Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 1 of 22 PageID #: 19740
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Civil Action No. 2:17-CV-513-JRG
`(LEAD CASE)
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`
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`Civil Action No. 2:17-CV-516-JRG
`(CONSOLIDATED CASE)
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`§§§§§§§§§
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`§§§§§§§§§§
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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.,
`
` Defendants.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
` Plaintiff,
`
`v.
`
`APPLE INC.,
`
` Defendant.
`
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`APPLE INC.’S MOTION TO STRIKE THE UNTIMELY DECLARATION OF AGIS’S
`TECHNICAL EXPERT, JOSEPH C. MCALEXANDER, ATTACHED TO DKT. 262 AS
`EXHIBIT 4
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`

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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 2 of 22 PageID #: 19741
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`I. 
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`II. 
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`III. 
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`IV. 
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1 
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`FACTUAL BACKGROUND ..............................................................................................1 
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`A. 
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`B. 
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`C. 
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`The Parties Were Required To Follow The Court’s Docket Control Order. ...........1 
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`Apple’s Motion For Summary Judgment Identified Fatal Flaws In Mr.
`McAlexander’s Infringement Theory. .....................................................................2 
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`AGIS Improperly Filed A Supplemental Expert Report In Response To
`Apple’s Motion For Summary Judgment. ...............................................................2 
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`LEGAL STANDARD ..........................................................................................................3 
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`ARGUMENT .......................................................................................................................6 
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`A. 
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`Mr. McAlexander’s New Opinions Were Not Previously Disclosed. .....................6 
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`1. 
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`2. 
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`3. 
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`Paragraphs 7 And 8 Of The McAlexander Declaration Should Be
`Struck Because They Improperly Contain New Opinions Of Literal
`Infringement. ................................................................................................6 
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`Paragraph 9 Of The McAlexander Declaration Should Be Struck
`Because It Improperly Contains New Opinions Concerning
`“Equivalent Infringement.” ..........................................................................8 
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`Paragraph 10 Of The McAlexander Declaration Should Be Struck
`Because It Improperly Contains New And Irrelevant Legal
`Opinions Concerning Claim Scope And Prosecution History
`Estoppel........................................................................................................9 
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`B. 
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`Mr. McAlexander’s New Opinions Are Not Substantially Justified. ....................11 
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`1. 
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`2. 
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`The Information Regarding “Turn Off Lost Mode” Was Available
`To Mr. McAlexander When He Submitted His Opening
`Infringement Report. ..................................................................................11 
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`The Information Mr. McAlexander Relies On Regarding The
`Prosecution History Was Available When He Submitted His
`Opening Infringement Report. ...................................................................13 
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`C. 
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`Mr. McAlexander’s Failure To Include His New Opinions In His Opening
`Infringement Report Is Not Harmless. ...................................................................14 
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`i
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 3 of 22 PageID #: 19742
`TABLE OF CONTENTS (cont’d)
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`CONCLUSION ..................................................................................................................15 
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`V. 
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`Pages
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`ii
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 4 of 22 PageID #: 19743
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`Cases 
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`TABLE OF AUTHORITIES
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`Pages
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`Avance v. Kerr-McGee Chem. LLC,
`No. 5:04-CV-209, 2006 WL 3484246 (E.D. Tex. Nov. 30, 2006) ............................ passim
`
`Brumley v. Pfizer, Inc.,
`200 F.R.D. 596 (S.D. Tex. 2001) ........................................................................................ 4
`
`Buxton v. Lil' Drug Store Prod., Inc.,
`No. 2:02-CV-178-KS-MTP, 2007 WL 2254492 (S.D. Miss. Aug. 1,
`2007), aff'd, 294 F. App'x 92 (5th Cir. 2008) ......................................................... 5, 13, 14
`
`Cleave v. Renal Care Grp., Inc.
