Case 2:17-cv-00514-JRG Document 163 Filed 02/13/19 Page 1 of 22 PageID #: 14547
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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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`DEFENDANT HTC CORPORATION’S MOTIONS IN LIMINE NOS. 1-12
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`Case 2:17-cv-00514-JRG Document 163 Filed 02/13/19 Page 2 of 22 PageID #: 14548
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` PAGE
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`TABLE OF CONTENTS
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`I.
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`II.
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`EXCLUDE ANY NON-FACTUAL OR POTENTIALLY PREJUDICIAL
`COMMENTARY REGARDING HTC CORP.’S NATIONALITY ................................. 1
`EXCLUDE ANY ARGUMENT OR TESTIMONY CONCERNING HTC
`CORP.’S SIZE, WEALTH, TOTAL NET WORTH, TOTAL PROFITS,
`AND/OR ABILITY TO PAY DAMAGES ....................................................................... 2
`EXCLUDE ANY ARGUMENT OR TESTIMONY REGARDING GOOGLE’S
`CONFIDENTIAL SOURCE CODE THAT WAS NOT INCLUDED IN AGIS’S
`INFRINGEMENT CONTENTIONS ................................................................................. 3
`EXCLUDE AGIS’S ARGUMENT OR TESTIMONY REGARDING ON
`GOOGLE SOURCE CODE THAT WAS PRODUCED AFTER HTC CORP.’S
`EXPERT SERVED HIS REBUTTAL REPORT .............................................................. 6
`EXCLUDE AGIS ARGUMENT OR TESTIMONY ABOUT JOINT
`INFRINGEMENT.............................................................................................................. 7
`EXCLUDE AGIS’S EXPERT’S TESTIMONY ABOUT NONDISCLOSED
`DOCTRINE OF EQUIVALENTS THEORIES ................................................................ 8
`VII. EXCLUDE AGIS’S EXPERTS OR AGIS FROM REFERRING TO
`COMPONENT SUPPLIER OR CARRIER CONTRACTS.............................................. 9
`VIII. EXCLUDE AGIS’S RELIANCE ON UNPRODUCED THIRD-PARTY
`LICENSES ......................................................................................................................... 9
`EXCLUDE INVENTOR’S TESTIMONY ON ISSUES HE REFUSED TO
`TESTIFY ON DURING HIS CORPORATE DEPOSITION ......................................... 11
`EXCLUDE ANY REFERENCE TO ANY EXPERT’S PRIOR WORK WITH
`HTC CORP.’S LAWYERS OR RETENTION BY PERKINS COIE LLP..................... 13
`EXCLUDE ANY REFERENCE TO AN EARLIER PRIORITY DATE BASED
`ON ALLEGED CONCEPTION AND/OR REDUCTION TO PRACTICE ................... 14
`XII. EXCLUDE ANY ARGUMENT OR TESTIMONY CONCERNING THE PRICE
`GOOGLE PAID FOR A PORTION OF HTC CORP.’S SMARTPHONE
`BUSINESS ....................................................................................................................... 14
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`III.
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`IV.
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`V.
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`VI.
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`IX.
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`X.
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`XI.
