Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 1 of 13 PageID #: 13949
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC. ET AL.,
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`Defendants.
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`APPLE, INC.,
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`Defendant.
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`
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`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
`
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTION
`TO STRIKE PORTIONS OF THE EXPERT REPORT OF NEIL SIEGEL
`RELATING TO THE UNDISCLOSED INVALIDITY THEORY
`BASED ON “DYNAMICALLY ELECTING SERVERS”
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`

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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 2 of 13 PageID #: 13950
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`TABLE OF CONTENTS
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`Page No(s).
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`I.
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`II.
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`INTRODUCTION .........................................................................................................1
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`FACTUAL BACKGROUND ........................................................................................1
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`III.
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`LEGAL STANDARD ....................................................................................................3
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`IV.
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`ARGUMENT .................................................................................................................4
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`V.
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`CONCLUSION ..............................................................................................................6
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`i
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 3 of 13 PageID #: 13951
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`Betzel v. State Farm Lloyds,
`480 F.3d 704 (5th Cir. 2007) .....................................................................................................3
`
`DataQuill Ltd. v. Huawei Techs. Co. Ltd.,
`2015 WL 9450821 (E.D. Tex., June 11, 2015) ..........................................................................5
`
`Keranos, LLC v. Silicon Storage Tech., Inc.,
`797 F.3d 1025 (Fed. Cir. 2015)..................................................................................................3
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`2011 WL 5158285 (E.D. Tex., Aug. 11, 2011) .........................................................................3
`
`Tyco Healthcare Group LP v. Applied Medical Resources Corp.,
`2009 WL 5842062 (E.D. Tex., Mar. 30, 2009) .................................................................3, 5, 6
`
`Other Authorities
`
`Rule 3-3 ........................................................................................................................................2, 4
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`
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`ii
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 4 of 13 PageID #: 13952
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“Plaintiff” or “AGIS”) submits this Motion
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`to Strike Portions of the October 29, 2018 Expert Report of Neil Siegel (“Siegel Report”)
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`relating to Defendant Apple Inc.’s (“Apple”) new invalidity theory addressing the server-based
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`claim limitations of the U.S. Patent Nos. 9,408,055 (“the ’055 patent”), 9,445,251 (“the ’251
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`patent”), 9,749,829 (“the ’829 patent”), and 9,467,838 (“the ’838 patent”) (collectively, the
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`“Location Patents”). The Siegel Report contends, for the first time in this case, that the server-
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`based limitations are disclosed by the Force XXI Battle Brigade and Below (“FBCB2”) system’s
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`alleged feature of “dynamically electing servers.” This alleged feature is absent from Apple’s
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`December 1, 2017 invalidity contentions and April 16, 2018 amended invalidity contentions.
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`Apple’s invalidity charts did not identify where in the FBCB2 system’s supporting evidence the
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`alleged feature of “dynamically electing servers” is found. Because Apple failed to put AGIS on
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`notice of the “dynamically electing servers” theory in accordance with the Court’s patent rules
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`and docket control order (See Dkt. 85) in this case, AGIS respectfully moves the Court to strike
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`the related portions of the Siegel Report as improperly based on a new, previously-undisclosed
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`invalidity theory.
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`II.
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`FACTUAL BACKGROUND
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`Apple served invalidity contentions on December 1, 2017 and amended its invalidity
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`contentions on April 16, 2018. Neither Apple’s invalidity contentions nor its accompanying
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`charts identified any “dynamically electing servers” to disclose the server-based limitations of
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`the asserted Location Patents. Instead, Apple’s invalidity contentions advanced a single theory
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`based on an allegedly centralized server. Ex. A1, Exhibit D-14 to Apple’s Amended Invalidity
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`1 References to Exs. A–G refer to the exhibits submitted with the Declaration of Alfred R. Fabricant in support of
`this motion and attached hereto.