` No. CIV.A. 2:04-CV-161-P-A, 2005 WL 1629750 (N.D. Miss. July 11, 2005) ............... 4
`
`Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`344 F.3d 1359 (Fed. Cir. 2003)................................................................................... 10, 11
`
`Reliance Ins. Co. v. Louisiana Land & Exploration Co.,
`110 F.3d 253 (5th Cir. 1997) ............................................................................................ 15
`
`Salazar v. HTC Corp.,
`No. 2:16-CV-01096-JRG-RSP, 2018 WL 4252362 (E.D. Tex. May 1, 2018) .......... passim
`
`Salgado v. Gen'l Motors Corp.,
` 150 F.3d 735 (7th Cir.1998) .............................................................................................. 5
`
`Sierra Club, Lone Star Chapter v. Cedar Point Oil Co.,
`73 F.3d 546 (5th Cir. 1996) .......................................................................................... 5, 14
`
`Rules 
`
`Fed. R. Civ. P. 26 ................................................................................................................... passim
`
`Fed. R. Civ. P. 37 ...................................................................................................................... 4, 13
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`iii
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 5 of 22 PageID #: 19744
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`TABLE OF EXHIBITS
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`Exhibit Number
`Ex. 1
`Ex. 2
`Ex. 3
`Ex. 4
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`Description
`McAlexander Infringement Report Excerpts
`McAlexander Deposition Excerpts
`AGIS Infringement Contentions (2018-09-21) Excerpts
`AGIS Infringement Contentions (2017-09-18) Excerpts
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`iv
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 6 of 22 PageID #: 19745
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`I.
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`INTRODUCTION
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`Defendant Apple Inc. (“Apple”) filed a Motion for Summary Judgment of Non-
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`Infringement of U.S. Patent No. 8,213,970 (the “’970 patent”) demonstrating (1) that the accused
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`Apple features did not infringe the ’970 patent, and (2) that Plaintiff AGIS Software Development
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`LLC (“AGIS”) was estopped from asserting infringement under the doctrine of equivalents.
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`As Exhibit 4 to its response (Dkt. No. 262), AGIS submitted what amounts to a
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`supplemental expert report—masquerading as a “declaration” from its technical expert, Joseph C.
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`McAlexander—that contains never-before disclosed opinions on (1) literal infringement based on
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`“additional testing” (paragraphs 7 and 8 of the McAlexander declaration); (2) infringement under
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`a new alleged “equivalent” (paragraph 9 of the McAlexander declaration); and (3) new legal
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`opinions concerning claim scope based on purported analysis of the prosecution history (paragraph
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`10 of the McAlexander declaration). Whether or not Mr. McAlexander’s new opinions save AGIS
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`from summary judgment—which, to be clear, they do not—those opinions are untimely and
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`improper, and they should be struck.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`The Parties Were Required To Follow The Court’s Docket Control Order.
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`The parties were required to submit expert reports on issues for which they bear the burden
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`of proof by October 29, 2018. (Dkt. No. 220 at 3.) Rebuttal expert reports were due on November
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`19, 2018. (Id.) Expert discovery closed on December 7, 2018. (Id.) Dispositive motions were
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`due on December 14, 2018. (Id.)
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`Consistent with the Court’s schedule, AGIS served its infringement expert report on
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`October 29, 2018 (the “McAlexander Report”); Apple served its rebuttal non-infringement report
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 7 of 22 PageID #: 19746
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`on November 19, 2018 (the “Clark Report”); and the parties deposed each other’s technical experts
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`by December 7, 2018.
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`B.
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`Apple’s Motion For Summary Judgment Identified Fatal Flaws In Mr.
`McAlexander’s Infringement Theory.
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`On December 14, 2018, Apple filed a Motion for Summary Judgment of Non-Infringement
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`demonstrating that the accused Apple features did not infringe the ’970 patent, and that AGIS was
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`estopped from asserting infringement under the doctrine of equivalents. (See Dkt. No. 228 (“SJ
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`Mot.”).) Apple argued, in part, (1) that every asserted claim of the ’970 patent requires displaying
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`a “response list” on a recipient device that cannot be cleared unless and until the recipient selects
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`a “response” from that list (see id. at 2,7); and (2) that the “response list” identified by Mr.
