Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 1 of 13 PageID #: 14035
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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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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
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`§
`Case No. 2:17-CV-0513-JRG
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`(LEAD CASE)
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`§
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`§
`JURY TRIAL DEMANDED
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`§
`§
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`§
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`APPLE, INC.,
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`Defendant.
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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTION TO
`STRIKE THE EXPERT REPORT OF NEIL SIEGEL FOR FAILURE TO DISCLOSE
`OBVIOUSNESS COMBINATIONS BASED ON THE SIEGEL PATENTS
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 2 of 13 PageID #: 14036
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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 234 Filed 12/14/18 Page 3 of 13 PageID #: 14037
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`
`Betzel v. State Farm Lloyds,
`480 F.3d 704 (5th Cir. 2007) .....................................................................................................4
`
`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) .........................................................................4
`
`Tyco Healthcare Group LP v. Applied Medical Resources Corp.,
`2009 WL 5842062 (E.D. Tex., Mar. 30 2009) ..............................................................3, 4, 5, 6
`
`
`
`ii
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 4 of 13 PageID #: 14038
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS”) submits this Motion to Strike the
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`October 29, 2018 Expert Report of Neil Siegel (“Siegel Report”) based on Defendant Apple
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`Inc.’s (“Apple”) failure to timely disclose obviousness combinations based on the Force XXI
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`Battle Command Brigade and Below (“FBCB2”) system in view of U.S. Patent Nos. 6,212,559
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`(“the ’559 patent”); 5,672,840 (“the ’840 patent”); 6,904,280 (“the ’280 patent”); and 7,278,023
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`(“the ’023 patent”) (collectively, the “Siegel Patents”). Apple never identified the Siegel Patents
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`as anticipatory or obviousness-type prior art references in its amended invalidity contentions, and
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`failed to provide any citations or evidence in support of its new invalidity theories as required by
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`P.R. 3-3. Apple did not elect any of the Siegel Patents in its final election of prior art references.
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`The Siegel Report thus exceeds the scope of Apple’s amended invalidity contentions and its final
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`election of prior art references. Because Apple failed to put AGIS on notice of these new
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`invalidity theories in accordance with the Court’s patent rules and docket control order (Dkt. 85)
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`in this case, AGIS respectfully moves the Court to strike the Siegel Report as improperly based
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`on previously-undisclosed invalidity theories.
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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 set of Apple’s invalidity contentions identified the Siegel
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`Patents as anticipatory or obviousness-type prior art references. Apple provided no charts
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`identifying citations and evidence to support the Siegel Patents as anticipatory and/or
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`obviousness references.
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`Early in the case, the parties negotiated a date for the final election of claims and prior
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`art. AGIS substantially narrowed its claims to a final election of 38 claims across 5 patents.
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`Apple also was required to make a final election of prior art, which it did on August 29, 2018.
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 5 of 13 PageID #: 14039
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`Apple’s final election of prior art references did not identify the Siegel Patents. Ex. A1, Apple’s
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`Final Election of Prior Art. Instead, Apple specifically identified a combination based on the
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`FBCB2 system with U.S. Patent Application No. 2002/0115453 (“Poulin”) or U.S. Patent No.
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`7,353,034 (“Haney”). Exhibit A, Apple’s Final Election of Prior Art, at pp. 5-6.
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`On October 29, 2018, Apple served the Siegel Report which included obviousness
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`arguments based on the FBCB2 system in combination with the Siegel Patents. Ex. B, Siegel
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`Report at ¶¶ 17, 83, 97-98, 119, 154, 161-162, 186-187, 191, 194, 216, 222-223, 227, 230, 237-
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`238, 244, 250, 267-268, 274, 280, 303, 324, 345, 350, 376, 404, 415-416, 431, 437, 467-468, and
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`485; see also Exhibit C, Transcript of November 14, 2018 Deposition of Neil Siegel, at 62:25-
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`79:24. The Siegel Patents allegedly cover various projects during Dr. Siegel’s employment at
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`TRW and Northrop Grumman, including non-FBCB2 projects such as the “Sigma Star” and the
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`Forward-Area Air Defense Command Control and Intelligence System (“FAAD C2I”). Ex. B,
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`Siegel Report at ¶ 17. For example, Dr. Siegel states that the ’840 patent covers “aligning a map
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`display on a hand-held device to the cardinal points” adopted in and “the reporting filter
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`incorporated in the FAAD C2I system based on an angular filter (e.g., reporting whenever the
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`display was rotated more than a certain amount).” Ex. B, Siegel Report at ¶¶ 17 and 70. Dr.
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`Siegel admits FAAD C2I is not the FBCB2 system. Ex. B, Siegel Report at ¶¶ 15 (describing
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`FBCB2 and FAAD C2I separately), 50 (describing FAAD C2I as a component of another
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`distinct project, Sigma Start), 58 (describing FAAD C2I as a separate system). The ’840 patent
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`was filed during the pendency of the Sigma Star’s FAAD C2I component and after the alleged
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`start of the FBCB2 program. Ex. B, Siegel Report at ¶ 51.
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`1 References to Exhibits A–C refer to the exhibits submitted with the Declaration of Alfred R. Fabricant in support
`of this motion and attached hereto.
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`2
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 6 of 13 PageID #: 14040
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`While Apple stated during the meet-and-confer regarding this motion that Dr. Siegel’s
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`opinions do not rely on combinations with the Siegel Patents, Dr. Siegel testified to the contrary
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`at his deposition. During the November 14, 2018 deposition concerning the Siegel Report,
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`Dr. Siegel testified that the Siegel Report sets forth, and that he intends to testify at trial
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`regarding, an obviousness combination based on the FBCB2 system in combination with the
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`Siegel Patents. Ex. C, Transcript of November 14, 2018 Deposition of Neil Siegel, at 216:2-
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`220:3. Dr. Siegel confirmed that he relies on the Siegel Patents as obviousness combinations
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`throughout his report, affecting each and every asserted claim in this case. Ex. C, Transcript of
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`November 14, 2018 Deposition of Neil Siegel, at 62:25-79:24.
