Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 1 of 13 PageID #: 9456
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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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`HTC CORPORATION,
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`Defendant.
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`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTION
`TO STRIKE PORTIONS OF THE JANUARY 11, 2019
`EXPERT REPORT OF DR. ANDREW WOLFE
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`
`
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`HTC CORPORATION,
`
`
`Defendant.
`
`§
`§
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`§
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`Case No. 2:17-CV-0514-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
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`
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`
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`AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSED MOTION
`TO STRIKE PORTIONS OF THE JANUARY 11, 2019
`EXPERT REPORT OF DR. ANDREW WOLFE
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 2 of 13 PageID #: 9457
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS”) submits this Motion to Strike
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`Portions of the January 11, 2019 Expert Report of Dr. Andrew Wolfe (“Wolfe Report”) relating
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`to
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` relevant to HTC’s defenses
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`(Dkt. 118 at 3-4) and P.R. 3-4 which requires HTC to produce source code with its invalidity
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`contentions. HTC did not identify any Google source code printouts or the non-produced source
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`code libraries in its discovery response to AGIS’s Interrogatory Request No. 8 seeking detailed
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`non-infringement contentions. HTC could have and should have notified AGIS about any source
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`code printouts produced by Google and any other discovery from Google, as well as the non-
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`produced source code libraries. Because HTC failed to abide by the Court’s discovery order and
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`P.R. 3-4, and failed to produce the source code printouts and libraries during the discovery
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`period, AGIS respectfully moves the Court to strike the portions of the Wolfe Report including
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`and related to the same.
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`II.
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`FACTUAL BACKGROUND
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`On August 29, 2018, AGIS served deposition and document subpoenas on Google
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`requesting, among other things,
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 3 of 13 PageID #: 9458
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` Proper notice was provided to HTC of the subpoena to Google. Id. at 1.
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`restrictive; it limits reviewers’ requests for printouts by number of total pages, number of
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`consecutive pages, number of copies, and even the number of lines to be included for each page.
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` The protective order in this case is
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`Dkt. 119 at 14-16.
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`On November 26, 2018 and December 13, 2018, AGIS notified HTC in writing that,
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`responsive to AGIS’s subpoena, Google had made available source code for inspection, that
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`AGIS had reviewed the code, and that Google produced to AGIS printouts of requested portions
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`of the code. Ex. C, D. AGIS provided HTC with Google’s counsel’s contact information so that
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`HTC could obtain copies of the source code printouts and requested that HTC copy AGIS on all
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`correspondence with Google’s counsel. Id. AGIS received no response to its November 26,
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`2018 and December 13, 2018 correspondence to HTC about the Google source code productions.
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`HTC did not notify AGIS about any communication with Google’s counsel. HTC did not notify
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`AGIS about any discovery or productions from Google to HTC. HTC provided no notice to
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`2
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 4 of 13 PageID #: 9459
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`AGIS that HTC had reviewed the Google source code or that HTC had requested any source
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`code printouts from Google. HTC did not produce any Google source code printouts to AGIS.
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`On December 14, 2018, AGIS served the Opening Expert Report of Mr. Joseph
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`McAlexander regarding infringement of the patents-in-suit by HTC (“McAlexander Report”).
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`On January 11, 2019, HTC served the rebuttal expert report of Andrew Wolfe regarding non-
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`infringement (“Wolfe Report”). Ex. E. Nearly a month after the McAlexander Report and
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`virtually concurrently with the Wolfe Report, on January 13, 2019, Google made available new
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`source code for inspection. Ex. F. AGIS promptly notified HTC of the availability of the new
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`Google source code. Ex. G. AGIS reviewed the code and requested additional source code
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`printouts from Google. Ex. G, H. Google objected to AGIS’s printing request and produced
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`only portions of the requested printouts of the new source code. Ex. H.
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` HTC did not notify AGIS about
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`any communication with Google’s counsel. HTC did not notify AGIS about any discovery or
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`productions from Google to HTC. HTC provided no notice to AGIS that HTC had reviewed the
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`Google source code or that HTC had requested any source code printouts from Google. HTC did
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`not produce any Google source code printouts to AGIS.
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`AGIS served Interrogatory Request No. 8 on March 8, 2018 which specifically requested
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`HTC’s detailed non-infringement contentions, and AGIS pursued Google source code for the
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`accused functionalities in order ensure HTC’s disclosure of any and all non-infringement
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`theories based on Google source code. HTC’s non-infringement contentions made no reference
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`to any Google source code or additional source code libraries. Ex. I. In fact, HTC’s response to
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`AGIS’s requests for its non-infringement contentions includes an objection to any requirement
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`3
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 5 of 13 PageID #: 9460
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`for “information about applications designed and made by Google,” and a representation that
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`HTC does not design or modify Google code and products. Ex. J at 4.
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` The non-compliant source code printouts and libraries should be
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`excluded from the Wolfe Report and HTC should be precluded from relying on the late code.
