Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 1 of 19 PageID #: 16131
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA INC., et al.,
`
` Defendants.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
`
`APPLE INC.,
`
` Defendant.
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
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`
`
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
`
`
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
`
`APPLE INC.’S OPPOSITION TO DKT. NO. 233, PLAINTIFF’S MOTION TO STRIKE
`PORTIONS OF THE EXPERT REPORT OF NEIL SIEGEL RELATING TO THE
`INVALIDITY THEORY BASED ON “DYNAMICALLY ELECTING SERVERS”
`
`

`

`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 2 of 19 PageID #: 16132
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Pages
`
`INTRODUCTION ...............................................................................................................2
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`FACTUAL BACKGROUND ..............................................................................................2
`
`III.
`
`LEGAL STANDARD ..........................................................................................................4
`
`IV.
`
`ARGUMENT .......................................................................................................................4
`
`A.
`
`Dr. Siegel’s Description of Dynamic Server Election Is Not A New
`Theory. .....................................................................................................................5
`
`B.
`
`AGIS’s Allegations Of Confusion and Prejudice Are Unfounded. .........................9
`
`1.
`
`2.
`
`AGIS’s Alleged Confusion Is Not Credible. ...............................................9
`
`AGIS Suffered No Prejudice. ....................................................................11
`
`C.
`
`AGIS’s Requested Relief Is Extreme. ...................................................................13
`
`CONCLUSION ..............................................................................................................................14
`
`
`
`i
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`

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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 3 of 19 PageID #: 16133
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Pages
`
`Cioffi v. Google, Inc.,
`No. 2:13-CV-00103-JRG-RSP, 2017 WL 90756 (E.D. Tex. Jan. 10, 2017) .................... 12
`
`Digital Reg of Texas, LLC v. Adobe Sys. Inc.,
`No. 12-CV-01971-CW (KAW), 2014 WL 1653131 (N.D. Cal. Apr. 24, 2014) ................ 4
`
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC
`No. 2:15-CV-00037-RWS-RSP, 2017 WL 2651618 (E.D. Tex. June 20, 2017) ............... 4
`
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`No. 2:15-CV-00037-RWS, 2017 WL 4693971 (E.D. Tex. July 31, 2017) ........................ 4
`
`Eolas Techs. Inc. v. Amazon.com, Inc.,
`No. 6:15-CV-01038, 2016 WL 7666160 (E.D. Tex. Dec. 5, 2016) ................................... 4
`
`Fenner Investments, Ltd. v. Hewlett-Packard Co.,
`No. CIV.A. 6:08-CV-273, 2010 WL 786606 (E.D. Tex. Feb. 26, 2010) ........................... 4
`
`Genband US LLC v. Metaswitch Networks Corp.,
`No. 2:14-CV-33-JRG-RSP, 2016 WL 122969 (E.D. Tex. Jan. 9, 2016) .................... 11, 12
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`No. 2:08-CV-448, 2011 WL 5158285, 2011 WL 5158285 (E.D. Tex. Aug. 11,
`2011) ................................................................................................................................... 9
`
`Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc.,
`No. 6:11-CV-492-RWS-KNM, 2017 WL 4533664 (E.D. Tex. Oct. 11, 2017) ............... 12
`
`Statutes
`
`35 U.S.C. § 102 ............................................................................................................................. 11
`
`35 U.S.C. § 103 ............................................................................................................................. 11
`
`
`
`ii
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 4 of 19 PageID #: 16134
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`TABLE OF EXHIBITS
`
`Exhibit Number
`
`Description
`
`Ex. 1
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`Ex. 5
`
`Ex. 6
`Ex. 7
`
`Ex. 8
`Ex. 9
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`Ex. 10
`
`Ex. 11
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`Ex. 12
`
`Ex. 13
`Ex. 14
`Ex. 15
`
`Excerpts of Expert Report of Neil Siegel
`Excerpts of Apple’s Amended Invalidity Contentions (served April 16,
`2018)
`Excerpt of Apple’s Amended Invalidity Chart for U.S. Patent No.
