Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Plaintiff,
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`STRATOSAUDIO, INC.,
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`v.
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`SUBARU OF AMERICA,
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`Defendant.
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`Case No. 6:20-CV-01128-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF STRATOSAUDIO, INC.’S MOTION TO STRIKE CERTAIN OPINIONS
`OF DR. MATTHEW SHOEMAKE
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`Petitioner Hyundai Ex-1031, 0001
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`

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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 2 of 18
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`BACKGROUND .................................................................................................................1
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`LEGAL STANDARD ..........................................................................................................2
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` ARGUMENT .......................................................................................................................3
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`A.
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`Dr. Shoemake’s Claim Construction Opinions Should be Struck ...........................3
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`“stream” / “broadcast stream” (’405 patent, all claims) ............................. 3
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`Preamble of claim 12 of the ’405 patent ..................................................... 5
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`“media content” (’081 and ’405 patents, all claims)................................... 6
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`“content” (’081 and ’405 patents, all claims) ............................................. 7
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`“an electronic receiving device” and “the electronic receiving device”
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`(’405 patent, all claims) .............................................................................. 8
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`“present” (’307 patent, all claims) .............................................................. 9
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`“at least one broadcast segment is corollary to the at least one of the
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`plurality of media content” (’307 patent, all claims) ................................ 10
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`“associating” (’307 patent, all claims) ...................................................... 10
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`Claim 11 of ’307 patent ............................................................................ 11
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`B.
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`Dr. Shoemake’s Claim Constructions and Related Opinions Are Unduly
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`Prejudicial ..............................................................................................................12
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`CONCLUSION ..................................................................................................................13
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`i
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`Petitioner Hyundai Ex-1031, 0002
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 3 of 18
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
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`Page(s)
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`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010)..............................................................................................4, 9
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`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003)................................................................................................12
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`Ballard Med. Prods. v. Allegiance Healthcare Corp.,
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`268 F.3d 1352, 1358 (Fed. Cir. 2001)........................................................................................2
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`Catalina Mktg. Int’l v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002)....................................................................................................5
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`Convolve, Inc. v. Compaq Comput. Corp.,
`812 F.3d 1313 (Fed. Cir. 2016)..............................................................................................6, 8
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`Cordis Corp. v. Bos. Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009)..................................................................................................3
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`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000)..................................................................................................6
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`Markman v. Westview Instruments,
`517 U.S. 370 (1996) ...................................................................................................................2
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`Novartis Pharms. Corp. v. Accord Healthcare, Inc.,
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`21 F.4th 1362, 2022 U.S. App. LEXIS 58 ...............................................................................11
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`Yeti Coolers, LLC v. RTIC Coolers, LLC,
`No. A-15-CV-597-RP, 2017 U.S. Dist. LEXIS 11163 (W.D. Tex. Jan. 27, 2017) .....2, 3, 4, 12
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`Local Rule CV-7, I .........................................................................................................................15
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`FEDERAL RULES
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`ii
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`Petitioner Hyundai Ex-1031, 0003
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 4 of 18
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`INTRODUCTION
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`Plaintiff StratosAudio, Inc. (“Stratos”) hereby moves to strike certain portions of the non-
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`infringement expert report submitted by Defendant Subaru of America, Inc.’s (“Subaru” or
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`“Defendant”) technical expert, Dr. Matthew Shoemake, specifically those portions that rely on
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`untimely and improper claim constructions Dr. Shoemake offered to support his non-
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`infringement opinions.
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`Dr. Shoemake’s new claim constructions, first raised more than six months after the
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`Court issued its claim construction order, are untimely and prejudicial. Subaru had every
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`opportunity to seek construction of these terms at the appropriate time but chose not to do so.
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`Even after the Court issued its Claim Construction Order, Subaru had ample time before Dr.
