Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 1 of 22 PageID #: 14921
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE NO. 2:17-cv-514-JRG
`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`CASE NO. 2:17-CV-515-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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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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`HTC CORPORATION, et al.
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`Defendant.
`AGIS SOFTWARE DEVELOPMENT, LLC
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`Plaintiff,
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`v.
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`LG ELECTRONICS INC.
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`Defendant.
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`DEFENDANT LG ELECTRONICS INC.’S MOTIONS IN LIMINE NOS. 1-6
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`

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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 2 of 22 PageID #: 14922
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`MIL NO. 1 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`ACCUSED APPLICATIONS FOR WHICH AGIS HAS NOT PROFFERED
`EVIDENCE OR ADVANCED SUBSTANTIVE ALLEGATIONS OF
`INFRINGEMENT............................................................................................................... 1
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`MIL NO. 2 TO PRECLUDE AGIS FROM INTRODUCING ARGUMENT,
`TESTIMONY, OR EVIDENCE THAT ACTIONS OF THIRD-PARTY LG U.S.
`COMPANIES CAN BE IMPUTED ONTO LG ELECTRONICS INC. ............................ 5
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`III. MIL NO. 3 TO EXCLUDE ANY REFERENCE TO OVERALL FINANCIAL
`DATA FOR LG, GOOGLE, OR APPLE ........................................................................... 6
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`IV. MIL NO. 4 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`ANY CALCULATED PER UNIT ROYALTY AMOUNT FOR HUAWEI
`LICENSE ............................................................................................................................ 8
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`V.
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`MIL NO. 5 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`WILLFULNESS OR NOTICE BASED ON
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` ................................... 10
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`VI. MIL NO. 6 TO EXCLUDE ANY MENTION OF NO ADVICE OF COUNSEL
`REGARDING VALIDITY OR INFRINGEMENT ......................................................... 13
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`-i-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 3 of 22 PageID #: 14923
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`AGIS Software Dev. LLC v. Huawei Device USA Inc.,
`No. 2:17-cv-00513-JRG (E.D. Tex. Nov. 5, 2018)....................................................................8
`
`Amsted Indus. Inc. v. Buckeye Steel Castings Co.,
`24 F.3d 178 (Fed. Cir. 1994)....................................................................................................12
`
`Avance v. Kerr-McGee Chem. LLC,
`No. 5:04CV209, 2006 WL 3484246 (E.D. Tex. Nov. 30, 2006) .......................................10, 11
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`Chalumeau Power Sys. LLC v. Alcatel―Lucent,
`No. 11-1175-RGA, 2012 WL 6968938 (D. Del. July 18, 2012) .............................................11
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`Computer Acceleration Corp. v. Microsoft Corp.,
`503 F. Supp. 2d 819 (E.D. Tex. 2007) .......................................................................................2
`
`In re Seagate Tech., LLC,
`497 F.3d 1360 (Fed. Cir. 2007)................................................................................................14
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`Knorr-Bremse Systeme Fuer Natzfahrzeuge GmbH v. Dana Corp.,
`383 F.3d 1337 (Fed. Cir. 2004)................................................................................................14
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`LaserDynamics, Inc. v. Quanta Computer, Inc.,
`694 F.3d 51 (Fed. Cir. 2012)..................................................................................................7, 8
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`Nike, Inc. v. Adidas Am. Inc.,
`479 F. Supp. 2d 664 (E.D. Tex. 2007) .......................................................................................5
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`Radware, Ltd. v. F5 Networks, Inc.,
`No. 5:13-cv-02024-RMW, 2016 WL 4427490 (N.D. Cal. Aug. 22, 2016) .............................12
`
`Realtime Data, LLC v T-Mobile U.S.A., Inc.,
`No. 6:10-cv-493-RC-JDL (E.D. Tex. Jan. 25, 2013) .................................................................6
`
`Spherix Inc. v. Juniper Networks, Inc.,
`No. C14-578-SLR, 2015 WL 1517508 (D. Del. Mar. 31, 2015) .............................................12
`
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985)................................................................................................11
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`Uniloc USA, Inc. v. Microsoft Corp.,
`632 F.3d 1292 (Fed. Cir. 2011)..............................................................................................7, 8
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`-ii-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 4 of 22 PageID #: 14924
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`Statutes
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`35 U.S.C. § 287 ..............................................................................................................................12
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`Other Authorities
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`Fed. R. Civ. P. 26(a)(2)(B) ............................................................................................................10
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`Fed. R. Evid.
