Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 1 of 26 PageID #: 9083
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`
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`ARENDI S.A.R.L.,
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` Plaintiff,
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`v.
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`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`
` Defendant.
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`
`
`PLAINTIFF’S OPENING BRIEF IN SUPPORT OF ITS MOTION TO EXCLUDE IN
`PART THE EXPERT REPORTS AND TESTIMONY OF EDWARD FOX
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`
`C.A. No. 12-1601-LPS
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`
`
`C.A. No. 13-919-LPS
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`SMITH, KATZENSTEIN & JENKINS LLP
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
`
`
`ARENDI S.A.R.L.,
`
` Plaintiff,
`v.
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`GOOGLE LLC,
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` Defendant.
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`Of Counsel:
`Seth Ard
`Beatrice Franklin
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, NY 10019
`sard@susmangodfrey.com
`bfranklin@susmangodfrey.com
`mstraus@susmangodfrey.com
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`
`
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`

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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 2 of 26 PageID #: 9084
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`
`
`John Lahad
`Ibituroko-Emi Lawson
`Burton DeWitt
`Robert Travis Korman
`Brenda Adimora
`1000 Louisiana Street, Suite 5100
`Houston, TX 77002-5096
`jlahad@susmangodfrey.com
`elawson@susmangodfrey.com
`bdewitt@susmangodfrey.com
`tkorman@susmangodfrey.com
`badimora@susmangodfrey.com
`
`Kalpana Srinivasan
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, CA 90067
`ksrinivasan@susmangodfrey.com
`
`Kemper Diehl
`1201 Third Avenue, Suite 3800
`Seattle, WA 98101-3000
`kdiehl@susmangodfrey.com
`
`Dated: March 5, 2021
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`

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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 3 of 26 PageID #: 9085
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`
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`TABLE OF CONTENTS
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`Page
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`NATURE AND STAGE OF PROCEEDINGS .............................................................................. 2 
`SUMMARY OF ARGUMENT ...................................................................................................... 2 
`STATEMENT OF FACTS ............................................................................................................. 3 
`ARGUMENT .................................................................................................................................. 5 
`1.  Dr. Fox’s conclusory reports should be excluded because they fail to meet the reliability
`thresholds of Rule 702 and Daubert. .......................................................................................... 6 
`2.  Dr. Fox’s opinions regarding Pandit are also unreliable because he ignores claim
`elements..................................................................................................................................... 17 
`CONCLUSION ............................................................................................................................. 20 
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`i
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 4 of 26 PageID #: 9086
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)..................................................................................................1
`
`Apple Inc. v. Samsung Elecs. Co.,
`839 F.3d 1034 (Fed. Cir. 2016) (en banc) ...............................................................................17
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`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016)................................................................................................19
`
`Daubert v. Merrell Dow Pharmaceuticals, Inc.,
`509 U.S. 579 (1993) ......................................................................................................... passim
`
`Elder v. Tanner,
`205 F.R.D 190 (E.D. Tex. 2001)................................................................................................7
`
`Google LLC v. At Home Bondholders’ Liquidating Tr.,
`722 F. App’x 1044 (Fed. Cir. 2018) ........................................................................................17
`
`Hyosung TNS Inc. v. Int’l Trade Comm’n,
`926 F.3d 1353 (Fed. Cir. 2019)................................................................................................17
`
`Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc.,
`589 F.3d 1179 (Fed. Cir. 2009)..................................................................................................7
`
`Magnetar Techs. Corp. v. Six Flags Theme Parks Inc.,
`No. CV 07-127-LPS-MPT, 2014 WL 529983 (D. Del. Feb. 7, 2014) ..............................1, 5, 6
`
`Mettler-Toledo, Inc. v. Fairbanks Scales, Inc.,
`No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) .............................................7
`
`Salgado v. Gen. Motors Corp.,
`150 F.3d 735 (7th Cir.1998) ......................................................................................................8
`
`STS Software Sys., Ltd. v. Witness Sys., Inc.,
`No. CIV.A. 1:04-CV-2111-, 2008 WL 660325 (N.D. Ga. Mar. 6, 2008) .................................8
`
`Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc.,
`771 F. App’x 1012 (Fed. Cir. 2019) ........................................................................................17
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`Statutes
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`35 U.S.C. § 102 ................................................................................................................................2
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`ii
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 5 of 26 PageID #: 9087
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`35 U.S.C. § 103 ..................................................................................................................2, 3, 8, 17
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`Other Authorities
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`Federal Rule of Civil Procedure 26 .............................................................................................7, 8
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`Federal Rule of Civil Procedure 56 .................................................................................................7
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`Federal Rule of Evidence 702 ................................................................................................ passim
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`iii
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 6 of 26 PageID #: 9088
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`Plaintiff Arendi S.à.r.l. (“Arendi”) respectfully submits this Opening Brief in Support of
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`its Motion to Exclude in Part the Expert Reports and Testimony of Dr. Edward Fox. Dr. Fox’s
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`testimony is unreliable. Of the “thousands” of obviousness combinations on which he relies, Dr.
