LONGHORN HD LLC.,
`
`Plaintiff,
`
`
`v.
`
`NETSCOUT SYSTEMS, INC.,
`
`Defendant.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`MEMORANDUM OPINION
`
`Case No. 2:20-CV-00349-JRG-RSP
`
`
`
`Before the Court is the Motion to Strike Expert Reports of Dr. Kevin Jaffay and Dr. Nisha
`
`Mody Regarding Non-Infringing Alternatives filed by Plaintiff Longhorn HD LLC. Dkt. No. 76.
`
`Plaintiff moves the Court to exclude Defendant NetScout Systems, Inc.’s expert opinions
`
`regarding whether NetScout’s Omnis IDS/Suricata Product can be considered a non-infringing
`
`alternative. Id. at 4.1 The Motion is GRANTED.
`
`I.
`
`BACKGROUND
`
`Plaintiff filed the present suit on November 5, 2020 alleging infringement of U.S. Patent
`
`No. 7,260,846 (the “‘846 Patent”). Dkt. No. 1. Plaintiff alleged that a number of Defendant’s
`
`products infringe including the Omnis IDS product which was built using the Suricata platform
`
`(“Omnis IDS/Suricata Product”). Id. at 6; Dkt. No. 76-2 at 4.
`
`During the course of the litigation, Plaintiff served its First Set of Interrogatories, which
`
`included Interrogatory No. 7. Dkt. No. 76-2 at 13. Defendant served its final response to
`
`Interrogatory No. 7 on November 2, 2021. Dkt. No. 76-3 at 20–21. Interrogatory No. 7 and
`
`Defendant’s final response are reproduced below:
`
`
`1 Citations are to document numbers and page numbers assigned through ECF.
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 1 of 9
`
`

`

`
`
`
`
`
`
`INTERROGATORY NO. 7
`For each Asserted Patent, Identify and describe in detail each allegedly
`design-around and/or non-infringing alternative that you contend can be used as an
`alternative to each Asserted Patent including, but not limited to: (i) a description of
`each alleged design-around and/or noninfringing alternative; (ii) a description of
`when and how each alleged design-around and/or noninfringing alternative was
`developed (if applicable); (iii) the identity of individuals involved in developing
`each alleged design-around and/or non-infringing alternative (if applicable),
`including their titles and departments if they are current or former employees of
`Defendant; (iv) dates when each alleged design-around and/or non-infringing
`alternative was incorporated in your products (if applicable); (v) costs associated
`with developing and implementing each design-around and/or alleged non-
`infringing alternative; and (vi) steps and the time required to develop and
`implement each alleged design-around and/or non-infringing alternative.
`
`RESPONSE TO INTERROGATORY NO. 7:
`Defendant specifically incorporates the General Objections and Specific
`Objections to Definitions. Defendant objects to this Interrogatory to the extent it
`calls for information protected by the attorney-client privilege or any other
`applicable privilege or immunity. Defendant also objects to the phrase “non-
`infringing alternatives,” as there has not yet been a finding that any Accused
`Products infringe.
`Subject to and without waiving the foregoing objections, Defendant states
`that it has not made any attempts to design around the Asserted Patents and
`continues to sell the Accused Products in the United States because it does not
`infringe the Asserted Patents.
`
`During the course of the litigation, the Omnis IDS/Suricata Product was considered an
`
`
`Id.
`
`
`
`Accused Product. See id. at 12-19. Defendant provided discovery on the Omnis IDS/Suricata
`
`Product. See e.g. Dkt. No. 79-6; Dkt. No. 79-12. Defendant also produced source code for the
`
`Omnis IDS/Suricata Product. See Dkt. No. 79-1 ⁋ 6. On November 15, 2021, however, Plaintiff
`
`served its technical expert’s infringement report without any opinions directed to the Omnis
`
`IDS/Suricata Product. Dkt. No. 76 at 6 (“After discovery, LHD was able to locate zero sales of
`
`[the Omnis IDS/Suricata Product] in the United States, and it was not included in LHD’s opening
`
`expert reports.”). Defendant’s subsequent rebuttal expert reports included opinions asserting that
`
`
`
`2
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 2 of 9
`
`

