Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 1 of 22 PageID #: 19299
`
`IN THE UNITED STATES DISTRICT COURT FOR
`THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:17-cv-514-JRG
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`CASE NO. 2:17-CV-515-JRG
`(CONSOLIDATED CASE)
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§
`
`§§§§§§§§§§
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION, et al.
`
`Defendant.
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC.
`
`Defendant.
`
`LG ELECTRONICS INC.’S OPPOSITION TO AGIS SOFTWARE
`DEVELOPMENT LLC’S OPPOSED MOTIONS IN LIMINE FOR THE AGIS
`SOFTWARE DEVELOPMENT LLC V. LG ELECTRONICS INC. TRIAL
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 2 of 22 PageID #: 19300
`
`TABLE OF CONTENTS
`
`Page
`
`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`AGIS’S MOTION NO. 1: TO PRECLUDE LG FROM INTRODUCING
`TESTIMONY OR EVIDENCE RELATED TO AGIS’S FINANCES .............................. 1
`AGIS’S MOTION NO. 2: TO PRECLUDE DESCRIPTIONS OF OR
`REFERENCES TO NON-PRACTICING ENTITIES........................................................ 2
`AGIS’S MOTION NO. 3 TO PRECLUDE DISPARAGING THE UNITED
`STATES PATENT AND TRADEMARK OFFICE ........................................................... 3
`AGIS’S MOTION NO. 4 TO PRECLUDE REFERENCES TO IPR
`PROCEEDINGS OR SUCCESS RATES OF SUCH PROCEEDINGS ............................ 4
`AGIS’S MOTION NO. 5 TO PRECLUDE EVIDENCE OR TESTIMONY
`REGARDING UNRELATED LITIGATION INCLUDING VERDICTS ........................ 5
`AGIS’S MOTION NO. 6: TO PRECLUDE TESTIMONY, EVIDENCE, OR
`ARGUMENT RELATED TO LITIGATION FUNDING ................................................. 7
`AGIS’S MOTION NO. 7: TO PRECLUDE TESTIMONY, EVIDENCE, OR
`ARGUMENT RELATED TO POTENTIAL TARGETS FOR LITIGATION .................. 7
`AGIS’S MOTION NO. 8: TO PRECLUDE EVIDENCE RELATED TO AGIS’S
`IP MONETIZATION OR LITIGATION EFFORTS GENERALLY ................................ 8
`AGIS’S MOTION NO. 9: TO PRECLUDE REFERENCES OR TESTIMONY
`COMPARING ACCUSED PRODUCTS TO PURPORTED PRIOR ART ...................... 9
`AGIS’S MOTION NO. 10: TO PRECLUDE REFERENCES OR TESTIMONY,
`REGARDING AGIS’S ELECTION OF PATENT CLAIMS .......................................... 10
`AGIS’S MOTION NO. 11: TO PRECLUDE REFERENCES OR TESTIMONY
`CONCERNING “FORUM SHOPPING” OR “LITIGATION ABUSE” ......................... 10
`AGIS’S MOTION NO. 12: TO PRECLUDE EVIDENCE OF PRIOR ART NOT
`INCLUDED IN LG’S FINAL ELECTION OF PRIOR ART .......................................... 11
`AGIS’S MOTION NO. 13: TO PRECLUDE LG FROM INTRODUCING
`CORRESPONDENCE RELATED TO DISCOVERY DISPUTES................................. 11
`AGIS’S MOTION NO. 14: TO PRECLUDE LG’S EXPERT FROM
`TESTIFYING REGARDING FACTS AS TO THE FBCB2 SYSTEM AS PRIOR
`ART................................................................................................................................... 11
`AGIS’S MOTION NO. 15: TO EXCLUDE TESTIMONY OF LG’S LATE-
`DISCLOSED WITNESSES.............................................................................................. 13
`CONCLUSION ............................................................................................................................. 15
`
`13.
`
`14.
`
`15.
`
`-i-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 3 of 22 PageID #: 19301
`
`TABLE OF AUTHORITIES
`Cases Page(s)
`
`Advanced Ground Information Systems, Inc. v. LIFE360, Inc.,
`Case No. 9:14-cv-80651 (S.D. Fla.) ......................................................................................5, 6
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963 (E.D. Tex. July 12, 2016) ..................3, 9, 11
`
`Droplets, Inc. v. Overstock.com, Inc.,
`No. 2:11-CV-401-JRG-RSP, 2014 WL 11515642 (E.D. Tex. Dec. 10, 2014)........................10
`
`EVM Sys., LLC v. Rex Med., L.P.,
`2015 WL 11089476 (E.D. Tex. June 10, 2015) .........................................................................3
`
`Freeny v. Murphy Oil Corp.,
`No. 2:13-CV-791-RSP, 2015 WL 11108703 (E.D. Tex. May 29, 2015) ................................11
`
`Georgia-Pac. Corp. v. U.S. Plywood Corp.,
`318 F. Supp. 1116 (S.D. N.Y. 1970), modified sub nom. Georgia-Pac. Corp.