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`

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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 5 of 13 PageID #: 13953
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`Contentions, at pp. 23-24, 30. Particularly, Apple’s invalidity charts set forth a theory that "first
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`server" claim limitations were allegedly met by an FBCB2 system’s command center server
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`installed at the “battalion task force headquarters” in Bosnia and Kosovo, and that "second
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`server" claim limitations a command center server at USAREUR Headquarters in Hiedelberg,
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`Germany. Ex. A, Exhibit D-14 to Apple’s Amended Invalidity Contentions, at pp. 23-24. Apple
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`maintained this exact position in its April 16, 2018 Amended Invalidity Contentions. Apple
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`reiterated its centralized server theory when it served its final election of prior art references,
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`electing FBCB2 “. . . as described in at least the materials identified in Exhibit B-14 to Apple’s
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`Patent Rule 3-3 Invalidity Contentions served December 1, 2017, Apple’s Amended Patent Rule
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`3-3 Invalidity Contentions served April 16, 2018.” Ex. B, Apple’s Final Election of Prior Art
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`References, at p. 5. Apple has not sought leave to amend its contentions as required by P.R. 3-6.
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`The Siegel Report is the first instance in which Apple has disclosed any theory related to
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`“dynamically electing servers.” Ex. C, Siegel Report, at ¶¶ 71, 100, 104, 164, 168, 183, 219,
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`235, 243, 265, 273, 418, and 470. In fact, the only evidence relied upon by Dr. Siegel in support
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`of “dynamically electing servers,” documents bearing production numbers SIEGEL000794-5 and
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`SIEGEL001003-5, was produced on October 26, 2018––over six months after Apple’s April 16,
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`2018 Amended Invalidity Contentions. Ex. D–F. The charted centralized server theory––which
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`did not change in substance from Apple’s December 1, 2017 invalidity contentions and its April
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`16, 2018 amended contentions––bears no semblance and relation to the new “dynamically
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`electing servers” theory set forth for the first time by Dr. Siegel. Cf. Ex. A, Exhibit D-14 to
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`Apple’s Amended Invalidity Contentions, at pp. 23-24, 30; Siegel Report at ¶ 100.
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`2
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 6 of 13 PageID #: 13954
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`III. LEGAL STANDARD
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`Invalidity contentions are intended to put the party alleging infringement on notice of the
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`alleged infringer’s arguments as to “[w]hether each item of prior art anticipates each asserted
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`claim or renders it obvious. If a combination of items of prior art makes a claim obvious, each
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`such combination, and the motivation to combine such items, must be identified.” P.R. 3-3.
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`These rules are intended to “require parties to crystallize their theories of the case early in the
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`litigation so as to prevent the ‘shifting sands’ approach” to litigation. Keranos, LLC v. Silicon
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`Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015) (citations omitted); see also Tyco
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`Healthcare Group LP v. Applied Medical Resources Corp., 2009 WL 5842062, at *1 (E.D. Tex.,
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`Mar. 30, 2009) (explaining that the purpose of the rules is to “further the goal of full, timely
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`discovery and provide all parties with adequate notice and information with which to litigate
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`their cases, not to create supposed loopholes through which parties may practice litigation by
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`ambush.”). Parties must show good cause and seek leave of the Court to amend their invalidity
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`contentions. P.R. 3-6.
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`In determining whether to strike an expert report for a failure to comply with local P.R.
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`3-3, Courts in this District have considered a list of five non-exclusive factors: (1) the danger of
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`unfair prejudice to the non-movant; (2) the length of the delay and its potential impact on judicial
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`proceedings; (3) the reason for the delay, including whether it was within the reasonable control
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`of the movant; (4) the importance of the particular matter, and, if vital to the case, whether a
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`lesser sanction would adequately address the other factors to be considered and also deter future
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`violations of the Court’s Scheduling Orders, Local Rules, and the Federal Rules of Civil
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`Procedure; and (5) whether the offending party was diligent in seeking an extension of time, or
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`in supplementing discovery, after an alleged need to disclose the new matter became apparent.