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`-i-
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`Case 2:17-cv-00514-JRG Document 163 Filed 02/13/19 Page 3 of 22 PageID #: 14549
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`CASES
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`TABLE OF AUTHORITIES
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` PAGE(S)
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`Allure Energy, Inc. v. Nest Labs, Inc.,
`No. 9:13-cv-102, Dkt. 281 (E.D. Tex. May 18, 2015).............................................................12
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`Anascape Ltd. v. Microsoft Corp.,
`No. 9:06-cv-158, 2008 WL 7180756 (E.D. Tex. May 1, 2008) ................................................4
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`Biscotti Inc. v. Microsoft Corp.,
`No. 213CV01015JRGRSP, 2017 WL 2267283 (E.D. Tex. May 24, 2017) ..............................5
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`Boyle v. Mannesmann Demag Corp.,
`991 F.2d 794 (6th Cir. 1993) .....................................................................................................1
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`Burke v. Deere & Co.,
`6 F.3d 497 (8th Cir. 1993) ...................................................................................................2, 15
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`ContentGuard Holdings, Inc. v. Amazon, Inc., et al.,
`No 2:13-cv-01112-JRG, 2015 WL 11089490 (E.D. Tex. Sept. 4, 2015) ..................................2
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`Eli Lilly & Co. v. Teva Parenteral Medicines, Inc.,
`845 F.3d 1357 (Fed. Cir. 2017)..................................................................................................7
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`Gearhart v. Uniden Corp. of America,
`781 F.2d 147 (8th Cir. 1986) .....................................................................................................1
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`Hall v. Freese,
`735 F.2d 956 (5th Cir. 1984) .....................................................................................................2
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`HTC Corp. v. Tech. Props.,
`No. 5:08-cv-882, 2013 WL 4782598 (N.D. Cal. Sept. 6, 2013) ................................................3
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`In Commil USA, LLC v. Cisco Systems, Inc.,
`720 F.3d 1361 (Fed. Cir. 2013), vacated in part on other grounds, 135 S. Ct.
`1920 (2015) ............................................................................................................................1, 2
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`Joe Andrew Salazar v. HTC Corp.,
`2:16-cv-01096, Dkt. No. 197 .....................................................................................................2
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`Joe Andrew Salazar v. HTC Corp.,
`2:16-cv-01096, Dkt. No. 236 .....................................................................................................1
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`LaserDynamics, Inc. v. Quanta Computer, Inc.,
`694 F.3d 51 (Fed. Cir. 2012)....................................................................................................10
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`ii
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`TABLE OF AUTHORITIES
`(continued)
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` PAGE(S)
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`CASES
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`London Guarantee & Accident Co v. Woelfle,
`83 F.2d 325 (8th Cir. 1936) .......................................................................................................1
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`Mears Techs., Inc. v. Finisar Corp.,
`No. 2:13-cv-376-JRG, 2014 WL 12605571 (E.D. Tex. Oct. 6, 2014) .......................................4
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`Montes v. Phelps Dodge Indus., Inc.,
`481 F. Supp. 2d 700 (W.D. Tex. 2006) ....................................................................................10
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`Moore, U.S.A., Inc. v. Standard Register Co.,
`229 F.3d 1091 (Fed. Cir. 2000)..................................................................................................8
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`Opal Run LLC v. C & A Mktg., Inc.,
`No. 2:16-cv-24-JRG-RSP, 2017 WL 3381344 (E.D. Tex. May 15, 2017) ...............................5
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`Peterson v. Willie,
`81 F.3d 1033 (11th Cir. 1996) .................................................................................................14
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`Rainey v. Am. Forest and Paper Ass’n, Inc.,
`26 F. Supp. 2d 82 (D.D.C. 1998) .............................................................................................12
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`Realtime Data, LLC v. Packeteer, Inc.,
`No. 6:08-cv-144, 2009 WL 2590101 (E.D. Tex. 2009) .............................................................4
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`Reilly v. Natwest Markets Grp. Inc.,
`181 F.3d 253 (2d Cir. 1999).................................................................................................3, 15
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`SSL Servs. LLC v. Citrix Sys., Inc. et al.,
`No. 2:08-cv-158-JRG, Dkt. 227 (E.D. Tex. June 5, 2012) ..................................................3, 15
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`Super Future Equities, Inc. v. Wells Fargo Bank Minnesota, N.A.,
`No. CIV A 306-cv-271, 2007 WL 4410370 (N.D. Tex. Dec. 14, 2007) ...........................12, 13
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`UltimatePointer, LLC. v. Nintendo Co.,
`No. 6:11-cv-496, 2013 WL 12140173 (E.D. Tex. May 28, 2013) ............................................4
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`United States v. Pipkins,
`528 F.2d 559 (5th Cir.), cert. denied, 426 U.S. 952, 96 S.Ct. 3177,49 L.Ed.2d
`1191 (1976) ..............................................................................................................................14
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`Whirlpool Corp. v. TST Water, LLC,
`No. 2:15-cv-1528-JRG, 2017 WL 2931403 (E.D. Tex. Mar. 3, 2017) ......................................1
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`iii
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`TABLE OF AUTHORITIES
`(continued)
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`CASES
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`Zix Corp. v. Echoworx Corp.,
`No. 2:15-cv-1272-JRG, 2016 WL 3410367 (E.D. Tex. May 13, 2016) ....................................4
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`iv
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`Case 2:17-cv-00514-JRG Document 163 Filed 02/13/19 Page 6 of 22 PageID #: 14552
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`Defendant HTC Corporation (“HTC Corp.”) moves in limine to preclude the introduction
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`of certain arguments, evidence, and/or testimony at trial, as discussed below.