`Rule 401 .............................................................................................................................5, 6, 8
`Rule 402 .............................................................................................................................5, 6, 8
`Rule 403 .............................................................................................................................5, 6, 8
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`-iii-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 5 of 22 PageID #: 14925
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`Defendant LG Electronics Inc. (“LG Korea”) hereby moves in limine to preclude
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`introduction by Plaintiff AGIS Software Development LLC (“AGIS”) of certain argument,
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`evidence, and/or testimony at trial, as described below.
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`I.
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`MIL NO. 1 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`ACCUSED APPLICATIONS FOR WHICH AGIS HAS NOT PROFFERED
`EVIDENCE OR ADVANCED SUBSTANTIVE ALLEGATIONS OF
`INFRINGEMENT
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`LG Korea moves in limine to exclude testimony, evidence and argument related to
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`Google software, and functionality therein, for which AGIS does not advance any substantive
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`contentions, evidence, or analyses in this case. In pursuing its infringement claims against LG
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`Korea related to the asserted patents1, AGIS and
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`. Beyond this, there are passing
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`assertions, without any substantive technical evidence or argument, that other Google
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`applications and systems infringe. This includes Android OS, Google Plus, Google Hangouts,
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`Google Assistant, Google Search, Google Messages, Android Messenger, Google Allo, Google
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`Duo, Gmail, and/or Google Chrome. (See, e.g., Ex. 1, AGIS infringement contentions - ‘970
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`chart - 12/19/18, at A-2; Ex. 2, AGIS infringement contentions - ‘055 chart - 11/28/17, at B-2;
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`Ex. 3, AGIS infringement contentions - ‘251 chart - 11/28/17, at C-2; Ex. 4, AGIS infringement
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`contentions - ‘838 chart - 11/28/17, at D-2;
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`1 The patents AGIS asserts against LG Korea are U.S. Patent Nos. 8,213,970 (“’970 patent”),
`9,408,055 (“’055 patent”), 9,445,251 (“’251 patent”), and 9,467,838 (“’838 patent”)
`(collectively, “Patents-In-Suit”).
`2 Find My Device is the successor name to what was previously known as Android Device
`Manager. (D.I. 132-2, ¶ 1.)
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`-1-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 6 of 22 PageID #: 14926
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` AGIS
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`should be precluded from arguing that such additional applications and systems infringe the
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`asserted patents.
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`Infringement cases in this district are predicated on the required claim-by-claim
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`infringement charts identifying specifically where each element of each asserted claim is found
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`within each accused application. See, e.g., P.R. 3-1(c). This requirement is necessary to
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`streamline the case and provide the accused infringer with specific enough notice of
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`infringement beyond the mere language of the patent claims. See Computer Acceleration Corp.
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`v. Microsoft Corp., 503 F. Supp. 2d 819, 822-23 (E.D. Tex. 2007). Mere passing references to
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`accused applications without providing a claim-by-claim analysis of how functionality in those
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`applications meet each and every limitation of an asserted claim is facially incomplete to prove
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`infringement by that application. Cf. Computer Acceleration, 503 F. Supp. 2d at 822-23 (striking
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`standalone mention of separate accused application where there was no claim-by-claim analysis).
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` Despite this, Mr.