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`Shoemake served his rebuttal report to seek any necessary clarification for any disputed claim
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`terms. Rather than seeking guidance from the Court, however, Subaru and Dr. Shoemake wish
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`to argue claim construction directly to the jury, which is improper. Because Dr. Shoemake’s
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`arguments are untimely and because they violate several tenets of claim construction, Stratos
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`hereby requests that the Court issue an order striking these portions of Dr. Shoemake’s report,
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`specifically the new constructions set forth in paragraphs 70-78, 83, 84, 119, 302-305, 325, 326,
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`329, and 336, as well as the non-infringement opinions based on these improper constructions.
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`BACKGROUND
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`On August 17, 2021, Subaru filed its Opening Claim Construction Brief. Dkt. 40. On
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`September 8, 2021, Stratos filed its Responding Claim Construction Brief. Dkt. 43. On
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`September 20, 2021, Subaru filed its Reply Claim Construction Brief (Dkt. 48), and a Joint
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`Claim Construction Statement was filed on September 22, 2021 (Dkt. 50). Stratos filed its Reply
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`Claim Construction Brief on September 24, 2021. Dkt. 51. Through their briefing, the parties
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`disputed the construction of eleven claim terms. The Court held a Markman hearing on
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`1
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`Petitioner Hyundai Ex-1031, 0004
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`

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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 5 of 18
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`September 28, 2021 and issued a Claim Construction Order on December 15, 2021 where it
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`construed all eleven disputed terms by giving them their plain and ordinary meaning. Dkt. 65.
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`On June 21, 2022, Subaru served the rebuttal expert report of its non-infringement expert,
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`Dr. Shoemake. In his report, Dr. Shoemake provides new opinions and constructions for eight
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`claim terms the Court did not previously construe. See Ex. 11 at ¶¶ 70-78, 83, 84, 119, 302-305,
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`325, 326, 329. In addition, Dr. Shoemake redefines a claim term previously addressed by the
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`Court during claim construction. Id. at ¶ 336. Dr. Shoemake then proceeds to rely on his new
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`claim interpretations to conclude that Subaru does not infringe the asserted patents. Id. at ¶¶ 70-
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`78, 83-85, 119-129, 188-191, 305-320, 325-326, 330-333, 336-339.
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` LEGAL STANDARD
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`Claim construction is the province of the court, and a court may set out a procedure for
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`when claim terms are to be construed. Markman v. Westview Instruments, 517 U.S. 370, 372,
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`(1996) (“We hold that the construction of a patent, including terms of art within its claim, is
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`exclusively within the province of the court.”); see also Ballard Med. Prods. v. Allegiance
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`Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) (“Markman does not require a district
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`court to follow any particular procedure in conducting claim construction. It merely holds that
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`claim construction is the province of the court, not a jury.”). Consequently, an expert’s role is
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`limited to applying the Court’s claim construction and, for non-construed claim terms, applying
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`the plain and ordinary meaning as would be understood by a person having ordinary skill in the
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`art. See Yeti Coolers, LLC v. RTIC Coolers, LLC, No. A-15-CV-597-RP, 2017 U.S. Dist. LEXIS
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`11163, at *7 (W.D. Tex. Jan. 27, 2017) (“The third phrase was not construed, as neither party
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`requested its construction. As a result, the plain and ordinary meaning of that phrase applies as
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`well.”). An infringement expert may not usurp the role of the Court by providing novel claim
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`1 Exhibits are attached to the declaration of Jonathan Lamberson, filed herewith.
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`2
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`Petitioner Hyundai Ex-1031, 0005
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 6 of 18
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`constructions for claim terms not previously construed by the Court. Id. at *8 (“The court is the
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`final authority on the meaning of claim terms, and the jury must be instructed by the court, not
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`the parties or their experts, on those meanings.”). When an expert goes beyond his prescribed
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`role, it is appropriate for a Court to strike those portions of his report and thereby prevent him
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`from presenting new legal conclusions to the jury. Cordis Corp. v. Bos. Sci. Corp., 561 F.3d
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`1319, 1337 (Fed. Cir. 2009) (holding it was proper to exclude expert opinion attempting to opine
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`on claim construction to the jury).
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` ARGUMENT
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`A.
