IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

SHERMAN DIVISION

WAPP TECH LIMITED PARTNERSHIP and 

WAPP TECH CORP.,

 Plaintiffs,

 v. 

JPMORGAN CHASE BANK, N.A.

Defendant.

Civil Action No. 4:23-cv-01137-ALM

JURY TRIAL DEMANDED

DEFENDANT JPMORGAN CHASE BANK N.A.’S OPPOSED MOTION FOR LEAVE 

TO FILE FIRST AMENDED ANSWER AND COUNTERCLAIMS

Pursuant to Federal Rule of Civil Procedure 15(a) and the Patent Scheduling Order entered 

in this case (Dkt. 34), Defendant JPMorgan Chase Bank, N.A. (“JPMC”) respectfully moves for

leave to file a First Amended Answer and Counterclaims to assert an affirmative defense and 

counterclaim claim for inequitable conduct and to amend its affirmative defense of unclean hands 

based on its inequitable conduct counterclaim. JPMC moves within the deadline set by the Court 

in the Patent Scheduling Order and after uncovering evidence during its examination of recent 

document productions by Plaintiffs Wapp Tech Limited Partnership and Wapp Tech Corp. 

(collectively “Wapp Tech”). A copy of JPMC’s proposed First Amended Answer and 

Counterclaims is filed concurrently herewith as Exhibit A (with redline comparison to the original 

answer and counterclaims as Exhibit B) pursuant to Local Rule CV 7(k). 

PROCEDURAL BACKGROUND

On December 22, 2023, Wapp Tech filed this action alleging infringement of five patents 

by JPMC’s purported use of third-party software tools from Apple and Google that are not 

developed, maintained, or otherwise controlled by JPMC. (Dkt. 1). JPMC filed its Answer and 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 1 of 11 PageID #: 545
2 

Counterclaims on March 4, 2024. (Dkt. 14). The Court entered a Patent Scheduling Order on 

May 1, 2024, setting August 6, 2024 as the deadline for the parties’ final amended pleadings. (Dkt. 

26). This deadline has not been amended. (Dkt. 34). No depositions have taken place in this 

matter. Fact and expert discovery do not close until January 17, 2025 and March 14, 2025, 

respectively. (Id.) 

JPMC’S DISCOVERY OF 

NAMED INVENTOR MR. DONAVAN POULIN’S

INEQUITABLE CONDUCT AND UNCLEAN HANDS

Pursuant to the Patent Scheduling Order, Wapp Tech served its P.R. 3-1 Disclosure of 

Asserted Claims and Infringement Contentions on May 17, 2024. Wapp Tech asserted 53 claims 

across five patents-in-suit. Along with its assertion of 53 claims, Wapp Tech served its P.R. 3-2 

document production on May 17, 2024. Counsel for JPMC immediately began reviewing this 

production while concurrently preparing its P.R. 3-3 Invalidity Contentions and P.R. 3-4 document 

production for the large number of 53 asserted claims. 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 2 of 11 PageID #: 546
3

 

In addition, JPMC served a subpoena on Adobe (who acquired Macromedia on or about 

2005) on April 30, 2024, seeking discovery of prior art. (Ex. C). Among other materials, JPMC 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 3 of 11 PageID #: 547
4

sought documents, executables, and source code related to versions of Flash software including 

Macromedia’s . Despite JPMC’s diligence, as of the date of this filing, Adobe 

has not produced any materials in response to JPMC’s subpoena. 

JPMC already began preparing invalidity contentions based on Macromedia’s FlashMX

2004 and FlashMX Professional 2004 software products, which include the . 

As detailed in these invalidity claim charts attached to the proposed First Amended Answer and 

Counterclaims (Ex. A at Ex. 3-7), Macromedia’s feature allows a user to 

simulate network characteristics and displays a window showing an application’s resource usage 

over time. 

 

 

 

And JPMC’s evaluation of the inequitable conduct was ongoing while it: (1) awaited productions 

from Adobe; and (2) continued to evaluate new documents produced by Wapp Tech (including 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 4 of 11 PageID #: 548
5 

settlement agreements between Adobe and Mr. Poulin that were produced recently on July 15, 

2024). Accordingly, JPMC respectfully requests leave to file its First Amended Answer and 

Counterclaims to plead inequitable conduct and to amend its unclean hands affirmative defense 

based on the inequitable conduct allegations. 