`9,467,838 (served April 16, 2018)
`Excerpt of May 1997 Summary of FBCB2 Program Status
`Excerpt of September 1998 FBCB2 Summary Tactical Internet System
`Design Document (Draft)
`U.S. Pat. No. 6,212,559
`Siegel Presentation: The world’s only existing Tactical InterNet (May
`1999)
`U.S. Pat. No. 9,445,251
`Excerpt of James L. Conatser and Vincent E. Grizio, MBA Professional
`Report: Force XXI Battle Command Brigade and Below-Blue Force
`Tracking (FBCB2-BFT) (December 2005).
`Excerpt of Richard J. Dunn, III, Blue Force Tracking: The Afghanistan
`and Iraq Experience and Its Implications for the U.S. Army (Northrop
`Grumman Mission Systems (2003).
`Excerpt of AGIS’s 2nd Supplemental Response to Apple’s Third Set of
`Interrogatories (served October 26, 2018)
`Excerpt from E. D. Tex. General Order Adopting Model Order Focusing
`Patent Claims and Prior Art to Reduce Costs
`Excerpts of Expert Report of Joseph McAlexander
`FBCB2 Brochure (TRW, 2003)
`Excerpts of Deposition Transcript of Dr. Neil Siegel
`
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`

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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 5 of 19 PageID #: 16135
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`
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`Defendant Apple Inc. (“Apple”) hereby opposes Dkt. No. 233, titled “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.’”
`
`I.
`
`INTRODUCTION
`
`AGIS’s motion to strike flails for procedural protection from one of its major substantive
`
`problems in this litigation: that the asserted patent claims are invalid. AGIS’s effort to strike
`
`portions of Dr. Siegel’s thorough, well-reasoned expert report is nothing more than a naked attempt
`
`to prevent Dr. Siegel from telling the jury about FBCB2, a computer system he developed and sold
`
`to the U.S. military that is credited with saving thousands of American lives in Iraq and
`
`Afghanistan. Indeed, AGIS’s motivation is apparent because, despite the fact that the alleged “new
`
`theory” outlined in its Motion only affects three of the patents-in-suit, AGIS filed, in view of this
`
`motion, a separate motion for summary judgment of no invalidity against all four of the patents
`
`about which Dr. Siegel opines.
`
`But Apple’s lengthy and detailed invalidity contentions put AGIS on full and fair notice of
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`Apple’s invalidity arguments—including the very theory that is the subject of AGIS’s motion.
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`Specifically, Apple’s invalidity contentions disclosed a theory of invalidity based on “dynamic”
`
`server election—the fact that in the FBCB2 system, the network could use one computer as a
`
`server, then later be reconfigured to use a different computer as a server—as early as with the
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`service of its amended invalidity contentions. (See infra Part IV.A.) For these, and other reasons
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`articulated more fully below, the Court should deny AGIS’s Motion to Strike.
`
`II.
`
`FACTUAL BACKGROUND
`
`Dr. Neil G. Siegel is an engineer and professor at the University of Southern California.
`
`(Ex. 1 (Siegel Report) ¶¶ 7-9.) Prior to joining USC in 2015, he spent most of his career at defense
`
`contractor Northrop Grumman Corporation (formerly TRW Inc.), where he worked on a variety
`
`
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`2
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 6 of 19 PageID #: 16136
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`
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`of situational awareness, communications, and command-and-control systems for the military and
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`first responders. (Id. ¶¶ 10-12, 14.) From 1992 until 2004, he led the development of Force XXI
`
`Battle Command Brigade-and-Below (also known as “FBCB2,” “Blue Force Tracker,” and
`
`“Appliqué”), a system for communications and situational awareness on the battlefield that was
`
`created for and sold to the U.S. Army. (Id. ¶¶ 51, 57-63.) Dr. Siegel prepared an expert report
`
`outlining his opinion that four of the patents-in-suit are anticipated by and/or obvious in view of
`
`the FBCB2 system.