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`Dr. Shoemake’s Claim Construction Opinions Should be Struck
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`“stream” / “broadcast stream” (’405 patent, all claims)
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`While opining on the claim element “a broadcast stream,” found in independent claim 12
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`of the ’405 patent, Dr. Shoemake provides a new claim construction for the word “stream” based
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`on two dictionary definitions. Ex. 1, ¶ 78. Specifically, Dr. Shoemake opines that the word
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`“‘stream’ generally means ‘a continuous flow of data, especially video and audio material,
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`relayed over the Internet’ or ‘digital data (such as audio or video material) that is continuously
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`delivered one packet at a time and is usually intended for immediate processing or playback.’”
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`Id. Based on his new definition of “stream,” particularly the portion requiring a “continuous
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`flow” of “video and audio material,” Dr. Shoemake opines that a text message sent over a
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`cellular network cannot constitute “media” sent over a “broadcast stream.” Id.
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`Dr. Shoemake’s opinions are improper, for multiple reasons. First, they are untimely.
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`Subaru never proposed construing “stream” or “broadcast stream” during claim construction.
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`See Dkt. 40. Subaru never disclosed the two dictionary definitions its expert now relies on,
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`despite the fact that this Court required disclosure of extrinsic evidence by August 4, 2021. See
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`Dkt. 33 at 3. Because this new construction is untimely, it should be excluded on that basis
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`3
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`Petitioner Hyundai Ex-1031, 0006
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`

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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 7 of 18
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`alone. See Yeti Coolers, 2017 U.S. Dist. LEXIS 11163, at *12 (“having its expert offer an
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`opinion months after the deadline for disclosing disputed terms, in which he opines that the plain
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`and ordinary meaning of the phrase actually includes one more word, would seem to violate the
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`scheduling order.”).
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`Second, Dr. Shoemake’s opinion contradicts express definitional language in the
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`specification, and it excludes preferred embodiments. Specifically, the ’405 patent says that
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`“broadcast stream” is a “broad term[] that comprise[s] broadcasts or transmissions” over any
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`“media conveyance methodologies.” See Dkt. 1, Ex. 7 at 5:47-61. The patent lists a number of
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`different “media conveyance methodologies,” and that list specifically includes cellular
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`networks, such as 3G wireless networks. Id.2 The specification also gives examples of the types
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`of “media” that can be sent over these networks, and that list specifically includes “text
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`messages” as one example. Id. at 5:28-35. By excluding cellular networks and text messages,
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`Dr. Shoemake’s construction contradicts the express definition of “broadcast stream” and it
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`excludes a preferred embodiment, both of which are improper. See Adams Respiratory
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`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (“[a] claim construction
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`that excludes the preferred embodiment ‘is rarely, if ever, correct and would require highly
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`persuasive evidentiary support.’”).
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`Dr. Shoemake’s proposed constructions also imports other limitations not found in the
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`claims. For example, Dr. Shoemake suggests “streams” must be sent “over the Internet,” but that
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`is clearly wrong since the patent lists “internet” as just one in a long list of possible “broadcast
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`streams.” See ’405 Patent at 5:47-61. Dr. Shoemake also suggests that a “stream” must carry
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`only “video or audio material,” but that is also clearly wrong, since the ‘405 patent says these are
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`2 Dr. Shoemake confirmed in his deposition that 3G, HSDPA, UMTS and CDMA in the ’405
`patent all refer to types of cellular networks. See Ex. 2 (Shoemake Tr.) at 51:46-60:18.
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`4
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`Petitioner Hyundai Ex-1031, 0007
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`

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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 8 of 18
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`just two examples of the types of “media” sent via a “broadcast stream.” Id. at 5:28-35.
