Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 1 of 8 PageID #: 18696
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC. ET AL.,
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`Defendants.
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`APPLE, INC.,
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`Defendant.
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`§
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`Case No. 2:17-CV-0513-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`Case No. 2:17-CV-0516-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S REPLY
`IN SUPPORT OF ITS OPPOSED MOTION TO STRIKE PORTIONS
`OF THE EXPERT REPORT OF NEIL SIEGEL RELATING TO
`THE UNDISCLOSED INVALIDITY THEORY
`BASED ON “DYNAMICALLY ELECTING SERVERS” (DKT. 233)
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`

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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 2 of 8 PageID #: 18697
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`I.
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`ARGUMENT
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`A.
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`Apple’s Invalidity Contentions Were Limited to a Central Server Theory
`From Which The New Dynamically Electing Server Theory Was Not
`Apparent
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`
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`Dr. Siegel’s new theory of invalidity is essentially that “hundreds” of vehicle-mounted
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`FBCB2 devices “could become servers,” as opposed to the centralized “Command Center
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`Servers” and satellites disclosed in Apple’s invalidity contentions. Compare Ex. H at 196:3-8
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`with Ex. I at 4. For the proposition that this theory was present in Apple’s invalidity contentions,
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`Apple relies on disclosures that do not mention “dynamically electing servers” in which it did
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`not contend that FBCB2 user devices constitute servers. See Dkt. 257 at 6-7. In the alternative,
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`Apple argues that the dynamically electing server theory was “describe[d] using different
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`words,” but Apple cites to disclosures which neither used the word “server,” nor plausibly
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`described FBCB2 user devices as servers. See Dkt. 257 at 7. These disclosures are far more
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`plausibly directed to a centralized server theory, acknowledged as distinct from the dynamically
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`electing server theory by Dr. Siegel. See Ex. J (Siegel Transcript) at 102:2-103:7; 202:8-16;
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`Dkt. 233 at 5. Because Apple’s invalidity contentions did not put AGIS on notice of Dr. Siegel’s
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`new dynamically electing server theory, AGIS respectfully requests that the Court strike the new
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`theories.
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`1.
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`Apple’s assertion that it “explained” dynamically electing servers is
`based on parts of its invalidity contentions not pertaining to any
`server limitation
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`Invalidity contentions serve to put the party alleging infringement on notice of the alleged
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`infringer’s arguments as to “[w]hether each item of prior art anticipates each asserted claim or
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`renders it obvious.” P.R. 3-3. AGIS does not “flail for procedural protection,” as Apple suggests
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`[Dkt. 257 at 2]; rather, AGIS seeks enforcement of P.R. 3-3 in accord with its purpose to “further
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`the goal of full, timely, discovery and provide all parties with adequate notice and information
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`

