Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 1 of 11 PageID #: 19696
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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`HUAWEI DEVICE USA INC., et al.,
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` Defendants.
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`AGIS SOFTWARE DEVELOPMENT LLC,
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` Plaintiff,
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`v.
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`APPLE INC.,
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` Defendant.
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`§
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`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`DEFENDANT APPLE INC.’S SUR-REPLY IN OPPOSITION TO DKT. NO. 234,
`PLAINTIFF’S MOTION TO STRIKE THE EXPERT REPORT OF NEIL SIEGEL FOR
`FAILURE TO DISCLOSE OBVIOUSNESS COMBINATIONS
`BASED ON THE SIEGEL PATENTS
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 2 of 11 PageID #: 19697
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`ARGUMENT .......................................................................................................................1
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`A.
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`B.
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`C.
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`Apple Did Not “Surrender” The Siegel Patents. ......................................................1
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`Apple Does Not Rely On An Obviousness Combination Of The FBCB2
`System And The Siegel Patents. ..............................................................................4
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`AGIS Continues To Ignore Significant Prejudice That Apple Would
`Suffer If The Motion Is Granted. .............................................................................5
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`I.
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`II.
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`i
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 3 of 11 PageID #: 19698
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`Cases
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`TABLE OF AUTHORITIES
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`Pages
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`IP Innovation L.L.C. v. Red Hat, Inc.,
`No. 2:07-cv-447 (RRR), 2010 WL 9501469 (E.D. Tex. Oct. 13, 2010) ........................... 2
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`ii
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 4 of 11 PageID #: 19699
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`TABLE OF EXHIBITS
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`Exhibit Number
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`Description
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`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
`Ex. 5
`Ex. 6
`Ex. 7
`Ex. 8
`Ex. 9
`Ex. 10
`Ex. 11
`Ex. 12
`Ex. 13
`Ex. 14
`Ex. 15
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`Ex. 16
`Ex. 17
`Ex. 18
`Ex. 19
`Ex. 20
`Ex. 21
`Ex. 22
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`Apple’s Initial Invalidity Contentions (served December 1, 2017)
`Apple’s Amended Invalidity Contentions (served April 16, 2018)
`Apple’s Amended Invalidity Contentions Ex. B-14 (’055 Patent)
`Apple’s Amended Invalidity Contentions Ex. C-14 (’251 Patent)
`Apple’s Amended Invalidity Contentions Ex. D-14 (’838 Patent)
`Apple’s Amended Invalidity Contentions Ex. E-14 (’829 Patent)
`Apple’s Final Election of Prior Art References (served August 29, 2018)
`Siegel Invalidity Report Excerpts
`Siegel Deposition Excerpts
`Apple’s Initial Invalidity Contentions Ex. B-14 (’055 Patent)
`Apple’s Initial Invalidity Contentions Ex. C-14 (’251 Patent)
`Apple’s Initial Invalidity Contentions Ex. D-14 (’838 Patent)
`Apple’s Initial Invalidity Contentions Ex. E-14 (’829 Patent)
`Model Order Focusing Patent Claims and Prior Art (Judge Davis)
`Cardsoft, Inc. v. Verifone Holdings, Inc., No. 2:08-cv-98-RSP (E.D.
`Tex. Jun. 3, 2012), Dkt. No. 371
`Apple’s Initial Election of Prior Art References (served April 30, 2018)
`Additional Siegel Invalidity Report Excerpts
`AGIS Production Document AGISTX_00052222
`AGIS Production Document AGISTX_00052273
`AGIS Production Document AGISTX_00053052
`Apple’s Second Amended Initial Disclosures
`McAlexander Invalidity Report Excerpts
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`iii
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 5 of 11 PageID #: 19700
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`I.
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`INTRODUCTION
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`Apple has never asserted that the Siegel patents1 invalidate AGIS’s patents as part of an
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`obviousness combination with other references. Instead, Apple has consistently asserted that the
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`FBCB2 system, which was used by the U.S. military in the late 1990s and early 2000s, invalidates
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`four AGIS patents,2 and that the Siegel patents describe the operation and features of that system.
