Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 1 of 13 PageID #: 18182
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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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`LG ELECTRONICS INC.,
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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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`Case No. 2:17-CV-0515-JRG
`(CONSOLIDATED CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S OPPOSITION
`TO DEFENDANT LG ELECTRONICS INC.’S MOTIONS IN LIMINE
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”) hereby submits its
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`opposition to Defendant LG Electronics Inc.’s (“LG” or “Defendant”) Motions in Limine (Dkt.
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`158).
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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’s motion should be denied because it is inaccurate, overly broad, and would result in
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`undue prejudice to AGIS. The proper place for LG to raise this argument would have been in a
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`Daubert motion or a motion to strike regarding AGIS’s expert Joseph McAlexander’s testimony,
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`which LG has not filed. Mr. McAlexander’s testimony at trial will be limited to the topics in his
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`expert report. LG may cross-examine him at trial, but further limitation is unwarranted and
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 2 of 13 PageID #: 18183
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`improper. To exclude this evidence at this stage would unduly prejudice AGIS as it attempts to
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`set forth its case.
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`In any event, to say that Mr. McAlexander focuses on accused functionality in only two
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`Google applications significantly oversimplifies his opinions. AGIS and Mr. McAlexander have
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`advanced contentions, evidence, and analyses that address or implicate each of the accused
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`applications. For example, as Mr. McAlexander explains,
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` Moreover, AGIS notes in its
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`infringement contentions that “the Find My Device method also uses and/or works in
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`conjunction with functionalities associated with Google Maps, Google Messages, Android
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`Messenger, Location Access, Google Chrome, and other features which come pre-installed on
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`the Accused Products.” AGIS goes on to explain, “[f]or the purposes of avoiding needlessly
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`presenting cumulative and duplicative evidence, AGIS sets forth the Find My Device feature of
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`the Accused Products as representative of this first exemplary method.” LG Exhibit 4 at D-3.
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`LG has not identified any prejudice that requires exclusion of opinions set forth in Mr.
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`McAlexander’s report. LG has provided a rebuttal expert report and will have an opportunity to
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`depose Mr. McAlexander about his opinions. Mr. McAlexander will be so limited in his
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`testimony. There is no prejudice to LG that necessitates exclusion at this stage.
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`Accordingly, LG’s MIL No. 1 should be denied.
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`1 Excerpts from the Expert Report of Joseph C. McAlexander III Regarding Infringement of
`U.S. Patent Numbers: 8,213,970; 9,408,055; 9,445,251; and 9,467,838 are attached hereto as
`Exhibit A.
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 3 of 13 PageID #: 18184
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`II. 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’s motion should be denied because argument, testimony, or evidence that actions of
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`third-party LG U.S. companies can be imputed onto LG is relevant in this case, is factually
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`supported, and is legally supported.
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`This overbroad attempt to exclude evidence regarding third-party LG companies is
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`premature. LG does not deny that such evidence is relevant. “Evidence should not be excluded
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`in limine unless it is clearly inadmissible on all potential grounds.” Orchestrate HR, Inc. v.
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`Trombetta, No. 3:13-CV-2110-KS, 2017 WL 273669, at *1 (N.D. Tex. Jan. 20, 2017). LG
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`argues that AGIS has not disclosed such a theory and that doing so at trial would be prejudicial
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`to LG. In fact,
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` it is clear that LG
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`Electronics USA is an agent of LG. See Munro v. Lucy Activewar, Inc., No. A-15-CA-00771-
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`SS, 2016 WL 4257750, at *3 (W.D. Tex. Jan. 14, 2016) (Under Texas law, an agency
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 4 of 13 PageID #: 18185
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`relationship exists where the “principal has both the right: (1) to assign the agent’s task; and (2)
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`to control the means and details of the process by which the agent will accomplish that task.”)
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`(citations omitted). Moreover,
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` See
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`also Insituform Techs., Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1381 (Fed. Cir. 2004)
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`(Under Texas law, a subsidiary’s acts of infringement may be imputed through the corporate veil
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`to a parent corporation “‘where a corporation is organized and operated as a mere tool or
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`business conduit’ for another entity.”). The actions of LG’s U.S. subsidiaries are certainly
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`relevant here and any objection to their admission should be addressed at trial.
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`Accordingly, LG’s MIL No. 2 should be denied.
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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’s motion should be denied because it is overly broad and would result in undue
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`prejudice to AGIS. AGIS must reference LG’s financial information related to the accused
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`products for at least the purpose of proving damages. Indeed, several courts have held that
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`financial data, including total revenues from accused products, is relevant and admissible in
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`patent infringement actions. See, e.g., Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-
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`BLF, 2015 WL 4129193, at *4 (N. D. Cal. July 8, 2015) (citing Apple, Inc. v. Samsung Elecs.