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`III. LEGAL STANDARD
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`P.R. 3-4 requires that “with the ‘Invalidity Contentions,’ the party opposing a claim of
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`patent infringement must produce or make available for inspection and copying: (a) Source code,
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`specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to
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`show the operation of any aspects or elements of an Accused Instrumentality identified by the
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`patent claimant in its P. R. 3-1(c) chart.”
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`The Court’s discovery order requires that “[a] party receiving documents from a third
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`party will provide copies of those documents to each other party within 5 business days of
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`receiving those documents,” and that each party produce all documents, electronically stored
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`information, and tangible things in the possession, custody, or control of the party that are
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`relevant to the pleaded claims or defenses involved in this action “without awaiting a discovery
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`request.” Dkt. 118 at 3-4 and 9.1
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`1 HTC has represented to AGIS that it believes the Huawei discovery order is the operative
`order. Nevertheless, the discovery order in the HTC case contains substantially similar
`provisions. AGIS Software Development LLC v. HTC Corporation, Case No. 2:17-cv-00514,
`Dkt. 38 at 3-4 and 10.
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`4
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 6 of 13 PageID #: 9461
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`If a party fails to provide information or identify a witness as required by Rule 26(a) or
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`(e), the party is not allowed to use that information or witness to supply evidence on a motion at
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`a hearing, or at a trial, unless the failure was substantially justified or is harmless. Fed. R. Civ. P.
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`37(c)(1). This Court has precluded the untimely discovery, and expert testimony based thereon,
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`that “could have, and should have, been produced prior to the close of discovery.” ContentGuard
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`Holdings, Inc. v. Amazon.com, Inc., No. 2:13-CV-1112-JRG, 2015 WL 6886957, at *2 (E.D.
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`Tex. Nov. 7, 2015) (granting motion to exclude portions of expert reports and testimony because
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`“the Court finds that Paragraphs 348–356, 367, 369–373, 380, 381, and 509 of Dr. Kelly’s report
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`must be stricken in view of the Apple’s failure to produce the “correlation folders” for the iTunes
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`source code for Windows and for Mac within the prescribed discovery period.”
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`IV. ARGUMENT
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`HTC should be precluded from relying on untimely discovery. In violation of the Court’s
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`discovery order,
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` HTC
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`5
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 7 of 13 PageID #: 9462
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`did not produce the source code libraries during the discovery period and did not seek leave to
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`produce discovery after the close of discovery. For example, Dr. Wolfe includes the following
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`references to non-produced source code:
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`Wolfe Rebuttal Report at 119.
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`Wolfe Rebuttal Report at 127.
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`Wolfe Rebuttal Report at 131-132.
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`Dr. Wolfe uses these non-produced source code files to assert untimely infringement
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`theories regarding Find My Device (and its predecessor Android Device Manager) for the
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`following limitations of the ’970 patent.
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`6
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 8 of 13 PageID #: 9463
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` Each of these
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`paragraphs and any related portions should be excluded from the Wolfe Report.
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`HTC’s non-produced source code printouts and source code libraries were not identified
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`in HTC’s non-infringement contentions. Ex. J. HTC could have and should have produced the
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`untimely source code printouts and libraries as relevant discovery pursuant to the Court’s
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`discovery order and P.R. 3-4. With respect to the non-produced Google source code, HTC had
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`an obligation under the Court’s discovery order to produce any third party productions of
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`documents, including source code documents, received from a third party such as Google. HTC
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`cannot hide behind its business relationship with Google, a supplier of the source code, to deny
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`its obligations.
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`V.
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`CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant AGIS’s
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`motion to strike portions of the January 11, 2019 Wolfe Report relating to non-produced source
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`code printouts and libraries.
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`Dated: January 25, 2019
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
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`
`
`Alfred R. Fabricant
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`7
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 9 of 13 PageID #: 9464
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`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
`Timothy J. Rousseau
`NY Bar No. 4698742
`Email: trousseau@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 State 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
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`8
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 10 of 13 PageID #: 9465
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`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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`9
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 11 of 13 PageID #: 9466
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`CERTIFICATE OF CONFERENCE
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`I certify that on January 25, 2019, lead and local counsel for AGIS (Alfred R. Fabricant,
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`Vincent J. Rubino, and Jennifer Truelove) and for HTC (Matthew Bernstein, Miguel J.
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`Bombach, and Eric Findlay) conferred via telephone in compliance with L.R. CV-7(h-i)
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`regarding the issues presented in the foregoing Motion. The Parties still were unable to resolve
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`the issues and are at an impasse regarding the relief sought. The Court assistance is thus
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`necessary. HTC opposes this Motion.
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 12 of 13 PageID #: 9467
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to the Protective Order entered in this case.
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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`Case 2:17-cv-00514-JRG Document 132 Filed 01/29/19 Page 13 of 13 PageID #: 9468
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on January 25, 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
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