LEGAL STANDARD

Federal Rule of Civil Procedure 15(a) “governs a party’s request to amend its pleading 

before a scheduling order’s deadline to amend passes.” OnPoint Sys., LLC v. Protect Animals 

With Satellites, LLC, 2021 WL 3140562 at *1 (E.D. Tex. 2021). Under this rule, courts “freely 

give leave when justice so requires.” FED. R. CIV. P. 15(a). In fact, the rule “evinces a bias in 

favor of granting leave to amend.” Jones v. Robinson Prop. Grp., L.P., 427 F.3d 987, 994 (5th 

Cir. 2005). Ultimately, the decision to grant leave “lies within the sound discretion of the district 

court.” Little v. Liquid Air Corp., 925 F.2d 841, 845–46 (5th Cir. 1992). In making this decision, 

district courts consider: (1) undue delay; (2) bad faith or dilatory motive; (3) repeated failure to 

cure deficiencies by previous amendments; (4) undue prejudice to the opposing party; and (5) 

futility of amendment. Smith v. EMC, 393 F.3d 590, 595 (5th Cir. 2004). 

JPMC’S MOTION FOR LEAVE SHOULD BE GRANTED

JPMC’s motion for leave to amend should be granted because it is made within the deadline 

set by the Patent Scheduling Order and the other relevant factors weigh in favor of leave to amend. 

1. JPMC Files This Motion In A Timely Manner Without Undue Delay

JPMC’s motion is timely filed without undue delay. And Wapp Tech does not oppose 

JPMC’s motion based on undue delay. “Federal courts within the Fifth Circuit have found that 

there is a presumption of timeliness if the movant files its motion to amend by the court-ordered 

deadline.” Am. Legend Homes v. Navigators Specialty Ins., 2019 WL 5721634, at *5, (E.D. Tex. 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 5 of 11 PageID #: 549
6

2019). JPMC does so here. JPMC files this motion before the August 6, 2024 deadline for leave 

to amend and thus the motion is presumptively timely. Further, JPMC’s counterclaim is premised 

upon evidence recently uncovered during discovery. 

2. The Absence Of Any Bad Faith Or Dilatory Motive Favors Leave To Amend 

JPMC’s request for leave is made in good faith and with no dilatory motive. JPMC’s 

inequitable conduct claim is based on facts learned during discovery and could not have been 

brought in the period before leave is required. JPMC understands the pleading requirements under 

Fed. R. Civ. P. 9(b) and brings this motion after exacting review and consideration of the recently 

produced evidence and surrounding circumstances. These efforts to ensure a comprehensive and 

detailed pleading of inequitable conduct required additional time (yet within this Court’s scheduled 

deadline). 

3. The Absence Of Any Repeated Failure To Cure Deficiencies By Previous 

Amendments Favors Leave To Amend 

JPMC has not previously sought to amend its answer or counterclaims. Further, JPMC 

could not have included the inequitable conduct claim in an earlier pleading, 

 This factor therefore weighs in favor 

of granting leave to amend. See OnPoint Sys., 2021 WL 3140562 at *2 (finding this factor weighs 

in favor of granting leave where a party did not fail to cure deficiencies by previous amendments 

and could not have included the information in an earlier pleading). 

4. The Absence Of Any Undue Prejudice To Wapp Tech Also Favors Leave To 

Amend

Wapp Tech will not be unduly prejudiced by this amendment. Discovery is still in the 

early stages and would not need to be reopened. No depositions have been taken in this case. The 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 6 of 11 PageID #: 550
7

addition of the inequitable conduct claim will not impact claim construction or the parties’ 

positions on invalidity and infringement. Further, to mitigate any prejudice perceived by Wapp 

Tech, JPMC is amenable to discussing necessary amendments to the current schedule. 

Accordingly, this factor favors granting leave to amend. 

5. The Proposed Amendment Is Not Futile

JPMC’s amendment is not futile. The proposed inequitable conduct claim set forth in 

Exhibit A identifies the specific who (e.g., ¶¶ 72-83, 98-105), what (e.g., ¶¶ 77-105,), when (e.g., 

¶¶ 98-146), where (e.g., ¶¶ 98-146, 152-175), why and how (e.g., ¶¶ 84-93, 152-175) with 

particularity. 

As detailed in the accompanying Eleventh Counterclaim (Ex. A ¶¶ 72-178), the Patentsin-Suit are unenforceable because at least Mr. Poulin committed inequitable conduct during 

prosecution of these patents before the PTO. As the sole named inventor under 37 C.F.R. § 1.56(c) 

and applicant of the Patents-in-Suit under 37 C.F.R. § 1.41 (pre-AIA), Mr. Poulin owed a duty of 

candor and good faith to the United States Patent and Trademark Office (“PTO”). 

Mr. Poulin’s duty of candor and good faith “includes a duty to disclose to the Office all 

information known to that individual to be material to patentability.” 37 C.F.R. § 1.56(a). 

 

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 7 of 11 PageID #: 551
8

 

 

As detailed in the claim charts attached to the Counterclaims (Ex. 3-7), Macromedia’s 

expressly discloses and anticipates the asserted claims of the Patents-in-Suit. 

Had the PTO known about the functionality of Macromedia’s , the PTO would 

not have allowed those claims. 