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`Co., No. 11–CV–01846–LHK, 2014 WL 549324, at *7 (N.D. Cal. Feb. 7, 2014)) (“As to
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`acquisition costs for technology containing the accused features and total revenues for the
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`accused products, however, that information is relevant and probative if properly apportioned.”);
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`See id. (“Although it does not appear that Plaintiff’s expert . . . actually relies on accused
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 5 of 13 PageID #: 18186
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`product revenues for any part of her analysis, the Court will permit Plaintiff to use such revenues
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`and acquisition valuations as a starting point for a properly apportioned royalty base.”).
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`Moreover, LG’s ability to pay damages and related financial data are all relevant to its
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`bargaining power, and therefore may be considered appropriately as part of the Georgia-Pacific
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`analysis. See Georgia-Pacific Corp. v. U.S. Plywood Corporation, 318 F. Supp. 1116, 1140
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`(S.D.N.Y. 1970), modified sub nom. Georgia-Pac. Corp. v. U.S. Plywood-Champion Papers,
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`Inc., 446 F.2d 295 (2d Cir. 1971) (criticizing plaintiff’s royalty rate evidence where “[t]here is an
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`absence of meaningful evidence about such obviously pertinent factors as the relative economic
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`positions of the licensor and licensee at the time the particular royalty was negotiated, in terms
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`of their respective bargaining strength and their competitive status inter se . . . .”) (emphasis
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`added); see also id. at 1122 (“the Court must take into account the realities of the bargaining
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`table”). Further, the profitability of such large operating system and mobile app stores, Apple
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`and Google, are directly relevant to Georgia-Pacific factor 12: the portion of profit or selling
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`price that may be customary in a particular business or in comparable business. See 318 F. Supp.
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`at 1120.
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`LG has not demonstrated that any potential confusion or prejudice that it purports may be
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`caused by admission of this evidence cannot be cured by an appropriate limiting instruction to
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`the jury. Because the financial data that LG seeks to exclude is relevant and LG has not
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`demonstrated that such information is more prejudicial than probative, LG’s MIL No. 3 should
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`be denied.
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`IV. MIL No. 4 To Exclude Testimony and Evidence Related to
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`LG’s motion should be denied. This attempt to exclude evidence of the calculation of a
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`license or agreement with Huawei that has not yet been executed is entirely premature.
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 6 of 13 PageID #: 18187
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`“Evidence should not be excluded in limine unless it is clearly inadmissible on all potential
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`grounds.” Orchestrate HR, Inc. v. Trombetta, No. 3:13-CV-2110-KS, 2017 WL 273669, at *1
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`(N.D. Tex. Jan. 20, 2017). “Because the relevance of evidence often depends on what happens at
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`trial, that standard is particularly difficult to meet when asserting a relevance objection.” Sec. &
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`Exch. Comm’n v. Ferrone, 163 F. Supp. 3d 549, 563 (N.D. Ill. 2016).
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` To broadly exclude information that does not
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`currently exist is unnecessary.3 Indeed, the parties must “limit their motions in limine to issues
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`that if improperly introduced at trial would be so prejudicial that the Court could not alleviate the
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`prejudice by giving appropriate instructions to the jury.” Docket Control Order, Dkt. No. 85 at
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`2.
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`Accordingly, LG’s MIL No. 4 should be denied.
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`V. MIL No. 5 To Exclude Testimony and Evidence Related to Willfulness or Notice
`Based on Alleged Patent Prosecution References to the Patents-in-Suit
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`LG’s motion should be denied because it is inaccurate, improper at this time, and would
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`result in undue prejudice to AGIS. First, contrary to LG’s suggestion, courts are clear that a
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`party’s exposure to a patent application could give rise to knowledge of the claims in a later-
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`issued patent. See, e.g., Blitzsafe Texas, LLC v. Volkswagen Grp. of Am., Inc., No.
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`215CV1274JRGRSPLEADC, 2016 WL 4778699, at *6 (E.D. Tex. Aug. 19, 2016), report and
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`recommendation adopted, No. 2:15-CV-1274-JRG-RSP, 2016 WL 4771291 (E.D. Tex. Sept. 13,
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 7 of 13 PageID #: 18188
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`2016) (“However, [State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226 (Fed. Cir. 1985)]
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`does not hold that no matter the context, a party’s exposure to a patent application cannot give
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`rise to knowledge of the claims in a later-issued patent. . . . This makes sense because the law
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`does not reward willful blindness.”). Rather, as this Court has stated, “knowledge of a patent
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`application is probative evidence of whether Defendants knew or should have known about the
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`likelihood of infringement and may be supplemented by other disputed facts that could support a
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`finding of willfulness by a jury.” Smartflash LLC v. Apple Inc., No. 6:13CV447-JRG-KNM,
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`2015 WL 661276, at *1 (E.D. Tex. Feb. 13, 2015).