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`3
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`-2-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 7 of 22 PageID #: 14927
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`McAlexander
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` Because there are no claim-by-claim allegations
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`against functionality beyond Find My Device (formerly, Android Device Manager), AGIS
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`should be precluded from mentioning any other Google software with respect to the ’970 patent.
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`Similarly, with respect to the ’055, ’251, and ’838 patents, Mr. McAlexander
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`4 Despite representing to the Court that its infringement contentions deliberately excluded
`allegations against “Find My Phone,” AGIS still inexplicably attempts to include it in this case
`through its expert. (See Case No. 17-cv-513-JRG, D.I. 68 at 19, n.8 (“In order to avoid
`confusion, AGIS did not include the words “Find My Phone” in its infringement contentions.”).)
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`-3-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 8 of 22 PageID #: 14928
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` Because there is no claim-by-claim analyses for functionality beyond
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`Google Maps (or Google Maps in combination with Messages or Hangouts), AGIS should be
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`precluded from referring to any other Google application or to the Android OS as its basis for
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`alleged infringement of these patents.
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`As confirmation, AGIS’s subpoena to Google was similarly limited to solely the Google
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`applications that its technical expert substantively relies upon in his infringement charts.
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`Specifically, AGIS limited its discovery request to “Android Applications,” which it defined to
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`mean “Google Maps, Find My Device, Android Device Manager, Android Messages, and
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`Google Messenger.” (Ex. 10, Google document subpoena, Attachment A, at 2, ¶ 7.)
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`5
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`-4-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 9 of 22 PageID #: 14929
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`In view of the foregoing, to permit AGIS to refer to Google software not charted in any
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`substantive fashion to the asserted claim limitations of the Patents-In-Suit as part of its
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`infringement case is both irrelevant and especially confusing to the jury. See Fed. R. Evid. 401,
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`402, and 403; cf. Nike, Inc. v. Adidas Am. Inc., 479 F. Supp. 2d 664, 669-70 (E.D. Tex. 2007)
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`(striking plaintiff’s amended infringement contentions of infringement by equivalents where
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`plaintiff had mentioned the doctrine of equivalents in its initial infringement contentions but did
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`not provide detailed claims under the doctrine of equivalents until its amended claim charts six
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`months after its initial contentions and near the close of discovery). Accordingly, LG Korea
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`respectfully requests that AGIS should be precluded at trial from adducing evidence related to or
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`arguing infringement of the non-accused Google applications or the Android OS.
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`II.
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`MIL NO. 2 TO PRECLUDE AGIS FROM INTRODUCING ARGUMENT,
`TESTIMONY, OR EVIDENCE THAT ACTIONS OF THIRD-PARTY LG U.S.
`COMPANIES CAN BE IMPUTED ONTO LG ELECTRONICS INC.
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`LG Korea moves in limine to preclude AGIS from introducing testimony and evidence
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`that actions of LG U.S. companies can be imputed onto LG Korea. LG Korea further moves to
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`preclude AGIS from introducing argument, testimony, or evidence related to any theory of
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`liability based on an agency or alter ego theory. AGIS elected not to sue any LG U.S. company
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`and did not join any LG U.S. entity as a party to this action. The deadline to join a party to this
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`action has passed. (See Docket Control Order, D.I. 39 (February 8, 2018 as deadline to join
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`additional parties).) Moreover, AGIS has not alleged or otherwise disclosed any theory of
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`liability based on imputing actions of LG U.S. companies onto LG Korea. AGIS has not sought
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`to amend its Complaint to plead any allegations of agency or alter ego theories of liability. It is
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`too late for AGIS to introduce testimony or argument to this effect. (See Docket Control Order,
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`D.I. 39 (June 15, 2018 as deadline to file amended pleadings).)
