Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 1 of 19 PageID #: 14815
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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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`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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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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`§
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`§
`§
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`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`DEFENDANT APPLE INC.’S MOTION TO STRIKE PORTIONS OF THE OPENING
`EXPERT REPORT OF MR. JOSEPH MCALEXANDER THAT RELY ON UNTIMELY
`DISCLOSED INFRINGEMENT THEORIES
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 2 of 19 PageID #: 14816
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`FACTUAL BACKGROUND ..............................................................................................1
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`I.
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`II.
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`III.
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`LEGAL STANDARD ..........................................................................................................5
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`A.
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`B.
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`Requirements For Infringement Contentions And Amendments Without
`Leave ........................................................................................................................5
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`Expert Reports May Not Introduce Theories Not Previously Disclosed In
`Infringement Contentions. .......................................................................................7
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`IV.
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`STATEMENT OF THE ISSUE TO BE DECIDED BY THE COURT ..............................7
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`V.
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`ARGUMENT .......................................................................................................................7
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`A.
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`B.
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`The Amended Contentions Served After The McAlexander Report Were
`Improper And Cannot Retroactively Support Disclosure Of The New
`Infringement Theories Contained In The McAlexander Report. .............................8
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`The New Theories of Infringement Introduced For The First Time In The
`McAlexander Report Should Be Stricken..............................................................10
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`VI.
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`CONCLUSION ..................................................................................................................13
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 3 of 19 PageID #: 14817
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Pages
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`Anascape, Ltd. v. Microsoft Corp.,
`No. CIV.A. 9:06-CV-158, 2008 WL 7180756 (E.D. Tex. May 1, 2008) ............... 7, 10, 12
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`Koninklijke KPN N.V. v. Samsung Elecs. Co.,
`No. 2:14-CV-1165-JRG, 2016 WL 7042222 (E.D. Tex. July 25, 2016) ........................ 6, 8
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`Mears Techs., Inc. v. Finisar Corp.,
`No. 2:13-CV-376-JRG, 2014 WL 12605571 (E.D. Tex. Oct. 6, 2014) ........................ 8, 12
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`Opal Run LLC v. C & A Mktg., Inc.,
`No. 2:16-CV-24-JRG-RSP, 2017 WL 3381344 (E.D. Tex. May 15, 2017) ........... 7, 10, 12
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`Parallel Networks, LLC v. Abercrombie & Fitch,
`No. 6:10CV111, 2011 WL 13098299 (E.D. Tex. Dec. 5, 2011) ...................................... 10
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`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08–cv–144, 2009 WL 2590101 (E.D. Tex. 2009) .................................................... 6
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`Sycamore IP Holdings LLC v. AT&T Corp.,
`No. 2:16-CV-588-WCB, 2018 WL 1695231 (E.D. Tex. Apr. 6, 2018) .................... passim
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`UltimatePointer, LLC v. Nintendo Co.,
`No. 6:11-CV-496, 2013 WL 12140173 (E.D. Tex. May 28, 2013) ................................... 5
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`Zix Corp. v. Echoworx Corp.,
`No. 2:15-CV-1272-JRG, 2016 WL 3410367 (E.D. Tex. May 13, 2016) ........................... 6
`
`ii
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 4 of 19 PageID #: 14818
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`TABLE OF EXHIBITS
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`Exhibit Number
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`Description
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`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 6
`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
`Ex. 15
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`McAlexander Report Attachment A (’970 patent)
`McAlexander Report Attachment B (’055 patent)
`McAlexander Report Attachment D (’838 patent)
`November 2018 Contentions Ex. A (’970 patent)
`November 2018 Contentions Ex. B (’055 patent)
`November 2018 Contentions Ex. D (’838 patent)
`2018-05-18 Plaintiff’s Rule 4-2 Disclosures
`2018-09-13 Transcript of Markman Hearing
`2018-05-18 Defendant’s Rule 4-2 Disclosures
`Correspondence Between Counsel
`September 2018 Contentions Ex. A (’970 patent)
`September 2018 Contentions Ex. B (’055 patent)
`September 2018 Contentions Ex. D (’838 patent)
`September 2018 Contentions Cover Pleading
`November 2018 Contentions Cover Pleading
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 5 of 19 PageID #: 14819
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`I.