`

`
`the Omnis IDS/Suricata Product is a non-infringing alternative for the Accused Products. Dkt. No.
`
`
`
`76-4 ⁋⁋ 95-103; Dkt. No. 76-5 ⁋⁋ 117-118.
`
`II.
`
`LEGAL STANDARD
`
`A.
`
`Federal Rules of Civil Procedure Disclosure Obligations
`
`A party “who has responded to an interrogatory . . . must supplement or correct its
`
`disclosure or response . . . in a timely manner if the party learns that in some material respect, the
`
`disclosure or response is incomplete or incorrect, and if the additional or corrective information
`
`has not otherwise been made known to the other parties during the discovery process or in writing.”
`
`Fed. R. Civ. P. 26(e)(1). If a party fails to provide information as required by Rule 26(a) or (e), the
`
`party is not allowed to use that information or witness to supply evidence on a motion, at a hearing,
`
`or at a trial, unless the failure was substantially justified or is harmless. Fed. R. Civ. P. 37(c)(1).
`
`A court considers four factors in determining whether a Rule 26 violation is harmless: (1)
`
`the party’s explanation, if any, for its failure to disclose the information in a timely manner; (2)
`
`the prejudice to the opposing party if the evidence is admitted; (3) the possibility of curing such
`
`prejudice by granting a continuance; and (4) the importance of the evidence. See Texas A & M
`
`Research Found. v. Magna Transp. Inc., 338 F.3d 394, 402 (5th Cir. 2003). Courts have broad
`
`discretion in determining whether to admit expert submissions under Rule 37(c). Burleson v. Tex.
`
`Dep’t of Criminal Justice, 393 F.3d 577, 583 (5th Cir. 2004).
`
`The Federal Rules contemplate that contention interrogatories need not necessarily be
`
`answered early in a case. See Fed. R. Civ. Proc. 33(a)(2); see also Rule 33 advisory committee’s
`
`note (1970 amendment, subdivision (b)) (“Since interrogatories involving mixed questions of law
`
`and fact may create disputes between the parties which are best resolved after much or all of the
`
`other discovery has been completed, the court is expressly authorized to defer an answer”). In
`
`
`
`3
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 3 of 9
`
`

`

`
`responding to interrogatories, a party is “not required [] to disclose its experts’ opinions in advance
`
`
`
`of the deadline for serving expert reports.” See Beneficial Innovations, Inc. v. AOL LLC, Case No.
`
`2:07-cv-555, Dkt. No. 260 at 1 (E.D. Tex. May 26, 2010) (Dkt. No. 256); see also IP Innovation
`
`L.L.C. v. Sharp Corp., 219 F.R.D. 427, 430 (N.D. Ill. 2003) (“Plaintiffs’ request for an invalidity
`
`analysis before Sharp is required to produce its expert report is denied as premature”); Duncan v.
`
`Chevron U.S.A., Inc., 2011 U.S. Dist. LEXIS 63707 at *10-11 (E.D. La. June 15, 2011) (discovery
`
`seeking disclosure of expert opinions and bases for such opinions was premature in light of expert
`
`disclosure deadline imposed by the Court).
`
`B.
`
`Daubert Standard
`
`An expert witness may provide opinion testimony if “(a) the expert’s scientific, technical,
`
`or other specialized knowledge will help the trier of fact to understand the evidence or to determine
`
`a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product
`
`of reliable principles and methods; and (d) the expert has reliably applied the principles and
`
`methods to the facts of the case.” Fed. R. Evid. 702.
`
`Rule 702 requires a district court to make a preliminary determination, when requested, as
`
`to whether the requirements of the rule are satisfied with regard to a particular expert’s proposed
`
`testimony. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v. Merrell Dow
`
`Pharm., Inc., 509 U.S. 579, 592-93 (1993). District courts are accorded broad discretion in making
`
`Rule 702 determinations of admissibility. Kumho Tire, 526 U.S. at 152 (“the trial judge must have
`
`considerable leeway in deciding in a particular case how to go about determining whether
`
`particular expert testimony is reliable”). Although the Fifth Circuit and other courts have identified
`
`various factors that the district court may consider in determining whether an expert’s testimony
`
`should be admitted, the nature of the factors that are appropriate for the court to consider is dictated
`
`
`
`4
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 4 of 9
`
`