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`-5-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 10 of 22 PageID #: 14930
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`It would be unduly prejudicial to LG Korea and would be misleading and confusing to
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`the jury if AGIS is permitted to introduce argument, testimony, or evidence that actions of a non-
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`party can be imputed to LG Korea. It is prejudicial because it is improper to hold LG Korea
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`liable for the actions of others whom AGIS has not alleged or proven are the agents or alter egos
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`of LG Korea. This Court has previously recognized that argument or testimony attempting to
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`impute the conduct of a non-party to a defendant should be excluded. See, e.g., Realtime Data,
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`LLC v T-Mobile U.S.A., Inc., No. 6:10-cv-493-RC-JDL (E.D. Tex. Jan. 25, 2013) (granting
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`motion in limine precluding remarks imputing improper acts by non-party Flash Networks to
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`defendant T-Mobile) (Dkt. 599 at 2). If AGIS introduces argument, testimony, or evidence that
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`actions of non-party LG entities can be imputed to LG Korea, under an agency or alter ego
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`theory or otherwise, the risk of juror confusion is substantial given the relationship between LG
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`entities, and the jury's presumed lack of familiarity with the legal distinctions between LG Korea
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`and other LG-named entities. Such testimony or evidence is likely to mislead or confuse the jury
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`into considering and imputing the actions of non-party LG entities to LG Korea. For this reason,
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`a limiting jury instruction would fall well short of mitigating the prejudicial effect of allowing
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`such testimony. LG U.S. companies are not parties to this action, and the prejudice of any
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`argument, testimony, or evidence that their actions can be imputed onto LG Korea outweighs any
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`probative value they may have. See Fed. R. Evid. 401, 402, and 403. Accordingly, all
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`testimony, evidence, or argument that actions of LG U.S. companies can be imputed onto LG
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`Korea should be excluded under at least Federal Rules of Evidence 401, 402, and 403.
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`III. MIL NO. 3 TO EXCLUDE ANY REFERENCE TO OVERALL FINANCIAL
`DATA FOR LG, GOOGLE, OR APPLE
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`LG Korea moves in limine to exclude any reference to and testimony and evidence
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`related to overall financial data for LG, Google, or Apple because such financial data is not
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`-6-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 11 of 22 PageID #: 14931
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`relevant and the substantial prejudice of introducing such financial data outweighs any probative
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`value. AGIS should be precluded from introducing any evidence, argument, testimony, or
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`reference regarding LG Korea finances, or the finances of its parent company, predecessors-in-
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`interest, or related entities. Evidence, argument, and testimony regarding LG Korea’s financial
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`condition, including revenues, expenses, profits, losses, assets, liabilities, and stockholders’
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`equity of LG Korea or its affiliated companies, other than a financial valuation of the asserted
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`patents, are irrelevant and should be prohibited under Federal Rules of Evidence 401 and 402.
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`Such evidence should also be excluded under Federal Rule of Evidence 403 because any
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`relevance would be substantially outweighed by the dangers of misleading and confusing the
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`jury and by unfair prejudice to LG Korea.