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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 3 of 8 PageID #: 18698
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`with which to litigate their cases.” Cummins–Allison Corp. v. SBM Co., No. 9:07–cv–196, 2009
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`WL 763926, at *1 (E.D.Tex. March 19, 2009). To satisfy the P.R. 3-3(4) requirement of “a chart
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`identifying where specifically in each alleged item of prior art each element of each asserted
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`claim is found,” defendants must “provide notice of how each claim element is met.” Id. at 4
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`(holding that “failure to provide the specific reference that allegedly reads on a claim
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`limitation . . .does not place plaintiff on notice”); see also Realtime Data, LLC v. Packeteer, Inc.,
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`Civil No. 6:08–cv–144–LED–JDL, 2009 WL 4782062, at *2 (E.D. Tex., December 8, 2009).
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`Apple bases its argument on disclosures that are insufficient to put AGIS on notice of its
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`allegedly disclosed theory under this standard, because the proffered disclosures do not address
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`any claim limitation that recites a “server.”1 Moreover, this failure to put AGIS on notice with
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`regard to the ‘838 Patent is representative of Apple’s invalidity contentions for each of the
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`patents-in-suit. See e.g. Ex. I at 4. Further, Apple’s charts never contended that FBCB2 user
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`devices constituted servers at all, let alone “dynamically electing servers”; the only quotes that it
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`purports to show otherwise actually suggest the opposite.2 Thus, because AGIS was not on
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`notice of any application of the quoted ‘559 Patent or 1999 Siegel Presentation disclosures to a
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`“server” limitation, and further not on notice of any theory in which FBCB2 user devices became
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`servers, these items do not support Dr. Siegel’s new dynamically electing server theory.
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`1 Apple alleges that a set of block quotes to the Siegel ‘559 Patent and a 1999 presentation by Dr. Siegel specifically
`explain dynamically electing servers. See Dkt. 257 at 6-7. But Apple points to no language that would put AGIS on
`notice that these quotes relate to any server limitation, or that suggests they relate to a server limitation at all. See
`Dkt. 257-3 at 4-22. Rather, throughout the patents-in-suit, Apple only recited these quotations where claim
`limitations concerned “joining a group” or “joining a network.” See e.g. Dkt. 257-3 at 4.
`2 Apple suggests that the ‘599 Patent explains FBCB2 user devices acting as “hosts,” “servers,” and “routers,” but
`the complete sentence containing the terms Apple quoted in its opposition states that, “Other computers function as
`servers, and distribute requested data to network users with host computers.” Dkt. 257 at 6; 257-6 at 1:21-30.
`Similarly, Apple draws the term “dynamic ‘server’ structure” from a table in Dr. Siegel’s 1999 presentation which
`more completely states that “Units moving away from/out-of-LoS-of their nominal “data supplier” . . . Need a
`dynamic “server” for key data.” Dkt. 257-3 at 19. The singular use of “a” suggests the presentation contemplated a
`single centralized “server,” i.e. a satellite that could not be blocked by losing line-of-sight, a conclusion supported
`by the disclosure of a satellite link which “breaks-the-line of sight barrier” in the charted cell for the same claim
`element. Dkt. 257-3 at 6. Moreover, in describing such a server, the chart refers to “needed battlefield dynamics”
`and “implied technical requirements,” suggesting that such a server did not exist. Id. at 19.
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`2
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`

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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 4 of 8 PageID #: 18699
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`2.
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`Apple’s relevant invalidity contentions disclosed only centralized
`server systems from which the dynamically electing server theory is
`not apparent
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`
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`The words “dynamically electing server” do not appear in Apple’s invalidity contentions,
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`nor are the properties of a dynamically electing server described. Apple’s charts do not describe
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`hundreds of vehicles in a group acting as independent servers, nor do they describe how radio
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`“transceivers bolted to the tops of vehicles” transform into servers. Dkt. 257-3 at 23. Instead,
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`Apple’s charts describe satellites and “Command Center Servers,” in a “’hub and spoke’
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`configuration” with a number of FBCB2 user devices. Id. Dr. Siegel confirmed, and Apple’s
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`opposition does not dispute, that the “dynamically electing server’s” implementation is radically
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`different from a centralized server and, instead, involves multiple units acting as servers which
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`change server status over time. See Ex. J at 102:2-103:7; 202:8-16; Dkt. 233 at 5. Apple’s
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`contentions described only the latter, and did not put AGIS on notice of the former.
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`
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`Apple’s Opposition argues that AGIS should have derived its new theory from a first
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`block quote noting the capability of an FBCB2 “Applique” systems to “gather and distribute
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`critical combat information to soldiers,” through use of the “Tactical Internet,” and a second
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`block quote contrasting satellite implemented “FBCB2-BFT” with “terrestrial based” “FBCB2-
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`EPLRS.” Dkt. 257-3 at 24-25 and 28-29. Apple provided no supporting argument of any kind to
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`explain the relevance of each block quote, for example, that it contended these systems
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`constituted servers, or that such servers were “dynamically electing.” Id. Instead, Apple now
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`alleges that describing a device which can “gather” and “distribute” information, and describing
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`FBCB2-EPLRS in the absence of a satellite were each sufficient to put AGIS on notice that
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`Apple considered every FBCB2 device capable to transforming into a server that met the claimed
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`limitations. Dkt. 257 at 7. But the quotes Apple cited do nothing of the sort – moreover, if it had
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`been Apple’s intention for its charts to put AGIS on notice of the dynamically electing server
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`3
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`