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`McAlexander could be cleared absent selection of a “response” from that “response list,” namely,
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`by selecting “Turn Off Lost Mode” on another device (see id. at 4, 7-8). Furthermore, Apple
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`demonstrated that Mr. McAlexander’s report contained no evidence to rebut the presumption that
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`AGIS had surrendered any equivalents related to the aforementioned clearing requirement under
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`the doctrine of prosecution history estoppel. (See id. at 9-10.)
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`C.
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`AGIS Improperly Filed A Supplemental Expert Report In Response To
`Apple’s Motion For Summary Judgment.
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`AGIS filed its Opposition to Apple’s Motion for Summary Judgment on January 4, 2018.
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`(Dkt. No. 262 (SJ Opp.).) But in direct contravention of the Court’s Docket Control Order, AGIS
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`served a supplemental expert report containing new opinions—misleadingly stylized as a
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`“declaration”—over two months after AGIS’s infringement expert report was due. (Dkt. No. 262,
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`Ex. 4 (the “McAlexander declaration”).)
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`The McAlexander declaration generally includes three categories of new opinions. First,
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`Mr. McAlexander attempts to rebut Apple’s summary judgment argument—that the “Turn Off
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`2
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 8 of 22 PageID #: 19747
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`Lost Mode” functionality allows the accused “response list” to be cleared absent selection of a
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`“response” from the list—based on a new theory of what constitutes “clearing the response list.”
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`(Id. ¶ 7-8
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`) Mr. McAlexander relies on “additional testing” he performed—after service of his
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`expert report—as the sole support for his new theory. (Id. ¶ 8.) Second, Mr. McAlexander
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`discloses a new equivalent infringement theory1—that “the ability to ‘Turn Off Lost Mode’
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`constitutes such a negligible difference that the thrust of the invention is still achieved.” (Id. ¶ 9.)
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`Third, Mr. McAlexander undertakes a new analysis of the prior art and opines, for the first time,
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`that AGIS did not legally surrender “claim scope related to ability to cancel or withdraw a forced
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`response from a device.” (Id. ¶ 10.)2
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`III. LEGAL STANDARD
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`Untimely expert opinions violate Fed. R. Civ. P. 26 and should generally be struck. Rule
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`26(a)(2)(B) requires parties’ expert reports to contain “a complete statement of all opinions the
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`witness will express and the basis and reasons for them . . . .” Fed. R. Civ. P. 26(a)(2)(B); see also
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`Salazar v. HTC Corp., No. 2:16-CV-01096-JRG-RSP, 2018 WL 4252362, at *2 (E.D. Tex. May
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`1, 2018) (“Thus, to consider the declaration would run afoul of our rules of procedure, which
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`require a complete statement of all opinions a testifying expert witness will express and the reasons
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`1 Mr. McAlexander states that his new equivalent theory applies “both literally and under the
`doctrine of equivalents.” (McAlexander declaration, ¶ 9.)
`2 The parties held a meet and confer on January 9, 2018. AGIS argued that it was justified to
`submit the McAlexander declaration because (1) most if not all of the opinions were contained in
`the McAlexander Report, and (2) Apple’s Motion for Summary Judgment included a new non-
`infringement argument. But, as explained below, Mr. McAlexander’s opinions are new, and
`Apple’s non-infringement argument relating to “Turn Off Lost Mode” was properly disclosed,
`including in the Clark Report. See supra at 6-13.
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`3
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`for them.”) (emphasis in original). Litigants violate Rule 26 when a party’s expert discloses
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`opinions, or bases, that go beyond that expert’s report. Avance v. Kerr-McGee Chem. LLC, No.