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`LML Patent Corp. v. JPMorgan Chase & Co., 2011 WL 5158285, at *4 (E.D. Tex., Aug. 11,
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`3
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 7 of 13 PageID #: 13955
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`2011); Tyco Healthcare Group LP v. Applied Medical Resources Corp., 2009 WL 5842062, at
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`*2 (E.D. Tex. 2009); See also Betzel v. State Farm Lloyds, 480 F.3d 704, 707 (5th Cir. 2007).
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`IV. ARGUMENT
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`
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`Apple should not be permitted to rely on previously-undisclosed invalidity theories raised
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`for the first time in the Siegel Report. In its failure to comply with P.R. 3-3 and the Court’s
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`docket control order, Apple’s invalidity contentions and its accompanying charts failed to
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`identify Dr. Siegel’s “dynamically electing servers” theory to disclose the server-based
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`limitations of the asserted Location Patents. Instead, Apple’s invalidity contentions advanced a
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`different theory based on a centralized server, particularly FBCB2 system’s command center
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`server installed at headquarters. Ex. A, Exhibit D-14 to Apple’s Amended Invalidity
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`Contentions, at pp. 23-24. Apple reinforced this theory in its April 16, 2018 amended invalidity
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`contentions and its final election of prior art references, submitting that FBCB2 alone and in
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`combination “as described in at least the materials identified in Exhibit B-14 to Apple’s Patent
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`Rule 3-3 Invalidity Contentions served December 1, 2017, Apple’s Amended Patent Rule 3-3
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`Invalidity Contentions served April 16, 2018.” Ex. B, Apple’s Final Election of Prior Art
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`References, at p. 5. Apple did not seek leave and show good cause to amend its contentions as
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`required by P.R. 3-6.
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`The Siegel Report is the first instance in which Apple has disclosed any theory related to
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`“dynamically electing servers.” Ex. C, Siegel Report at ¶¶ 71, 100, 104, 164, 168, 183, 219, 235,
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`243, 265, 273, 418, and 470. The Siegel Report relies on two documents in support of
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`“dynamically electing servers.” Ex. C, Siegel Report at ¶ 71, citing SIEGEL000794-5 and
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`SIEGEL001003-5. See Ex. D and E. These two documents were produced on October 26,
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`2018––over six months after Apple’s April 16, 2018 amended invalidity contentions. The
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`charted centralized server theory––which did not change in substance from Apple’s December 1,
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`4
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 8 of 13 PageID #: 13956
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`2017 invalidity contentions and its April 16, 2018 amended invalidity contentions––bears no
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`semblance and relation to the new “dynamically electing servers” theory set forth for the first
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`time by Dr. Siegel. Cf. Ex. A, Exhibit Apple’s Amended Invalidity Contentions, at pp. 23-24,
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`30; Siegel Report at ¶ 100. Dr. Siegel confirmed that, for design reasons, the “dynamically
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`electing servers” implementation is radically different from a centralized server and instead
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`involves multiple units acting as servers which change server status over time. Ex. G, Transcript
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`of November 14, 2018 Deposition of Neil Siegel, at 102:2-103:7; 202:8-16. Apple’s contentions
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`do not support this “dynamically electing servers” theory.
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`Courts in this District have held that expert reports may not introduce theories not
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`previously set forth in invalidity contentions. Cardsoft, Inc., v. Verifone Holdings, Inc., No.