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`INTRODUCTION
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`On October 29, 2018, AGIS served a technical expert report (“the McAlexander report”)
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`that introduced three new theories of infringement that AGIS never before disclosed to Apple. In
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`an apparent effort to justify introducing those new theories through its expert report, on November
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`12, 2018—two weeks after serving the report—AGIS served “amended infringement contentions”
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`attaching claim charts nearly identical to those submitted with the McAlexander report. But those
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`November 2018 amendments cannot remedy AGIS’s failure to previously disclose its new
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`infringement theories. Critically, AGIS’s November 2018 infringement contentions were
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`improper under Patent Rule 3-6(a) because they were untethered to any claim construction by the
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`Court that was “unexpected or unforeseeable” during claim construction briefing, and furthermore,
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`untimely. Because AGIS failed to timely disclose in its infringement contentions the three new
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`infringement theories introduced in the McAlexander report, Apple respectfully requests that
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`opinions in that report relating to the three new theories be stricken.
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`II.
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`FACTUAL BACKGROUND
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`AGIS first served its Patent Rule (“P.R.”) 3-1 Infringement Contentions on September 18,
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`2017. AGIS then served amendments to those contentions in February, April, and September
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`2018. AGIS failed to disclose any of the infringement theories described in Table 1, below, in any
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`of those four sets of infringement contentions.
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`The Court issued its claim construction order on October 10, 2018. (Dkt. No. 205.) Fact
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`discovery closed on October 26, 2018. (Dkt. No. 220 at 3.)
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`AGIS served the McAlexander report on October 29, 2018. That report introduced at least
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`three new infringement theories that were not included in any of AGIS’s previously served
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`infringement contentions, as described below in Table 1.
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 6 of 19 PageID #: 14820
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`Table 1
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`Relevant Claim Limitation
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`New Theory Introduced in the McAlexander
`Report
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`U.S. Patent No. 8,213,970 (the “’970
`Patent”) claim 1: “a predetermined network
`of participants, wherein each participant has a
`similarly equipped PDA/cell phone that
`includes a CPU and a touch screen display a
`CPU and memory”
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`U.S. Patent No. 9,408,055 (the “’055
`Patent”) Claims 1, 28, 41, and 54:
`“receiving user input via user interaction with
`the interactive display of the first device, the
`user input specifying a location and a symbol
`corresponding to an entity other than the first
`device and the second devices”
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`U.S. Patent No. 9,467,838 (the “’838
`Patent”) Claims 1 and 54: “transmitting a
`message including an identifier corresponding
`to the group”
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`On November 12, 2018—two weeks after service of the McAlexander report, more than
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`two weeks after the close of fact discovery, and more than 30 days after the Court issued its claim
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`construction order—AGIS served a new set of amended infringement contentions. (Ex. 15,
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`November 12, 2018 Infringement Contentions Cover Pleading, at 11, 13.) As shown in Table 2,
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`2
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 7 of 19 PageID #: 14821
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`below, those amended contentions now included the same new theories first introduced in Mr.
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`McAlexander’s report. AGIS did not seek leave of Court for this amendment, nor did AGIS
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`communicate with Apple regarding these changes prior to service. Rather, AGIS asserted that its
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`November 12, 2018 amended infringement contentions were proper without leave under P.R. 3-
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`6(a)(1).1 (Ex. 15, November 12, 2018 Infringement Contentions Cover Pleading, at 1.)
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`Table 2
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`New Theory First Introduced in the
`McAlexander Report
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`AGIS’s November 12, 2018 P.R. 3-6(a)(1)
`Amended Infringement Contentions
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`1 Despite invoking P.R. 3-6(a)(1), AGIS served its November 12, 2018 amended infringement
`contentions 33 days after the Court’s October 10, 2018 Claim Construction Order, thus failing to
`meet the requirement that amendments under P.R. 3-6(a)(1) be served “not later than 30 days after
`service by the Court of its Claim Construction Ruling.” P.R. 3-6(a)(1).