`
`Prior to serving Dr. Siegel’s report, Apple submitted invalidity contentions that identified
`
`the FBCB2 system as prior art to those same four patents: U.S. Patent Nos. 9,467,838 (the “’838
`
`Patent”), 9,445,251 (the “’251 Patent”), 9,408,055 (the “’055 Patent”), and 9,749,829 (the “’829
`
`Patent”). (See, e.g., Ex. 2 at 26-30; Ex. 3 at 1.) In the charts required by P.R. 3-3(c), Apple cited
`
`numerous documents that describe how FBCB2 works. (See Part IV.A, infra.) In particular, Apple
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`cited several references showing how FBCB2 meets the limitations of asserted claims requiring a
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`“server.” For example, Apple cited evidence that, by 2004, FBCB2 used network configurations
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`involving fixed servers located near the theater of war; fixed servers at remote locations; and a
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`self-adaptive network configuration in which various FBCB2 computers—including FBCB2 user
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`devices—took turns acting as servers.
`
`In his report, Dr. Siegel outlines FBCB2’s self-adaptive network, summarizing the process
`
`of switching among servers as “dynamically electing servers.” (See, e.g., Ex. 1 (Siegel Report)
`
`¶ 100.) Dr. Siegel states that, when FBCB2 user devices act as servers for the FBCB2 network,
`
`they meet the “server” limitations of the asserted claims. (See, e.g., id.) He also cites two
`
`documents (produced during fact discovery) that corroborate his factual assertion that FBCB2 had
`
`a self-adaptive network in which user devices could act as servers. (See id.; Ex. 4; Ex. 5.)
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`3
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`III. LEGAL STANDARD
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`Under Patent Rule 3-3, a party opposing a claim of patent infringement must serve
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`“Invalidity Contentions” which contain “[t]he identity of each item of prior art that allegedly
`
`anticipates each asserted claim or renders it obvious.” P.R. 3-3(a). A party must also submit charts
`
`identifying “where specifically in each alleged item of prior art each element of each asserted claim
`
`is found.” P.R. 3-3(c). The contentions should “provide all parties with adequate notice and
`
`information with which to litigate their cases.” Eolas Techs. Inc. v. Amazon.com, Inc., No. 6:15-
`
`CV-01038, 2016 WL 7666160, at *1 (E.D. Tex. Dec. 5, 2016).
`
`“The scope of [] contentions and expert reports are not . . . coextensive.” Fenner
`
`Investments, Ltd. v. Hewlett-Packard Co., No. 6:08-CV-273, 2010 WL 786606, at *2 (E.D. Tex.
`
`Feb. 26, 2010). That is, expert reports in patent litigation are expected to provide more information
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`than is contained in a party’s infringement or invalidity contentions. Id. Because it is improper
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`for an expert report to rely on an entirely new theory, however, “[t]he threshold question in
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`deciding whether to strike an expert report is whether the expert has permissibly specified the
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`application of a disclosed theory or impermissibly substituted a new theory all together.” Digital
`
`Reg of Texas, LLC v. Adobe Sys. Inc., No. 12-CV-01971-CW (KAW), 2014 WL 1653131, at *2
`
`(N.D. Cal. Apr. 24, 2014); see also Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No.
`
`2:15-CV-00037-RWS-RSP, 2017 WL 2651618, at *9 (E.D. Tex. June 20, 2017), report and
`
`recommendation adopted, No. 2:15-CV-00037-RWS, 2017 WL 4693971 (E.D. Tex. July 31,
`
`2017).
`
`IV. ARGUMENT
`
`Apple served invalidity contentions explaining why FBCB2 anticipates or renders obvious
`
`every asserted claim of the ’838, ’251, ’055, and ’829 patents. Apple also served charts, totaling
`
`more than 1500 pages, which cite documents to show how the FBCB2 system meets every
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`4
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`
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`limitation of those claims.1 As discussed further below, Dr. Siegel’s opinions regarding the server
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`claims of the ’838, ’251, and ’829 patents are fully consistent with Apple’s contentions.2 AGIS’s
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`arguments otherwise—and its claims that it suffered unspecified prejudice that warrants striking
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`the relevant portions of Dr. Siegel’s report (and, as a result, granting a separate motion of summary
`
`judgment of no invalidity in view of the FBCB2 system)—are based on a gross mischaracterization
`
`of Apple’s contentions.
