IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

VALTRUS INNOVATIONS LTD,

Plaintiff,

 v. 

AT&T INC., et al

Defendants.

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CASE NO. 2:23-cv-00443-JRG

(Lead Case)

JURY TRIAL DEMANDED

VALTRUS INNOVATIONS LTD,

Plaintiff,

 v. 

T-MOBILE USA, INC., et al

Defendants.

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CASE NO. 2:23-cv-00444-JRG

(Member Case)

JURY TRIAL DEMANDED

VALTRUS INNOVATIONS LTD,

Plaintiff,

 v. 

VERIZON COMMUNICATIONS, INC., 

et al 

Defendants.

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CASE NO. 2:23-cv-00445-JRG

(Member Case)

JURY TRIAL DEMANDED

PLAINTIFF’S OPPOSED MOTION FOR LEAVE TO AMEND THE COMPLAINT 

TO ASSERT U.S. PATENT NO. 7,769,050 

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TABLE OF CONTENTS

I. BACKGROUND ................................................................................................................ 1

II. LEGAL STANDARD ......................................................................................................... 3

III. ARGUMENT ...................................................................................................................... 4

A. None of the Factors Under Rule 15 Warrant Denial of Leave to Amend............... 4

B. To the Extent Rule 16 Applies, Valtrus Has Shown Good Cause to Amend. ........ 5

IV. CONCLUSION ................................................................................................................... 6

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TABLE OF AUTHORITIES

 Page(s) 

Federal Cases

Foman v. Davis, 

371 U.S. 178 (1962) ...................................................................................................................2

Insituform Technologies, Inc. v. CAT Contracting, Inc., 

385 F.3d 1360 (Fed. Cir. 2004)..................................................................................................3

Netlist, Inc. v. Samsung Elecs. Co., LTD., 

2023 WL 5532133 (E.D. Tex. Aug. 28, 2023) ......................................................................3, 4

United Mine Workers of America v. Gibbs, 

383 U.S. 715 (1966) ...................................................................................................................3 

Wimm v. Jack Eckerd Corp., 

3 F.3d 137 (5th Cir. 1993) .........................................................................................................2

Rules

Fed. R. Civ. P. 15 ................................................................................................................... passim

Fed. R. Civ. P. 16 ................................................................................................................... passim

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Plaintiff Valtrus Innovations Ltd. (“Plaintiff” or “Valtrus”) files this opposed motion for 

leave to file an amended complaint to assert U.S. Patent No. 7,769,050 (“the ’050 patent”), which 

generally relates to systems and methods for mitigating interference in wireless communications.

The Court should grant the motion because the pleading amendment deadline has not yet passed 

and, pursuant to Fed. R. Civ. P. 15(a), courts should “freely give leave where justice so requires.”

Moreover, Defendants have been on notice of the ’050 patent and Valtrus’s infringement 

theories from the beginning of the case. Specifically, Valtrus identified the ’050 patent in its 

original Complaints as a patent that Defendants “likely” infringed, and also timely served 

infringement contentions, detailing Valtrus’s theories and providing representative evidence. As 

such, granting this motion would not require any change to the schedule and would not prejudice 

Defendants in any way. 

BACKGROUND

On September 27, 2023, Valtrus separately sued the Verizon defendants1 (Case No. 2:23-

cv-00445-JRG) and both the T-Mobile defendants2 and OnePlus defendants3 (Case No. 2:23-cv00444-JRG). Valtrus subsequently filed an Amended Complaint against T-Mobile and OnePlus 

on January 8, 2024.

Both the original Complaints and the Amended Complaint identified (without formally 

asserting) the ’050 patent and alleged that Defendants likely infringed by, inter alia, their sale and 

1 The Verizon defendants are Verizon Communications Inc. and Cellco Partnership, d/b/a 

Verizon Wireless (collectively, “Verizon”). The “Complaint against Verizon” is Dkt. 1 of Case 

No. 2:23-cv-00445-JRG. 

2 The T-Mobile defendants are T-Mobile USA, Inc. T-Mobile US, Inc., and Sprint Corp. 

(collectively, “T-Mobile”).The “Amended Complaint against T-Mobile (and OnePlus)” is Dkt. 51 

of Case No. 2:23-cv-00443-JRG.

3 The OnePlus Defendants are OnePlus Technology (Shenzen) Co., Ltd. and OnePlus 

Mobile Communications (Guangdong) Co., Ltd. (collectively, “OnePlus”).