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`Fox identifies only 33 because it was “just not practical to do” more. Ex. 1 (Fox Depo. Tr.), at
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`33:17-34:2.1 Instead, Dr. Fox testified, Arendi must “figure out the combinations that are implied.”
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`Id. at 34:16-35:4. Even for Dr. Fox’s thirty-three listed combinations and one anticipatory
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`reference, he offers no analysis. Instead, he provides unexplained series of block quotes and
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`citations. Dr. Fox does not divulge how individual systems or references disclose limitations of
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`the asserted claims, let alone how that art would do so in combination. Indeed, lack of clarity was
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`his goal: Dr. Fox testified, “I have to be conditional because I'm trying to open up—leave—leave
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`open different possibilities to use for testimony.” Id. at 205:12-21. His conclusory approach is
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`legally deficient. E.g., ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
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`1327-28 (Fed. Cir. 2012) (“The expert failed to explain how specific references could be
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`combined, which combination(s) of elements in specific references would yield a predictable
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`result, or how any specific combination would operate or read on the asserted claims. Rather, the
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`expert’s testimony on obviousness was essentially a conclusory statement that a [POSITA] would
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`have known . . . how to combine any of a number of references to achieve the claimed inventions.
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`This is not sufficient . . . .”); Magnetar Techs. Corp. v. Six Flags Theme Parks Inc., No. CV 07-
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`127-LPS-MPT, 2014 WL 529983, at *12 (D. Del. Feb. 7, 2014), adopted by 61 F. Supp. 3d 437,
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`439 (D. Del. 2014) (striking expert who cited documents “[w]ithout an explanation for his reliance
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`on and the relevance of” them and refusing to “comb through these documents, extrapolate the
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`necessary information, analyze it, and hobble together an expert opinion based on assumptions of
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`1 All exhibits accompany the Declaration of Seth Ard, submitted concurrently herewith.
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`1
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 7 of 26 PageID #: 9089
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`what the expert felt was significant.”). Finally, when opining that his Pandit-based combinations
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`invalidate the asserted claims, Dr. Fox declared himself free to ignore numerous elements of those
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`claims. Dr. Fox’s reports do not evidence their reliability. His opinions on anticipation and
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`obviousness should be excluded.
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`
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`NATURE AND STAGE OF PROCEEDINGS
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`In these related actions for patent infringement, Arendi alleges that Motorola Mobility LLC
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`(“Motorola”) and Google LLC (“Google”) infringe claims 1, 8, 23, and 30 of U.S. Patent 7,917,843
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`(“the ’843 Patent”). The Court entered its claim construction order on August 19, 2019 (D.I. 144),
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`fact discovery closed on December 13, 2019 (D.I. 174), and expert discovery closed on January
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`22, 2021 (D.I. 210).2
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`On August 7, 2020, Motorola and Google served the “Expert Report of Edward Fox, Ph.D.
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`on the Invalidity of U.S. Patent No. 7,917,843.” Ex. 2 (“Opening Report”). On December 4, they
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`served the “Reply Expert Report of Edward Fox, Ph.D. on the Invalidity of U.S. Patent No.
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`7,917,843.” Ex. 3 (“Reply Report”). Dr. Fox opines in his report that the claims Arendi asserts are
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`invalid by reason of anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103.