`
`A.
`
`Dr. Siegel’s Description of Dynamic Server Election Is Not A New Theory.
`
`The FBCB2 system consists of computers that form a communications network for, among
`
`other things, sharing location information and messages. In the portions of Dr. Siegel’s report that
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`AGIS moves to strike, Dr. Siegel opines that FBCB2’s network could be configured to use one
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`computer as a server, then later reconfigured to use a different computer as a server—a process he
`
`refers to as “dynamic” server election. (See, e.g., Ex. 1 (Siegel Report) ¶ 100.) Dr. Siegel also
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`opines that the computers used by FBCB2 end-users—as opposed to standalone, separate data
`
`servers—could, themselves, be used as servers for the network. (See, e.g., id.) Dr. Siegel
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`concludes that FBCB2 end-user computers, acting as servers for FBCB2’s network, meet the
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`“server” limitations of the asserted claims. Apple disclosed this theory in its invalidity contentions.
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`Apple’s contentions explain that FBCB2’s network could be configured and reconfigured.
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`Apple’s contentions open with an extensive description of FBCB2’s network configuration tool,
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`which was used to set up the FBCB2 network by, among other things, assigning roles to each
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`computer in the network. Apple’s contentions quote extensively from U.S. Pat. No. 6,212,559
`
`(the “’559 patent”), one of the patents Dr. Siegel obtained out of his work on developing FBCB2.
`
`
`1 Where a party asserts that a prior art product or system invalidates a patent claim, the party may
`cite in its invalidity charts multiple documents that describe the claimed system. (See Ex. 12 (E.D.
`Tex. General Order) at 1, n.2.)
`2 The ’055 patent does not include any claims requiring a server.
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`5
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 9 of 19 PageID #: 16139
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`(See, e.g., Ex. 3 at 7-15 (’838 invalidity chart).) The ’559 patent describes FBCB2’s network
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`configuration tool as a “system and a related method for automatically configuring or
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`reconfiguring a large interconnected computer network,” consisting of computers designated to
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`act as “hosts,” “servers,” and “routers.” (See, e.g., Ex. 3 at 7 (’838 invalidity chart, quoting the
`
`’559 patent); Ex. 6 (’559 pat.) 1:21-30.) Apple’s contentions disclose that, after FBCB2’s network
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`administrators identified each FBCB2 computer, each FBCB2 user, and which users needed to
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`communicate with one another, the network configuration tool converted that information into a
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`physical network design that designated the function that each computer would perform within the
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`network. (See, e.g., Ex. 3 at 7-9; 13-15 (’838 invalidity chart.).) Apple’s contentions disclose that
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`the network configuration tool then sent instructions to each computer to begin performing that
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`function at a prearranged time or upon receipt of a command transmitted over the network. (See,
`
`e.g., id. at 7-9) Apple’s contentions disclose that, using this tool, FBCB2 users could make
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`“frequent changes . . . [in] network configuration . . . on a daily or even more frequent basis during
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`military maneuvers.” (See id. at 7.)