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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 5 of 8 PageID #: 18700
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`theory, it could have simply described its theory rather than copy-pasting block quotes without
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`further explanation. Without such explanation, AGIS had no reason to take notice that Apple’s
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`contentions meant anything other than what was identified by its charted quotes.
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`Furthermore, Apple’s allegedly explanatory block quotes were not provided in a vacuum;
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`Apple’s invalidity charts included quotes describing a centralized “Command Center Server”
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`installed at a headquarters and a “satellite hub” for virtually every claim element reciting a
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`server, and for every claim element alleged to be anticipated by dynamically electing servers in
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`the Siegel Report. Compare Dkt. 233-4 (Siegel Expert Report) at ¶¶100, 104, 164, 183, 219, 235,
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`243, 265, 273, 418, and 470 with e.g. Dkt. 233-2. For one claim element with “server”
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`limitations identified in the Siegel report, Apple’s invalidity contentions only disclosed the
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`above-referenced “Command Center Server” and “satellite hub” quote. See e.g. Ex. C at 4-5;
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`Dkt. 233-4 at ¶¶83. This block quote represented the only reference to a “server” in Apple’s
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`charts for the claims identified in the Siegel Report. Apple does not dispute that this disclosure
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`does not support its dynamically electing server theory. See Dkt. 257 at 10. Apple’s apparent
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`willingness to use the word “server” with respect to the central server theory suggests that if it
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`intended to put AGIS on notice of its “dynamically electing server” theory, it would have at the
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`very least made use of the word “server” in the charted claim elements that it now alleges
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`anticipated by that theory to anticipate. Apple’s failure to do so further suggests that Dr. Siegel’s
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`“dynamically electing servers” represent a new theory, not present in Apple’s invalidity
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`contentions.
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`4
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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 6 of 8 PageID #: 18701
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`B.
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`AGIS Was Prejudiced
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`AGIS has been prejudiced by Apple’s new theory of invalidity; at the very least, AGIS
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`has missed additional document discovery on FBCB2 user devices and transceivers that it would
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`have sought had it been timely informed regarding the distinctions Apple now draws between
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`“user devices,” “transceivers,” and “Command Center Servers” comprising FBCB2.
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`Further, Apple misrepresents that “AGIS conducted its fact discovery regarding FBCB2
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`after Dr. Siegel served his expert report.” Dkt. 257 at 12. By “fact discovery,” Apple is
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`apparently referring to Dr. Siegel’s November 14, 2018 deposition, as fact discovery closed on
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`October 26, 2018 – four days prior to service of Dr. Siegel’s expert report on October 30, 2018.
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`Dkt. 217 at 3. But AGIS and Apple explicitly agreed through counsel that Dr. Siegel’s deposition
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`was conducted pursuant to expert discovery, not fact discovery.3
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`II.
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`CONCLUSION
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`For the foregoing reasons and those provided in AGIS’ Opening Brief, AGIS respectfully
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`requests that this Court strike the new theories in Dr. Siegel’s Invalidity Expert Report.
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`Dated: January 11, 2019
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`Respectfully submitted,
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`BROWN RUDNICK LLP
`
` /s/ Alfred R. Fabricant
`
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`
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`3 AGIS and Apple agreed that Dr. Siegel’s deposition would be pursuant to expert discovery via meet-and-confer on
`November 13, 2018, the undisputed confirmation of which stated “Thank you for confirming our discussion. As you
`pointed out, we served our subpoena before we knew that Dr. Siegel would be submitting an expert report. You
`further pointed out that you saw this issue as an expert issue, hence the seven hour limit. In view of our discussions,
`we hereby withdraw out subpoena on Dr. Siegel and we agree to proceed with Dr. Siegel’s deposition pursuant to
`expert discovery. . .” Ex. K at 1 and 9.
`
`5
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`

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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 7 of 8 PageID #: 18702
`
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`Samuel F. Baxter
`Texas Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
`
`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LL
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`6
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`Case 2:17-cv-00513-JRG Document 280 Filed 01/11/19 Page 8 of 8 PageID #: 18703
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 11, 2019, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`
`
`
`
` /s/ Alfred R. Fabricant
` Alfred R. Fabricant
`
`
`
`