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`
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`SUMMARY OF ARGUMENT
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`The opinions of Google and Motorola’s validity expert, Dr. Edward Fox, fail to meet the
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`basic standards of Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals,
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`Inc., 509 U.S. 579 (1993) and should be excluded for the following reasons:
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`1. Dr. Fox’s conclusory reports fail to explain his reasoning, and his opinions are, therefore,
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`unreliable. Lists of references and series of quotations cannot substitute for analysis, nor
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`2 Citations are to the docket in the Google action unless specifically noted.
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`2
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 8 of 26 PageID #: 9090
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`can an expert require others to “figure out the combinations that are implied.” The Court
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`should exclude Dr. Fox’s opinions on anticipation and obviousness.
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`2. Dr. Fox ignores claim limitations when concluding that the Pandit Patent, in combination
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`with other prior art, renders the Asserted Claims invalid. His opinions are, therefore,
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`unreliable and should be excluded.
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`STATEMENT OF FACTS
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`Dr. Fox asserts only one ground of invalidity under § 102: CyberDesk. Ex. 2, ¶ 184; Ex. 1
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`(Fox Depo. Tr.), at 26:15-19. In contrast, Dr. Fox testified that there are “thousands” of
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`obviousness combinations that underlie his opinion of invalidity under § 103. Ex. 1, at 41:13-
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`42:11; id. at 46:17-47:5. Only thirty-three of these combinations are actually enumerated in Dr.
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`Fox’s expert reports. Ex. 2, ¶ 186; see also Fox Depo. Tr., at 32:8-33:16. Dr. Fox testified that he
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`did not endeavor to list the rest because his report “would be 10,000 pages long, and this was just
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`not practical to do for the purposes of this, these hearings.” Ex. 1, at 33:17-34:2. In order even to
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`identify the “thousands” of other combinations, Dr. Fox testified, “[o]ne—one could read my first
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`report and my reply report and all of the exhibits and all of — figure out the combinations that
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`are implied from that. It’s — it’s all there, it’s just that it’s — it’s factored. It’s split up in a number
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`of different places because there — this is so complicated.” Ex. 1, at 34:16-35:4 (emphasis added);
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`see also Fox Depo. Tr., at 41:13-42:11. Dr. Fox also testified that it is his opinion that CyberDesk
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`itself (i.e., not in combination with other references) renders the claims invalid as obvious, even
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`though section IX of his opening report only identifies combinations of references that he views
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`as invalidating under section 103. Fox Depo. Tr., at 26:20-27:19; Ex. 2, ¶¶ 184 et seq.
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`3
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 9 of 26 PageID #: 9091
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`The thirty-three identified combinations (of the many “thousands” on which Dr. Fox relies)
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`appear as a bare list in the form Prior Art A + Prior Art B—e.g., “Pandit + Eudora System,” as
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`shown in the following excerpt:
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`
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`Ex. Ex. 2, at ¶ 186. Dr. Fox does not identify how this prior art would be combined; how the
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`teachings of a primary reference would be modified in view of the secondary reference; or why
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`one of ordinary skill in the art would have been motivated to combine these specific references.
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`Any motivations to combine identified by Dr. Fox are generalized and untethered to the particular
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`prior art forming the base of his obviousness combinations. See Ex. 2, at ¶¶ 187-97.
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`In the main body of his Opening Report, Dr. Fox introduces only twelve categories of prior
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`art. Ex. 2, at 47-81. Other references comprising his thousands of combinations are not even
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`mentioned. Dr. Fox does not attempt to map those twelve categories or their constituent prior art
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`onto the Asserted Claims or offer any obviousness arguments in this section of his report. Rather,
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`each section ends with a statement directing readers to one or more exhibits “[f]or a detailed,
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`element-by-element analysis of how the” prior art at issue “included, disclosed, and suggested the
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`various elements of the asserted ’843 patent claims.” E.g., Ex. 2, ¶ 134. Those claim charts are
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`nothing more than unexplained series of citations, screenshots and block quotes. As detailed
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`below, Dr. Fox does not identify where limitations are disclosed in the material pasted into his
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`charts—let alone why a POSITA would conclude that they are disclosed.