`v. U.S. Plywood-Champion Papers, Inc., 446 F.2d 295 (2d Cir. 1971) ............................1, 6, 8
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ...................................................................................................................2, 8
`
`Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc.,
`No. 9:07-CV-46, 2008 WL 11344916 (E.D. Tex. Aug. 29, 2008) ............................................3
`
`Ironshore Europe DAC v. Schiff Hardin, LLP,
`No. 2:17-CV-00431-JRG, 2018 WL 4183245 (E.D. Tex. Jan. 30, 2018) ...............................13
`
`Mobile Telecomms. Techs., LLC v. Zte (USA) Inc.,
`No. 2:13-CV-946-JRG, 2016 WL 8260584 (E.D. Tex. July 22, 2016) .............................2, 3, 4
`
`Nobelbiz, Inc. v. Glob. Connect, L.L.C.,
`No. 6:12-CV-244-RWS, 2015 WL 11072170 (E.D. Tex. Sept. 2, 2015) ................................11
`
`Nunn v. State Farm Mut. Auto. Ins. Co.,
`No. 3:08-CV-1486-D, 2010 WL 2540754 (N.D. Tex. June 22, 2010) ....................................12
`
`Parthenon Unified Method Architecture LLC v. Apple Inc.,
`No. 2:15-cv-621-JRG-RSP, 2016 WL 7743510 (E.D. Tex. Sep. 21, 2016) ..........................4, 9
`
`Rembrandt Wireless Techs. LP v. Samsung Elecs. Co., Ltd.,
`No. 2:13-CV-213-JRG-RSP, 2015 WL 627430 (E.D. Tex. Jan. 31, 2015) .....................2, 7, 10
`
`Riles v. Shell Exploration & Prod. Co.,
`298 F.3d 1302 (Fed. Cir. 2002)..................................................................................................6
`
`-ii-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 4 of 22 PageID #: 19302
`
`Silver State Intellectual Techs., Inc. v. Garmin Int’l, Inc.,
`No. 2:11-CV_01578-GMN, 2015 WL 2152658 (D. Nev. May 7, 2015) ..................................3
`
`Smartflash LLC v. Apple Inc.,
`No. 6:13-CV-447- ....................................................................................................................11
`
`Smith v. Ardew Wood Prods., Ltd.,
`No. C07-5641 FDB, 2009 WL 799679 (W.D. Wash. Mar. 24, 2009).....................................15
`
`SSL Servs, LLC v. Citrix Sys., Inc.,
`No. 2:08-cv-158-JRG, 2012 WL 1290691 (E.D. Tex., May 24, 2012) .....................................7
`
`Stafford v. Lamorak Ins. Co.,
`No. 18-60160, 2018 WL 5099628 (5th Cir. Oct. 18, 2018) ......................................................5
`
`TracBeam L.L.C. v. AT&T Inc.,
`No. 6:11-CV-96, 2013 WL 6175372 (E.D. Tex. Nov. 25, 2013) ..............................................6
`
`United States v. D.K.G. Appaloosas, Inc.,
`630 F. Supp. 1540 (E.D. Tex. 1986), aff’d, 829 F.2d 532 (5th Cir. 1987) ................................8
`
`Virnetx Inc. v. Apple Inc.,
`No. 6:10-CV-417, 2016 WL 7177541 (E.D. Tex. Sep. 15, 2016) ...........................................12
`
`Other Authorities
`
`Fed. R. Evid.
`Rule 403 .....................................................................................................................................1
`Rule 602 ...................................................................................................................................12
`
`L.R. CV-7(a)(2) .............................................................................................................................13
`
`Federal Judicial Center Video, The Patent Process: An Overview For Jurors (Jan.
`2013), https://www.fjc.gov/publications/patent-process-overview-jurors ................................4
`
`Model Patent Jury Instructions, The Federal Circuit Bar Association,
`https://fedcirbar.org/IntegralSource/Model-Patent-Jury-Instructions ........................................4
`
`-iii-
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`

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`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 5 of 22 PageID #: 19303
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`For the reasons discussed below, LG Electronics Inc. (“LG Korea”) respectfully requests
`
`that the Court deny AGIS Software Development LLC’s (“AGIS”) motions in limine (Dkt. No.
`
`156) to the extent opposed by LG Korea below.1
`
`1.
`
` TO PRECLUDE LG FROM INTRODUCING
`AGIS’S MOTION NO. 1:
`TESTIMONY OR EVIDENCE RELATED TO AGIS’S FINANCES
`
`First, AGIS’s motion can be denied as conclusory. AGIS cites no case law to support its
`
`motion. AGIS also provides no explanation as to why evidence of its finances is irrelevant, and
`
`fails to meet its burden to show why the probative value of AGIS’s finances is substantially
`
`outweighed by the danger of unfair prejudice. See Fed. R. Evid. 403.
