Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 1 of 11 PageID #: 18563
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
`
`
`
`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
`
`APPLE’S REPLY BRIEF IN SUPPORT OF ITS MOTION TO STRIKE PORTIONS OF
`THE OPENING EXPERT REPORT OF MR. JOSEPH MCALEXANDER THAT RELY
`ON UNTIMELY-DISCLOSED INFRINGEMENT THEORIES
`
`
`
`
`
`
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 2 of 11 PageID #: 18564
`
`TABLE OF CONTENTS
`
`
`
`
`
`Pages
`
`AGIS FAILED TO DISCLOSE THE NEW THEORIES OF INFRINGEMENT
`IN ITS PATENT RULE CONTENTIONS..........................................................................1
`
`A.
`
`B.
`
`C.
`
`AGIS’s September 2018 Contentions Did Not Identify The “Family
`Sharing” Feature As The “Predetermined Network” Of The ʼ970 Patent
`Claims. .....................................................................................................................1
`
`AGIS’s September 2018 Contentions Did Not Identify The “Notify”
`Feature As The “User-Specified Symbol” Limitation Of The ʼ055 Patent
`Claims. .....................................................................................................................3
`
`AGIS’s September 2018 Contentions Did Not Disclose That The Name Of
`A Group Message In Apple’s Messages Application Meets The “Identifier
`Corresponding To The Group” Limitation Of The ʼ838 Patent Claims. .................3
`
`AGIS’S FAILURE TO DISCLOSE NEW THEORIES PRIOR TO ITS EXPERT
`REPORT WAS NEITHER SUBSTANTIALLY JUSTIFIED NOR HARMLESS. ...........4
`
`
`
`I.
`
`II.
`
`
`
`i
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 3 of 11 PageID #: 18565
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Pages
`
`Anascape, Ltd. v. Microsoft Corp.,
`No. CIV.A. 9:06-CV-158, 2008 WL 7180756 (E.D. Tex. May 1, 2008) ........................... 4
`
`LML Patent Corp. v. JPMorgan Chase & Co.,
`2011 WL 5158285 (E.D. Tex. Aug. 11, 2011) ................................................................... 5
`
`Tyco Healthcare Grp. LP v. Applied Med. Res. Corp.,
`No. CIV.A. 9:06-CV-151, 2009 WL 5842062 (E.D. Tex. Mar. 30, 2009) ................ 2, 4, 5
`
`
`
`
`
`ii
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 4 of 11 PageID #: 18566
`
`
`
`
`
`TABLE OF EXHIBITS
`
`
`
`
`
`
`Exhibit Number
`
`Description
`
`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
`Ex. 16
`Ex. 17
`Ex. 18
`Ex. 19
`Ex. 20
`
`Ex. 21
`Ex. 22
`
`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
`US Patent 8,213,970
`September 2018 Contentions Ex. D (’838 patent)
`September 2018 Contentions Ex. C (’251 patent)
`September 2018 Contentions Ex. E (’829 patent)
`AGIS Production Document bearing production number
`AGISTX_00007018-AGISTX_00007034
`US Patent 9,408,055
`September 2018 Contentions Ex. B (’055 patent)
`
`iii
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 5 of 11 PageID #: 18567
`
`
`
`
`
`
`
`AGIS asserts that its September 21, 2018 Infringement Contentions (the “September 2018
`
`contentions”) sufficiently disclosed three new infringement theories introduced in its expert report
`
`(the “McAlexander Report”). But AGIS does not—and cannot—identify any such disclosures.
`
`Indeed, AGIS previously acknowledged that it added the new theories introduced in its October
`
`2018 expert report to contentions in November 2018—weeks after the close of discovery—based
`
`on purportedly new and unforeseeable constructions in the Court’s October 10, 2018 Claim
`
`Construction Order. (Dkt. No. 251 at 2; Ex.10 at 1.) That alone belies AGIS’s current position
`
`that those theories were already disclosed in contentions served before the issuance of that Order.