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`I.
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`EXCLUDE ANY NON-FACTUAL OR POTENTIALLY PREJUDICIAL
`COMMENTARY REGARDING HTC CORP.’S NATIONALITY
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`This Court has previously granted a motion by HTC Corp. preventing a plaintiff from
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`referring to the nationality of HTC Corp. or its employees in a potentially prejudicial, non-factual
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`manner, including but not limited to requiring plaintiff to refer to person or entities from Taiwan
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`as “Taiwanese,” rather than “Chinese” and to refer to Taiwan as Taiwan, and not the Republic of
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`China. See Joe Andrew Salazar v. HTC Corp., 2:16-cv-01096, Dkt. No. 236, p. 10; see also
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`Whirlpool Corp. v. TST Water, LLC, No. 2:15-cv-1528-JRG, 2017 WL 2931403, at *1
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`(E.D. Tex. Mar. 3, 2017) (“There will be no disparaging or denigrating of witnesses by
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`nationality or of any individual by nationality. There will be no direct or indirect, overt or non-
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`overt attempt to show that something is superior or inferior based on its place of origin.”). HTC
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`Corp. again asks this Court to exclude these and any other potentially disparaging references.
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`Disparaging comments regarding the nationality of HTC Corp. and its employees is
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`irrelevant to the factual determinations to be made by the jury. AGIS should be precluded from
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`making any disparaging comments or argument based on foreign nationality or origin to prevent
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`unfair prejudice. See Fed. R. Evid. 403; London Guarantee & Accident Co v. Woelfle, 83 F.2d
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`325, 340 (8th Cir. 1936); Boyle v. Mannesmann Demag Corp., 991 F.2d 794 (6th Cir. 1993);
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`Gearhart v. Uniden Corp. of America, 781 F.2d 147, 157 (8th Cir. 1986) (“[W]e believe such
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`repeated reference to Far Eastern parent corporations . . . could prejudicially appeal to
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`xenophobia”). Courts in this District, as well as both the Federal and Fifth Circuits, have
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`affirmed the grant of a new trial (or ordered a new trial) where inappropriate comments based on
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`ethnicity were used to prejudice a jury unfairly. In Commil USA, LLC v. Cisco Systems, Inc.,
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`720 F.3d 1361 (Fed. Cir. 2013), vacated in part on other grounds, 135 S. Ct. 1920 (2015), and
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`adhered to in part, 813 F.3d 99 (Fed. Cir. 2015). For example, the Federal Circuit held that an
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`order from the Eastern District of Texas granting a new trial was appropriate where a party
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`“attempted to instill in the jury, through irrelevant references to ethnicity and religion an ‘us
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`versus them’ mentality.” Id. at 1370; see also Hall v. Freese, 735 F.2d 956 (5th Cir. 1984). As a
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`result, the danger of unfair prejudice to HTC Corp. as compared to any probative value of the
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`nationality of HTC Corp. or any of its witnesses dictates that any reference to the nationality of
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`HTC Corp. or its employees should be strictly factual in nature.
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`II.