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`5:04-CV-209, 2006 WL 3484246, at *7 (E.D. Tex. Nov. 30, 2006). Thus, where a subsequent
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`declaration discloses “new materials,” “new information,” or “new opinions” that go beyond the
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`expert’s report, the declaration violates Rule 26 and is properly struck under Rule 37. Id.; see also
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`Salazar, 2018 WL 4252362, at *2 (striking an expert declaration submitted in opposition of a
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`summary judgment motion because it was untimely and contained new opinions); Brumley v.
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`Pfizer, Inc., 200 F.R.D. 596, 603-04 (S.D. Tex. 2001) (holding a subsequent expert affidavit
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`submitted to rebut a summary judgment motion may be excluded if it differs or “go[es] beyond”
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`the opinions contained in an earlier Rule 26 report); Cleave v. Renal Care Grp., Inc., No. CIV.A.
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`2:04-CV-161-P-A, 2005 WL 1629750, at * 1 (N.D. Miss. July 11, 2005) (excluding supplemental
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`expert affidavit produced in response to summary judgment motion where plaintiff failed to
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`identify new information which would prompt new opinions).
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`Under Rule 37(c)(1), a party that “fails to provide information . . . as required by Rule
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`26(a) . . . is not allowed to use that information . . . to supply evidence on a motion, at a hearing,
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`or at a trial . . . .” Fed. R. Civ. P. 37(c)(1).3, 4 Rule 37’s sanction is automatic absent a showing
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`by the party that failed to comply with Rule 26 that the failure “was substantially justified or is
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`harmless.” Id.; see also Avance, 2006 WL 3484246, at *6 (“To avoid sanctions, the party who is
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`alleged to have failed to comply with Rules 16 and 26 bears the burden to show that its actions
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`were substantially justified or harmless.”).
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`3 “In addition to or instead of this sanction,” the court “may impose other appropriate sanctions.”
`Id.
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` All emphasis has been added unless otherwise noted.
`4
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` 4
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 10 of 22 PageID #: 19749
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`Courts routinely reject untimely “supplemental” expert testimony where the opinions are
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`based on information available prior to the deadline for service of expert reports. See Buxton v.
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`Lil' Drug Store Prod., Inc., No. 2:02-CV-178-KS-MTP, 2007 WL 2254492, at *5 (S.D. Miss. Aug.
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`1, 2007), aff'd, 294 F. App'x 92 (5th Cir. 2008); see also Sierra Club, Lone Star Chapter v. Cedar
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`Point Oil Co., 73 F.3d 546, 571 (5th Cir. 1996) (purpose of supplemental expert report is to
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`supplement—not extend the expert disclosure deadline); Salgado v. Gen'l Motors Corp., 150 F.3d
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`735, 741-43 (7th Cir.1998) (affirming exclusion of “supplemental” expert testimony based on
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`untimely disclosure because opinions were based on information available prior to the deadline
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`for service of initial reports).
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`As Courts in this District has previously held, it would be “unfair and prejudicial” to allow
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`“the introduction of new information” for use in the Court’s consideration of dispositive motions
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`because “Defendant would not have an opportunity for cross-examination on those new issues.”
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`Avance, 2006 WL 3484246, at *7 (striking declaration filed in support of Daubert opposition); see
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`also Salazar, 2018 WL 4252362, at *2 (“[T]he timing of [the expert] declaration prevented
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`Defendant from cross examining [the expert] on its subject matter and presenting such cross-
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`examination to the Court.”). In the face of such prejudice, the party that failed to comply with
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`Rule 26 cannot meet its burden to show that its failure was substantially justified or is harmless.