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`Apple’s contentions explain the tool described in the ’559 patent was implemented into the
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`FBCB2 system so that FBCB2’s network could be configured and reconfigured automatically,
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`allowing the system to switch without user intervention to a new server when an existing server
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`became unavailable. In particular, Apple cited a 1999 presentation prepared by Dr. Siegel which
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`explains that FBCB2 “[u]nits moving away from/out-of-[Line of Sight]-of their nominal ‘data
`
`supplier’” needed to be able to “dynamically ‘find’” another data source. (See Ex. 3 at 19 (’838
`
`invalidity chart) (emphasis added).) The portion of the presentation cited in Apple’s contentions
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`confirms—using the same words as Dr. Siegel does in his expert report—that the U.S. Army made
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`this process “fully automatic” through a “dynamic ‘server’” structure. (Id. (emphasis added)) The
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`6
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`quoted presentation then sets forth a detailed description of the network configuration tool
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`described in the ’559 patent, using as visual aids the figures of the ’559 patent. (See Ex. 7 (Siegel
`
`Presentation) at 8-12.) Likewise, Dr. Siegel cited additional documents that describe this process
`
`using different words. (See, e.g. Ex. 3 at 29 (explaining that FBCB2 is a “self-adaptive” network,
`
`citing Ex. 14 at 3); see also Ex. 14 at 3 (underlying document, explaining that “FBCB2 optimizes
`
`the use of low bandwidth combat net radios. This efficient Tactical Internet dynamically adjusts
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`to battlefield conditions. . . . Its architecture precludes single point failures.”).)
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`Apple’s charts also disclose that FBCB2 user devices, acting as servers within FBCB2’s
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`reconfigurable network, meet the “server” limitations of the asserted claims. In its charts of the
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`“server” limitations, Apple cited documents disclosing that FBCB2 user devices themselves
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`“gather and distribute critical combat
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`information
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`to
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`soldiers, units, and battle
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`commands . . . through the use of its revolutionary new communications system, the ‘Tactical
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`Internet.’” (See, e.g., Ex. 3 at 28-29 (’838 patent invalidity chart) (emphasis added).) This role—
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`of “gathering” and “distributing” data to the other computers in the network—is identical to the
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`role of the servers of the asserted claims. (See, e.g., Ex. 8 at 3:15-23 (’251 patent describing servers
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`as performing the functions of receiving and forwarding data over the Internet).) For claims
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`requiring a “server” or “second server,” Apple also cited documents showing that FBCB2 was
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`implemented on the battlefield using only FBCB2 user devices, and no other computers. For
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`example, Apple’s charts include quotations of a document that contrasts an implementation of
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`FBCB2 that included a back-up data server that is not an FBCB2 device (FBCB2-BFT), with an
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`implementation that operated without such a server (FBCB2-EPLRS). (See e.g., Ex. 3 at 24-25
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`(citing Ex. 9 at 39-41); 45 (’838 patent invalidity chart).) The cited document describes both
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`network architectures at length, including figures showing that FBCB2-BFT operated with a data
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`7
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`server that was not an FBCB2 device, whereas FBCB2-EPLRS did have such a separate data
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`server. (See generally Ex. 9 at 7-47 (describing evolution of FBCB2-BFT system from FBCB2-
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`EPLRS); id. at 9-11, 25 (FBCB2-EPLRS architecture diagram and explanation of terminology in
`
`architecture diagram), 46 (FBCB2-BFT architecture diagram).)
`
`In short, the invalidity theory Dr. Siegel describes in his report is fully disclosed in Apple’s
`
`contentions. One of Apple’s theories was, and continues to be, that FBCB2 end-user computers
`
`operating within FBCB2’s reconfigurable network meet the “server” limitations of the asserted
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`claims. The only thing that has changed since the contention phase of this litigation is Dr. Siegel’s
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`citation to two additional documents (produced during fact discovery) that further describe the
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`same features disclosed in Apple’s contentions. Dr. Siegel cited each document not because it
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`discloses new information, but because it corroborates his testimony that the functionality
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`described in his report (and in his contentions) was ultimately incorporated into FBCB2. One of
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`the documents summarizes the status of the FBCB2 program as of May 1997 (see Ex. 4 at 1, 6-7),
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`stating that the FBCB2 engineering team had implemented enhancements to include support for
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`dynamic server registration. The second document is a Summary System Design document
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`prepared for the U.S. Army, which corroborates that the server selection process was part of the
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`design of FBCB2. (See Ex. 5 at SIEGEL000939, SIEGEL001003-5.) Each document supports
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`Dr. Siegel’s factual assertions that FBCB2 implemented the network reconfiguration tools
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`described in the ’559 patent,3 but neither discloses features not already set forth in Apple’s
`
`contentions.