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`EXCLUDE ANY ARGUMENT OR TESTIMONY CONCERNING HTC CORP.’S
`SIZE, WEALTH, TOTAL NET WORTH, TOTAL PROFITS, AND/OR ABILITY
`TO PAY DAMAGES
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`The Court should preclude AGIS from introducing any reference, evidence, testimony
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`(including expert testimony), or argument regarding HTC Corp.’s size, wealth, total net worth,
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`total profits, and/or ability to pay damages. Such evidence is “totally irrelevant to the issue of
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`compensatory damages,” especially because the accused products represent only a small part of
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`HTC Corp.’s overall business. See Burke v. Deere & Co., 6 F.3d 497, 513 (8th Cir. 1993)
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`(finding evidence of the defendant’s net worth and wealth irrelevant and prejudicial). This Court
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`has previously granted a similar motion filed by HTC Corp. See Joe Andrew Salazar v. HTC
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`Corp., 2:16-cv-01096, Dkt. No. 197, p. 3 (granted in Dkt. No. 236, p. 10); see also
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`ContentGuard Holdings, Inc. v. Amazon, Inc., et al., No 2:13-cv-01112-JRG, 2015 WL
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`11089490, at *5 (E.D. Tex. Sept. 4, 2015) (“[Plaintiff] is precluded from introducing any
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`evidence or argument regarding [Defendant’s] size, market capitalization, or revenues and profits
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`not derived from the accused products or services.”).
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`To the extent generic company-wide financial information (e.g., wealth, total net worth,
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`and total corporate profits) and related comparative characterizations (e.g., size and ability to pay
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`damages) have any probative value, it is substantially outweighed by the potential to unfairly
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`prejudice the jury. See HTC Corp. v. Tech. Props., No. 5:08-cv-882, 2013 WL 4782598 at *6
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`(N.D. Cal. Sept. 6, 2013) (“[T]he probative value of evidence related to HTC’s size, wealth, or
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`overall revenues is substantially outweighed by the risk of unfair prejudice, confusion of the
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`issues and misleading the jury necessitating its exclusion under Rule 403.”). Permitting such
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`evidence would increase the risk of a damages determination based on the jury’s view that
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`damages should be awarded in proportion to HTC Corp.’s size or its ability to pay any
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`judgment—regardless of the merits of AGIS’s damages claims. See SSL Servs. LLC v. Citrix
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`Sys., Inc. et al., No. 2:08-cv-158-JRG, Dkt. 227 at *2 (E.D. Tex. June 5, 2012) (“[Plaintiff] may
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`not communicate before the jury information about the size, resources or wealth of [defendant]
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`offered merely to indicate that [defendant] can financially bear a multi-million-dollar
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`judgment.”); see also Reilly v. Natwest Markets Grp. Inc., 181 F.3d 253, 266 (2d Cir. 1999)
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`(“Evidence of wealth, which can be taken as suggesting that the defendant should respond in
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`damages because he is rich, is generally inadmissible in trials not involving punitive damages.”
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`(internal quotes omitted)). For these reasons, the Court should preclude any reference, evidence,
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`testimony, or argument about HTC Corp.’s size, wealth, total net worth, total profits, and/or
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`ability to pay damages.
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`III. EXCLUDE ANY ARGUMENT OR TESTIMONY REGARDING GOOGLE’S
`CONFIDENTIAL SOURCE CODE THAT WAS NOT INCLUDED IN AGIS’S
`INFRINGEMENT CONTENTIONS
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`In violation of this Court’s order, AGIS never identified Google’s confidential source
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`code in its infringement contentions. Consequently, AGIS and its experts should be precluded
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`from arguing or providing testimony about this code.