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`This attempt to exclude evidence also is inappropriate at this time. “Evidence should not
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`be excluded in limine unless it is clearly inadmissible on all potential grounds.” Orchestrate HR,
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`Inc. v. Trombetta, No. 3:13-CV-2110-KS, 2017 WL 273669, at *1 (N.D. Tex. Jan. 20, 2017).
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`“Because the relevance of evidence often depends on what happens at trial, that standard is
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`particularly difficult to meet when asserting a relevance objection.” Sec. & Exch. Comm’n v.
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`Ferrone, 163 F. Supp. 3d 549, 563 (N.D. Ill. 2016). An objection to the relevancy of
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`information relating to the LG patent citing to the ’838 patent, for example, is most appropriately
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`made at trial, in the context of the other evidence of willfulness that AGIS may present. See,
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`e.g., id. (“[E]videntiary rulings related to relevance are best deferred until trial so that they can be
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`resolved in the proper context.”). Indeed, this Court has directed that the parties must “limit their
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`motions in limine to issues that if improperly introduced at trial would be so prejudicial that the
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`Court could not alleviate the prejudice by giving appropriate instructions to the jury.” Docket
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`Control Order, Dkt. No. 85 at 2. If the need arises, the Court can instruct the jury of
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 8 of 13 PageID #: 18189
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` Lastly, to exclude this evidence at this stage would unduly prejudice
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`AGIS as it attempts to set forth its case.
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`Accordingly, LG’s MIL No. 5 should be denied.
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`VI. MIL No. 6 To Exclude Any Mention of No Advice of Counsel Regarding Validity or
`Infringement
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`LG’s motion should be denied because it misplaces LG’s burden of proof on AGIS and
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`would result in undue prejudice to AGIS. It was LG’s burden to establish the defense of no
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`advice of counsel if it so chose, but failing to meet that burden does not preclude AGIS from
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`addressing it. Indeed, Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383
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`F.3d 1337, 1346-47 (Fed. Cir. 2004), which LG cites as abolishing the adverse inference,
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`expressly declined to decide whether the trier of fact or a jury can or should be told whether or
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`not counsel was consulted. The court did not hold that such evidence is irrelevant. Therefore, as
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`with many of LG’s other motions in limine, this attempt to exclude evidence also is inappropriate
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`at this time. Orchestrate HR, Inc. v. Trombetta, No. 3:13-CV-2110-KS, 2017 WL 273669, at *1
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`(N.D. Tex. Jan. 20, 2017) (“Evidence should not be excluded in limine unless it is clearly
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`inadmissible on all potential grounds.”); Sec. & Exch. Comm’n v. Ferrone, 163 F. Supp. 3d 549,
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`563 (N.D. Ill. 2016) (“[E]videntiary rulings related to relevance are best deferred until trial so
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`that they can be resolved in the proper context.”). This Court has directed that the parties must
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`“limit their motions in limine to issues that if improperly introduced at trial would be so
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`prejudicial that the Court could not alleviate the prejudice by giving appropriate instructions to
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`the jury.” Docket Control Order, Dkt. No. 85 at 2. Should the need arise at trial, the Court can
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`certainly instruct the jury not to draw any inference based on LG’s failure to seek advice of
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`counsel. Lastly, to exclude this evidence at this stage would unduly prejudice AGIS as it
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`attempts to set forth its case.
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 9 of 13 PageID #: 18190
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`Accordingly, MIL No. 6 should be denied.
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`Dated: February 19, 2019
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`BROWN RUDNICK LLP
`/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
`Email: jrubino@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@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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`Samuel F. Baxter
`Texas State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 10 of 13 PageID #: 18191
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`Email: jtruelove@mckoolsmith.com
`McKOOL SMITH, P.C.
`104 East Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: 903-923-9000
`Facsimile: 903-923-9099
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`ATTORNEYS FOR PLAINTIFF, AGIS
`SOFTWARE DEVELOPMENT LLC
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 11 of 13 PageID #: 18192
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`CERTIFICATE OF CONFERENCE
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`This is to certify that counsel for Plaintiff AGIS Software Development LLC met and
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`conferred with counsel for Defendant LG Electronics Inc. in compliance with LR CV-7(h) in
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`regards to its Motions in Limine. While the parties have reached an impasse, they have agreed to
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`meet and confer again so as to try to continue to narrow the issues in dispute.
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`/s/Alfred R. Fabricant
`Alfred R. Fabricant
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 12 of 13 PageID #: 18193
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`The undersigned certifies that the foregoing document is authorized to be filed under seal
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`pursuant to the Protective Order entered in this case.
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`Alfred R. Fabricant
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`Case 2:17-cv-00514-JRG Document 209 Filed 02/21/19 Page 13 of 13 PageID #: 18194
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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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`Alfred R. Fabricant
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