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`In his reply report, Dr. Fox also declines to set forth the basis of his opinions or adopt a
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`firm rationale. For many limitations, Dr. Fox falls back on his Opening Report. For example, when
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`4
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`Case 1:13-cv-00919-LPS Document 273 Filed 03/05/21 Page 10 of 26 PageID #: 9092
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`discussing the “retrieving the first information” claim element, Dr. Fox states that the first
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`information “is retrieved in the manner fully described in Section VIII(F) and Exhibit L to my
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`Opening Report and the cited materials” without further explanation. Ex. 3, ¶ 247. Elsewhere, Dr.
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`Fox adopts a stance of intentional ambiguity. For example, he writes “the qualifying first computer
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`program disclosed by Pandit could include, for example, an application that displays text, and the
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`qualifying document could include, for example, a text document. The complete method disclosed
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`by Pandit is fully described in Section VIII(L) and Exhibit T to my August 7, 2020 report . . . .”
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`Ex. 3, ¶ 372 (emphasis added) (citation omitted). Dr. Fox’s use of “could” and “for example” to
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`qualify his identification of how claim limitations are disclosed is ubiquitous in his reply report.
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`Dr. Fox made clear during his deposition that the “could” and “for examples” in this sentence were
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`intentionally designed to avoid advancing a concrete position. E.g., Fox Depo. Tr., at 203:20-
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`205:21 (“Remember that this goes after the first report and the exhibits that go with the first report,
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`and there’s many, many different kinds of examples, because Arendi hasn’t made clear its—its
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`arguments at the time that I did the first report, certainly, and even in the second report.ꞏ I have to
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`be conditional because I'm trying to open up—leave—leave open different possibilities to use
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`for testimony. Id. at 205:12-21 (emphasis added)). And those qualifiers are only the beginning:
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`Dr. Fox once again incorporates the entirety of his corresponding claim chart and its series of
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`unexplained quotations and figures. This pattern repeats itself throughout Dr. Fox’s reply report,
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`as Dr. Fox refuses to box himself him by disclosing a firm theory of invalidity.
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`ARGUMENT
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`Federal Rule of Evidence 702 creates “a gatekeeping role for the judge” to “ensur[e] that
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`an expert’s testimony both rests on a reliable foundation and is relevant to the task at hand.”
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`Daubert, 509 U.S. at 595, 597 (citation omitted). Under Rule 702, expert testimony is admissible
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`5
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`only if (1) “the testimony is based on sufficient facts or data,” (2) “the testimony is the product of
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`reliable principles and methods,” and (3) “the expert has reliably applied the principles and
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`methods to the facts of the case.” Fed. R. Evid. 702(b)-(d). The “court must examine the expert’s
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`conclusions in order to determine whether they could reliably follow from the facts known to the
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`expert and the methodology used,” Magnetar Techs. Corp., No. CV 07-127-LPS-MPT, 2014 WL
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`529983, at *4 (quoting Heller v. Shaw Indus., Inc., 167 F.3d 146, 153 (3d. Cir.1999), and “may
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`conclude that there is simply too great a gap between the data and the opinion proffered,” id.
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`(quoting Oddi v. Ford Motor Co., 234 F.3d 136, 146 (3d. Cir. 2000)).
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`1.
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`Dr. Fox’s conclusory reports should be excluded because they fail to meet the
`reliability thresholds of Rule 702 and Daubert.
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`Dr. Fox’s expert reports are unreliable, failing to set forth his rationale and the bases of his
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`opinions regarding anticipation and obviousness. They should be struck. Dr. Fox does not identify
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`or explain how prior art discloses claim limitations—opting instead to paste quotes, screenshots
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`and citations into claim charts without explanation. He does not identify or explain his thousands
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`of obviousness combinations—expecting Arendi to “read my first report and my reply report and
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`all of the exhibits and all of — figure out the combinations that are implied from that,” a process
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`he described as “so complicated.” Ex. 1, at 34:16-35:4 (emphasis added). Indeed, Dr. Fox’s reports
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`are studies in intentional ambiguity: “I have to be conditional,” he testified, “because I'm trying
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`to open up—leave—leave open different possibilities to use for testimony. Id. at 205:12-21
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`(emphasis added)). Dr. Fox’s conclusory and purposefully equivocal expert reports fail to satisfy
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`the basic requirements of Federal Rule of Evidence 702 and Daubert.