`
`AGIS failed to timely disclose the new infringement theories. Its opposition merely
`
`identifies disclosures unrelated to the relevant limitations. And that failure is neither substantially
`
`justified nor harmless: AGIS fundamentally seeks to change its infringement case just months
`
`before trial. Thus, the new infringement theories should be stricken from the McAlexander Report.
`
`I.
`
`AGIS FAILED TO DISCLOSE THE NEW THEORIES OF INFRINGEMENT IN
`ITS PATENT RULE CONTENTIONS.
`
`A.
`
`AGIS’s September 2018 Contentions Did Not Identify The “Family Sharing”
`Feature As The “Predetermined Network” Of The ʼ970 Patent Claims.
`
`Claim 1 of the ʼ970 patent requires a “predetermined network of participants.” (Ex. 16 at
`
`9:1-4.) The McAlexander Report identifies Apple’s “Family Sharing” feature—which allows
`
`users with different Apple IDs to share certain information—as meeting this limitation. (Ex. 1 at
`
`A-2.) But AGIS’s September 2018 contentions for this limitation lack a single reference to
`
`“Family Sharing.” (Ex. 11 at A-3, A-4.) Instead, those contentions state that “each ‘Apple ID’ is
`
`a personal account. . . .” (Id.) As such, AGIS’s contentions list a number of services accessed
`
`with an individual’s Apple ID and not the “Family Sharing” feature. (Dkt. No. 251, Ex. A at A-
`
`3.) Notably, unlike its contentions for “predetermined network” of the ’970 patent, AGIS’s
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 6 of 11 PageID #: 18568
`
`
`contentions relating to other asserted patents specifically identified “Family Sharing” as meeting
`
`the “group” limitations. (See, e.g., Ex. 17 at D-40-D-41; Ex. 18 at C-6; Ex. 19 at E-8, E-12-16.)
`
`
`
`
`
`AGIS obfuscates by pointing to selective excerpts of documents and testimony not relied
`
`upon. (Dkt. No. 251 at 4-6 (citing Ex. A at pages after A-4, which concerns different, subsequent
`
`claim limitations).) But disclosure of “Family Sharing” for those different limitations does not
`
`meaningfully disclose that “Family Sharing” meets the “predetermined network” limitation. Cf.
`
`P.R. 3-1(c) (requiring “[a] chart identifying specifically where each element of each asserted claim
`
`is found within each Accused Instrumentality”) (emphasis added). AGIS also points to a single
`
`document it cited (but did not excerpt or discuss) in its contentions for the “predetermined
`
`network” limitation. (Dkt. No. 251 at 5 (citing id., Ex. W.) But citation without discussion to that
`
`single document did not meaningfully disclose a theory of infringement concerning “Family
`
`Sharing;” indeed, that document merely discloses “Terms and Conditions” for a wide range of
`
`different Apple iCloud features, such as “Photo Library,” “Photo Sharing,” and “Mail Drop.” (Ex.
`
`20 at 7021-22.)1 Finally, contrary to AGIS’s argument, Apple’s provision of discovery regarding
`
`Family Sharing did not put Apple on notice that the feature meets the “predetermined network”
`
`limitation of the ʼ970 claims. (See Dkt. No. 251 at 3-4.) Apple provided discovery because, as
`
`explained above, AGIS alleged in its contentions that the “Family Sharing” feature met claim
`
`limitations of other asserted patents unrelated to a “predetermined network.” AGIS’s argument—
`
`that providing discovery concerning a feature makes it an “accused feature” for every limitation
`
`of every patent in the case—would eviscerate the requirement of particularized contentions.2
`
`
`1 Attached as Ex. 20 is the entirety of the document AGIS attached to its brief (Dkt. No. 251) as
`Exhibit W, iCloud Terms and Conditions.