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use of WiFi6 enabled products. Valtrus then timely served infringement contentions for the ’050 

patent setting out its theories (and evidentiary support) on various claims, including how use of an 

optional “spatial reuse” feature of the WiFi6 standard infringed. See Berkowitz Decl. at ¶3. Valtrus 

suspected that Defendants implemented this feature based on pre-litigation diligence,4 but took a 

conservative approach, electing to simply identify it in the complaint, serve contentions and take 

focused discovery to confirm Defendants’ implementation of the “spatial reuse” feature. Valtrus 

assumed that if Defendants did not implement the feature, they would simply say so and the parties 

could avoid litigation on it. Accordingly, days after discovery opened, Valtrus served an 

interrogatory asking in relevant part: 

For each Wi-Fi access point or Wi-Fi extender identified by you in response to 

INTERROGATORY NO. 1, provide a complete explanation of how You have, 

during the Relevant Time-Period, mitigated interference in said Wi-Fi access point 

and Wi-Fi extenders. Your answer should identify any operational standards or 

features, such as the spatial reuse operation5 and the mesh beacon collision 

avoidance operation,6 known or requested to be implemented by You . . .

Berkowitz Decl. ¶5 (emphasis added; footnotes in original). 

Defendants refused to respond to the part of this interrogatory directed to spatial reuse, 

supplement the response after several meet and confers, or produce any responsive documents 

regarding their implementation (or non-implementation) of that feature.7 Berkowitz Decl. at ¶6. 

Rather, Defendants took the position that the patent is not in the case because it was not formally 

asserted and that they therefore didn’t have to respond to any discovery or, for that matter, 

4 Valtrus worked with consultants and experts to review publicly available information to 

determine that T-Mobile and Verizon likely implemented (and therefore infringed) the claimed 

“second tier of the scheduling strategy” of the ’050 patent. See ’050 Patent at 27:19-23; Berkowitz 

Decl. at ¶2. 5 See, e.g., 802.11ax (2021), Section 26.10.

6 See, e.g., 802.11 – 2020, Section 4.3.21.5.5.

7 Valtrus has asserted another patent against “mesh beacon collision avoidance”

functionality, also addressed in this interrogatory, that is not at issue in this motion. 

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cooperate in resolving the question of whether and to what extent they implement the accused 

feature of WiFi6.

Accordingly, given Defendants’ refusal to cooperate, and because Defendants refuse to 

even deny implementation of the spatial reuse feature, Valtrus seeks leave to amend its complaint 

and assert the ’050 patent.

LEGAL STANDARD

Federal Rule of Civil Procedure 15(a)(2) provides that “a party may amend its pleading 

only with the opposing party’s written consent or the court’s leave. The court should freely give 

leave when justice so requires.” The standards for leave to amend a complaint are governed by 

Fifth Circuit law. Insituform Technologies, Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1372 

(Fed. Cir. 2004). Only five circumstances justify denial of leave to amend in the Fifth Circuit: 

“undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure 

deficiencies by amendments previously allowed undue prejudice to the opposing party, and futility 

of amendment.” Wimm v. Jack Eckerd Corp., 3 F.3d 137, 139 (5th Cir. 1993) (citing Foman v. 

Davis, 371 U.S. 178, 182 (1962)). “Under the rules, the impulse is toward entertaining the broadest 

possible scope of action consistent with fairness to the parties; joinder of claims, parties and 

remedies is strongly encouraged.” United Mine Workers of America v. Gibbs, 383 U.S. 715, 724 

(1966).

Federal Rule of Civil Procedure 16 provides that “[a] schedule may be modified only for 

good cause and with the judge’s consent.” Fed. R. Civ. P. 16(b)(4). Even under the “good cause” 

standard, courts frequently permit plaintiffs to amend the complaint to assert additional patents 

against the same defendant. See, e.g., Netlist, Inc. v. Samsung Elecs. Co., LTD., 2023 WL 5532133, 

at *3 (E.D. Tex. Aug. 28, 2023) (granting leave to amend to assert an additional patent despite 

plaintiff’s “tactical, self-imposed delay” in amending due to the “importance” of “seeking a 

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vindication of . . . patent rights” and the “lack of prejudice” from filing the motion “prior to claim 

construction and well before the close of fact discovery,” after the deadline for infringement 

contentions). 

ARGUMENT

The Court should grant Valtrus’s motion to amend, given the early stage of this case, 

Valtrus’s timely service of infringement contentions for the ’050 patent, and the lack of prejudice 

to either Verizon or T-Mobile. 

A. None of the Factors Under Rule 15 Warrant Denial of Leave to Amend. 

Valtrus should be granted leave to amend the complaint and assert the ’050 patent because 

none of the Fifth Circuit’s factors justifying denial of leave are present here. 

Undue Delay: Valtrus did not unduly delay in seeking amendment. Instead, Valtrus put TMobile and Verizon on notice of their likely infringement in its pleadings and further timely served 

infringement contentions for the ’050 patent on the date set forth in the Scheduling Order. Valtrus’s 

amendment comes well before Markman proceedings begin (which is set for December 4, 2024 

(eight months away) and before the deadline to amend the pleadings on September 18, 2024).

Thus, Valtrus’s amendment is timely. 