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`3
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 8 of 19 PageID #: 14822
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`The first two of the three newly-asserted theories—which relate to the ’970 and ’055
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`Patents, respectively—concern claim limitations that were not the subject of any claim
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`construction dispute, and therefore were not construed by the Court. In fact,
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` (Ex. 1, McAlexander Report Attachment A, at A-a2; Ex. 2,
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`McAlexander Report Attachment B, at B-a120-a121, B-a317, B-a440, B-a581.)
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`With respect to AGIS’s third new theory—which relates to the “transmitting a message
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`including an identifier corresponding to the group” limitation of the ’838 Patent—the parties
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`agreed prior to the September 13, 2018 Markman hearing—that the phrase be given its plain
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`meaning. (Dkt. No. 205 at 53.) AGIS first proposed that construction in its P.R. 4-2 disclosures,
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`on May 18, 2018. (Ex. 7, Plaintiff’s P.R. 4-2 Disclosures, at 72.) The Court recognized the parties’
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`agreement at the Markman hearing (Ex. 8, at 98:16-99:2), and construed the term as agreed in its
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`Claim Construction Order. (Dkt. No. 205 at 53.)
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`Additionally, the Court construed the term “group” as “more than two participants
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`associated together.” (Dkt. No. 205 at 49.) That exact language appeared as part of Apple’s
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`proposed construction in its P.R. 4-2 disclosures served on May 18, 2018. (Ex. 9, Defendants’
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`P.R. 4-2 Disclosures, at 22 (proposing that “group” be construed as “more than two participants
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`associated together without having to pre-enter data into a web or identify other users by name,
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`E-mail addresses or phone numbers”).) And, in its claim construction briefing, AGIS specifically
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`addressed that aspect of the proposed construction that was ultimately adopted by the Court. (Dkt.
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 9 of 19 PageID #: 14823
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`No. 165 at 25; Dkt. No. 186 at 13-15 (including a section entitled “A ‘Group’ Dos Not Exclude
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`Groups of Two” (sic)); see also Dkt. No. 205 at 44-45.) In construing “group” to mean “more
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`than two participants associated together,” the Court adopted a portion of Apple’s construction.
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`(Dkt. No. 205 at 47-49.)
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`During the meet-and-confer process regarding this issue, AGIS contended that the new
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`theories of infringement disclosed in the November 2018 amended infringement contentions were
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`required by the Court’s Claim Construction Order under P.R. 3-6(a)(1). (See Ex. 10 at 1.) In
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`addition, AGIS contended that the new theories found in both the November 2018 contentions and
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`in the McAlexander report were disclosed in its September 21, 2018 infringement contentions.
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`(See id.) However, as explained below, no such disclosure exists—indeed, if it had, there would
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`have been no need for AGIS to amend its infringement contentions between September and
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`November 2018.
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`AGIS’s untimely disclosure of these three new theories after the close of fact discovery
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`meant that Apple had little meaningful opportunity to investigate the newly-disclosed theories.
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`Instead, Apple was forced to identify, analyze, and respond to these newly-disclosed theories
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`during the three-week period between AGIS’s service of the McAlexander report and the deadline
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`for Apple’s responsive expert report. In addition, because AGIS’s new theories were presented
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`after Apple’s opening experts report regarding invalidity, Apple could not consider the impact of
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`those new theories on its invalidity expert reports.
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`III. LEGAL STANDARD
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`A.