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`AGIS should be precluded from introducing evidence or argument or eliciting testimony
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`concerning (1) LG Korea’s total revenues and profits from the sales of the accused products,
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`sales of non-accused products, foreign sales, or the entire market value of LG Korea’s accused
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`sales; (2) LG Korea’s overall size, net worth, cash, stock value, or wealth generally; and (3) the
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`financial ability of LG Korea to pay damages or royalties. AGIS’s introduction of any such
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`evidence to the jury, “which ha[s] no demonstrated correlation to the value of the patented
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`feature alone, only serve[s] to make [AGIS’s] proffered damages amount appear modest by
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`comparison, and to artificially inflate the jury’s damages calculation beyond that which is
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`‘adequate to compensate for the infringement.’” LaserDynamics, Inc. v. Quanta Computer, Inc.,
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`694 F.3d 51, 68 (Fed. Cir. 2012) (quoting Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292,
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`1320 (Fed. Cir. 2011)); see also Uniloc, 632 F.3d at 1320 (“The disclosure that a company has
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`made $19 billion dollars in revenue from an infringing product cannot help but skew the
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`damages horizon for the jury, regardless of the contribution of the patented component to this
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`-7-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 12 of 22 PageID #: 14932
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`revenue.”). The Federal Circuit’s decisions in LaserDynamics and Uniloc show that introducing
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`evidence of LG Korea’s total revenues and profits at trial, or any similar overall financial data,
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`implicates concerns of juror confusion and undue prejudice against LG Korea. Moreover, any
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`evidence on these topics would be irrelevant and a waste of time as they are not tailored to the
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`purportedly patented technology. Therefore, any evidence, argument, or testimony about or
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`reference to LG Korea’s revenues, profits, size or wealth, and ability to pay should be excluded
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`as irrelevant and unduly prejudicial. See Fed. R. Evid. 401, 402, and 403. For the same reasons,
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`and even more so because they are not parties to this action, any evidence, argument, or
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`testimony about Google’s or Apple’s revenues, profits, or other financial data should be
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`excluded as irrelevant and unduly prejudicial.
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`IV. MIL NO. 4 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`ANY CALCULATED PER UNIT ROYALTY AMOUNT FOR HUAWEI
`LICENSE
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`LG Korea moves in limine to exclude testimony and evidence related to any calculated
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`per unit royalty amount from the licenses and/or agreements executed by Huawei to settle its
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`case with AGIS. On November 5, 2018, Huawei and AGIS filed a Notice of Settlement to
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`inform the Court that “[a]ll matters in controversy between the parties were settled in principle”
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`and asked the Court to stay all case deadlines “while the parties finalize a settlement agreement
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`and file dismissal documents with the Court.” (Joint Motion to Stay All Deadlines and Notice of
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`Settlement Regarding Huawei Defendants, at 1, (Dkt. No. 221), AGIS Software Dev. LLC v.
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`Huawei Device USA Inc., No. 2:17-cv-00513-JRG (E.D. Tex. Nov. 5, 2018).) The Court granted
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`the Joint Motion the next day (Order Granting Joint Motion to Stay All Deadlines and Notice of
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`Settlement, at 1, (Dkt. No. 222), AGIS Software Dev. LLC v. Huawei Device USA Inc., No. 2:17-
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`cv-00513-JRG (E.D. Tex. Nov. 6, 2018)), but it appears that the settlement agreement has not
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`been finalized as no dismissal has yet been filed as to Huawei.
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`-8-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 13 of 22 PageID #: 14933
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`When a settlement agreement with Huawei is finalized, AGIS should be precluded from
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`introducing any license executed by Huawei in this case and from applying any per unit royalty
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`from a settlement agreement with Huawei to the present case against LG Korea due to its late
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`execution. It would not be fair for LG Korea to have to address a new settlement agreement at
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`this late stage. Any such license or per unit royalty has not yet been produced in this case and, if
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`produced, would not be produced until very late in this case. Huawei and AGIS filed their
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`Notice of Settlement over three months ago and still do not appear to have finalized their
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`settlement agreement. AGIS should be precluded from introducing any license that results from
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`the settlement agreement because LG Korea would be unfairly prejudiced by such late
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`production. See Fed. R. Evid. 403.
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`By the time the Huawei settlement agreement is finalized, there will be little, if any, time
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`before trial in this case for any discovery relate to the settlement agreements. There has been no
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`expert testimony on a per unit royalty amount for Huawei. When their settlement agreement is
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`finalized, the time for expert discovery would have long been over. The deadline to complete
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`expert discovery was January 18, 2019. (Third Amended Docket Control Order, D.I. 95, at 3.)
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`Introduction of any license entered into by Huawei to settle with AGIS would unfairly prejudice
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`LG Korea at this late stage of this case. The discovery period has closed. The time for expert
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`discovery, including exchange of expert reports that would analyze the comparability of such a
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`license to the hypothetical negotiation for calculating a reasonable royalty in this case, has
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`closed. Neither AGIS nor LG Korea, or any of their technical or damages experts, has had any
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`opportunity to conduct discovery of these licenses.