Bad Faith: Valtrus is not moving to amend in bad faith or with dilatory motive. Valtrus’s 

amendment will not delay the schedule of this case because Defendants have been on notice since 

service of the original Complaints and there are still approximately ten months left in fact 

discovery. Defendants can serve invalidity contentions, for example, within 6 weeks of an Order 

granting leave to amend, without any disruption to the rest of the schedule. Further, Valtrus is 

seeking to vindicate its patent rights, and the scope of the amendment is narrow, simply asserting 

one additional patent against the same defendants, with largely similar accused products to what 

is already accused in the case (i.e., WiFi6 devices also implementing “mesh beacon collision 

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avoidance”). See Complaint against Verizon at ¶¶75, 108; Amended Complaint against T-Mobile 

at ¶¶91, 125 

Repeated Failure to Cure Deficiencies: Valtrus has never previously failed to cure 

deficiencies with respect to assertions made against Verizon and T-Mobile. The Amended 

Complaint against T-Mobile and OnePlus added OnePlus as a party to its ’858 patent allegations 

but did not address any of the allegations with respect to the ’050 patent. 

Undue Prejudice: Defendants face no undue prejudice from amendment, as they’ve been 

on notice about Valtrus’s view that they likely infringe the ’050 patent at least since Valtrus filed 

its complaint in September 2023. Further, Valtrus’s infringement contentions with respect to the 

’050 patent were timely served, further reducing any possible prejudice. 

Futility: Valtrus’s amendment is not futile, as it properly states a claim for patent 

infringement. Defendants provided infringement contentions that Defendants have never refuted. 

Because none of the factors supporting denial of leave are present, the Court should grant 

Valtrus’s motion to amend. 

B. To the Extent Rule 16 Applies, Valtrus Has Shown Good Cause to Amend. 

The liberal Rule 15 standard should apply since the pleading amendment deadline is not 

until September 18, 2024. Dkt. No. 48. Nonetheless, Valtrus readily meets the “good cause” 

standard of Rule 16 to the extent it applies. Valtrus is asserting a patent already named in the 

operative complaints against the same defendants and largely similar products in the same case, 

which will benefit judicial economy. Valtrus timely provided infringement contentions and was 

diligent both in discovery (serving interrogatories in December 2023, shortly after discovery 

opened) and in bringing this motion (shortly after Defendants failed to provide invalidity 

contentions and after they confirmed they would not participate in discovery). Valtrus’s good 

cause is similar or greater than the good cause found in similar cases where the Court granted leave 

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to amend and assert an additional patent. For example, in Netlist, the Court granted leave to amend 

to assert an additional patent despite plaintiff’s “tactical, self-imposed delay.” 2023 WL 5532133, 

at *3. The amendment here similarly seeks to add an additional patent “well in advance of the 

deadline for filing amended pleadings.” Id. at *1. Thus, should the Court find that if Rule 16 

applies, Valtrus has shown sufficient good cause for amendment. 

CONCLUSION

For the reasons stated above, Valtrus respectfully requests that the Court grant its motion 

for leave to amend and file an amended complaint.

Dated: April 3, 2024 Respectfully submitted, 

/s/ Matthew G. Berkowitz with permission 

Andrea L. Fair 

Matthew G. Berkowitz – LEAD ATTORNEY

Patrick R. Colsher 

Navid C. Bayar 

Aaron L. Berkowitz

Reichman Jorgensen Lehman & Feldberg LLP 

100 Marine Parkway, Suite 300 

Redwood Shores, CA 94065 

Tel: (650) 623-1401 

mberkowitz@reichmanjorgensen.com 

pcolsher@reichmanjorgensen.com 

nbayar@reichmanjorgensen.com 

amorris@reichmanjorgensen.com 

Khue V. Hoang 

Reichman Jorgensen Lehman & Feldberg LLP 

400 Madison Avenue, Suite 14D 

New York, NY 10017 

Tel: (212) 381-1965 

khoang@reichmanjorgensen.com 

Of Counsel: 

Andrea L. Fair

Texas Bar No. 24078488 

Claire Abernathy Henry

Texas State Bar No. 24053063

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Garrett C. Parish 

Texas State Bar No. 24125824 

Email: gparish@wsfirm.com

WARD, SMITH & HILL, PLLC

1507 Bill Owens Pkwy. 

Longview, TX 75604 

Tel: (903) 757-6400 

andrea@wsfirm.com 

claire@wsfirm.com

Attorneys for Plaintiff Valtrus Innovations Ltd.

CERTIFICATE OF SERVICE

The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system pursuant to Local Rule CV-5(a)(3) on April 3, 2024. 

/s/ Andrea L. Fair 

 Andrea L. Fair

CERTIFICATE OF CONFERENCE

The undersigned hereby certifies that it has complies with the requirements of Local Rule 

CV-7. A telephonic meet and confer occurred between counsel for Plaintiff and Defendants on 

March 28, 2024, regarding Valtrus’ motion to amend the complaint to add the ‘050 patent. 

Defendants oppose the amendment of the compliant, and those discussions conclusively ended in 

an impasse, leaving an open issue for the Court. 

/s/ Andrea L. Fair 

 Andrea L. Fair

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