`

`
`by the ultimate inquiry—whether the expert’s testimony is sufficiently reliable and relevant to be
`
`
`
`helpful to the finder of fact and thus to warrant admission at trial. United States v. Valencia, 600
`
`F.3d 389, 424 (5th Cir. 2010).
`
`Importantly, in a jury trial setting, the Court’s role under Daubert is not to weigh the expert
`
`testimony to the point of supplanting the jury’s fact-finding role; instead, the Court’s role is limited
`
`to that of a gatekeeper, ensuring that the evidence in dispute is at least sufficiently reliable and
`
`relevant to the issue before the jury that it is appropriate for the jury’s consideration. See Micro
`
`Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1391-92 (Fed. Cir. 2003) (applying Fifth Circuit law)
`
`(“When, as here, the parties’ experts rely on conflicting sets of facts, it is not the role of the trial
`
`court to evaluate the correctness of facts underlying one expert’s testimony.”); Pipitone v.
`
`Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir. 2002) (“‘[t]he trial court’s role as gatekeeper [under
`
`Daubert] is not intended to serve as a replacement for the adversary system.’ . . . Thus, while
`
`exercising its role as a gate-keeper, a trial court must take care not to transform a Daubert hearing
`
`into a trial on the merits,” quoting Fed. R. Evid. 702 advisory committee note). As the Supreme
`
`Court explained in Daubert, 509 U.S. at 596, “Vigorous cross-examination, presentation of
`
`contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate
`
`means of attacking shaky but admissible evidence.” See Mathis v. Exxon Corp., 302 F.3d 448, 461
`
`(5th Cir. 2002).
`
`III. ANALYSIS
`
`Plaintiff argues Defendant’s non-infringing alternative opinions should be stricken because
`
`(1) the Omnis IDS/Suricata Product was not properly disclosed as a non-infringing alternative
`
`
`
`5
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 5 of 9
`
`

`

`
`during discovery and (2) Dr. Jeffay2 uses an unreliable method to determine the Omnis
`
`
`
`IDS/Suricata Product is non-infringing.
`
`A.
`
`Disclosure of the Omnis IDS/Suricata Product
`
`Plaintiff argues that because Defendant’s response to Interrogatory No. 7 was insufficient
`
`Defendant’s Omnis IDS/Suricata Product expert opinions should be excluded as a discovery
`
`sanction. Dkt. No. 76 at 8. Plaintiff argues Defendant “failed to disclose that it intended to rely on
`
`[the Omnis IDS/Suricata Product] as a non-infringing alternative during discovery” and should be
`
`precluded from relying on this “newly” identified non-infringing alternative. Id. at 7–8. In other
`
`words, Plaintiff believes Defendant’s response to Interrogatory No. 7 was insufficient to properly
`
`disclose Defendant’s position that the Omnis IDS/Suricata Product was a non-infringing
`
`alternative.
`
`
`
`Defendant responds that “Longhorn has been aware since the initial stages of discovery
`
`that NetScout contends the Omnis IDS/Suricata IDS is a non-infringing alternative.” Dkt. No. 79
`
`at 6. Defendant states that it “responded to Longhorn’s non-infringing alternative interrogatory
`
`and clearly articulated that it believed each of the ‘Accused Products,’ including the
`
`Omnis/Suricata IDS, were non-infringing alternatives.” Id.
`
`
`
`Defendant’s response to Interrogatory No. 7 was sufficient for Plaintiff to understand that
`
`Defendant considered the Omnis IDS/Suricata Product non-infringing. At the time Defendant
`
`responded to Interrogatory No. 7 the Omnis IDS Product/Suricata was still considered an ‘Accused
`
`Product” and Defendant responded that it “continues to sell the Accused Products in the United
`
`States because it does not infringe the Asserted Patents.” Dkt. No. 76-3 at 20–21. There is no
`
`discovery violation that has occurred. Defendant stated that it considered the Omnis IDS/Suricata
`
`
`2 Plaintiff also argues that Dr. Mody’s opinions are unreliable as well as because her opinions suffer the same
`unreliable methodology and are based on Dr. Jeffay’s unreliable opinions.
`
`
`
`6
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 6 of 9
`
`