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`It was improper for Dr. Shoemake to blindly apply dictionary definitions while ignoring
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`the express teachings in the specification. Phillips, 415 F.3d at 1319 (“[U]ndue reliance on
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`extrinsic evidence poses the risk that it will be used to change the meaning of claims in
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`derogation of the ‘indisputable public records consisting of the claims, the specification and the
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`prosecution history,’ thereby undermining the public notice function of patents.”). This is
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`especially true here, where his opinions raise new claim constructions never previously argued or
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`disclosed. Paragraph 78 of Dr. Shoemake’s report should therefore be struck, along with the
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`non-infringement opinions that rely on these untimely and incorrect claim construction opinions.
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`Preamble of claim 12 of the ’405 patent
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`While opining on the claim element “a broadcast stream,” discussed above, Dr.
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`Shoemake opines that the preamble of claim 12 is limiting, and that it requires a single broadcast
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`stream. Ex. 1, ¶¶ 70-71. Both of these claim construction positions are untimely and incorrect.
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`First, Subaru never previously asked the Court to find the preamble of claim 12 to be
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`limiting. In general, a preamble only limits the invention “if it recites essential structure or steps,
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`or if it is ‘necessary to give life, meaning, and vitality’ to the claim. . . . a preamble is not
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`limiting ‘where a patentee defines a structurally complete invention in the claim body and uses
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`the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l v.
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`Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). In claim 12, the preamble—the
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`“method for combining multiple media obtained from a broadcast stream, the method
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`comprising,” does not recite any essential steps for the claim and only states the purpose of the
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`claim. No claim elements refer to the preamble for antecedent basis, and the body itself
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`describers the manner in which media is combined. At no point does Dr. Shoemake provide any
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`justification for why the preamble of the ’405 patent is limiting. Indeed, in his deposition, Dr.
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`5
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`Petitioner Hyundai Ex-1031, 0008
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 9 of 18
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`Shoemake admitted several times that he had not actually formed a final opinion on whether the
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`preamble was limiting, and he agreed it was the Court’s responsibility make this determination.
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`See Ex. 2 at 45:15-17, 46:1-19, 49:10-13. Because the preamble is not limiting, and because
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`Subaru’s opinions on the preamble are untimely, they should be excluded.
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`Further, even if the preamble is deemed limiting, Dr. Shoemake’s suggestion that the
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`claim requires only a single “broadcast stream” is legally incorrect. In patent claims, “an
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`indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-
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`ended claims.” See Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313, 1321 (Fed. Cir.
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`2016) (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). Here,
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`there is nothing in the claim or specification that limits the invention to use of a single stream,
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`and again Subaru never took this position during claim construction.
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`Because his new claim construction opinions are untimely and legally improper,
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`paragraphs 70-78 of Dr. Shoemake’s report should be struck, along with the non-infringement
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`opinions based on those constructions.
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` “media content” (’081 and ’405 patents, all claims)
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`While opining on the term “first media content” in the ’081 and ’405 patents, Dr.
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`Shoemake opines that a “POSITA would understand that the ‘media content’ communicates a
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`concept or idea to which users of the accused system would respond.” Report ¶ 83 (emphasis
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`added). Neither the claims nor the specification, however, require a “response” to all “media
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`content.”
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`The specification describes “media content” as “any form of content” that is “capable of
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`communicating a concept or idea.” See Dkt. 1, Ex. 1 (’081 Patent) at 5:22-29; Dkt. 1, Ex. 7
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`(’405 Patent) at 5:27-33. This definition does not require a “response” to that content. The
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`asserted claims in particular only require a response to some, but not all, media content. For
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`6
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`Petitioner Hyundai Ex-1031, 0009
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 10 of 18
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`example, in the ’081 patent, the asserted claims recite, “a first receiver module configured to
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`receive at least a first media content” and “a second receiver module configured to receive at
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`least a second media content.”3 See Dkt. 1, Ex. 1 (’081 patent), Claim 9 (emphasis added). The
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`claims go on to recite “an input module configured to receive at least a response input
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`responsive to the second media content.” Id. (emphasis added). There is no requirement of a
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`response to the first media content.
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`The ‘405 patent is similar. It recites “receiving, using an electronic receiving device, at
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`least a first media content” and “receiving, using the electronic receiving device, at least a
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`second media content.” Dkt. 1, Ex. 7 (’405 patent), Claim 12 (emphasis added). It then recites
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`“detecting at least a response input responsive to the second media content.” Id. (emphasis
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`added). Again, there is no requirement for any response to the first media content.