`
`
`3 These documents are important to Dr. Siegel’s testimony because AGIS attacks Dr. Siegel’s
`testimony about the FBCB2 system based on an alleged lack of corroboration. For example,
`AGIS’s expert report criticizes Dr. Siegel’s report on the grounds that it did not cite enough
`documents showing that “the disclosures of [his] patents were actually implemented in the FBCB2
`system.” (Ex. 13 ¶ 516.)
`
`
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`8
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 12 of 19 PageID #: 16142
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`B.
`
`AGIS’s Allegations Of Confusion and Prejudice Are Unfounded.
`
`Despite the extensive disclosures in Apple’s contentions, AGIS likens this case to others
`
`in which, for example, an expert discloses for the first time in his report “twenty-eight new
`
`combinations of prior art.” See, e.g., LML Patent Corp. v. JPMorgan Chase & Co., No. 2:08-CV-
`
`448, 2011 WL 5158285, at *1 (E.D. Tex. Aug. 11, 2011) (internal quotation marks omitted).
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`Specifically, AGIS argues in its motion that Apple’s contentions set forth a single theory of how
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`FBCB2 meets the asserted “server” claim limitations, and that AGIS relied on that theory to its
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`detriment. Neither claim is credible.
`
`1.
`
`AGIS’s Alleged Confusion Is Not Credible.
`
`AGIS argues that the Court should strike the portions of Dr. Siegel’s report pertaining to
`
`dynamically electing servers because AGIS was “under the impression that Apple alleged a
`
`centralized server theory.” (Dkt. No. 233 at 6.) It is unclear how AGIS could have arrived at such
`
`a conclusion, and, in any case, AGIS’s impression does not matter in light of the fact that Apple’s
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`contentions clearly disclosed dynamic server election.
`
`Absolutely nothing in Apple’s contentions indicates that Apple intended, at the contention
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`stage, to limit itself to a single theory of how the FBCB2 system meets the server claim limitations.
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`Instead, Apple’s contentions disclose that multiple FBCB2 server configurations meet the server
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`claim limitations. For example, Apple’s charts of server limitations cite as evidence that FBCB2
`
`met those limitations FBCB2’s use of a fixed-site server with a satellite relay to facilitate
`
`communications among FBCB2 vehicles. (See, e.g., Ex. 3 at 23 (’838 invalidity charts), citing Ex.
`
`10 at 4-6.) Likewise, Apple’s charts of server limitations cite FBCB2’s use of data servers located
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`outside the battlefield to facilitate communications among FBCB2 vehicles and between FBCB2
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`vehicles and FBCB2 units located at remote, stationary command centers. (See, e.g., Ex. 3 at 23
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`(’838 invalidity charts), citing Ex. 9 at 28-35.) And, as described above, Apple’s charts of server
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`
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`9
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 13 of 19 PageID #: 16143
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`limitations cite extensively to uses of FBCB2 that used only FBCB2 user devices as servers. (See
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`Part IV.A, supra.) Apple’s contentions do not state or imply that only one of these configurations
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`met the server claim limitations.