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`Id.5
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`5 Where “portions of [challenged] affidavits present new information,” “the Court is not
`required . . . to parse out those portions of the affidavits that are new and those portions that were
`timely disclosed . . . .” Avance v. Kerr-McGee Chem. LLC, No. 5:04-CV-209, 2006 WL 3484246,
`at *7 (E.D. Tex. Nov. 30, 2006). Thus, where portions of a challenged affidavit presents new
`information in violation of Rule 26, and that violation is not substantially justified and is not
`harmless, a court may strike the entirety of the affidavit without digging into the minutiae of the
`affidavit. Id
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`5
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 11 of 22 PageID #: 19750
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`IV. ARGUMENT
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`Mr. McAlexander’s declaration includes untimely opinions on issues for which AGIS bears
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`the burden of proof—namely, infringement. Mr. McAlexander concedes that he has “already
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`provided opinions” regarding the “Turn Off Lost Mode” functionality (McAlexander declaration,
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`¶ 6), but nevertheless attempts to introduce new opinions, related to that functionality, regarding
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`(1) literal infringement (id. ¶ 7-8); (2) equivalent infringement (id. ¶ 9); and (3) prosecution history
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`estoppel (id. ¶ 10). But Mr. McAlexander is not permitted a “reply infringement report;” rather,
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`Mr. McAlexander could have—and should have—provided those opinions when he was required
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`to, in his opening infringement report.
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`A. Mr. McAlexander’s New Opinions Were Not Previously Disclosed.
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`1.
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`Paragraphs 7 And 8 Of The McAlexander Declaration Should Be
`Struck Because They Improperly Contain New Opinions Of Literal
`Infringement.
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`Mr. McAlexander improperly attempts to supplement his initial report with new opinions
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`concerning literal infringement. In particular, as demonstrated below, in his report and at
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`deposition, Mr. McAlexander argued that the accused “response list”
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` But in his “declaration,” Mr. McAlexander
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`contradicts his previous opinions and argues the accused
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` The Court should strike Mr. McAlexander’s new, untimely opinion.
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`In his report, Mr. McAlexander argued that (1) the “response list” in the accused features
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`is
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`6
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 12 of 22 PageID #: 19751
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`(Ex. 1 [McAlexander Report] at A-a60-61; see also id. ¶¶ 151, 157, 178 and at A-a15, A-a26-27,
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`and A-a111-13.) Mr. McAlexander acknowledged the presence of a different functionality—the
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`ability to remotely disable “Lost Mode” using “Turn Off Lost Mode”—but distinguished that
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`functionality from the claims by arguing that the claims specify only how the response list may be
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`cleared using the recipient device, not how the list may be cleared from a different device. (See
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`id. at A-a65
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`deposition, Mr. McAlexander agreed that
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`.) At his
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` (Ex. 2 [McAlexander Deposition] at 267:9-13.)
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`Thus, in his report and at his deposition, Mr. McAlexander opined that
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`Apple relied on that opinion for its summary judgment motion. (See SJ Mot. 4, 7-8.)
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`In his declaration, in an attempt to avoid summary judgment, Mr. McAlexander opines
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`for the first time that selecting
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` (McAlexander declaration, ¶ 8; see also id. ¶ 7.) Mr. McAlexander bases this new
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 13 of 22 PageID #: 19752
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`opinion on “additional testing” not disclosed in his opening expert report. (Id. at ¶ 8.)
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`Accordingly, Mr. McAlexander abandons his previous opinion—
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`—for a new one,
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` But no permissible basis exists for that change in opinions. The
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`relevant functionality—“Lost Mode”—was available and well known to Mr. McAlexander at the
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`time his opening expert report was due. So, too, were the Apple devices (publicly available
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`iPhones and iPads) on which he presumably conducted his belated “additional testing.” Those
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`new opinions should be struck. See, e.g., Avance, 2006 WL 3484246, at *7; Salazar, 2018 WL
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`4252362, at *2.
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`2.
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`Paragraph 9 Of The McAlexander Declaration Should Be Struck
`Because It Improperly Contains New Opinions Concerning
`“Equivalent Infringement.”
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`Mr. McAlexander also provides the new opinion that the “Turn Off Lost Mode”
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`“functionality also constitutes equivalent infringement, both literally and under the doctrine of
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`equivalents.” (McAlexander declaration, ¶ 9.) That is a brand new opinion. It is disclosed
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`nowhere in any of AGIS’s infringement contentions served prior to the expert report deadline. To
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`the contrary, for the relevant limitations, AGIS identified
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` (Ex. 3 [AGIS Infringement Contentions (2018-09-21)] at A-52, A-173). Nor is the
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`new opinion disclosed anywhere in Mr. McAlexander’s opening expert report served in October.