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`During claim construction, Subaru never suggested all “media content” requires user
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`response. Consequently, Dr. Shoemake’s new claim construction is an inappropriate attempt to
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`import additional limitations into the patent claims, and paragraph 83 of Dr. Shoemake’s report
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`should be struck, along with his non-infringement opinions that rely on this construction.
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`“content” (’081 and ’405 patents, all claims)
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`While opining on the term “first media content” in the ’081 and ’405 patents, Dr.
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`Shoemake also defines the term “content” to mean “information made available by a website or
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`other electronic medium.” Ex. 1, ¶ 84 (emphasis added). In support of his definition, Dr.
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`Shoemake cites to the Oxford Dictionary of English. Id. This definition is improper because it
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`suggests the primary or preferred way of making “media content” available is via a website. The
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`patents, however, give an express definition for the phrase “media content”:
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`3 The claim was corrected to remove the word “signal” before “content.” Dkt. 1, Ex. 1 (’081
`Patent), certificate of correction.
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`7
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`Petitioner Hyundai Ex-1031, 0010
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 11 of 18
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`As used herein, the terms ‘media’ or ‘media content’ are broad terms that
`comprise any form of content, including without limitation, graphics, videos,
`Sounds, text, text messages, interactive applications, vibrations, television and/or
`radio programming, podcasts, movies, songs, games, telephone conversations,
`speeches, news, information, advertisements, polls votes, personal messages,
`and/or other physical manifestations capable of communicating a concept or idea.
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`See Dkt. 1, Ex. 1 (’081 Patent) at 5:22-29; Dkt. 1, Ex. 7 (’405 Patent) at 5:28-35. That definition
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`is not limited to websites. Because the meaning of the phrase “media content” is clear in light of
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`the specification, there is no need to resort to extrinsic dictionary definitions. See Phillips, 415
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`F.3d at 1315. Accordingly, paragraph 84 of Dr. Shoemake’s report should be excluded.
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`“an electronic receiving device” and “the electronic receiving device”
`(’405 patent, all claims)
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`In providing his opinion on claim 12 of the ’405 patent, Dr. Shoemake opines that “‘an
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`electronic receiving device’ or ‘the electronic receiving device’ means a single electronic device
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`under the plain and ordinary meaning.” Ex. 1, ¶ 119 (emphasis added). Dr. Shoemake then
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`opines that Stratos’ infringement positions, which rely on a combination of a car head unit with
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`an Apple iPhone, are flawed because the combination of car and iPhone is two devices, not a
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`single device, as Dr. Shoemake opines is required by the claims. Id.
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`Dr. Shoemake’s position is incorrect as a matter of law. As discussed above, “an
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`indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-
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`ended claims containing the transitional phrase ‘comprising.’” Convolve, 812 F.3d at 1321.
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`Claim 12 begins with “[a] method for combing multiple media obtained from a broadcast stream,
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`the methods comprising,” and thus falls directly under this meaning that the “electronic
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`receiving device” is not limited to one device but can include multiple devices. Embodiments
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`with multiple devices are also shown throughout the specification, for example in Figure 1B of
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`the ’405 patent, which shows a “primary device” and “ancillary device(s).” Dkt. 1, Ex. 7 (’405
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`patent), Fig. 1B. Dr. Shoemake’s construction would read out these embodiments, which is
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`8
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`Petitioner Hyundai Ex-1031, 0011
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 12 of 18
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`improper. Adams, 616 F.3d at 1290. Again, Subaru never previously requested a construction
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`that limited the claim to a single device. Consequently, Dr. Shoemake’s paragraph 119 should
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`be struck, along with any non-infringement opinions based on that improper construction.