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`Courts have repeatedly rejected expert reports that match citations or quotations to claim
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`elements without explanation. For example, Magnetar Technologies Corp. struck such reports as
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`unreliable. Magnetar Techs. Corp., No. CV 07-127-LPS-MPT, 2014 WL 529983, at *6 (D. Del.
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`6
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`Feb. 7, 2014). The reports in Magnetar were “void of the necessary analysis for comparing each
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`element of the claim to the accused product.” Id. at *6. The expert provided citations to documents
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`and depositions for each claim element that he asserted showed the element was practiced, see id.
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`at *7-*12; however, the citations were “divorced from any explanation regarding the what, how or
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`why of their relevance in relation to the element of claim or that limitation's reading on the product”
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`Id. at *10. And, lacking “identification of how the accused [product] meets the limitations of the
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`asserted claim,” they were impermissibly “conclusory.” Id. at *12. As in Magnetar, Dr. Fox
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`“provides data and a conclusion, with the chasm between not bridged by any analysis.” Id. at *12.
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`Though he may copy-and-paste portions of the sources that he associates with each claim element,
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`he does not identify how the prior art disclosed or rendered obvious each limitation of the Asserted
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`Claims. He identifies his sources and then leaves it to others to guess how to connect the dots.
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`In Mettler-Toledo, Inc. v. Fairbanks Scales, Inc., the court struck an expert infringement
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`report under Daubert and Rule 702, finding its methodology “unreliable because [the report]
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`makes conclusory statements that the [accused product] meets certain claim elements but provided
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`little in the way of analysis or reasoning.” No. 9:06-CV-97, 2008 WL 11348468, at *4 (E.D. Tex.
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`Oct. 27, 2008). The rejected report took the form of claim charts with citations to evidence for
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`each claim element but did not “connect the dots between the exhibit or deposition extract [the
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`expert] points to and his conclusions.” Id.; see also id. (holding where report “provides no analysis
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`whatsoever beyond reference to the depositions and deposition exhibits of other individuals, the
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`gap between what [expert] opines and the scanty content of his report is too great”). Similarly, the
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`court in Elder v. Tanner struck an infringement report under Rule 702 and Daubert that stated “the
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`authorities and evidence upon which [the experts] rely, but without any elaboration or reasoning”;
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`7
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`the Court held it “not sufficient simply to list the resources they utilized and then state an ultimate
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`opinion without some discussion of their thought process.” 205 F.R.D 190, 194 (E.D. Tex. 2001).
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`Other Courts have reached similar results when applying Rule 26(a)(2)(B) to parallel facts.
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`E.g., Elder, 205 F.R.D. 190 (striking report under Rule 26 for failing to discuss the expert's
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`reasoning and thought process, and under Daubert for making “conclusory statements” that lacked
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`“any elaboration or reasoning”).3 Rule 26(a)(2)(B) requires “a complete statement of opinions the
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`witness will express and the basis and reasons for them,” as well as “the facts or data considered
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`by the witness in forming” the opinions to be expressed. Fed. R. Civ. P. 26(a)(2)(B); see also Fed.
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`R. Civ. P. 26 Advisory Committee’s note (requiring “detailed and complete written report, stating
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`the testimony the witness is expected to present during direct examination, together with the
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`reasons therefor”); Salgado v. Gen. Motors Corp., 150 F.3d 735, 742 n.6 (7th Cir.1998) (“Expert
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`reports must not be sketchy, vague, or preliminary in nature. . . . Expert reports must include ‘how’
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`and ‘why’ the expert reached a particular result, not merely the expert's conclusory opinions.”).
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`In STS Software Systems, Ltd. v. Witness Systems, Inc. the sufficiency of opening invalidity
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`reports reached the Court as a motion to strike reply reports that attempted to remedy deficiencies
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`in the opening report’s analysis. No. CIV.A. 1:04-CV-2111-, 2008 WL 660325 (N.D. Ga. Mar. 6,
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`2008). STS concluded that the opening report provided “[n]o reason or basis” as required by Rule
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`26(a)(2)(B) for the expert’s opinion that claims were obvious under section 103. STS Software
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`3 Still other Courts have considered the issue under Rule 56, again rejecting reports that fail to
`specifically identify aspects of the art that align with claim limitations and explain the basis for the
`expert’s conclusion that they do so. E.g., Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., 589
`F.3d 1179, 1185-86 (Fed. Cir. 2009) (affirming summary judgment of noninfringement where
`patent holder’s expert declaration cited location in manual where infringing structures found
`without “specifically identify[ing] the infringing features of those components and the reason that
`one of skill in the art would recognize them as infringing”).
