Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 1 of 8 PageID #: 15114
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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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`§
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`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`LG ELECTRONICS INC.,
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`Defendant.
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S REPLY RE
`OPPOSED MOTION TO STRIKE THE EXPERT REPORT OF
`DR. SCOTT ANDREWS FOR UNDISCLOSED OBVIOUSNESS
`COMBINATIONS AND FAILURE TO ADHERE
`TO DEFENDANTS’ FINAL ELECTION OF PRIOR ART REFERENCE (DKT. 108)
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 2 of 8 PageID #: 15115
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`Plaintiff AGIS Software Development LLC (“AGIS”), by and through its undersigned
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`counsel, hereby submits this Reply in support of its Motion to Strike Portions of the December
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`14, 2018 Expert Report of Scott Andrews (“Andrews Report”) based on Defendants HTC
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`Corporation (“HTC”) and LG Electronics, Inc.’s (“LG”) (collectively, “Defendants”) failure to
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`timely disclose invalidity theories and obviousness combinations based on non-elected prior art
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`references (Dkt. 108).
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`Local Patent Rule 3-3 requires that a party opposing claims for patent infringement serve
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`invalidity contentions which must include: (1) the identity of each item of prior art that allegedly
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`anticipates each asserted claim or renders it obvious; (2) whether each item anticipates each
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`asserted claim or makes it obvious; (3) identify the combination of references that make a claim
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`obvious and the motivation to combine; and (4) a chart identifying where specifically in each
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`alleged item of prior art each element of each asserted claim is found. P.R. 3-3(a)-(c).
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`Defendants have failed to adhere to Local Patent Rule 3-3 because “[t]o the extent that
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`[defendant] has not provided information satisfying each of those four requirements for any
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`obviousness combination,” then defendant has not properly asserted that combination. CyEee
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`Grp. Ltd. v. Samsung Elecs. Co. Ltd., No. 2:17-CV-140-WCB, 2018 WL 4100760, at *2 (E.D.
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`Tex. July 2, 2018) (“[T]he Court will not look favorably on an attempt to assert any improperly
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`disclosed obviousness combination. . . .”).
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`Defendants allege that they had sufficiently identified the ’724 patent in its invalidity
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`contentions and should not be precluded from relying on the ’724 patent or any combinations
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`thereof because it provided “notice” of the use of such prior art. Dkt. 154 at 3-4; Dkt. 154-13,
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`Ex. 12 (“Defendants reserve the right to assert additional theories of invalidity based on the
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`determination of the proper priority date or any future claim of priority AGIS makes . . .
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 3 of 8 PageID #: 15116
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`including but not limited to U.S. Pat. Nos. 7,031,728; 7,630,724 . . . .”). However this Court has
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`held that “this type of boilerplate language in invalidity contentions is contrary to this district’s
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`Local Patent Rules and case law.” CyEee Grp. Ltd. v. Samsung Elecs. Co. Ltd., *2. Defendants
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`have not only failed to sufficiently identify and elect the ’724 patent as invalidating prior art, but
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`failed to identify any combination based on the ’724 patent or provide a chart identifying where
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`specifically in the ’724 patent each element of each asserted claim is found.
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`Defendants argue that they “put AGIS on fair notice that the ’724 patent rendered each-
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`and-every element of the ’055, ’251, and ’838 patents obvious.” Dkt. 154 at 5, n. 2 (emphasis
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`added). In support, they cite to two cases: Realtime Data and EON Corp. Both cases do not apply
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`to the facts of this case. Realtime Data held that infringement contentions “are not intended to
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`require a party to set forth a prima facie case of infringement and evidence in support thereof.”
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`Realtime Data, LLC v. Packeteer, Inc., No. 6:08-CV-144, 2009 WL 2590101, at *5 (E.D. Tex.
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`2009) (“[I]nfringement contentions are intended to frame the scope of the case in order to
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`provide for ‘full, timely discovery and [to] provide parties with adequate notice and information
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`with which to litigate their case.’”) (citing Nike, Inc. v. Adidas Am. Inc., 479 F. Supp. 2d 664,
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`667 (E.D. Tex. 2007)). The same applies for EON Corp., where defendant sought to strike
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`plaintiff’s infringement contentions. EON Corp. IP Holdings, LLC v. Sensus USA Inc., No.
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`6:09-cv-116, Dkt. No. 112 at 4 (E.D.Tex. Jan. 21, 2010). Local Patent Rule 3-3 requires more
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`than simply notice of the prior art.