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`AGIS should be precluded from relying on any per unit royalty amount in its agreement
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`with Huawei to support AGIS’s damages model against LG Korea. If AGIS’s damages expert
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`-9-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 14 of 22 PageID #: 14934
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`attempts to rely upon a license with Huawei, LG Korea would be unduly prejudiced because any
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`such opinions have not been disclosed and LG Korea has had no opportunity to submit rebuttal
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`expert opinions. Federal Rule of Civil Procedure 26(a)(2)(B) requires all parties to submit
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`written expert reports that “contain a complete statement of all opinions to be expressed and the
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`basis and reasons therefore; the data or other information considered by the witness in forming
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`the opinions; [and] any exhibits to be used as a summary of or support for the opinions.” Avance
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`v. Kerr-McGee Chem. LLC, No. 5:04CV209, 2006 WL 3484246, at *6 (E.D. Tex. Nov. 30,
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`2006) (quoting Fed. R. Civ. P. 26(a)(2)(B)). “[P]arties do not have infinite time to supplement
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`their expert opinions with new information to respond to challenges to their experts’ original
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`evidence.” Id., at *7. Any disclosure by AGIS’s expert of opinions or bases that go beyond that
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`expert’s report, including any reliance on Huawei’s lately executed license, violates Rule 26.
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`See id. (striking the plaintiff’s expert’s affidavits upon the defendant’s objections to the
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`“introduction of new materials, new information, and new opinions” because “allowing the
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`introduction of new information” after the expert report deadline, after the expert discovery
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`deadline, and after Daubert and summary judgment motions were filed “would be unfair and
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`prejudicial to Defendant because Defendant would not have an opportunity for cross-
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`examination on these new issues”) (emphasis in original).
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`V.
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`MIL NO. 5 TO EXCLUDE TESTIMONY AND EVIDENCE RELATED TO
`WILLFULNESS OR NOTICE BASED ON
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`LG Korea moves in limine to exclude testimony and evidence related to willfulness or
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`notice based on
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`-10-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 15 of 22 PageID #: 14935
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`First, any testimony or evidence related to willfulness based on
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` should be excluded under
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`Federal Rules of Evidence 401 and 402 as irrelevant because willfulness requires knowledge of
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`the actual patents-in-suit. See State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed.
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`Cir. 1985) (“To willfully infringe a patent, the patent must exist and one must have knowledge
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`of it. . . . Filing an application is no guarantee any patent will issue and a very substantial
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`percentage of applications never result in patents. What the scope of claims in patents that do
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`issue will be is something totally unforeseeable.”) (emphasis in original). Such testimony and
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`evidence should also be excluded under Federal Rule of Evidence 403 because their introduction
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`carries a substantial risk of confusing or misleading the jury given the likelihood that the jury
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`will wrongly conflate
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` District courts have ruled that mere
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`citation to a patent number in correspondence from the Patent Office is legally insufficient to
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`support a finding of willfulness. See e.g., Chalumeau Power Sys. LLC v. Alcatel―Lucent, No.
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`11-1175-RGA, 2012 WL 6968938, at * 1-2 (D. Del. July 18, 2012) (dismissing willfulness claim
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`where a patent examiner’s assertion in relation to three patent applications assigned to the
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`-11-
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`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 16 of 22 PageID #: 14936
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`defendant that the patent-in-suit was prior art was not sufficient to support actual knowledge);
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`Spherix Inc. v. Juniper Networks, Inc., No. C14-578-SLR, 2015 WL 1517508, at *3 (D. Del.