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`8
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`Sys., Ltd. v. Witness Sys., Inc., No. CIV.A. 1:04-CV-2111-, 2008 WL 660325, at *2 (N.D. Ga.
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`Mar. 6, 2008). The Court described the report’s “unsupported conclusory opinions” as follows:
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`The opinions expressed on obviousness consist of a summary of prior art
`references, claim charts containing quotes excerpted from these references, and
`a conclusion that a combination of references renders the patent claims obvious.
`The experts’ opinions on obviousness basically amount to a list of references to
`prior art and a conclusory statement that one skilled in the art would have known
`to combine those references to create the inventions claimed by Plaintiffs.
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`Id. at *2 (emphasis added). The Court might have been describing Dr. Fox’s reports. As previously
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`discussed, following superficial, high-level “summaries of prior art references,” Dr. Fox directs
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`readers to “claim charts containing quotes excerpted from those references,” and then a
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`“conclusion that a combination of references renders the patent claims obvious.”
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`Contrary to Rule 702 and Daubert, Dr. Fox has not shown that he applied reliable methods.
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`His Opening Report directs Arendi to one or more exhibits “[f]or a detailed, element-by-element
`
`analysis of how the” prior art at issue “included, disclosed, and suggested the various elements of
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`the asserted ’843 patent claims.” E.g., Ex. 2, ¶ 134. The seventeen lettered exhibits provide no
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`such “detailed, element-by-element analysis.” They instead consist of unexplained series of
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`citations, screenshots and block quotes. Exhibit L, one of two claim charts for Microsoft Word, is
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`typical. E.g., Ex. 2, ¶ 171. Exhibit L consists of 321 pages of screenshots and block quotes without
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`a word of explanation or analysis. See generally, Ex. 2, at Ex. L. For example, Dr. Fox begins his
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`treatment of the claim element “while the document is being displayed . . .” as follows:
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`9
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`Ex. 2, at Ex. L, 228. Dr. Fox does not contextualize this screenshot or explain its relevance.
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`Following a verbatim recitation of the claim language, he provides only screenshots. Dr. Fox does
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`not identify what in the reproduced text and images corresponds to the various limitations in each
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`claim element; for example, there is no identification of what Dr. Fox considers to be the required
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`“analyzing,” “first information,” “plurality of types,” or “second information.” Throughout the
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`exhibit, Dr. Fox’s only glosses take the form of introductory or conclusory phrases like “Word 97
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`discloses this element” or “Word 97 further discloses,” interspersed with verbatim reproduction of
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`the claim language. E.g., Ex. 2, at Ex. L, at p. 59. The main body of Dr. Fox’s report offers no
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`clarity to the chart: the only functionality mentioned in Dr. Fox’s discussion of Microsoft Word is
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`mail merge. Ex. 2, ¶ 161. Yet much of the unexplained material reproduced in Exhibit L has
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`nothing to do with mail merge. For example, Exhibit L reproduces images apparently related to
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`spell- and grammar-checking, hyperlinked URLs and autocomplete. Ex. 2, at Ex. L, pp. 62-79. Dr.
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`Fox offers no explanation as to how this functionality relates to any of the claim limitations.
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`Exhibit L is not an exception. Each of Dr. Fox’s claim chart exhibits takes a similar form.
