later states that this language is meant to “put[] SMI on notice that [UTL] 

contends [§ 284] enhanced damages are warranted in this case.” Dkt. No. 23 at 13. However, it 

has pleaded no other basis for these enhanced damages other than its willfulness claims. UTL thus 

admits that this language is coextensive with its willfulness allegations and makes clear that the 

language to be stricken raises no claim and no issue of fact or law on its own. 

Second, the same cases UTL cites make it clear that the rule in Brown & Williamson, 

Augustus, Coney and other cases only applies when the material to be stricken implicates facts or 

issues of law in dispute, which is not the case here. UTL’s own citations to Brown & Williamson 

and Augustus note that “courts generally are not willing to determine disputed and substantial 

questions of law upon a motion to strike.” Dkt No. 23 at 9 (emphasis added). Similarly, UTL’s 

citation to U.S. v. Coney asserts in its parenthetical that “a pleading is not ‘scandalous’ under Rule 

12(f) merely because ‘the matter offends the sensibilities of the objecting party if the challenged 

allegations describe acts or events that are relevant to the action.’” Id. at 7 (emphasis added). 

However, the conclusory language UTL includes in its complaint raise no issues of fact or law. 

Instead, as they admit, they simply “quote[] the Supreme Court’s description of ‘[t]he sort of 

conduct warranting enhanced damages.’” By only quoting language about the “sort of conduct,” 

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but not detailing the actual conduct they accuse, they admit that this language does not raise an 

issue of fact or law. 

III. Conclusion 

For the reasons listed above and in SMI’s opening brief, SMI respectfully requests that this 

Court dismiss UTL’s claims for willfulness and indirect infringement and strike the language-atissue from UTL’s Complaint.

Dated: September 13, 2023 Respectfully submitted,

/s/ Michael R. Rueckheim 

Michael R. Rueckheim

State Bar No. 24081129 

MRueckheim@winston.com

WINSTON & STRAWN LLP

255 Shoreline Drive, Suite 520 

Redwood City, CA 94065 

Telephone: (650) 858-6500 

Facsimile: (650) 858-6559 

Ya-Chiao Chang 

State Bar No. 24070992 

ychang@winston.com

WINSTON & STRAWN LLP

28th Floor Jin Mao Building 

88 Century Avenue

Shanghai 200121 

China 

Telephone +86-21-2208-2628 

Facsimile +86-21-5298-5262 

Evan D. Lewis 

(pro hac vice to be submitted) 

State Bar No. 24116670 

edlewis@winston.com

WINSTON & STRAWN LLP

800 Capitol Street, Suite 2400 

Houston TX 77002

Telephone: (713) 651-2785 

Facsimile: (713) 651-2700 

Case 2:23-cv-00266-JRG-RSP Document 26 Filed 09/13/23 Page 6 of 8 PageID #: 341
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Vivek Krishnan

(pro hac vice to be submitted) 

vkrishnan@winston.com

WINSTON & STRAWN LLP

35 W. Wacker Drive

Chicago IL 60601 

Telephone: (312) 558-9508 

Facsimile: (312) 558-5700 

ATTORNEYS FOR DEFENDANT 

SILICON MOTION INC.

Case 2:23-cv-00266-JRG-RSP Document 26 Filed 09/13/23 Page 7 of 8 PageID #: 342
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CERTIFICATE OF SERVICE

The undersigned hereby certifies that on September 13, 2023, a true and correct copy of 

the attached document was electronically filed with the Clerk of Court using the CM/ECF 

system, which sends notifications of such filing to all counsel of record who have consented to 

accept service by electronic means.

/s/ Michael R. Rueckheim 

 Michael R. Rueckheim

Case 2:23-cv-00266-JRG-RSP Document 26 Filed 09/13/23 Page 8 of 8 PageID #: 343