`

`
`Product to be non-infringing and that has never changed. Defendant has provided Plaintiff with
`
`
`
`discovery on the Omnis IDS/Suricata Product (e.g. manuals, witnesses knowledgeable about the
`
`Omnis Product, and source code of the Omnis Product) and answered that the Omnis IDS/Suricata
`
`Product was non-infringing. Dkt. No. 76-3 at 20–21; Dkt. No. 79-6; Dkt. No. 79-12; Dkt. No. 79-
`
`1 ⁋ 6. Of course, saying a product is non-infringing does not give notice that it is an alternative to
`
`the accused products. However, it is only by Plaintiff’s decision to remove the Omnis IDS/Suricata
`
`Product from the case, after opening reports were due, that Defendant was free to consider the
`
`Omnis IDS/Suricata Product as a non-infringing alternative. Had Plaintiff decided to abandon the
`
`Omnis IDS/Suricata Product earlier perhaps it would have more solid footing to object, but that is
`
`not the case here.
`
`
`
`B.
`
`Dr. Jeffay’s Method of Determining the Omnis IDS/Suricata Product is Non-
`
`Infringing
`
`Plaintiff contends that Dr. Jeffay’s non-infringement opinion for the Omnis IDS/Suricata
`
`Product is based solely on Plaintiff’s decision to abandon the Omnis IDS/Suricata Product
`
`infringement claims. Dkt. No. 76 at 9 (“Because there has been no technical analysis that the
`
`Omnis IDS/Suricata product is not infringing, NetScout has failed to meet the Daubert standards
`
`and its expert opinion regarding this product should be stricken as unreliable.”). Plaintiff asserts
`
`that if Plaintiff’s decision to remove the Omnis IDS/Suricata Product from the case is the only
`
`basis for Dr. Jeffay’s non-infringing alternative opinion than his opinion must be excluded.
`
`Defendant states “[i]t is Longhorn’s burden to prove there are no next best non-infringing
`
`alternatives that could affect a royalty determination.” Dkt. No. 79 at 8–9 (citing Salazar v. HTC
`
`Corp., No. 2:16-cv-01096-JRG-RSP, 2018 WL 2033709, at *3 (E.D. Tex. Mar. 28, 2018)).
`
`Defendant also cites a number of other district court cases that it purports support its proposition
`
`
`
`7
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 7 of 9
`
`

`

`
`that the Plaintiff bears the burden of proof on the “availability” of non-infringing alternatives. Dkt.
`
`
`
`No. 79 at 9 (citing Ameritox, Ltd. v. Millenium Health LLC, No. 1:13-cv-832-WMC, 2015 WL
`
`1520821, at *14 (W.D. Wis. Apr. 3, 2015); Apple, Inc. v. Samsung Elecs. Co., No. 5:11-cv-01846-
`
`LHK, 2013 WL 5958178, at *3 (N.D. Cal. Nov. 7, 2013)).
`
`The Court functions as a gatekeeper, thus any party that seeks to admit an expert opinion
`
`must meet the Daubert standard. See Valencia, 600 F.3d at 424 (5th Cir. 2010) (citing Daubert,
`
`509 U.S. at 592-93. A reliable opinion on whether a product is or is not a non-infringing alternative
`
`is incomplete without opining whether the product is both “available” and “acceptable” (or
`
`whether there are not any “available” or “acceptable” alternatives) Defendant has not shown that
`
`its expert opinions are reliable.
`
` Dr. Jeffay does not discuss how and why he concluded that the Omnis IDS/Suricata
`
`Product is a non-infringing alternative, other than the fact that it is no longer accused of
`
`infringement in this action. See Dkt. No. 76-4 ⁋⁋ 277–78, 291–95 (report of Dr. Jeffay); Dkt. No.
`
`76-5 ⁋⁋ 95–103, 117–18 (report of Dr. Mody). Dr. Jeffay gives no explanation as to what
`
`limitations of the patent-in-suit are not met by the Omnis IDS/Suricata Product, or otherwise
`
`explain his non-infringement position with respect to the Omnis IDS/Suricata Product. Dr. Jeffay
`
`merely gives a high-level overview of the Omnis IDS/Suricata Product and why it may be
`
`“acceptable,” but not whether it is non-infringing or “available.” See Dkt. No. 76-4 ⁋⁋ 277–78,
`
`291. The fact that a product may be unaccused, by itself, is inadequate to provide sufficient
`
`evidence to a draw a conclusion that a particular product is non-infringing. Without a reliable
`
`showing that the Omnis IDS/Suricata Product is “available” the Court must exclude Dr. Jeffay’s
`
`offered opinion that the Omnis IDS/Suricata Product is a non-infringing alternative. Similarly, the
`
`
`
`8
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 8 of 9
`
`

`

`
`Court must exclude Dr. Mody’s opinions, which are predicated on Dr. Jeffay’s unreliable non-
`
`
`
`infringing alternative opinion.
`
`IV. CONCLUSION
`
`Accordingly, the Motion is GRANTED. The Court ORDERS that neither Dr. Jeffay nor
`
`Dr. Mody shall be permitted to offer the opinion that the Omnis IDS/Suricata Product is a non-
`
`infringing alternative.
`
`
`
`
`
`
`
`9
`
`WAG, Exhibit 2004
`Amazon.com, Inc. v. WAG Acquisition, LLC, IPR2022-01433
`Page 9 of 9
`
`