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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 in 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 seek leave to amend their invalidity contentions with a showing of good
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`cause, if the need arises. P.R. 3-6.
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`3
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 7 of 13 PageID #: 14041
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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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`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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`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, Apple did not
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`identify the Siegel Patents as anticipatory or obviousness-type prior art references or as part of
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`any combination of prior art references rendering the asserted claims obvious. Apple did not
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`identify the motivation to combine the Siegel Patents with the FBCB2 system in its P.R. 3-3
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`disclosures. The Siegel Patents, or combinations of FBCB2 with one or more of the Siegel
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`Patents, were not charted with citations or evidence identifying where specifically in each Siegel
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`Patent each element of each asserted claim is found. The Siegel Patents were not included in
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`Apple’s final election of prior art references. Rather, Apple specifically identified a combination
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`based on the FBCB2 system with Poulin or Haney references. Ex. A, Apple’s Final Election of
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`Prior Art, at pp. 5-6. The Siegel Report departs from Apple’s representations and presented new
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`4
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 8 of 13 PageID #: 14042
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`combinations based on the FBCB2 system and the Siegel Patents. Ex. B, Siegel Report at ¶¶ 17,
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`83, 97-98, 119, 154, 161-162, 186-187, 191, 194, 216, 222-223, 227, 230, 237-238, 244, 250,
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`267-268, 274, 280, 303, 324, 345, 350, 376, 404, 415-416, 431, 437, 467-468, and 485.
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`Dr. Siegel’s reliance on undisclosed combinations is pervasive and cannot be unteased from the
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`Siegel Report. Indeed, Dr. Siegel admitted that he relies on the Siegel Patents as obviousness
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`combinations throughout his report, affecting each and every asserted claim in this case. Ex. C,
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`Transcript of November 14, 2018 Deposition of Neil Siegel, at 62:25-79:24. AGIS will be
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`prejudiced by Apple’s new invalidity theories as Dr. Siegel testified that the Siegel Report sets
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`forth, and that he intends to testify at trial to, an obviousness combination based on the FBCB2
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`system in combination with the Siegel Patents. Ex. C, Transcript of November 14, 2018
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`Deposition of Neil Siegel, at 216:3-220:3.
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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 or infringement contentions. Cardsoft, Inc., v. Verifone
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`Holdings, Inc., No. 2:08-cv-98-RSP, Dkt. 371 (E.D. Tex. June 3, 2012) (“To the extent that
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`Defendants’ expert offers previously undisclosed non-infringement positions . . . such testimony
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`or opinions will be excluded upon proper motion or objection at trial.”); Tyco Healthcare Group
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`LP v. Applied Medical Resources Corp., 2009 WL 5842062, *1 (E.D. Tex. 2009) (“The Local
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`Patent Rules and this court’s Scheduling Order are clear: [the alleged infringer] was required to
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`disclose any combination of, or motivation to combine, prior art it was asserting against a
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`particular claim in its Invalidity Contentions. Failure to do so, unless substantially justified or
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`harmless, means the evidence will be excluded.”); DataQuill Ltd. v. Huawei Techs. Co. Ltd, No.
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`2:13-CV-633, 2015 WL 9450821, at *3 (E.D. Tex. June 11, 2015) (Payne, J.) (striking portions
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`of an expert report that exceeded the disclosure of the invalidity contentions, explaining
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`5
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 9 of 13 PageID #: 14043
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`“Because Plaintiff is entitled to rely on the dates disclosed in Defendant’s invalidity contentions
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`when preparing its defense, Defendant’s contentions did not provide Plaintiff with adequate
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`opportunity to prepare its defense in light of this omission”).
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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. AGIS justifiably relied on the Court’s docket control
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`order and P.R. 3-3 in determining the scope and substance of Apple’s invalidity positions. More
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`specifically, AGIS built its case around the reliance on Apple’s final election of prior art which
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`did not include the Siegel patents. Apple cannot argue that the delay in asserting these invalidity
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`theories was outside of Apple’s control because it retained Dr. Siegel around January 2018 and
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`the patents were public documents in Apple’s possession since at least this time. Ex. C,
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`Transcript of November 14, 2018 Deposition of Neil Siegel, at 8:24-9:9. Apple did not seek
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`leave to submit second amended contentions in this case. Tyco, 2009 WL 5842062, at *1 (“[the
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`non-movant] had plenty of time to comply with the disclosure requirements of P.R. 3-3(b), and
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`there is no evidence that [defendant] did not have sufficient information to provide the
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`appropriate disclosures in a timely manner.”) Rather than providing a showing of good cause,
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`Apple attempts to shoehorn these new invalidity theories into the case through the Siegel Report,
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`which improperly shifts the burden to AGIS to exclude the new theories. Moreover, striking the
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`expert report will not unduly prejudice Apple because it would return Apple to the same position
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`it held when Apple served its final election of prior art.
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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 Siegel Report in its entirety for failure to timely disclose obviousness
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`combinations based on the FBCB2 system in view of the Siegel Patents.
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`6
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 10 of 13 PageID #: 14044
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`Dated: December 14, 2018
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`Respectfully submitted,
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
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`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
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`7
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 11 of 13 PageID #: 14045
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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
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`8
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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 12 of 13 PageID #: 14046
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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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`Case 2:17-cv-00513-JRG Document 234 Filed 12/14/18 Page 13 of 13 PageID #: 14047
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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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