HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Steven J. Rocci (Admitted Pro Hac Vice)
`Email: srocci@bakerlaw.com
`Kevin M. Bovard, SBN 247521
`Email: kbovard@bakerlaw.com
`BAKER & HOSTETLER LLP
`2929 Arch Street, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`Attorneys for Defendant/Counter-Claimant
`GUEST-TEK INTERACTIVE
`ENTERTAINMENT LTD.
`(additional counsel listed on following page)
`
`IN THE UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`WESTERN DIVISION
`
` Case No.: 2:16-cv-08033-AB-FFM
`[Honorable André Birotte Jr.]
`RESPONSIVE EXPERT REPORT OF
`DR. ODED GOTTESMAN
`
`NOMADIX, INC.,
`Plaintiff,
`
`v.
`GUEST-TEK INTERACTIVE
`ENTERTAINMENT LTD.,
`Defendant/Counter-
`Claimant,
`
` v.
`NOMADIX, INC.,
`Counter-Defendant.
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`BAKER & HOSTETLER LLP
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`ATTORNEYS AT LAW
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`PHILADELPHIA
`
`GUEST TEK EXHIBIT 1027
`Guest Tek v. Nomadix, IPR2019-01191
`
`

`

`
`
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Michael J. Swope (Admitted Pro Hac Vice)
`Email: mswope@bakerlaw.com
`Curt R. Hineline (Admitted Pro Hac Vice)
`Email: chineline@bakerlaw.com
`BAKER & HOSTETLER LLP
`999 Third Avenue, Suite 3500
`Seattle, WA 98104-4040
`Telephone:
`206.332.1379
`Facsimile:
`206.624.7317
`
`Michael R. Matthias, SBN 57728
`Email: mmatthias@bakerlaw.com
`Joelle A. Berle, SBN 252532
`Email: jberle@bakerlaw.com
`BAKER & HOSTETLER LLP
`11601 Wilshire Boulevard, Suite 1400
`Los Angeles, CA 90025-0509
`Telephone: 310.820.8800
`Facsimile: 310.820.8859
`
`Attorneys for Defendant/Counter-Claimant
`GUEST-TEK INTERACTIVE
`ENTERTAINMENT LTD.
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`BAKER & HOSTETLER LLP
`BAKER & HOSTETLER LLP
`
`ATTORNEYS AT LAW
`ATTORNEYS AT LAW
`
`PHILADELPHIA
`PHILADELPHIA
`
`

`

`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`84.
`In addition, it is also my opinion that the doctrine of equivalents does
`not apply under the doctrine of ensnarement. It is my understanding that this
`doctrine prevents patentee’s from expanding the scope of coverage of their claim
`to cover what is in, or obvious in light of, the prior art. In reaching my opinion that
`the doctrine applies here, I asked whether a hypothetical claim that reads the same
`as the claims at issue, but that cover comparing an incoming packet’s source IP
`address with IP addresses of authorized devices (rather than profiles), would be
`patentable over the prior art. In my opinion, it would not be patentable over the
`prior art for the reasons expressed in my prior report on invalidity, but also over
`other additional prior art.
`85. For example, I have included a claim chart as Exhibit 9 demonstrating
`that Guest Tek’s GlobalSuite products, which as I explained in my prior report
`were prior art as of at least June 1998 for GlobalNet and June 1999 for
`GlobalMeeting, would have included all limitations of both asserted claims of the
`917 patent based on how Dr. Stubblebine is applying the claims to OVI.
`86.
`In addition, I understand that Guest Tek’s OVI server was placed into
`commercial use at the JW Marriott Indianapolis when it first opened, which was in
`February 2011. https://www.hospitalityupgrade.com/News/News-Article-
`Details/?docID=3954. Because it was in public use, was known, and on sale a year
`before the priority date of the 917 patent (which as I explained is the patent’s Oct.
`2012 filing date), it is my understanding that the OVI server was prior art to the
`917 patent. Moreover, the functionality of OVI that Dr. Stubblebine relies upon in
`forming his opinion that OVI incorporates the asserted claims has not changed
`since 2011, which I confirmed through my review of the source code. Therefore,
`the doctrine of equivalents cannot be applied to the OVI server because it would
`ensnare the prior art Global Suit products as well as the prior art OVI server itself.8
`
`
`8 For these same reasons, it is my opinion that the Global Suite products and OVI
`server rendered the asserted claims of the 917 patent invalid at least under 35
`U.S.C 102(a), 102(b) which I will testify to if asked.
`
`
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`BAKER & HOSTETLER LLP
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`ATTORNEYS AT LAW
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