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`Notwithstanding its obligation and failure to cite to source code in amended infringement
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`contentions, AGIS’s expert did cite confidential Google source code for the Android Device
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`Manager and Google Maps in his expert report.1 AGIS’s conduct prejudices HTC Corp. because
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`HTC never knew of AGIS’s intention to rely on certain files and lines of source code for certain
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`limitations until after the close of fact discovery. Mears Techs., Inc. v. Finisar Corp., No. 2:13-
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`cv-376-JRG, 2014 WL 12605571, at *2 (E.D. Tex. Oct. 6, 2014) (finding that it would cause
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`substantial and unfair prejudice to allow significant amendments to contentions after close of fact
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`discovery and within four months of trial). HTC Corp. had little meaningful opportunity to
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`investigate Google’s confidential source code by the service of its own rebuttal reports.2
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`AGIS was required to put HTC Corp. on notice of its infringement theories via their
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`infringement contentions. “Patent Rule 3-1 requires a party asserting infringement to service
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`infringement contentions on each defending party.” UltimatePointer, LLC. v. Nintendo Co.,
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`No. 6:11-cv-496, 2013 WL 12140173, at *1 (E.D. Tex. May 28, 2013). These contentions must
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`“be reasonably precise and detailed” and “provide a defendant with adequate notice of the
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`plaintiff’s theories of infringement.” Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144,
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`2009 WL 2590101, at *5 (E.D. Tex. 2009); see also Zix Corp. v. Echoworx Corp., No. 2:15-cv-
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`1272-JRG, 2016 WL 3410367, at *1 (E.D. Tex. May 13, 2016) (“[P]atentee’s infringement
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`contentions must set forth particular theories of infringement with sufficient specificity to
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`provide defendants with notice of infringement beyond that which is provided by the mere
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`language of the patent [claims] themselves.”) (internal quotation marks omitted). AGIS never
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`put HTC Corp. on notice, and it should be precluded from presenting argument about Google’s
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`1 (Ex. 1, McAlexander Rpt., Attachment A pp. A-7–A-8; Ex. 2, McAlexander Rpt.,
`Attachment B at pp. B-7–B-9; Ex. 3, McAlexander Rpt., Attachment C at pp. C-7–C-8; Ex. 4,
`McAlexander Rpt., Attachment D at D-7–D8.)
`2 HTC Corp. never had possession of confidential Google source code. HTC Corp.’s
`expert was required to travel to Google’s counsel’s office and was put on restrictions for his
`review. (Ex. 5, Wolfe Dep. Tr. at 11:3-24 and 13:25-14:18).
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`confidential source code.3
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`More importantly, the Discovery Order required AGIS to amend its infringement
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`contentions after it received access to source code. (2:17-cv-00513-JRG, Dkt. No. 118 at 3; see
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`also Dkt. No. 38 at 3). AGIS had access to the Google code at least as early as the week of Nov.
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`19th. (Ex. 6, Nov. 26 2018 E. Iturralde E-Mail at 2.) AGIS emailed HTC Corp. stating that its
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`reviewer inspected Google source code the week before November 26, 2018 and requested print-
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`outs. Id. But flaunting the Court’s order, on December 19, 2018, AGIS chose to amend its
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`infringement contentions without citing any Google code. (See generally Ex. 7, AGIS’s Dec. 19,
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`2018 Disclosure of Asserted Claims and Infringement Contentions.)
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`Expert infringement reports may not introduce theories not previously set forth in
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`infringement contentions. Opal Run LLC v. C & A Mktg., Inc., No. 2:16-cv-24-JRG-RSP, 2017
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`WL 3381344, at *2 (E.D. Tex. May 15, 2017) (striking infringement theories form an expert
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`report that were not disclosed in plaintiff’s infringement contentions). In particular, where a
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`party has access to source code and does not supplement its infringement contentions, but instead
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`relies upon this source code to introduce new theories for the first time in an expert report, such
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`portions of the expert report should be excluded. See Biscotti Inc. v. Microsoft Corp.,
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`No. 213CV01015JRGRSP, 2017 WL 2267283 (E.D. Tex. May 24, 2017) (striking portions of
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`expert report including source code that was not included in plaintiff’s infringement contentions,
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`despite the discovery order requiring the plaintiff to “identify, on an element-by-element basis
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`3 To the extent AGIS suggests that HTC Corp. could have inferred AGIS’s new
`infringement theories from AGIS’s infringement contentions, that argument would eviscerate the
`requirements of the Patent Rules to provide particularized notice of a party’s infringement
`theories. Anascape Ltd. v. Microsoft Corp., No. 9:06-cv-158, 2008 WL 7180756, at *2 (E.D.
`Tex. May 1, 2008) (“The Local Patent Rules exist to further the goal of full, timely discovery
`and provide all parties with adequate notice and information with which to litigate their cases.”)