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`Indeed, none of the 15 paragraphs containing Mr. McAlexander’s opinions of infringement under
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`the doctrine of equivalents opinions makes any reference to “Turn Off Lost Mode.” (See Ex. 1 at
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`¶¶ 147-161.) Faced with the reality that the “Turn Off Lost Mode” functionality precludes literal
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`8
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 14 of 22 PageID #: 19753
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`infringement, Mr. McAlexander cannot now conjure up a new equivalent position that goes beyond
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`those contained in AGIS’s infringement contentions and his report. See, e.g., Avance, 2006 WL
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`3484246, at *7; Salazar, 2018 WL 4252362, at *2.
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`3.
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`Paragraph 10 Of The McAlexander Declaration Should Be Struck
`Because It Improperly Contains New And Irrelevant Legal Opinions
`Concerning Claim Scope And Prosecution History Estoppel.
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`As yet another new opinion, Mr. McAlexander purports to analyze the prosecution history
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`and prior art cited therein—ultimately opining that “the ability to cancel or withdraw a forced
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`response from a device other than the targeted device” was not surrendered during prosecution.
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`(McAlexander declaration, ¶ 10.) That opinion is improper for three reasons.
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` First, it was never previously disclosed. While paragraph 10 of Mr. McAlexander’s
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`declaration cites to paragraphs 84-89 of his opening report, there is very little connection between
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`the two. In paragraphs 84-89 of his opening report, Mr. McAlexander briefly summarizes—with
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`no commentary or analysis—the prosecution history of the ’970 patent. (See Ex. 1 ¶¶ 84-89.)
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`Second, it is the opposite of AGIS’s prior disclosures on this issue. Mr. McAlexander’s
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`new opinion—that the “Applicant did not surrender claim scope related to the ability to cancel or
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`withdraw a forced response from a device other than the target device” (McAlexander declaration,
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`¶ 10)—contradicts AGIS’s representations that “disabling the forced message remotely essentially
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`rescinds the forced message, and such a use case is not within the scope of the claims[.]” (Ex. 3
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`at 180.) It would be unfair and prejudicial to Apple if AGIS were permitted to change its
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`position—through untimely expert opinion—at this late stage, particularly without the opportunity
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`for Apple to cross-examine Mr. McAlexander on this new opinion. See Avance, 2006 WL
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`3484246, at *7; Salazar, 2018 WL 4252362, at *2.
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`9
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 15 of 22 PageID #: 19754
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`Finally, Mr. McAlexander’s opinions are irrelevant—or at the very least, unnecessary—
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`for this Court’s determination of whether the alleged equivalent (“the ability to send or cancel
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`forced messages from a server or a second device,” see McAlexander declaration, ¶ 10) was
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`surrendered during prosecution. That is a legal issue decided by the Court based primarily on the
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`prosecution history itself. See Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359,
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`1369-70 (Fed. Cir. 2003) (“to allow a patent holder to rely on evidence not in the public record to
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`establish a reason for amendment . . . would undermine the public notice function of the patent
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`record”) (citation and internal quotations omitted).6
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`Here, the prosecution history itself is clear. AGIS amended its claims (which ultimately
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`issued as claims 1 and 6 of the ʼ970 patent) to add limitations “requiring a required manual
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`response from the response list by the recipient in order to clear recipient’s response list from
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`recipient’s cell phone display” (Dkt. 228, Ex. 6 at 3) (claim 2, issued at claim 1) and “providing a
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`manual response list . . . that can only be cleared by the recipient providing a required response
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`from the list” (Id. at 5) (claim 7, issued as claim 6). For both amendments, the applicant clearly
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`stated that those features were not part of the cited prior art, and that the claimed invention
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`“require[s] a specific response from a recipient selected from the prepared list of responses prior
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`to the recipients [sic] display being cleared of the message and required response.” (Id. at 8.) In
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`other words, the prosecution history itself is facially clear that the “response” to the “forced
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`6 A narrowing amendment during prosecution presumptively results in the surrender of claim scope
`over any alleged “equivalents,” and that presumption is not rebutted unless the patentee shows that
`the alleged equivalent was unforeseeable at the time of the amendment, the rationale for the
`narrowing amendment was tangential to the equivalent in question, or some other reason why the
`patentee could not reasonably have been expected to describe the alleged equivalent. See id. at
`1369-70. Whether the presumption is rebutted is a question of law. Id. at 1367. Here, neither
`AGIS nor Mr. McAlexander argue that the alleged equivalent was unforeseeable or that “some
`other reason” exists such that the patentee could not reasonably have been expected to describe the
`accused equivalent.