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`Dr. Neil Siegel, the designer of the FBCB2 system, articulates the same theory of invalidity in his
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`expert report. AGIS’s reply ignores those facts—just as it did in its motion—and repackages the
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`same erroneous arguments to request that Dr. Siegel’s report be stricken in its entirety.
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`AGIS’s real goal appears to be preventing the jury from learning about the FBCB2 system.
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`But no basis exists for that request. In its invalidity contentions served more than six months
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`before the close of fact discovery, Apple disclosed the FBCB2 system and the contention that the
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`Siegel patents describe the features of that system. AGIS’s motion should be denied.
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`II.
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`ARGUMENT
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`A.
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`Apple Did Not “Surrender” The Siegel Patents.
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`Apple and Dr. Siegel have consistently maintained that the Siegel patents describe the
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`features and functionalities of the FBCB2 system. During discovery, Apple provided a single
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`claim chart for the FBCB2 system against each of AGIS’s ’838, ’251, ’055, and ’829 patents in
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`its invalidity contentions. (Exs. 2-6.) Apple cited the Siegel patents as describing the FBCB2
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`system’s features throughout those charts. (See, e.g., Ex. 2 at 1-2 (“the FBCB2 system is described
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`at least in the following documents”) (listing, among others, the Siegel patents); see also Exs. 3-
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`6.) Apple later provided an initial prior art election that included the FBCB2 system and explained
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`1 U.S. Patent Nos. 6,212,559; 5,672,840; 6,904,280; and 7,278,023.
`2 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”).
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`that the elected FBCB2 system is “described in at least the materials identified in” Apple’s FBCB2
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`invalidity charts—which included the Siegel patents. (Ex. 16 at 4.) Apple’s final prior art election
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`likewise elected the FBCB2 system “as described in at least the materials identified in” Apple’s
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`FBCB2 invalidity charts. (E.g., Ex. 7 at 5-6.) Apple never “surrendered” the Siegel patents as
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`supporting documentation for the FBCB2 system in those elections; Apple specifically
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`incorporated its supporting documentation—including the Siegel patents—at each turn. Each of
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`AGIS’s arguments to the contrary should be rejected.
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`First, AGIS acknowledges that Apple identified the Siegel patents in invalidity contentions
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`concerning the FBCB2 system (Dkt. No. 282 (“Rep.”) at 1). But to create a false basis for striking
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`the entirety of Dr. Siegel’s report, AGIS continues to ignore the manner in which the Siegel patents
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`were cited in Apple’s contentions. Apple’s contentions referenced the Siegel patents, among other
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`documents, to describe the FBCB2 system. (Exs. 2-6.) As Apple explained, such use of supporting
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`documentation for a prior art system is a common practice widely recognized and approved,
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`including by Courts in this District. (Dkt. No. 258 (“Opp.”) at 3 (citing IP Innovation L.L.C. v.
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`Red Hat, Inc., No. 2:07-cv-447 (RRR), 2010 WL 9501469, at *4 (E.D. Tex. Oct. 13, 2010)).)
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`AGIS tries to dodge that principle by claiming “[w]hether Apple identified the Siegel patents in
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`its invalidity contentions is not at issue” (Rep. at 1), but ignores how Apple cited the Siegel patents
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`in those contentions. AGIS does so because Apple’s citations to the Siegel patents in its
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`contentions are wholly consistent with Dr. Siegel’s opinions and do not warrant striking his report.