`2 See, e.g., Tyco Healthcare Grp. LP v. Applied Med. Res. Corp., No. CIV.A. 9:06-CV-151, 2009
`WL 5842062, at *2 (E.D. Tex. Mar. 30, 2009) (rejecting argument that plaintiff was aware of
`particular combinations of prior art, because they were asserted against other claims).
`
`
`
`2
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 7 of 11 PageID #: 18569
`
`
`
`
`
`
`
`B.
`
`AGIS’s September 2018 Contentions Did Not Identify The “Notify” Feature
`As The “User-Specified Symbol” Limitation Of The ʼ055 Patent Claims.
`
`The asserted claims of the ʼ055 patent require a “user-specified symbol” that
`
`“correspond[s] to an entity other than the first device and the second devices.” (Ex. 21 at 15:4-16,
`
`17:61-18:7, 19:39-50, 21:16-29.) In the McAlexander Report, AGIS contends that the “Notify”
`
`feature of Apple’s Find My Friends application meets these limitations. (Ex. 2 at B-a136-a141.)
`
`But nowhere in the September 2018 contentions does AGIS clearly disclose that the “Notify”
`
`feature meets this limitation. (Ex. 12.) Indeed, AGIS’s opposition focuses almost exclusively on
`
`entirely different features—the “Marked Location” and “pin” features. (See Dkt. No. 251 at 6-7.)
`
`The only references in AGIS’s opposition to the “Notify” feature appear in support of unrelated
`
`limitations: “receiving respective IP-based responses to the SMS messages” and “transmitting IP-
`
`based messages including a location of the first device to the respective second devices.” (Dkt.
`
`No. 251 at 13; Ex 22 at B-39, B-41, B-64, B-79, B-80.) But AGIS cannot backfill disclosure of
`
`the new “Notify” theory based on disclosures for limitations requiring different functionality. See
`
`P.R. 3-1(c) (requiring “[a] chart identifying specifically where each element of each asserted claim
`
`is found within each Accused Instrumentality”) (emphasis added).
`
`C.
`
`AGIS’s September 2018 Contentions Did Not Disclose That The Name Of A
`Group Message In Apple’s Messages Application Meets The “Identifier
`Corresponding To The Group” Limitation Of The ʼ838 Patent Claims.
`
`AGIS’s September 2018 contentions list six theories of infringement relating to the
`
`“joining the communication network comprises transmitting a message including an identifier
`
`corresponding to the group” limitation of the ʼ838 patent claims. Those theories involve “Find
`
`My iPhone,” “Find My Friends,” “Family Sharing,” or combinations of those applications and
`
`features. (Ex. 17 at D-40-41.) For each, AGIS discusses the “Apple ID” as the claimed “identifier
`
`corresponding to the group.” (Id.) Nowhere does AGIS disclose (1) that the “Messages”
`
`
`
`3
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 8 of 11 PageID #: 18570
`
`
`
`
`
`
`application meets this limitation, or that (2) the group name of any Messages conversation
`
`constitutes an “identifier corresponding to the group.” (Ex. 17 at D-40-D-49.) Again, tellingly,
`
`AGIS specifically identified a Messages conversation as the claimed “group” for other asserted
`
`patents, but not for the ʼ838 patent’s “group” limitation. (See, e.g., Ex. 18 at C-13.)
`
`As support for its new Messages-based theory, AGIS identifies two sentences from its
`
`infringement contentions describing source code files related to Messages—two sentences buried
`
`within a string citation to sixty-nine source code files (across twenty pages) that allegedly
`
`“implement” the “functionality” above. (Dkt. No. 251 at 8-9 (citing Dkt. No. 251, Ex. C at D-51-
`
`52); Ex. 17 at D-49-D-67.) Notably, the cited “functionality” above includes the identification and
`
`description of AGIS’s six theories for the claimed “communication network” relating to Find My
`
`iPhone, Find My Friends, and Family Sharing, but does not include any disclosure related to the
`
`Messages application. (Ex. 17 at D-40-D-49.) AGIS argues that Apple should have ignored
`
`AGIS’s clear identification of the Find My iPhone, Find My Friends, and Family Sharing features
`
`as relevant to the claimed “communication network”—and instead discerned, from the description
`
`of sixty-nine different source code files that followed, the disclosure of a new theory relating to
`
`the Messages application. But that would render meaningless the requirement to provide
`
`particularized notice of infringement theories.3
`
`II.