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`10
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`message alert” must come from the “recipient” and not any other device. AGIS accordingly
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`surrendered any equivalent wherein the “response” comes from another device—such as the
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`“server” or “second device” identified in Mr. McAlexander’s declaration, and (belated) expert
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`testimony cannot overcome that legal determination. Festo, 344 F.3d at 1369-70.
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`B. Mr. McAlexander’s New Opinions Are Not Substantially Justified.
`
`Mr. McAlexander cannot substantially justify his failure to provide timely opinions in his
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`opening infringement report.
`
`1.
`
`The Information Regarding “Turn Off Lost Mode” Was Available To
`Mr. McAlexander When He Submitted His Opening Infringement
`Report.
`
`AGIS cannot deny that it and Mr. McAlexander knew of the “Turn Off Lost Mode”
`
`functionality before submitting Mr. McAlexander’s opening infringement report. Indeed, AGIS
`
`has known of the “Turn Off Lost Mode” functionality for over a year. (Ex. 4 [AGIS Infringement
`
`Contentions (2017-09-18)] at A-18, 37.) AGIS’s original infringement contentions, served in
`
`2017, argued that the functionality’s existence did not “preclude infringement.” (Id. at 37.)
`
`Likewise, Mr. McAlexander knew of and attempted to distinguish “Turn Off Lost Mode” from the
`
`claims in his opening report. (See Ex. 1 at A-a65.) Because AGIS and its expert knew of the
`
`“Turn Off Lost Mode” functionality before submitting the McAlexander Report, all of Mr.
`
`McAlexander’s infringement opinions—whether literal or equivalent—should have been
`
`contained in that report.
`
`Nevertheless, AGIS attempts—without justification—to cast the blame for Mr.
`
`McAlexander’s failure to properly disclose his new opinions on Apple. (See SJ Opp. at 1-2.) First,
`
`AGIS complains that “Apple has set forth no evidence as to when the alleged ‘Turn Off Find My
`
`Device’ feature became available.” (Id. at 1.) But that complaint overlooks Mr. McAlexander’s
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`Case 2:17-cv-00513-JRG Document 321 Filed 01/23/19 Page 17 of 22 PageID #: 19756
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`conclusion that,
`
`
`
`
`
` (See Ex. 1 ¶¶ 261-270). AGIS cannot flee from that opinion now.
`
`Second, AGIS’s attempt to paint Apple’s discovery responses as deficient is baseless. (See SJ
`
`Opp. at 2.)
`
`
`
`
`
` (See Dkt. No. 294, Ex. 14 [Apple-
`
`AGIS Attorney Correspondence].) Third, AGIS cannot argue that Apple’s motion for summary
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`judgment was the first time Apple relied on the “Turn Off Lost Mode” functionality for non-
`
`infringement; Dr. Clark included the same non-infringement argument in his rebuttal report. (See
`
`Dkt. 228, Ex. 10 [Clark Report] ¶¶ 427-428.) Even if Apple’s theory was new—which it is not—
`
`AGIS cannot change its infringement theory midstream. See Salazar, 2018 WL 4252362, at *2
`
`(“But [Plaintiff] has the burden, from the beginning of the lawsuit, of articulating an infringement
`
`theory and then proving that theory, regardless of whatever non-infringement position Defendant
`
`takes. While new documentary or technical evidence may sometimes warrant modifying an
`
`infringement theory midstream, the theory should generally not change or require supplementation
`
`simply because Defendant supposedly advances a new argument or claim construction position.”)