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`Second, AGIS asserts that Apple “surrendered” the Siegel patents in its final election of
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`prior art, which AGIS describes as “a meaningful exchange whereby both Apple and AGIS
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`narrowed the scope of the case.” (Rep. at 1.) To be sure, Apple’s elections were “meaningful
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`exchange[s]” that narrowed Apple’s invalidity case—excluding various systems and references
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`2
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 7 of 11 PageID #: 19702
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`that Apple initially elected as prior art. (Compare Ex. 16 at 3-4 (Apple’s initial election including
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`“Karam,” “Weber,” “Emigh,” “Find Friends,” and “BuddySpace” prior art), with Ex. 7 at 5-7
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`(Apple’s final election excluding those prior art systems and references).) But at no point did
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`Apple drop its reliance on the FBCB2 system as an invalidating prior art reference. AGIS’s claim
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`that Apple “did not identify [the Siegel] patents in its final election of prior art” is belied by Apple’s
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`express statement that it elected the FBCB2 system, “as described in at least the materials
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`identified in” Apple’s previously-served invalidity contentions. (Ex. 7 at 5-6; Ex. 16 at 4.) This
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`is not a case where a party identified prior art references initially and then excluded those
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`references in a final election. Instead, both of Apple’s elections included the FBCB2 system,
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`which is supported by the Siegel patents and other supporting documentation.
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`Finally, AGIS isolates paragraphs from Dr. Siegel’s report and selectively excerpts
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`testimony to suggest that Dr. Siegel relies only on “the Siegel patents themselves, without the
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`FBCB2 system” for various claim limitations. (Rep. at 1-2.) That assertion is contradicted by
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`AGIS’s expert, Joseph McAlexander, who recognized that Dr. Siegel advances only anticipation
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`and obviousness opinions based on the FBCB2 system, and not separate obviousness opinions
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`based on a combination of the FBCB2 system with the Siegel patents. (Ex. 22 ¶¶ 10-11 (Mr.
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`McAlexander noting the FBCB2 system as the only prior art reference used in Dr. Siegel’s report).)
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`AGIS’s assertion is also contradicted by the testimony it cites. The selected testimony relates to
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`the claim limitation “remote controlling the first device” and to paragraph 250 of Dr. Siegel’s
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`report. (Ex. 9 at 216:15-217:18.) As Dr. Siegel testified, the section of his report surrounding
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`paragraph 250 describes “what FBCB2 does” and how the system anticipates the remote
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`controlling claim limitations. (Id. at 217:6-11.) That section of Dr. Siegel’s report cites multiple
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`documents showing the function of the FBCB2 system, including in paragraphs of the report not
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`in AGIS’s selected citations (see Rep. at 2-3), and one of the Siegel patents is among that
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`supporting documentation. (Ex. 17 ¶¶ 246-250.) Dr. Siegel did not cite “the Siegel patents
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`themselves, without the FBCB2 system,” to show the remote controlling limitation in FBCB2, but
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`rather referenced the Siegel patents as one example among others that show how the system works
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`and meets that limitation. Such use of the Siegel patents is wholly consistent with Apple’s
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`assertions throughout its invalidity contentions and prior art elections. AGIS’s attempts to
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`selectively quote and twist Dr. Siegel’s opinions do not demonstrate otherwise.
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`B.
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`Apple Does Not Rely On An Obviousness Combination Of The FBCB2
`System And The Siegel Patents.
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`None of Apple’s invalidity contentions, Apple’s elections of prior art, Dr. Siegel’s expert
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`report, or Dr. Siegel’s deposition testimony asserts invalidity based on an obviousness combination
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`of the FBCB2 system with the Siegel patents. AGIS recycles arguments about a tortuous line of
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`questioning at Dr. Siegel’s deposition to assert “that his obviousness analysis utilizes the Siegel
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`patents in combination with the FBCB2 system as prior art.” (Rep. at 3-4.) The testimony only
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`evidences AGIS’s search for a basis for its motion, as Apple already explained. (Opp. at 9-10.)
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`And even though AGIS’s counsel attempted to separate the Siegel patents from the FBCB2 system
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`in the testimony on which AGIS now focuses, Dr. Siegel maintained what Apple has asserted all
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`along: the documents cited in his report are support for his knowledge of the FBCB2 system from
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`his own experience and expertise with that system. (Ex. 9 at 213:3-17.)