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`Mar. 31, 2015) (dismissing willfulness claim because the fact that the patent-in-suit was
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`referenced during prosecution of two of the defendant’s patents was “not compelling evidence of
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`knowledge, i.e. that the patent was ‘called to the attention’ of defendant”); Radware, Ltd. v. F5
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`Networks, Inc., No. 5:13-cv-02024-RMW, 2016 WL 4427490, at *4-5 (N.D. Cal. Aug. 22, 2016)
`
`(granting motion for judgment as a matter of law of no willfulness because a Notice of
`
`Allowance for one of the defendant’s patents that was sent to the defendant’s patent prosecution
`
`counsel and listed the patent-in-suit by number in a list of over a dozen “References Cited” was
`
`insufficient to prove willfulness). If the jury hears testimony or evidence related to willfulness
`
`based on
`
`
`
` which AGIS has not shown, as opposed to, for example, a patent examiner. This
`
`would unfairly prejudice LG Korea. Therefore, introduction of testimony or evidence related to
`
`willfulness based on
`
`
`
`should be excluded because any probative value is substantially outweighed by the risk of unfair
`
`prejudice to LG Korea, confusion of the issues, and misleading the jury. See Fed. R. Evid. 403.
`
`Second, any knowledge LG Korea may have had of the patents-in-suit based on
`
`
`
` does not constitute notice under 35 U.S.C. §
`
`287. “For purposes of section 287(a), notice must be of ‘the infringement,’ not merely notice of
`
`the patent’s existence or ownership.” Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d
`
`178, 187 (Fed. Cir. 1994). Further, it is irrelevant “whether the defendant knew of the patent or
`
`-12-
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`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 17 of 22 PageID #: 14937
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`knew of his own infringement” because the “correct approach to determining notice under
`
`section 287 must focus on the action of the patentee, not the knowledge or understanding of the
`
`infringer.” Id. Accordingly, anything LG Korea may have learned through
`
`
`
` is irrelevant to showing notice because notice under section 287 must result from
`
`AGIS’s affirmative acts of giving notice to LG Korea of LG Korea’s alleged infringement of the
`
`patents-in-suit. Because testimony or evidence of
`
`
`
` cannot have a tendency to make LG Korea’s notice more or less probable,
`
`such testimony and evidence is irrelevant and should be excluded. See Fed. R. Evid. 401 and
`
`402. Moreover, if such testimony or evidence is presented to the jury, it would unfairly
`
`prejudice LG Korea, confuse the issues, mislead the jury, and waste time because the jury may
`
`wrongly infer that LG Korea’s alleged knowledge of the patents-in-suit based on
`
`
`
`somehow alleviates some of AGIS’s burden to show it affirmatively gave LG
`
`Korea notice of LG Korea’s alleged infringement, which is contrary to the law. Therefore,
`
`testimony and evidence related to notice based on
`
`
`
` should be excluded because any probative value is substantially outweighed
`
`by the dangers of unfair prejudice and jury confusion. See Fed. R. Evid. 403.
`
`VI. MIL NO. 6 TO EXCLUDE ANY MENTION OF NO ADVICE OF COUNSEL
`REGARDING VALIDITY OR INFRINGEMENT
`
`LG Korea moves in limine to exclude any mention of no advice of counsel regarding
`
`validity or infringement. Any argument that LG Korea has not relied on an attorney’s advice to
`
`show that it does not infringe or that the patents-in-suit are invalid is much more prejudicial than
`
`probative and, therefore, should not be admissible. The Federal Circuit has held that a party’s
`
`decision not to waive the attorney-client privilege cannot be used against it to suggest an adverse
`
`inference to the jury, such as that a non-infringement opinion could not be obtained, nor can a
`
`-13-
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`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 18 of 22 PageID #: 14938
`
`party’s failure to seek such advice be so used. Knorr-Bremse Systeme Fuer Natzfahrzeuge
`
`GmbH v. Dana Corp., 383 F.3d 1337, 1344-46 (Fed. Cir. 2004) (holding that an “inference that
`
`withheld [attorney] opinions are adverse to the client’s actions can distort the attorney-client
`
`relationship,” so “withholding . . . the advice of counsel shall no[t] . . . entail an adverse
`
`inference as to the nature of the advice,” and “it is inappropriate to draw a similar adverse
`
`inference from failure to consult counsel”); see also In re Seagate Tech., LLC, 497 F.3d 1360,
`
`1369-70 (Fed. Cir. 2007) (“[A]n accused infringer’s failure to obtain legal advice does not give
`
`rise to an adverse inference with respect to willfulness.”) (emphasis added) (citing Knorr-
`
`Bremse, 383 F.3d at 1345-46).