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`Requirements For Infringement Contentions And Amendments Without
`Leave
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` “Patent Rule 3-1 requires a party asserting infringement to serve infringement contentions
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`on each defending party.” UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496, 2013 WL
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`5
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 10 of 19 PageID #: 14824
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`12140173, at *1 (E.D. Tex. May 28, 2013). These contentions must be “reasonably precise and
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`detailed” and “provide a defendant with adequate notice of the plaintiff’s theories of
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`infringement.” Realtime Data, LLC v. Packeteer, Inc., No. 6:08–cv–144, 2009 WL 2590101, at
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`*5 (E.D. Tex. 2009); see also Zix Corp. v. Echoworx Corp., No. 2:15-CV-1272-JRG, 2016 WL
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`3410367, at *1 (E.D. Tex. May 13, 2016) (“[P]atentee’s infringement contentions must set forth
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`particular theories of infringement with sufficient specificity to provide defendants with notice of
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`infringement beyond that which is provided by the mere language of the patent [claims]
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`themselves.”) (internal quotation marks omitted). “Accordingly, a party may not rely on vague,
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`conclusory language in its infringement contentions.” Zix, 2016 WL 3410367, at *1 (internal
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`quotation marks omitted).
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`Patent Rule 3-6 governs amendment of contentions. P.R. 3-6. The rule “is meant to prevent
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`. . . introducing new theories of infringement on the eve of trial.” Sycamore IP Holdings LLC v.
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`AT&T Corp., No. 2:16-CV-588-WCB, 2018 WL 1695231, at *10 (E.D. Tex. Apr. 6, 2018).
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`Pursuant to P.R. 3-6, a party may amend its P.R. 3.1 contentions either: (1) after receiving leave
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`of Court pursuant to P.R. 3-6(b); or (2) without leave of Court if particular requirements are met
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`under P.R. 3-6(a)(1). In order to amend infringement contentions without leave of Court, the party
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`claiming patent infringement must “believe[] in good faith that the Court’s Claim Construction
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`Ruling so requires,” and must amend “not later than 30 days after service by the Court of its Claim
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`Construction Ruling.” P.R. 3-6(a)(1); Koninklijke KPN N.V. v. Samsung Elecs. Co., No. 2:14-CV-
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`1165-JRG, 2016 WL 7042222, at *2 (E.D. Tex. July 25, 2016). In applying this rule, “courts in
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`the Eastern District of Texas have uniformly required the movant to show that the claim
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`construction adopted by the court was ‘unexpected or unforeseeable.’” Sycamore, 2018 WL
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 11 of 19 PageID #: 14825
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`1695231, at *4. “[U]nder Local Patent Rule 3-6(a), foreseeability is determined from the time of
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`the claim construction briefing.” Id., at *7.
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`B.
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`Expert Reports May Not Introduce Theories Not Previously Disclosed In
`Infringement Contentions.
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`Expert infringement reports may not introduce theories not previously set forth in
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`infringement contentions. Opal Run LLC v. C & A Mktg., Inc., No. 2:16-CV-24-JRG-RSP, 2017
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`WL 3381344, at *2 (E.D. Tex. May 15, 2017) (striking infringement theories from an expert report
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`that were not disclosed in the plaintiff’s infringement contentions); cf. Anascape, Ltd. v. Microsoft
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`Corp., No. CIV.A. 9:06-CV-158, 2008 WL 7180756, at *3–*4 (E.D. Tex. May 1, 2008) (striking
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`undisclosed invalidity theories).
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`IV.
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`STATEMENT OF THE ISSUE TO BE DECIDED BY THE COURT
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`Whether opinions relating to the previously undisclosed theories of infringement identified
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`in Table 1, above, should be stricken from the McAlexander report because those theories were
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`not timely disclosed in AGIS’s infringement contentions.
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`V.
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`ARGUMENT
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`The McAlexander report improperly introduces three new theories of infringement that
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`were not disclosed in AGIS’s infringement contentions during fact discovery. AGIS’s belated
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`service of amended infringement contentions containing those theories—two weeks after the
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`service of the McAlexander report—cannot remedy AGIS’s failure to previously disclose the new
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`theories in its contentions. Rather, those amended infringement contentions were improper under
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`P.R. 3-6(a)(1) because they were untimely and because they were untethered to any claim
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`construction that was “unexpected or unforeseeable” during claim construction briefing. Because
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`AGIS failed to provide adequate notice regarding the three new infringement theories in any
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 12 of 19 PageID #: 14826
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`properly served infringement contentions, Mr. McAlexander’s opinions relating to the three new
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`theories should be stricken.