`(internal quotation omitted).
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`for each asserted claim, what source code of each Accused Instrumentality allegedly satisfies the
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`software limitations of the asserted claim elements.”) AGIS’s expert should therefore be
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`precluded from testifying about source code that was never identified by AGIS in its
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`infringement contentions.
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`IV.
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`EXCLUDE AGIS’S ARGUMENT OR TESTIMONY REGARDING ON GOOGLE
`SOURCE CODE THAT WAS PRODUCED AFTER HTC CORP.’S EXPERT
`SERVED HIS REBUTTAL REPORT
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`In addition to the above, AGIS and its experts should also be precluded from providing
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`argument or testifying at trial about third-party Google source code that was untimely produced
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`by AGIS. On January 24, 2019, counsel for AGIS informed HTC Corp. that it had requested and
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`received source code printouts. (Ex. 6 at 1.). The printouts were from source code that third-
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`party Google made available to AGIS on January 14, 2019. (Id.). January 14, 2019 is well after
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`the discovery cut-off of December 7, 2018 (Dkt. No. 90 at p. 3.), and after HTC Corp.’s expert
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`served his rebuttal report on January 11, 2019. The source code made available included source
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`code for Google Maps (Version 9.42) that was never made available to HTC Corp. prior to its
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`expert report being served. HTC Corp.’s expert only had access to Google Maps Versions 2.4
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`and 7.1. (See generally Exs. 1-4; Ex. 8, Wolfe Rpt. at ¶ 594) (both only opining on versions 2.4
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`and 7.1 of Google Maps.) HTC Corp. would be substantially prejudiced if AGIS, or its experts,
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`were allowed to present argument or testimony regarding source code that was produced to HTC
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`Corp. after its expert served his rebuttal report. Also, any such testimony should also be
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`excluded because even as of the date of this motion, AGIS’s expert still has not provided any
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`opinions on Google Maps Version 9.42. Nor does AGIS have any fact witnesses capable of
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`testifying about Google Maps Version 9.42.
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`To the extent that AGIS complains about the timing of third-party Google’s production of
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`source code, that timing is solely a product of AGIS’s own delay. AGIS first subpoenaed
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`Case 2:17-cv-00514-JRG Document 163 Filed 02/13/19 Page 12 of 22 PageID #: 14558
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`Google on August 29, 2018 (Ex. 9, AGIS Aug. 29, 2018 Subpoenas to Google LLC), more than
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`a year after AGIS filed its complaint alleging infringement of Google-made applications.
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`(Dkt. No. 1.). AGIS’s subpoena also came more than seven months after AGIS was told by HTC
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`Corp.’s sworn declarant, Richard Lin, that HTC did not possess Google’s confidential source
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`code for the accused Google-made applications. (January 22, 2018 Richard Lin Decl., Dkt. No.
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`29-1, ¶ 7 (“HTC Corp. installs Google-made applications … HTC Corp. does not receive the
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`source code to or modify Google-made apps…”).)4
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`AGIS’s delay and lack of any expert opinion substantially prejudices HTC Corp., and
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`AGIS and its expert should be precluded from testifying or presenting argument on Google
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`source code for Google Maps Version 9.42, that was produced after HTC Corp. served its
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`rebuttal report.
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`V.
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`EXCLUDE AGIS ARGUMENT OR TESTIMONY ABOUT JOINT
`INFRINGEMENT
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`As of the date of this motion, AGIS has not disclosed any legitimate joint infringement
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`theory to HTC Corp. Nowhere in its contentions, expert reports, or anywhere else does AGIS set
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`forth a joint infringement theory of direct infringement applicable to this case.5 Nowhere has
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`AGIS addressed the elements of joint infringement, which requires AGIS to prove HTC Corp.
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`directs or controls another’s performance or that HTC Corp. and somebody else form a joint
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`enterprise. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357, 1364 (Fed. Cir.