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`Indeed, Apple did not advance a single, “centralized server” theory at all. Unlike the term
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`“dynamic server”—which appears in Apple’s contentions several times—the term “centralized
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`server” does not appear anywhere in Apple’s contentions. Nor do Apple’s contentions state, as
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`AGIS claims, that Apple’s sole theory of anticipation was that FBCB2’s “‘first server’ claim
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`limitations were [] met by an FBCB2 system’s command center server installed at the ‘battalion
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`task force headquarters’ in Bosnia and Kosovo, and that ‘second server’ claim limitations [sic] a
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`command center server at USAREUR Headquarters in Hiedelberg, Germany.” (See Dkt. No. 233
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`at 2 (missing words in original).) That is a position of AGIS’s own invention, and it makes no
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`sense. The documents Apple quoted in its contentions regarding the use of servers in Bosnia,
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`Kosovo, and Germany make clear that the servers located in those countries were only used when
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`FBCB2 was deployed in the Balkans. (See Ex. 3 at 23-24, citing Exs. 9-10; Ex. 10 at 5; Ex. 9 at
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`27-30 (describing FBCB2 architecture in Balkans); Ex. 10 at 4-6.) As that same document
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`explains, and Apple’s invalidity charts make clear, different servers were used when the Army
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`deployed FBCB2 for war games in the United States and in the field in Iraq and Afghanistan. (See,
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`e.g., Ex. 9 at 33-41, 46 (describing FBCB2 architecture in Iraq/Afghanistan).)
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`Taking at face value AGIS’s claim that it understood Apple’s contentions to articulate a
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`single theory of invalidity based on the servers FBCB2 used in the Balkans, that misimpression is
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`a result not of any failure by Apple to make appropriate disclosures in its contentions, but instead
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`on AGIS’s failure to review those contentions. Review of Apple’s claim charts for FBCB2 and
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`the documents cited therein makes clear that Apple cited multiple different FBCB2 server
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`10
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 14 of 19 PageID #: 16144
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`configurations as evidence that FBCB2 anticipates the server limitations of the asserted claims. If,
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`after such review, AGIS believed that Apple’s invalidity contentions did not make clear the reason
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`that each of those configurations was cited, AGIS should have sought clarification or moved to
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`compel Apple to amend its invalidity contentions—not lain in wait until summary judgment.
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`Simply put, if AGIS did suffer any injury associated with Apple’s contentions, that injury was self-
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`inflicted.
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`2.
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`AGIS Suffered No Prejudice.
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`In fact, however, AGIS has not articulated an actual injury it suffered as a result of its
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`alleged confusion. Instead, AGIS’s brief simply states that it was prejudiced because it “conducted
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`fact discovery” under a misconception about how FBCB2 works. AGIS does not state what it
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`would have done differently in discovery if it had understood the system.
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`Such generic allegations of prejudice are typically entitled to little weight in evaluating
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`whether to exclude expert testimony. See, e.g., Genband US LLC v. Metaswitch Networks Corp.,
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`No. 2:14-CV-33-JRG-RSP, 2016 WL 122969, at *3 (E.D. Tex. Jan. 9, 2016) (denying motion to
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`strike where movant cited “no evidence of actual prejudice). AGIS’s allegations should be given
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`no weight, for two reasons.
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`First, AGIS made no substantive statements about FBCB2 until serving its rebuttal expert
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`report. In all of its written discovery responses related to FBCB2, AGIS objected to questions
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`about invalidity as premature, and preserved every possible argument it could make about FBCB2.
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`For example, when Apple propounded an Interrogatory seeking to understand why AGIS did or
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`did not contend that FBCB2 qualified as prior art under 35 U.S.C. §§ 102 and 103, AGIS objected
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`to the Interrogatory as premature and stated that FBCB2 was not prior art under any provision of
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`the Patent Act (without providing any rationale). (See Ex. 11 at 6, 8-9 (Response to Apple
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`Interrogatory No. 14).) Likewise, when Apple propounded an Interrogatory seeking to understand
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`11
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 15 of 19 PageID #: 16145
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`which asserted claim limitations AGIS contended were and were not included in FBCB2, AGIS
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`objected to the Interrogatory as premature and stated that FBCB2 failed to meet every limitation
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`of every asserted claim—again, without providing any rationale. (See id. at 15, 33-40, 212-18,
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`226-29, 241-48 (Response to Apple Interrogatory No. 15).) Given that AGIS’s discovery
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`responses did not limit the positions AGIS could take regarding FBCB2 during expert discovery,
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`it is unclear why a more fulsome understanding of Apple’s contentions would have made a
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`difference to AGIS’s approach.