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`AGIS also attacks Apple’s proffer of Dr. Siegel as an expert (Rep. at 4), but those attacks
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`are baseless. Apple does not “minimize Dr. Siegel’s understanding of obviousness” or imply that
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`he “can’t grasp obviousness.” (See id.) Instead, Apple noted Dr. Siegel’s caveats at deposition,
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`stating that he was answering the questions based on his “non-attorney’s mind” and his “non-
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`lawyer’s way,” because it highlights the confusing nature of AGIS’s questions, particularly when
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 9 of 11 PageID #: 19704
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`being asked about “combinations” in his report that do not exist. (See Opp. at 9-10; Ex. 9 at
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`218:18-219:1 (“I’m not quite sure what you mean by ‘combination.’”).) Dr. Siegel is an expert in
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`the technologies and systems at issue in this case, having decades of experience overseeing the
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`design and development of one such prominent system. (Ex. 8 ¶¶ 7-14, 51, 57-63.) Apple intends
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`to offer Dr. Siegel as an expert commensurate with that expertise, not as an expert in patent law.
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`Nor does Apple suggest that “the Court should ignore Dr. Siegel’s own testimony,” contrary to
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`AGIS’s accusation. (See Rep. at 4.) Rather, Apple asserts that Dr. Siegel’s testimony should be
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`considered in the full context of the convoluted questioning to which he was subjected—not
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`selectively excerpted and viewed through the skewed lens AGIS presents.
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`C.
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`AGIS Continues To Ignore Significant Prejudice That Apple Would Suffer If
`The Motion Is Granted.
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`AGIS’s motion is plainly an attempt to prevent Apple from presenting Dr. Siegel as an
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`expert in this case. Indeed, even though its motion is specifically related to the four Siegel patents,
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`AGIS presents its motion as a basis for excluding Dr. Siegel and the FBCB2 system completely
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`from trial. (Dkt. No. 234 at 6 (requesting that the Court “strike the Siegel report in its entirety”)
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`(emphasis added).) But such a broad and unfounded request, if granted, would significantly and
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`unfairly prejudice Apple. The FBCB2 system was utilized by the U.S. military in Afghanistan and
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`Iraq before AGIS’s asserted patents were filed—
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` (See Exs. 18-20.) Early in the case, Apple
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`disclosed the FBCB2 system (including the Siegel patents describing that system) in its invalidity
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`contentions, and Apple disclosed Dr. Siegel as a relevant fact witness in its initial disclosures early
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`in the discovery period. (Exs. 1, 2, 21.) The jury should be permitted to consider the evidence of
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`FBCB2 at trial, including Dr. Siegel’s testimony concerning the Siegel patents describing the
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`operation of the FBCB2 system. AGIS’s motion should be denied.
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`5
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 10 of 11 PageID #: 19705
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`Dated: January 18, 2019
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`By: Respectfully submitted:
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`/s/ Melissa R. Smith
`Melissa Richards Smith
`State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Ave.
`Marshall, TX 75670
`Tel: (903) 934-8450
`Fax: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`John M. Desmarais
`Paul A. Bondor
`Ameet A. Modi
`Cosmin Maier
`Kerri-Ann Limbeek
`Brian Matty
`Tom BenGera
`Kathryn Bi
`Francesco Silletta
`Joze Welsh
`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: 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
`Email: jwelsh@desmaraisllp.com
`
`ATTORNEYS FOR DEFENDANT
`APPLE INC.
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`Case 2:17-cv-00513-JRG Document 320 Filed 01/23/19 Page 11 of 11 PageID #: 19706
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). Plaintiff’s counsel of record were served with a true and
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`correct copy of the foregoing document by electronic mail on January 18, 2019.
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`/s/ Melissa R. Smith
`Melissa R. Smith
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`7
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