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`A.
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`The Amended Contentions Served After The McAlexander Report Were
`Improper And Cannot Retroactively Support Disclosure Of The New
`Infringement Theories Contained In The McAlexander Report.
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`The November 2018 amendments to AGIS’s infringement contentions did not meet the
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`requirements for amendment without leave under P.R. 3-6(a)(1). As an initial matter, AGIS served
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`its November 12, 2018 infringement contentions 33 days after the Court’s October 10, 2018 Claim
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`Construction Order (see Dkt. No. 220), thus failing to meet the requirement that amendments under
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`P.R. 3-6(a)(1) be filed “not later than 30 days after service by the Court of its Claim Construction
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`Ruling.” P.R. 3-6(a)(1); Mears Techs., Inc. v. Finisar Corp., No. 2:13-CV-376-JRG, 2014 WL
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`12605571, at *1-*2 (E.D. Tex. Oct. 6, 2014).
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`Substantively, there was no unexpected or unforeseeable claim construction adopted by the
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`Court that necessitated any of the amendments at issue. See Sycamore, 2018 WL 1695231, at *8
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`(finding amendment under P.R. 3-6(a) inappropriate where a claim construction was not
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`surprising, including because the party seeking amendment was aware of the issues of claim scope
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`prior to construction).2 As explained above, with respect to two of the three new theories identified
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`in Table 1—those that relate to limitations in the ’970 and ’055 Patents—the limitations at issue
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`do not include any claim terms that were construed by the Court. (Ex. 1, McAlexander Report
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`Attachment A, at A-a2; Ex. 2, McAlexander Report Attachment B, at B-a120-a121, a133, a136-
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`a141.) Thus, the Court’s Claim Construction Order could not plausibly have required the additions
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`2 Under P.R. 3-6, a party may amend P.R. 3-1 contentions either under 3-6(b) upon obtaining leave
`of Court or under P.R. 3-6(a)(1), without leave of court, in specified circumstances. Here, AGIS
`did not seek leave to amend its contentions and so it cannot invoke P.R. 3-6(b). P.R. 3-6(b);
`Koninklijke, 2016 WL 7042222, at *2. In any event, AGIS has represented that the amended
`contentions were served pursuant to P.R. 3-6(a).
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 13 of 19 PageID #: 14827
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`to AGIS’s infringement theories related to those limitations, and AGIS cannot show that those
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`additions were made based on a good faith belief that any construction necessitated the
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`amendments.
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`The remaining new theory relates to the “transmitting a message including an identifier
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`corresponding to the group” limitation in each independent claim of the ’838 Patent. The Court
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`construed “an identifier corresponding to the group” to have its “plain meaning”—the construction
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`advocated by AGIS since May 18, 2018 and agreed to by the parties prior to the September 13,
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`2018 Markman hearing. (Ex. 7, Plaintiff’s P.R. 4-2 Disclosures, at 72; Dkt. No. 205 at 53.) AGIS
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`cannot therefore credibly argue that the Court’s plain meaning construction of “an identifier
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`corresponding to the group” was not foreseeable. See Sycamore, 2018 WL 1695231, at *8 (finding
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`amendment under P.R. 3-6(a) inappropriate where the party seeking amendment had been aware
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`of argument relating to the eventual construction).