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`The five-factor test in this Court to determine whether it is appropriate to exclude
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`evidence based on a party’s failure to comply with the Patent Rules include prejudice to the non-
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`movant, the length of the delay, the reason for the delay, the importance of the matter sought to
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`be excluded, and diligence. LML Patent Corp. v. JPMorgan Chase & Co., No. 2:08-CV-448,
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`2
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 4 of 8 PageID #: 15117
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`2011 WL 5158285, at *4 (E.D. Tex. 2011). Defendants have not established that they would be
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`prejudiced by the exclusion of the non-elected and non-disclosed ’724 patent. Defendants’ own
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`arguments show that “AGIS in its early discovery responses identified the ’724 patent as
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`providing priority support for the asserted patents.” Dkt. 154 at 3. Following Defendants’
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`argument, Defendants have been on notice that the ’724 patent may be relevant, yet did not seek
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`to include the ’724 patent in its invalidity contentions or its final election of prior art. Defendants
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`seem to allege there was sufficient reason for delay because the PTAB’s decisions came months
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`after its final prior art elections, and they had “reserved” their rights to present the ’724 patent as
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`invalidating prior art. Dkt. 154 at 4. Following the rendering of the PTAB decisions, Defendants
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`have still not sought to amend their invalidity contentions or their election of prior art. In fact,
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`LG served amended invalidity contentions as late as January 17, 2019 which does not identify
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`the ’724 patent as prior art and does not provide any charts for the ’724 patent. See Dkt. 108-2,
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`LG’s Amended Invalidity Contentions, dated January 17, 2019. Defendants have not shown
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`diligence in attempting to include the ’724 patent as a prior art reference, and attempt to
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`circumvent the Local Rules of this Court by including the ’724 patent and any combinations
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`thereof for the first time in its expert report. As a result, it is appropriate to exclude the ’724
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`patent for Defendants’ failure to elect, disclose, and chart the ’724 patent and any combinations
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`thereof.
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`Defendants rely on Rembrandt Wireless Techs. which held that a motion to strike was
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`denied where “Plaintiff’s objection arose for the first time in a motion to strike.” Dkt. 154 at 6.
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`This case is inapposite. In Rembrandt, plaintiff argued that defendants relied on references in
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`their Second Amended Invalidity Contentions which were improperly served, and therefore
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`should be precluded from use of such references. Rembrandt Wireless Techs. LP v. Samsung
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`3
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 5 of 8 PageID #: 15118
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`Electronics Co. Ltd., No. 2:13-CV-213-JRG-RSP, 2015 WL 1848524, at *1 (E.D. Tex. 2015).
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`The Court held that because plaintiff sought to exclude reliance on such references for the first
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`time in its motion to strike, it had waived such objections. Id. at *2. Further, Defendants’ Expert
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`Report relied on portions of the reference that were never identified or charted in Defendants’
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`invalidity contentions. Id. at *3. Here, AGIS does not take issue with reliance on references
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`identified and charted in Defendants’ amended invalidity contentions. However, Defendants
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`neither identify nor chart the ’724 patent or any portion thereof as a prior art reference. Without
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`providing a claim-by-claim and element-by-element chart for any asserted prior art reference,
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`Defendants fail to provide sufficient notice as to how each claim element is met. Realtime Data,
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`LLC v. Packeteer, Inc., 6:08-cv-144-LED-JDL, 2009 WL 4782062, at *3 (E.D. Tex. 2009)
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`(striking invalidity theories relying on undisclosed references that defendants failed to provide in
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`any invalidity chart and had not been identified on a claim-by-claim or element-by-element
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`basis). Defendants’ attempt to “preserve” its rights to later rely upon undisclosed combinations
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`does not comply with the requirements of Local Patent Rule 3-3. See id.
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`Local Patent Rule 3-3 not only requires the timely disclosure of references, but also the
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`timely disclosure of combinations defendant intends to rely upon. In LML Patent Corp., the
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`Court granted plaintiff's motion to strike twenty-eight new combinations, holding that “the Local
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`Patent Rules and this court’s Scheduling Order are clear: [the defendant] was required to disclose
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`any combination of, or motivation to combine, prior art it was asserting against a particular claim
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`in its Invalidity Contentions.” LML Patent Corp., 2011 WL 5158285, at *7. Like the defendant
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`in LML Patent Corp., Defendants do not present any authority holding that “new combinations
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`are permissible simply because the constituent references were previously disclosed.” LML
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`Patent Corp., 2011 WL 5158285 at *6 (“[l]anguage preserving a defendant an opportunity to
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 6 of 8 PageID #: 15119
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`later rely upon undisclosed combinations does not ‘clearly suggest’ the combination in the
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`manner required by Patent Rule 3-3”). Further, Defendants made no effort to seek leave to
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`amend their contentions to include the ‘724 patent as a prior art reference. See Realtime Data,
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`2009 WL 4782062, at *3 (“If Citrix intended to rely upon these references at trial, it should have
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`moved for leave to amend its invalidity contentions as soon as the need for those references
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`arose.”). Therefore, Defendants should be precluded from relying on the unelected ’724 patent
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`and any combinations relying on the ’724 patent.
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`I.
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`CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court grant AGIS’s
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`motion to strike the untimely invalidity theories and obviousness combinations based on the non-
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`elected ’724 patent in the Andrews report.
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`Dated: February 19, 2019
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`BROWN RUDNICK LLP
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` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Lawrence C. Drucker
`NY Bar No. 2303089
`Email: ldrucker@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Shahar Harel
`NY Bar No. 4573192
`Email: sharel@brownrudnick.com
`John A. Rubino
`NY Bar No. 5020797
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 7 of 8 PageID #: 15120
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`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`Timothy J. Rousseau
`NY Bar No. 4698742
`Email: trousseau@brownrudnick.com
`Daniel J. Shea, Jr.
`NY Bar No. 5430558
`Email: dshea@brownrudnick.com
`Justine Minseon Park
`NY Bar No. 5604483
`Email: apark@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
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`Texas State Bar No. 01938000
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`Marshall, Texas 75670
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00514-JRG Document 177 Filed 02/19/19 Page 8 of 8 PageID #: 15121
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on February 19, 2019, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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