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` “present” (’307 patent, all claims)
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`Dr. Shoemake opines that the term “present,” as used in claim 11 of the ’307 patent,
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`requires visual display, and that it excludes presentation of data for later display. Ex. 1, ¶¶ 302-
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`05. Dr. Shoemake asserts that is the case because “present,” he alleges, is used in connection
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`with “display” throughout the specification of the ’307 patent. Id., ¶ 302. This argument ignores
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`the plain meaning of the word “present,” and improperly attempts to import a limitation from one
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`embodiment in the specification.
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`The plain meaning of the word “present” includes not just visual display, but also giving
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`information for later presentation. See Ex. 3 (Webster’s Dictionary) (including definitions such
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`as “to give,” “hand over” and “offer for viewing”). The fact that the patent specification uses
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`both “present” and “display” in the same sentence demonstrates that the terms have separate
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`meanings. Furthermore, the specification is clear that the term “present” includes providing
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`information to the display. See ’307 patent 6:13-16 (describing how RDBS/RDS or other data
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`from the radio receiver is provided to the radio display); 6:62-7:1 (describing how stored content
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`in the APS module is provided to the external display); 11:52-58 (describing how material from
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`a television adapter is provided to the external television display). Subaru never asked that
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`“present” be construed to mean “display” during claim construction. Consequently, Dr.
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`Shoemake’s claim construction, which limits “present” to visual display, is untimely,
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`unsupported and inconsistent with the specification, and paragraph 302 of Dr. Shoemake’s report
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`should be struck along with the non-infringement opinions based on that construction.
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`9
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`Petitioner Hyundai Ex-1031, 0012
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 13 of 18
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`“at least one broadcast segment is corollary to the at least one of the
`plurality of media content” (’307 patent, all claims)
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`In his analysis of the ’307 patent, Dr. Shoemake asserts that the limitation “at least one
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`broadcast segment is corollary to the at least one of the plurality of media content” requires that
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`there be “a plurality of media content at one time” in the car radio. Ex. 1, ¶ 329. He says the
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`accused Subaru vehicles cannot infringe because they only have one song in memory at a time.
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`Id., ¶ 333. This construction is improper. Nothing in the claim language says the “plurality of
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`media content” must be present on the claimed system “at one time.” Nothing in the
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`specification requires such a construction. To the contrary, the ’307 patent describes music
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`played over the radio. See, e.g., Dkt. 1, Ex. 3 (’307 Patent), Abstract (“A broadcast response
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`system provides, e.g., a radio broadcast listener with the ability to obtain media content such as
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`music or speech while listening to the radio”). A person of ordinary skill (and even a layperson)
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`would understand that radio songs are received by the radio one song after another, not in
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`parallel (e.g., a radio does not receive multiple songs all at once). Subaru never proposed its “at
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`one time” construction during claim construction. The claim language recognizes this by
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`referring only requiring “at least one of the plurality of media content,” i.e., a single song in
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`memory when it is received. The claim does not require the entirely plurality to be in memory at
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`any one time. There must be a plurality of songs, but that is clearly the case for radio broadcasts,
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`which send multiple songs. Because it is untimely and unsupported, the construction in
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`paragraph 329 should be excluded, along with the non-infringement opinions that rely on it.
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` “associating” (’307 patent, all claims)
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`Dr. Shoemake asserts in his report that “[t]he plain and ordinary meaning of
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`‘associating,’ which is a verb, requires the actor to do something to associate two things with
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`each other. The plain and ordinary meaning would not include merely extracting and
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`10
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`Petitioner Hyundai Ex-1031, 0013
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 14 of 18
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`temporarily storing media content identifying data elements that the broadcaster’s
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`equipment has already associated with the media content.” Ex. 1, ¶ 336 (emphasis added).
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`Dr. Shoemake’s construction of the term “associating” is highly inappropriate. First, the
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`term was already construed by the Court to have its “plain and ordinary meaning.” Dkt. 65.