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`The Court’s construction of the term “group” likewise cannot justify the November 2018
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`amendments to AGIS’s infringement theory because that construction was similarly foreseeable
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`long before the Court’s Claim Construction Order. In construing “group,” the Court adopted
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`language that was a key component of Apple’s original proposed construction—“more than two
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`participants associated together.” Apple identified that aspect of its proposed construction in its
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`P.R. 4-2 disclosures on May 18, 2018 and advocated for its adoption throughout the claim
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`construction process. (Ex. 9, Defendants’ P.R. 4-2 Disclosures, at 22.) Indeed, in its claim
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`construction briefs, AGIS squarely addressed the exact language that the Court ultimately adopted
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`as the construction for “group.” (Dkt. No. 165 at 25; Dkt. No. 186 at 13-15 (including a section
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`entitled “A ‘Group’ Dos Not Exclude Groups of Two” (sic)); see also Dkt. No. 205 at 44-45.)
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`Given these facts, AGIS “cannot now plausibly argue that the Court invented [the claim
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 14 of 19 PageID #: 14828
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`constructions] out of whole cloth.” Parallel Networks, LLC v. Abercrombie & Fitch, No.
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`6:10CV111, 2011 WL 13098299, at *2 (E.D. Tex. Dec. 5, 2011) (finding “feigned surprise . . . at
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`best, disingenuous” where the party seeking amendment “titled an entire section and expended two
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`pages of its reply in support of its opening claim construction discussing the reason why
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`‘[d]efendants have no support for their ‘single transmission’ argument.’”).
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`Because each of the new theories added in AGIS’s November 2018 infringement
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`contentions is either wholly unrelated to any claim construction dispute, or relates to terms for
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`which the Court adopted constructions proposed by the parties and addressed during claim
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`construction briefing, no good faith reason exists for AGIS’s alleged belief that the Court’s Claim
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`Construction Order necessitated these amendments. Sycamore, 2018 WL 1695231, at *4. Thus,
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`AGIS’s November 2018 amended infringement contentions were improper under the Patent Rules
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`and cannot support the new theories introduced in the McAlexander report. See id. at *10 (holding
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`that a plaintiff who long knew about issues of claim scope “cannot now be allowed to assert a new
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`theory of infringement” in a case that had passed fact discovery).
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`B.
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`The New Theories of Infringement Introduced For The First Time In The
`McAlexander Report Should Be Stricken.
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`An expert report may not introduce new theories not previously set forth in infringement
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`or invalidity contentions. Opal Run, 2017 WL 3381344, at *2 (striking infringement theories from
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`an expert report that were not disclosed in the plaintiff’s infringement contentions); Anascape,
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`2008 WL 7180756, at *3–*4 (striking invalidity theories as inadequately disclosed where
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`invalidity reference is listed in a chart but not specifically explained). Prior to serving its opening
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`expert report on infringement on October 29, 2018, AGIS served four sets of infringement
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`contentions relating to the ’970, ’055, and ’838 Patents during the fact discovery period, beginning
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`with its initial contentions on September 18, 2017 and culminating in its fourth set of amended
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`10
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 15 of 19 PageID #: 14829
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`infringement contentions a year later on September 21, 2018. (Ex. 14, September 21, 2018
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`Infringement Contentions Cover Pleading, at 11, 13.) But nowhere in its September 21, 2018
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`Amended Infringement Contentions—nor in any prior infringement contentions—did AGIS
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`disclose any of the three new theories first introduced in the McAlexander report (and described
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`in Table 1, supra).3 For example,
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`Attachment A, at A-a2 with Ex. 11, September 21, 2018 Amended Infringement Contentions
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`(Compare Ex. 1, McAlexander Report
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`Exhibit A, at A-3, A-4.) The new infringement theory r
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`a133 and B-a136-a141 with Ex. 12, September 21, 2018 Amended Infringement Contentions
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` (Compare Ex. 2, McAlexander Report Attachment B at B-
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`Exhibit B at B-146 to B-167.) The new theory related to the ’838 Patent
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` (Ex.
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`3, McAlexander Report Attachment D at D-a41.) But AGIS’s September 21, 2018 Amended
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`Infringement Contentions—and its prior infringement contentions—
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` explained in part V(A), supra, the November 12, 2018 Amended Infringement Contentions
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`are improper and therefore cannot retroactively provide notice as to these three newly disclosed
`theories in support of the McAlexander report.