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`Second, AGIS conducted its fact discovery regarding FBCB2 after Dr. Siegel served his
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`expert report. Specifically, so that Dr. Siegel would only need to be deposed once in this litigation,
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`Apple proposed and AGIS agreed to depose Dr. Siegel after he served his report, but before AGIS
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`served its expert’s rebuttal report. This schedule put AGIS at a significant advantage compared to
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`the ordinary sequence of discovery—with expert depositions taking place after the close of fact
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`discovery and after all expert reports are served—by allowing AGIS to focus its discovery on the
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`facts most critical to Dr. Siegel’s report. AGIS fails to explain how, despite this favorable
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`schedule, and the fact that AGIS deposed Dr. Siegel at length regarding dynamic server election
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`(See, e.g., Ex. 15 (Siegel Tr.) at 90:20-95:11; 101:18-104:4; 192:10-202:25), AGIS suffered
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`prejudice in discovery that justifies striking important portions of Dr. Siegel’s report. See Cioffi
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`v. Google, Inc., No. 2:13-CV-00103-JRG-RSP, 2017 WL 90756, at *2 (E.D. Tex. Jan. 10, 2017)
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`(finding minimal prejudice where party had opportunity to depose expert after receiving expert
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`report, and, as here “had nearly four months to prepare for [the expert’s] trial testimony”);
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`Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., No. 6:11-CV-492-RWS-KNM, 2017 WL
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`4533664, at *4 (E.D. Tex. Oct. 11, 2017) (denying motion to strike where counsel had an
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`“opportunity to and actually did depose” expert about allegedly late-disclosed opinion); Genband,
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`12
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`Case 2:17-cv-00513-JRG Document 257 Filed 01/04/19 Page 16 of 19 PageID #: 16146
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`2016 WL 122969, at *3 (same). Nor does AGIS even attempt to reconcile its complaints of
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`prejudice with the fact that, after deposing Dr. Siegel, it was sufficiently informed about the details
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`of dynamic server election to file a summary judgment motion based on the intricacies of how
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`dynamic server election works. (See Dkt. No. 235.)
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`C.
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`AGIS’s Requested Relief Is Extreme.
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`AGIS’s baseless assertions of prejudice do not justify striking crucial portions of Dr.
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`Siegel’s report. Although AGIS’s claims that striking Dr. Siegel’s report concerning the server
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`limitations “will not unduly prejudice Apple,” that assertion is belied by the fact that AGIS filed a
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`Motion for Summary Judgment of no invalidity of any asserted claim based on the possible
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`success of this motion. (See Dkt. No. 236 at 4.) Specifically, in its Motion for Summary
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`Judgment, AGIS argues that, “[s]hould the Court grant AGIS’s December 14, 2018 motion to
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`strike the portions of the Siegel Report relating to dynamically electing servers . . . the record
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`would contain no evidence that the FBCB2 system meets each and every limitation (i.e., the server-
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`based limitations)” of the patents-in-suit. (Id.) Based on that alleged lack of evidence, AGIS seeks
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`summary judgment that none of those patents is invalid over FBCB2. (Id.) If AGIS were, as it
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`claims, merely seeking to “return Apple to the same position presented in its invalidity
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`contentions,” (id. at 6) AGIS would be seeking a lesser remedy.
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`Finally, it is noteworthy that AGIS has asked the Court to grant summary judgment of no
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`invalidity regarding all four of the patents about which Dr. Siegel opined in his report, even though
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`the paragraphs of the Siegel report that AGIS seeks to strike pertain only to three of those patents
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`(the ’838, 251, and ’829). (See Dkt. No. 233 at 2, citing Siegel Report ¶¶ 71, 100, 104, 164, 168,
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`183, 219, 235, 243, 265, 273, 418, 470.) Indeed, given that the claims of the ’055 patent do not
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`require the use of a server, Dr. Siegel’s alleged “new theory” is not relevant to that patent. It is
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`difficult to understand how, if AGIS was truly concerned with the impact on its case of Dr. Siegel’s
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`13
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`Case 2:17-cv-00513-JRG Do