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`2017) (stating that an entity is responsible for another’s performance if it directs or controls
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`4 HTC Corp. made-available to AGIS all source code in HTC Corp.’s possession on May
`2017 (Ex. 10, May 16, 2018 Bombach Ltr.), but AGIS chose not to look at it until October 2018
`(Ex. 11 October E. Iturralde E-mail), and AGIS never requested any printouts.
`5 AGIS does mention the words “jointly-and-directly infringing” in its preliminary
`infringement contentions in the context of HTC’s carrier customers, but AGIS provided
`absolutely no detail, and its expert did not opine on any joint infringement between HTC and its
`carrier customers.
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`another’s’ performance or where the actors form a joint enterprise). AGIS has not put HTC
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`Corp. on notice of any joint infringement theory, and AGIS should therefore be precluded from
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`providing argument or testimony (from both its experts and fact witnesses) regarding joint
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`infringement, or multiple parties committing direct infringement, at trial.
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`VI.
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`EXCLUDE AGIS’S EXPERT’S TESTIMONY ABOUT NONDISCLOSED
`DOCTRINE OF EQUIVALENTS THEORIES
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`The Court should preclude AGIS’s expert from asserting that the accused products satisfy
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`“means for requiring a required manual response from the response list …” (Dkt. No. 1-1 at
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`9:24-25). AGIS’s expert provided only conclusory statements regarding equivalents, asserting
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`that some stated equivalent matched the claim language without substantive analysis or
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`reasoning:
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`Each of the accused HTC products’ “means for requiring a
`required manual response from the response list by the recipient in
`order to clear recipient’s response list from recipient’s cell phone
`display” provides substantially the same function, which is, inter
`alia, “requiring a required manual response from the response list
`by the recipient in order to clear recipient’s response list from
`recipient’s cell phone display,” in substantially the same way,
`which is by “requiring that the recipient select an item (such as
`pressing a button or swiping) on the recipient’s display screen in
`order to remove the response list and regain free use of the
`device,” to achieve substantially the same result, which is
`“maintaining the recipient’s device in an otherwise inoperable
`mode until the recipient has selected one item from the items
`displayed on the device’s display screen.”
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`(Ex. 12, McAlexander Rpt. at ¶ 140.) This analysis is inadequate to show equivalents. The
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`claim language and this Court’s construction require that a manual response be selected. (2:17-
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`cv-513-JRG, Dkt. No. 205 at pp. 41-42). AGIS’s expert, in conclusory fashion, states that all
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`that is needed is a selection of a button to remove the response list. He does not perform the
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`appropriate doctrine of equivalents analysis to show that selecting a manual response from the
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`response list is the same as pressing a button to remove the response list. AGIS’s expert’s
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`conclusory statements are insufficient as a matter of law. See Moore, U.S.A., Inc. v. Standard
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`Register Co., 229 F.3d 1091, 1113 (Fed. Cir. 2000) (“[The mere recital of the Graver Tank
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`mantra that the accused device performs ‘the same function, in the same way, to achieve the
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`same result,’ without more, does not create a genuine issue of material fact as to whether an
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`accused device infringes by equivalents.”).
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`Beyond the above, AGIS’s expert should further be precluded from testifying about
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`doctrine of equivalents for any other term, aside from those two terms identified in 9.3.4.2 and
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`9.3.4.3 of his report, (Ex. 12. at ¶¶ 141-148.), because he has provided no analysis or opinion.
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`VII. EXCLUDE AGIS’S EXPERTS OR AGIS FROM REFERRING TO COMPONENT
`SUPPLIER OR CARRIER CONTRACTS
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`None of AGIS’s experts opined on any relationship between HTC Corp., its component
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`suppliers, or any of the carriers. Nor has AGIS sought and obtained discovery on any contracts
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`between HTC Corp., its component suppliers, and the carriers. AGIS’s experts should therefore
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`be precluded from including any expert testimony regarding HTC Corp.’s relationship with the
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`component suppliers or carriers, or alluding to any potential contracts between them. The
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`minimal probative value of any such relationships is greatly outweighed by the potential for
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`prejudice and jury confusion.