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`2:08-cv-98-RSP, Dkt. 371 (E.D. Tex. June 3, 2012) (To the extent that Defendants’ expert offers
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`previously undisclosed non-infringement positions . . . such testimony or opinions will be
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`excluded upon proper motion or objection at trial.”); Tyco Healthcare Group LP v. Applied
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`Medical Resources Corp., 2009 WL 5842062, at *1 (E.D. Tex. 2009) (“The Local Patent Rules
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`and this court's Scheduling Order are clear: [the alleged infringer] was required to disclose any
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`combination of, or motivation to combine, prior art it was asserting against a particular claim in
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`its Invalidity Contentions. Failure to do so, unless substantially justified or harmless, means the
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`evidence will be excluded.”); DataQuill Ltd. v. Huawei Techs. Co. Ltd., No. 2:13-CV-633, 2015
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`WL 9450821, at *3 (E.D. Tex. June 11, 2015) (Payne, J.) (striking portions of an expert report
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`that exceeded the disclosure of the invalidity contentions, explaining “Because Plaintiff is
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`entitled to rely on the dates disclosed in Defendant’s invalidity contentions when preparing its
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`defense, Defendant’s contentions did not provide Plaintiff with adequate opportunity to prepare
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`its defense in light of this omission”).
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`5
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 9 of 13 PageID #: 13957
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`
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`Apple’s untimely disclosure of these new invalidity theories prejudices AGIS because it
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`provides Apple with an unfair advantage. From December 1, 2017 until the last day of fact
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`discovery in this case, October 29, 2018, AGIS conducted discovery under the impression that
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`Apple alleged a centralized server theory. AGIS will be prejudiced by the new “dynamically
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`electing servers” theory, as Dr. Siegel testified he expects to present these facts and opinions at
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`trial in this case. Ex. G, Transcript of November 14, 2018 Deposition of Neil Siegel, at 86:3-7.
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`AGIS justifiably relied on the Court’s docket control order and P.R. 3-3 in determining the scope
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`and substance of Apple’s invalidity position on the server-based limitations of the asserted
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`Location Patents. Apple cannot argue that the delay in asserting these the new “dynamically
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`electing servers” theory was outside of Apple’s control because it retained Dr. Siegel around
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`January 2018. Ex. G, Transcript of November 14, 2018 Deposition of Neil Siegel, at 8:24-9:9.
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`Apple did not seek leave to submit additional amended contentions in this case. Tyco, 2009 WL
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`5842062, at *4 (“[the non-movant] had plenty of time to comply with the disclosure
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`requirements of P.R. 3-3(b), and there is no evidence that [defendant] did not have sufficient
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`information to provide the appropriate disclosures in a timely manner.”) Rather than providing a
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`showing of good cause, Apple attempts to shoehorn the “dynamically electing servers” theory
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`into the case through the Siegel Report which improperly shifts the burden to AGIS to exclude
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`the new theory. Striking the expert report will not unduly prejudice Apple because it would
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`return Apple to the same position presented in its invalidity contentions. Accordingly, the
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`circumstances heavily favor striking the new invalidity theory.
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`V.
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`CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant AGIS’s
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`motion to strike the portions of the Siegel Report relating to “dynamically electing servers” as
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`improperly based on a new, previously-undisclosed invalidity theory.
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`6
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 10 of 13 PageID #: 13958
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`Dated: December 14, 2018
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`Respectfully submitted,
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`BROWN RUDNICK LLP
`
` /s/ Alfred R. Fabricant
`
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Samuel F. Baxter
`Texas Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`
`7
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 11 of 13 PageID #: 13959
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`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
`
`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`8
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 12 of 13 PageID #: 13960
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`
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`I certify that on December 13, 2018, lead and local counsel for AGIS (Alfred R.
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`CERTIFICATE OF CONFERENCE
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`Fabricant, Vincent J. Rubino, and Jennifer Truelove) and Apple (John Desmarais, Ameet Modi,
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`and Melissa Smith) conferred via telephone in compliance with L.R. CV-7(h-i) regarding the
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`issues presented in the foregoing Motion. The Parties still were unable to resolve the issues and
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`are at an impasse regarding the relief sought. The Court assistance is thus necessary. Apple
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`opposes this Motion.
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`
`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`9
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`Case 2:17-cv-00513-JRG Document 233 Filed 12/14/18 Page 13 of 13 PageID #: 13961
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on December 14, 2018, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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` /s/ Alfred R. Fabricant
` Alfred R. Fabricant
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