`
`Because the affirmative duty to obtain an opinion of counsel has been abolished by the
`
`Federal Circuit and LG Korea has not relied on advice of counsel as a defense to willfulness, LG
`
`Korea’s decision not to obtain or assert advice of counsel regarding validity or infringement is
`
`irrelevant. Because it is irrelevant, any mention of or reference to LG Korea’s decision not to
`
`obtain or assert advice of counsel is therefore inadmissible. Fed. R. Evid. 402. Moreover,
`
`because an adverse inference from the lack of any advice of counsel is not permitted, any
`
`argument or evidence that no such advice exists or has been asserted would be highly prejudicial.
`
`It would effectively invite the jury to make the prohibited adverse inference. Any mention by
`
`AGIS of LG Korea’s lack of advice of counsel as to validity or infringement will potentially
`
`create a negative implication in the minds of the jury and prejudice LG Korea. Therefore, any
`
`such mention of no advice of counsel regarding validity or infringement should be precluded due
`
`to the danger of undue prejudice under Federal Rule of Evidence 403.
`
`-14-
`
`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 19 of 22 PageID #: 14939
`
`Dated: February 11, 2019
`
`Respectfully submitted by:
`
`/s/ Michael A. Berta
`J. Mark Mann
`SBN: 12926150
`mark@themannfirm.com
`G. Blake Thompson
`SBN: 24042033
`blake@themannfirm.com
`MANN TINDEL THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`Tel: 903-657-8540
`
`Michael A. Berta
`Michael.berta@arnoldporter.com
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`Three Embarcadero Center
`10th Floor
`San Francisco, CA 94111-4024
`Tel: 415-471-3000
`
`Matthew M. Wolf
`Matthew.wolf@arnoldporter.com
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001-3743
`Tel: 202-942-5000
`
`James S. Blackburn
`James.blackburn@arnoldporter.com
`Nicholas H. Lee
`Nicholas.lee@arnoldporter.com
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`777 South Figueroa Street
`44th Floor
`Los Angeles, CA 90017-5844
`Tel: 213-243-4000
`
`ATTORNEYS FOR DEFENDANT
`LG ELECTRONICS INC.
`
`-15-
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`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 20 of 22 PageID #: 14940
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`The undersigned certifies that the foregoing document is authorized to be filed under seal
`
`pursuant to paragraph 26 and 27 of the Protective Order entered in this case.
`
`/s/ Michael A. Berta
` Michael A. Berta
`
`-16-
`
`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 21 of 22 PageID #: 14941
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that counsel of record who are deemed to have
`
`consented to electronic services are being served with a copy of this document via the Court’s
`
`CM/ECF system per Local Rule CV-5(a)(3) on February 11, 2019.
`
`/s/ Michael A. Berta
` Michael A. Berta
`
`-17-
`
`

`

`Case 2:17-cv-00514-JRG Document 169 Filed 02/13/19 Page 22 of 22 PageID #: 14942
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to L.R. CV-7(i), the undersigned hereby certifies that on February 11, 2019,
`
`lead and local counsel for Defendant LG Electronics Inc. (Michael A. Berta and J. Mark Mann)
`
`and counsel for Plaintiff AGIS Software Development LLC (Rebecca M. Lecaroz)