`
`AGIS’S FAILURE TO DISCLOSE NEW THEORIES PRIOR TO ITS EXPERT
`REPORT WAS NEITHER SUBSTANTIALLY JUSTIFIED NOR HARMLESS.
`
`AGIS must prove that its failure to timely disclose theories in its contentions was
`
`substantially justified or harmless. Tyco, 2009 WL 5842062, at *2. It cannot. This Court
`
`
`3 See Tyco, 2009 WL 5842062, at *2-*3; Anascape, Ltd. v. Microsoft Corp., No. CIV.A. 9:06-CV-
`158, 2008 WL 7180756, at *3–*4 (E.D. Tex. May 1, 2008) (striking invalidity theories as
`inadequately disclosed where invalidity reference is listed in a chart but not specifically explained).
`
`
`
`4
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 9 of 11 PageID #: 18571
`
`
`
`
`
`
`considers: (1) the danger of unfair prejudice to the non-movant (2) the length of the delay and its
`
`potential impact; (3) the reason for the delay, including whether it was within the reasonable
`
`control of the movant; (4) the importance of the matter, and if vital to the case and (5) whether the
`
`offending party was diligent in seeking an extension of time, or in supplementing discovery, after
`
`an alleged need to disclose the new matter became apparent. Id. at *1-*2.
`
`First, there was no justification for AGIS’s delay in identifying the new theories. As AGIS
`
`admits, each of the new theories involves an accused product or functionality that it identified in
`
`the context of other patents and limitations long before serving its expert report. (Dkt. No. 251 at
`
`2-9.) Second, AGIS’s cited cases confirm that the introduction of new theories in its opening
`
`expert report—after the close of fact discovery, and less than five months before trial—would
`
`cause substantial and unfair prejudice to Apple.4 Third, that prejudice is caused by AGIS’s lack
`
`of diligence. Despite receiving discovery regarding each of the accused products during fact
`
`discovery, AGIS waited until November 2018 to improperly serve (without leave) amended
`
`contentions identifying its new theories—more than thirty days after the Court’s Claim
`
`Construction Order and two weeks after the close of fact discovery and the service of its opening
`
`expert report introducing those new theories. Fourth, any harm to AGIS in granting the motion to
`
`strike the new theories would be minimal, because it is not barred from presenting any theories
`
`which were properly and timely disclosed. Tyco, 2009 WL 5842062, at *4.
`
`For the foregoing reasons and those provided in Apple’s Opening Brief, Apple respectfully
`
`requests that this Court strike the new theories in the McAlexander Report.
`
`
`4 See LML Patent Corp. v. JPMorgan Chase & Co., 2011 WL 5158285, at *4 (E.D. Tex. Aug. 11,
`2011) (striking theories disclosed after the close of discovery and less than four months before the
`trial setting); Tyco, 2009 WL 5842062, at *3 (“Because fact discovery had closed, and the deadline
`for rebuttal expert reports was only one month away when initial expert reports were exchanged,
`Tyco’s ability to [analyze new theories] was severely curtailed.”).
`
`
`
`5
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 10 of 11 PageID #: 18572
`
`
`
`
`
`
`
`Dated: January 7, 2019
`
`
`
`
`
`By: Respectfully submitted:
`
`
`
`/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.
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`Case 2:17-cv-00513-JRG Document 276 Filed 01/09/19 Page 11 of 11 PageID #: 18573
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing document was filed electronically in
`
`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
`
`correct copy of the foregoing document by electronic mail on January 7, 2019.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`