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`VIII. EXCLUDE AGIS’S RELIANCE ON UNPRODUCED THIRD-PARTY LICENSES
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`Plaintiff’s damages expert, Alan Ratliff, relies on three third-party licenses (i.e., licensing
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`not involving either AGIS or HTC Corp.) to attempt to demonstrate the appropriate reasonable
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`royalty as a percentage of overall revenue. The three licenses and Mr. Ratliff’s corresponding
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`opinions should be excluded for two reasons. First, the licenses were not produced during fact
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`discovery. Second, the licenses are not relevant to any issue properly in the case.
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`AGIS did not produce the three licenses during fact discovery. AGIS identified the
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`licenses for the first time in Mr. Ratliff’s opening expert report on damages—after the close of
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`fact discovery. AGIS’s failure to timely identify or produce the licenses during discovery was
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`far from harmless because it deprived HTC Corp. of the opportunity to seek third-party
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`discovery surrounding the licenses or to seek discovery from the parties subject to the licenses.6
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`See, e.g., Montes v. Phelps Dodge Indus., Inc., 481 F. Supp. 2d 700, 711 (W.D. Tex. 2006)
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`(“Evidence that was not produced during discovery may not be admitted at trial unless the error
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`is harmless”) (citing Fed. R. Civ. P. 37 and collected cases). AGIS should not be permitted to
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`rely on late-produced documents for any issues on which it has the burden of proof.
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`The three third-party licenses relied on by Mr. Ratliff are also irrelevant. Mr. Ratliff
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`presents them to support improper testimony regarding royalty rates as a percentage of overall
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`revenue. (Ex. 13, Ratliff Rpt. at ¶ 113). Evidence linking a royalty rate to a percentage of
`
`overall revenue is irrelevant and improper. LaserDynamics, Inc. v. Quanta Computer, Inc., 694
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`F.3d 51, 67–68 (Fed. Cir. 2012) (“We reaffirm that in any case involving multi-component
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`products, patentees may not calculate damages based on sales of the entire product, as opposed
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`to the smallest salable patent-practicing unit, without showing that the demand for the entire
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`product is attributable to the patented feature.”). Here, Mr. Ratliff concedes that the allegedly
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`patented features do not drive demand for the accused applications, yet alone the devices
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`themselves.
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`
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`6 The first agreement Mr. Ratliff relies on is merely a two-sentence statement about a
`license made in an SEC filing. (Ex. 13 at ¶¶ 101-104.). No party knows the actual terms of this
`agreement.
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` The licenses are thus irrelevant to any issue in the case and
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`should be excluded.7
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`IX.
`
`EXCLUDE INVENTOR’S TESTIMONY ON ISSUES HE REFUSED TO
`TESTIFY ON DURING HIS CORPORATE DEPOSITION
`
`At his 30(b)(6) deposition, AGIS’s CEO and named inventor of the patents-in-suit,
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`Malcolm Beyer, Jr., refused to answer simple questions related to his inventions. That strategic
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`decision should have consequences, and the Court should preclude Mr. Beyer from testifying at
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`trial regarding the alleged inventions, conception or reduction to practice, and purported benefits
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`of the patents-in-suit.
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`), and was AGIS’s 30(b)(6) designee on topics including but
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`
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`not limited to: (1) conception and reduction to practice (topic no. 27); and (2) any alleged
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`novelty or benefit of the patents-in-suit over the prior art (topic no. 38). (Ex. 16, HTC Corp.’s
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`30(b)(6) Notice; Ex. 17 Sept. 21, 2018 E. Iturralde E-Mail). Notwithstanding a 30(b)(6)
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`witness’s obligation to come prepared to testify at his deposition, Mr. Beyer did not prepare to
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`7 For similar reasons, Mr. Ratliff’s non-party licenses are prejudicial because they imply
`that the proper reasonable royalty in this case may be expressed as a percentage of HTC Corp.’s
`overall profits on the accused devices. But this is improper where, as here, the entire market
`value rule does not apply. Accordingly, for that additional reason, the three non-party licenses
`and any corresponding testimony should be excluded.
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`testify about the patents-in-suit at his 30(b)(6) deposition.