As such, JPMC’s First Amended Answer and Counterclaims is more than sufficient to state 

1

 Wapp Tech Ltd. P’ship v. Micro Focus Int’l PLC, 4-18-cv-00469 (E.D. Tex. 2018); 

Wapp Tech Ltd. P’ship v. Wells Fargo & Co., No. 4-18-cv-00501 (E.D. Tex. 2018); Wapp Tech 

Ltd. P’ship v. Bank of America Corp., No. 4-18-cv-00519 (E.D. Tex. 2018) (collectively “Prior 

Wapp Tech Litigations”).

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 8 of 11 PageID #: 552
9 

a claim under Rule 12(b)(6) and is pled with particularity under Rule 9(b). See Exergen Corp. v. 

Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed Cir. 2009). 

CONCLUSION

 For these reasons, JPMC respectfully requests leaves to file its First Amended Answer 

and Counterclaims, which is being concurrently filed herewith as Exhibit A in accordance with 

Local Rule CV-7(k), along with a proposed order. 

Dated: August 5, 2024 Respectfully submitted,

By: /s/Rita J. Yoon 

Rita J. Yoon 

(Illinois Bar. No. 6298019) 

JONES DAY

555 California Street, 26th Floor 

San Francisco, CA 94104 

Telephone: (415) 626-3939 

Facsimile: (415) 875-5700 

ryoon@jonesday.com 

Blaney Harper

(D.C. Bar No. 4559669) 

JONES DAY

2727 North Harwood Street, Suite 500 

Dallas, Texas 75201 

Telephone: (214) 220-3939 

Facsimile: (214) 969-5100 

bharper@jonesday.com 

I. Sasha Mayergoyz 

(Illinois Bar No. 6271800) 

JONES DAY

110 N. Wacker Dr., Suite 4800 

Chicago, IL 60606 

Telephone: (312) 782-3939 

Facsimile: (312) 782-8585 

smayergoyz@jonesday.com 

Yury Kalish (pro hac vice) 

(Virginia Bar No. 87680) 

R. Levent Herguner (pro hac vice)

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 9 of 11 PageID #: 553
10

(New York Bar No. 5722228)

JONES DAY

51 Louisiana Avenue, N.W. 

Washington, D.C. 20001 

Telephone: (202) 879-3939 

Facsimile: (202) 626-1700 

ykalish@jonesday.com 

rlherguner@jonesday.com 

Hannah Mehrle (pro hac vice) 

(Ohio Bar No. 100228) 

JONES DAY

North Point 

901 Lakeside Avenue 

Cleveland, Ohio 44114 

Telephone: (216) 586-3939 

Facsimile: (216) 579-0212 

hmehrle@jonesday.com 

Walter Mostowy (pro hac vice) 

(California Bar No. 341454) 

JONES DAY

1755 Embarcadero Road 

Palo Alto, CA 94303 

Telephone: (650) 739-3939 

Facsimile: (650) 729-3900 

wmostowy@jonesday.com 

Stephen M. Bradley (pro hac vice) 

(Georgia Bar No. 178489) 

JONES DAY

1221 Peachtree Street, N.E., Suite 400 

Atlanta, GA 30361 

Telephone: (404) 521-3939 

Facsimile: (404) 521-8330 

sbradley@jonesday.com 

Zachary Marshall-Carter (pro hac vice) 

(New York Bar No. 6094072) 

JONES DAY

New York, NY 10281 

Telephone: (212) 326-3939 

Facsimile: (212) 755-7306 

zmarshallcarter@jonesday.com

ATTORNEYS FOR DEFENDANT

JPMORGAN CHASE BANK, N.A.

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 10 of 11 PageID #: 554
11 

CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL

I hereby certify that the foregoing document and accompanying exhibits are being filed 

under seal pursuant to the Court’s authorization in paragraph 16 of the Protective Order entered in 

this case. 

Dated: August 5, 2024 /s/Rita J. Yoon

Rita J. Yoon

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the foregoing document and exhibits were 

filed electronically in compliance with Local Rule CV-5(a) and served on counsel of record for 

Plaintiffs electronically by encrypted method on August 5, 2024. 

Dated: August 5, 2024 /s/Rita J. Yoon

Rita J. Yoon

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(i), I hereby certify that: (1) counsel for JPMC and Wapp Tech

have complied with the meet and confer requirement in Local Rule CV-7(h); and (2) Wapp Tech

indicated that it opposes the instant motion. The personal conference required by Local Rule CV7(h) was conducted via Zoom conference on August 5, 2024 by JPMC’s counsel Rita Yoon, 

Blaney Harper, and Yury Kalish and Wapp Tech’s counsel Les Payne, Alden Haris, and Carlos 

Ruiz. The parties are presently at an impasse because JPMC disagrees with Wapp Tech’s position 

that the inequitable conduct counterclaim is futile. 

Dated: August 5, 2024 /s/Rita J. Yoon

Rita J. Yoon

Case 4:23-cv-01137-ALM Document 46 Filed 08/12/24 Page 11 of 11 PageID #: 555