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`For example, Exhibit D is a 122-page claim chart consisting of screenshots and block quotes
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`related to CyberDesk. See generally Ex. 2, at Ex. D. The portion of the chart concerning the first
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`element of the body of claim 1 (“displaying the document electronically using the first computer
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`program”) runs five pages. Consistent with the remainder of his report, Dr. Fox begins with a
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`conclusory statement followed by unexplained block quotes:
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`Ex. 2, at Ex. D, 13. Dr. Fox’s only contributions to his consideration of this element are the
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`repeated phrase “CyberDesk discloses this element,” eight instances of the phrase “See, e.g.,”
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`citations for reproduced material, and the statement “For example (and without limitation to the
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`Obviousness Statement that is incorporated into each element in this chart), this element is
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`rendered obvious for the reasons stated in Exhibit U, Table 1.” Ex. 2, at Ex. D, 13-17. Exhibit U,
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`Table 1 provides no further detail as explained below. Dr. Fox does not identify what he considers
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`to be the “first computer program” or the “document”—let alone why. Arendi is left to guess his
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`intent from a series of unexplained block quotes and a screenshot.
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`As in Magnetar Technologies, Mettler-Toledo, and the other cases discussed above, those
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`claim charts fail to identify what disclosures or components of the prior art align with specific
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`claim limitations, and Dr. Fox does not explain his rationale for his opinion that they do so. E.g.,
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`Ex. 2, at Ex. L. Dr. Fox does not even provide these deficient claim charts for many of the systems
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`and references that he incorporates into his obviousness combinations. Much prior art appears only
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`in the tables of Exhibit U. E.g., Ex. 2, at Ex. U, p. 71 (referencing “Gourdol,” “Kang” and “Nokia
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`Products and Nokia Product Publications” for which no claim charts are provided).
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`To make matters worse, Dr. Fox writes that his claim charts should not be understood as
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`limited to the plethora of unexplained quotes and screenshots:
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`[I]t would be impossible for me to describe, disclose, and include in this report and
`the supporting charts every place (e.g., every piece of text and/or every figure) in
`the identified prior art where relevant teachings, disclosures, and suggestions can
`be found. Accordingly, I have included illustrative and exemplary citations and
`quotes; my selection of particular quotes or figures does not suggest that other
`portions of the prior art references, products, or systems are not equally relevant,
`illustrative, or exemplary.
`…
`For the sake of brevity, in the charts that accompany this report, I have cited to and
`included only exemplary passages that disclose or indicate certain claim elements;
`I did not reprint the entire reference (which would have provided full textual
`context, but which would have made the charts unduly lengthy and very difficult to
`manage). I reserve the right to raise and rely on additional portions or passages
`of each prior art reference—portions or passages that are not specifically
`reprinted in the charts—as necessary to support, or provide context for, my
`conclusion(s) that a particular reference explicitly or inherently discloses a
`particular claim element to a POSITA at the time of invention.
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`Ex. 2, ¶¶ 116-17 (emphasis assed).
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`Dr. Fox’s reply report is equally opaque. He regularly provides no more than a cross-
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`reference to his deficient Opening Report. E.g., Ex. 3, ¶ 247 (stating first information “is retrieved
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`in the manner fully described in Section VIII(F) and Exhibit L to my Opening Report and the cited
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`materials”). Even when Dr. Fox also identifies possible components in the prior art that he
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`identifies with a particular claim term, he offers only non-limiting examples to which he is
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`unprepared to commit. E.g., Ex. 3, ¶ 372 (“[T]he qualifying first computer program disclosed by
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`Pandit could include, for example, an application that displays text . . . . The complete method
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`disclosed by Pandit is fully described in Section VIII(L) and Exhibit T . . . .”). Dr. Fox’s reply was
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`intentionally designed to avoid advancing a concrete position. E.g., Fox Depo. Tr., at 203:20-
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`205:21 (“Remember that this goes after the first report and the exhibits that go with the first report,
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`and there’s many, many different kinds of examples . . . .ꞏI have to be conditional because I'm
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`trying to open up—leave—leave open different possibilities to use for testimony.” Id. at 205:12-
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`21 (emphasis added)). Dr. Fox’s purposeful obfuscation is rank gamesmanship. The Court’s
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`disclosure standards, the Federal Rules, and the relevant case law all seek to prevent this type of
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`trial by ambush. The Court should not countenance Dr. Fox’s flouting of what is required.
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`Dr. Fox not only fails to identify the relevant disclosures in the prior art; he also provides
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`no explanation for his conclusion that the prior art “could” disclose some terms. For example,
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`when discussing the “while the document is being displayed, analyzing…” element for Microsoft
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`Word, Dr. Fox writes that the first information and plurality of types of informa