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`That construction did not include either the affirmative definition Dr. Shoemake provides, or his
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`new negative limitation.4 Second, Dr. Shoemake provides no evidence or support for his new
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`negative limitation. Nowhere in his report does he indicate language in the patent claims or
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`specification that supports his construction. Ex. 1, ¶ 336. Such evidence would be especially
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`necessary here, since for negative limitations “there generally must be something in the
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`specification that conveys to a skilled artisan that the inventor intended the exclusion.” See
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`Novartis Pharms. Corp. v. Accord Healthcare, Inc., 21 F.4th 1362, 2022 U.S. App. LEXIS 58 at
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`*5. Because Dr. Shoemake is improperly seeking to redefine a term this Court already
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`considered on claim construction, his new claim construction in paragraph 336 should be
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`excluded, along with his non-infringement opinions that rely on that construction.
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`
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`Claim 11 of ’307 patent
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`Dr. Shoemake asserts that the limitations of claim 11 of the ’307 patent must function in
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`a particular order: “presentation (‘an output configured to present at least a portion of data
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`elements stored in the electronic memory of the communication device’), then selection via
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`interface (‘to provide selective outputting using an interface’), then output (‘of at least one of the
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`following: the media content identifying data, the media content, the corollary broadcast
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`segment, a temporal position of the corollary broadcast segment of the broadcast stream’).” Ex.
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`1, ¶ 325. He then opines that, “[a] POSITA would understand ‘stored in the electronic memory
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`4 This construction also shows why Subaru’s claim construction positions were disingenuous.
`During claim construction Subaru said the term “associating” was indefinite, Dkt. 40 at pp. 9-14,
`but its expert had no problem defining the term.
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`11
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`Petitioner Hyundai Ex-1031, 0014
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 15 of 18
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`of the communication device’ to mean the storage that occurs after the tag button is pressed.”
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`Id., ¶ 326 (emphasis added).
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`These opinions are untimely since Subaru never suggested ordering was required during
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`claim construction. The opinions are also incorrect as a matter of law because there is no
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`indication that there is any required order of steps in the claim language. As a system claim,
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`claim 11 provides a list of components that are necessary to practice the claimed invention. It
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`does not require an “order” for the claimed components, only that they be present. Method
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`claims, by contrast, can sometimes require an ordering, but “[u]nless the steps of a method
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`actually recite an order, the steps are not ordinarily construed to require one.” Altiris, Inc. v.
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`Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). The asserted claims of the ’307 patent
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`are not method claims, and Subaru never asked for them to be construed as such. For system
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`claims, Stratos is not aware of any case law suggesting such claims may require an order of
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`operation. Even if such case law exists, Subaru provides no explanation for why the claims of
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`the ’307 patent in particular would require such ordering. Therefore, the Court should strike the
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`opinion in at least paragraph 325 and 326 of Dr. Shoemake’s report, as well as his non-
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`infringement positions based on that construction.
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`B.
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`Dr. Shoemake’s Claim Constructions and Related Opinions Are Unduly
`Prejudicial
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`Since they were raised in rebuttal reports, Stratos had no notice of these new claim
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`constructions to allow for proper rebuttal and defense, and thus the prejudice is clear. See Yeti
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`Coolers, 2017 U.S. Dist. LEXIS 11163, at *12. Allowing Subaru to benefit from its last minute
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`and improper actions would be highly prejudicial to Stratos. There is also no room in the current
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`case schedule to address newly disclosed claim constructions. As of the date of this Motion,
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`both parties’ experts have been deposed, and expert discovery closed on July 18, 2022. Dkt. 90.
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`12
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`Petitioner Hyundai Ex-1031, 0015
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`Case 6:20-cv-01128-ADA-DTG Document 105 Filed 07/25/22 Page 16 of 18
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`Dispositive and Daubert motions will be heard at the same time as this motion. Trial is
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`scheduled to begin on September 26, 2022. Any continuance by the Court would necessarily
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`result in reopening claim construction and potentially new fact and/or expert discovery. With
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`trial less than two months away, such a course is not feasible and would enhance the prejudice to
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`Stratos.
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`CONCLUSION
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`For the foregoing reasons, Stratos respectfully requests the Court to strike the above
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`claim constructions and co