Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 1 of 7 PageID #: 18740
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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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`APPLE, INC.,
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`Defendant.
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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
`TO APPLE INC.’S RESPONSE IN OPPOSITION TO AGIS’S
`MOTION TO STRIKE THE EXPERT REPORT OF NEIL SIEGEL FOR FAILURE TO
`DISCLOSE OBVIOUSNESS COMBINATIONS BASED ON THE SIEGEL PATENTS
`(DKT. 234)
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 2 of 7 PageID #: 18741
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`Plaintiff AGIS Software Development LLC (“AGIS”), by and through its undersigned
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`counsel, hereby submits this reply in support of its Motion to Strike the Expert Report of Neil
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`Siegel for Failure to Disclose Obviousness Combinations Based on the Siegel Patents (Dkt. 234).
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`I.
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`APPLE FAILS TO ESTABLISH THAT THE “SUPPORTING
`DOCUMENTATION” ARE NOT PRIOR ART REFERENCES FOR PURPOSES
`OF OBVIOUSNESS
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`Apple relies on the U.S. Patent Nos. 6,212,559 (the “’559 patent”); 5,672,840 (the “’840
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`patent”); 6,904,280 (the “’280 patent”); and 7,278,023 (the “’023 patent”) (collectively, the
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`“Siegel patents”) as an obviousness combination with the FBCB2 system as invalidating prior
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`art. Apple states that a separate reference to the Siegel patents was not required in its election of
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`prior art references “because its invalidity contentions are based on the FBCB2 system, which is
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`described in the Siegel patents, among other documents.” Id. at 4. Whether Apple identified the
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`Siegel patents in its invalidity contentions is not at issue. Apple surrendered those references
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`when it did not identify them in its final election of prior art––a meaningful exchange whereby
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`both Apple and AGIS narrowed the scope of the case. However, Apple’s expert, Dr. Siegel,
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`continues to rely on the surrendered Siegel patents in order to establish certain claims are invalid
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`as anticipated and obvious in contravention of the agreed reduction procedure set forth in the
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`Court’s DCO.
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`Apple argues that its invalidity expert, Dr. Neil Siegel, has cited to “the Siegel patents
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`(among other documents) in its charts as evidence of the features and operation of that system,”
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`and that the Siegel patents are not references because they are merely supporting documents.
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`Dkt. 258 at 3-4. However, Dr. Siegel attempts to establish how FBCB2 meets the asserted
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`claims by improperly relying on the combination of the Siegel patents. In several places in his
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`report, Dr. Siegel relies exclusively on the Siegel patents to establish various purported
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`limitations of the asserted claims. See Dkt. 234-2 at ¶¶ 17, 83, 97-98, 119, 154, 161-162, 186-
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 3 of 7 PageID #: 18742
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`187, 191, 194, 216, 222-223, 227, 230, 237-238, 244, 250, 267-268, 274, 280, 303, 324, 345,
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`350, 376, 404, 415-416, 431, 437, 467-468, and 485. Further, Dr. Siegel admits that for certain
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`claims and claim limitations, the Siegel patents themselves, without the FBCB2 system, are the
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`source for allegedly teaching one or more claim limitations. Ex. D at 216:9-19; 216:21-217:11.
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`(“I cite . . . U.S. Patent 7,278,023, and that patent includes explicit language about remote control
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`capabilities. And I describe what FBCB2 does in other parts of this text . . . but I also cite that
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`patent as a document that also talks about remote control in the same way that the patent claim
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`limitation does.”).
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`Accordingly, Apple’s attempts to shoehorn the surrendered prior art references into the
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`FBCB2 “system” are an end-run around to the agreed claim and prior art election process and
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`should be treated as such. Accordingly, because Apple did not identify the Siegel patents in its
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`final election, Apple’s arguments relying on those references should be stricken.
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`II.
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`APPLE RELIES ON AN UNDISCLOSED OBVIOUSNESS ARGUMENT BASED
`ON THE FBCB2 SYSTEM IN COMBINATION WITH THE SIEGEL PATENTS
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`Apple discloses an obviousness argument based on the undisclosed prior art references in
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`combination with the FBCB2 system in the Siegel Report. Apple argues that the obviousness
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`argument is based on the FBCB2 system with the Siegel patents as “supporting documentation
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`describing the functionality of the FBCB2 system, consistent with Apple’s invalidity
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`contentions.” Dkt. 258 at 4. However, Dr. Siegel testifies that his obviousness analysis utilizes
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`the Siegel patents in combination with the FBCB2 system as prior art. Ex. D at 212:2-3; 212:5-
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`11; 212:13-14 (“Q. And so you are using in your analysis those patents as prior art under one of
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`these sections of 102; correct? . . . THE WITNESS: I’m using FBCB2 and those patents”).
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`Apple argues that Dr. Siegel “confirmed that the Siegel patents are not separate references in an
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`obviousness combination; they are support evidence of the FBCB2 system’s features.” Dkt. 258
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 4 of 7 PageID #: 18743
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`at 5. However, Dr. Siegel’s own testimony states that there are portions of the claim limitations
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`where he relies solely on the patents and others where he “describe[s] what FBCB2 does.” Ex. D
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`at 217:2-11; see id. at 219:21-220:3.
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`Apple responds that it has not disclosed any new theories and “the Siegel patents that are
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`purportedly the basis of this motion were charted in invalidity contentions as early as April
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`2018.” Dkt. 258 at 11 (emphasis added). However, Apple concedes that it charted the Siegel
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`patents in its invalidity contentions and then failed to include those references in its final election
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`of prior art.
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`Apple attempts to minimize Dr. Siegel’s understanding of obviousness by referring to his
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`“non-attorney’s mind” and his “non-lawyer’s way” despite his testimony that he has an
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`understanding of 35 U.S.C. § 102 and of obviousness. Ex. D at 210:3-211:4; 219:3-4; 219:6-24;
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`220:1-220:3. Apple has proffered Dr. Siegel as a purported expert related to the invalidity of the
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`patents in suit. Apple likely expects that Dr. Siegel will provide his opinions on obviousness to a
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`lay jury. Moreover, Dr. Siegel himself stated that he is “an expert offering an opinion as to
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`whether the claims in the patents-in-suit are valid” and he is “obliged to apply the applicable
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`law.” Ex. E, Invalidity Report of Neil Siegel at ¶ 26. He further states that he understands how
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`to assess the obviousness of a patent. Id. at ¶¶ 39-45. Apple’s implication that Dr. Siegel can’t
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`grasp obviousness based on his “non-attorney’s mind” and his “non-lawyer’s way,” while
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`simultaneously proffering Dr. Siegel as an expert for purposes of invalidity is disingenuous.
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`Apple provides no legitimate reason as to why the Court should ignore Dr. Siegel’s own
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`testimony.
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`Apple asserts that this motion would cause significant prejudice to Apple. However, by
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`Apple’s own admissions, the patents are merely four documents that are “supporting
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 5 of 7 PageID #: 18744
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`documentation.” Apple has conceded that it does not intend to present any “combination” theory
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`at trial. Dkt. 258 at 1. It was within Apple’s control to select its prior art references. Apple
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`cannot assert now that their choice not to assert these references is prejudicial.
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`III. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant its Motion to
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`Strike the Expert Report of Neil Siegel for Failure to Disclose Obviousness Combinations Based
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`on the Siegel Patents.
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`Dated: January 11, 2019
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
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`
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`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 6 of 7 PageID #: 18745
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`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
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00513-JRG Document 282 Filed 01/11/19 Page 7 of 7 PageID #: 18746
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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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`Alfred R. Fabricant
`Alfred R. Fabricant
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