`
`At bottom, AGIS and Mr. McAlexander knew of the “Turn Off Lost Mode” functionality
`
`before submitting McAlexander’s report. Mr. McAlexander was not entitled to submit new
`
`opinions concerning that feature after the deadline for service of his expert report under this
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`Court’s Docket Control Order, and the Court should therefore strike them. See e.g., id.; Buxton v.
`
`Lil' Drug Store Prod., Inc., No. 2:02-CV-178-KS-MTP, 2007 WL 2254492, at *5 (S.D. Miss. Aug.
`
`1, 2007), aff'd, 294 F. App'x 92 (5th Cir. 2008) (“Courts have routinely rejected untimely
`
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`“supplemental” expert testimony where the opinions are based on information available prior to
`
`the missed deadline for service of initial disclosures.”).
`
`2.
`
`The Information Mr. McAlexander Relies On Regarding The
`Prosecution History Was Available When He Submitted His Opening
`Infringement Report.
`
`AGIS provides no justification for its late disclosure of Mr. McAlexander’s new opinion
`
`regarding the surrender of claim scope during prosecution of the ’970 patent. Indeed, Mr.
`
`McAlexander admits that he reviewed the prosecution history of the ’970 patent in forming his
`
`infringement opinions. (See McAlexander declaration ¶ 10.) Therefore, he could—and should—
`
`have provided his opinions regarding the surrender of claim scope upon submitting his
`
`infringement report, not two months later.
`
`Accordingly, all of the information Mr. McAlexander cites to purportedly cure the
`
`deficiencies in his analysis was available to him at the time he submitted his opening infringement
`
`report. “Rule 26(a) clearly requires that the initial disclosure be complete and detailed.” Avance
`
`v. Kerr-McGee Chem. LLC, No. 5:04-CV-209, 2006 WL 3484246, at *6 (E.D. Tex. Nov. 30, 2006)
`
`(citing Sierra Club, Lone Star Chapter v. Cedar Point Oil Co., 73 F.3d 546, 569 (5th Cir.1996)).
`
`The Federal Rules of Civil Procedure do not permit Mr. McAlexander to supplement his analysis
`
`once its flaws are identified. It was incumbent upon Mr. McAlexander to provide all of his
`
`opinions—and all of the bases therefor—in his opening expert report. Fed. R. Civ. P. 26(a)(2)(B).
`
`Having failed to timely disclose Mr. McAlexander’s opinions, and having failed to avoid the Rule
`
`37 mandatory exclusion by showing that such failure was substantially justified or is harmless for
`
`the reasons discussed in this brief, AGIS “is not allowed to use that information . . . to supply
`
`evidence on a motion, at a hearing, or at a trial.” Fed. R. Civ. P. 37(c)(1); see also Buxton v. Lil’
`
`Drug Store Prod., Inc., No. 2:02-CV-178KS, 2007 WL 2254492, at *5 (S.D. Miss. Aug. 1, 2007),
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`
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`aff’d, 294 F. App’x 92 (5th Cir. 2008) (“Courts have similarly made it clear that supplemental
`
`expert reports cannot be used to ‘fix’ problems in initial reports. . . . ‘District judges have the power
`
`to control their dockets by refusing to give ineffective litigants a second chance to develop their
`
`case.’”) (quoting Reliance Ins. Co. v. Louisiana Land & Exploration Co., 110 F.3d 253, 258 (5th
`
`Cir. 1997)).
`
`C. Mr. McAlexander’s Failure To Include His New Opinions In His Opening
`Infringement Report Is Not Harmless