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`11
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 16 of 19 PageID #: 14830
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`2018 Amended Infringement Contentions Exhibit D at D-40
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` (See, e.g., Ex. 13, September 21,
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` Therefore, AGIS failed to provide notice to Apple of the three new theories of
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`infringement in the infringement contentions served prior to the McAlexander report.
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`To the extent AGIS suggests that Apple could have inferred AGIS’s new infringement
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`theories from the disclosures it provided in the September 2018 contentions, that argument would
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`eviscerate the requirements of the Patent Rules to provide particularized notice of a party’s
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`infringement theories. Anascape, 2008 WL 7180756, at *2 (“The Local Patent Rules exist to
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`further the goal of full, timely discovery and provide all parties with adequate notice and
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`information with which to litigate their cases.”) (internal quotation omitted); cf. Sycamore, 2018
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`WL 1695231, at *10 (proper use of contentions focuses discovery and narrows issues in motion
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`practice). If AGIS’s September 2018 contentions—which did not identify the functionalities or
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`features now identified in the McAlexander report as allegedly meeting the limitations at issue—
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`were found to include those new theories, AGIS’s contentions would be “simply too general to
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`have any meaning.” Opal Run, 2017 WL 3381344, at *2.
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`Indeed, while prejudice is not relevant to the P.R. 3-6(a)(1) analysis, Apple respectfully
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`submits that AGIS’s late disclosures have prejudiced Apple, and will continue to prejudice Apple
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`if permitted. Mears Techs., 2014 WL 12605571, at *2 (finding that it would cause substantial and
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`unfair prejudice to allow substantial amendments to contentions after close of fact discovery and
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`12
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 17 of 19 PageID #: 14831
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`within four months of trial). For example, Apple had little meaningful opportunity to investigate
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`the newly-disclosed theories. To the contrary, Apple was forced to identify, analyze, and respond
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`to these newly disclosed theories during the three-week period between the service of AGIS’s
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`infringement report and the deadline for Apple’s responsive expert report. In addition, because
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`AGIS’s new theories were presented after Apple’s opening experts report regarding invalidity,
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`Apple could not consider the impact of those new theories on its invalidity expert reports.
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`Because AGIS failed to disclose the three theories of infringement identified in Table 1
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`prior to introducing them in the McAlexander report, the opinions related to those theories should
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`be stricken from that report.
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`VI. CONCLUSION
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`For the foregoing reasons, Apple respectfully requests that this Court strike the opinions in
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`the McAlexander report relating to the new theories of infringement contained on pages A-a2, B-
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`a133, B-a136-a141, and D-a41 of the McAlexander report.
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`13
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 18 of 19 PageID #: 14832
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`Dated: December 14, 2018
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`By: Respectfully submitted:
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`/s/ Melissa R. Smith
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`John M. Desmarais
`Paul A. Bondor
`Michael P. Stadnick
`Ameet A. Modi
`Cosmin Maier
`Kerri-Ann Limbeek
`Brian Matty
`Tom BenGera
`Kathryn Bi
`Francesco Silletta
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: (212) 351-3400
`Facsimile: (212) 351-3401
`Email: jdesmarais@desmaraisllp.com
`Email: pbondor@desmaraisllp.com
`Email: mstadnick@desmaraisllp.com
`Email: amodi@desmaraisllp.com
`Email: cmaier@desmaraisllp.com
`Email: klimbeek@desmaraisllp.com
`Email: bmatty@desmaraisllp.com
`Email: tbengera@desmaraisllp.com
`Email: kbi@desmaraisllp.com
`Email: fsilletta@desmaraisllp.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`14
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`Case 2:17-cv-00513-JRG Document 243 Filed 12/18/18 Page 19 of 19 PageID #: 14833
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
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`correct copy of the foregoing document by electronic mail on December 14, 2018.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that counsel for Apple conferred with counsel for AGIS regarding the
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`foregoing motion. Counsel for AGIS indicated that they are opposed to the relief sought in this
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`motion.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`15
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