`
`Second, AGIS’s motion should be denied because its financials are relevant to this case,
`
`and introduction of such evidence would not mislead or confuse the jury. For instance, evidence
`
`regarding AGIS’s finances is relevant to damages, as it bears upon what AGIS would have
`
`agreed to in a hypothetical negotiation with LG Korea, including by demonstrating AGIS’s
`
`relative bargaining strength. See Georgia-Pac. Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116,
`
`1121 (S.D.N.Y. 1970), modified sub nom. Georgia-Pac. Corp. v. U.S. Plywood-Champion
`
`Papers, Inc., 446 F.2d 295, (2d Cir. 1971) (outcome of hypothetical negotiation would “depend
`
`upon such factors as their relative bargaining strength”). Evidence regarding AGIS’s finances
`
`also reflects the value of the patents asserted in this action, and the purported success or failure
`
`of AGIS, Inc.’s LifeRing product and related applications, which AGIS contends practice the
`
`asserted patents (and are apparently AGIS’s only product line). See Georgia-Pac., 318 F. Supp.
`
`at 1121 (outcome of the hypothetical negotiation would “depend upon such factors as . . . the
`
`anticipated amount of profits that the prospective licensor reasonably thinks he would lose as a
`
`1 For each category of evidence that AGIS seeks to exclude, LG Korea should be permitted to
`introduce such evidence or testimony for impeachment purposes to the extent AGIS opens the
`door by taking inconsistent positions at trial.
`
`-1-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 6 of 22 PageID #: 19304
`
`result of licensing the patent as compared to the anticipated royalty income; the anticipated
`
`amount of net profits that the prospective licensee reasonably thinks he will make; the
`
`commercial past performance of the invention in terms of public acceptance and profits; the
`
`market to be tapped”). Accordingly, evidence of AGIS’s finances is relevant and introduction of
`
`such evidence should be permitted as part of the damages analysis in this case.
`
`Third, AGIS’s finances, including revenues and profits for LifeRing, are relevant to
`
`invalidity as indicia of obviousness. AGIS contends that LifeRing practices the asserted patents.
`
`As such, its commercial success or failure reflects the commercial success or failure of the
`
`alleged inventions. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
`
`2.
`
` TO PRECLUDE DESCRIPTIONS OF OR
`AGIS’S MOTION NO. 2:
`REFERENCES TO NON-PRACTICING ENTITIES
`
`LG Korea agrees that certain pejorative terms (pirate, shakedown) may not be appropriate
`
`but opposes AGIS’s motion insofar as it precludes accurate factual descriptions about AGIS.
`
`The authority AGIS cites supports LG Korea’s position. See Rembrandt Wireless Techs. LP v.
`
`Samsung Elecs. Co., Ltd., No. 2:13-CV-213-JRG-RSP, 2015 WL 627430, at *1 (E.D. Tex. Jan.
`
`31, 2015) (“This limine shall not prevent Defendants from arguing that Plaintiff is a patent
`
`assertion entity that does not manufacture or sell products in this field. This limine does not
`
`prohibit Defendants from characterizing Plaintiff as an entity that licenses and litigates, so long
`
`as those terms are used in conjunction with one another.”). LG Korea should be permitted to
`
`show that AGIS is a patent assertion entity that does not manufacture or sell products in the
`
`relevant field and that AGIS is an entity that licenses and litigates, because these are entirely
`
`factual descriptions that are necessary at least for the jury to understand the relationship among
`
`the AGIS party and non-party entities and the implication for damages issues. Mobile
`
`Telecomms. Techs., LLC v. Zte (USA) Inc., No. 2:13-CV-946-JRG, 2016 WL 8260584, at *3
`
`-2-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 7 of 22 PageID #: 19305
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`(E.D. Tex. July 22, 2016) (The ruling does not preclude HTC from providing a fair and factual
`
`overview of [plaintiff’s] business model, including the facts that [plaintiff] does not make
`
`products, acquires patents through various means, and asserts those patents through licensing and
`
`litigation.”); see also Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc.,
`
`No. 9:07-CV-46, 2008 WL 11344916, at *2 (E.D. Tex. Aug. 29, 2008) (whether the parties are
`
`competitors “potentially changes how much a willing licensor would have paid for a license on
`
`the patents-in-suit under the Georgia-Pacific factors”); Silver State Intellectual Techs., Inc. v.
`
`Garmin Int’l, Inc., No. 2:11-CV_01578-GMN, 2015 WL 2152658, at *2 (D. Nev. May 7, 2015).
`
`Courts may exclude “derogatory, disparaging, and/or pejorative references” while
`
`allowing “factual statements, including the structure of [plaintiff’s] business model.” EVM Sys.,
`
`LLC v. Rex Med., L.P., 2015 WL 11089476, at *2 (E.D. Tex. June 10, 2015). This Court has
`
`excluded the terms “troll,” “patent pirate,” “litigation shop,” and “extortionist,” but allowed
`
`“company that doesn’t make anything” and “nonpracticing entity.” Core Wireless Licensing
`
`S.A.R.L. v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963, at *2 (E.D. Tex.
`
`July 12, 2016), report and recommendation adopted sub nom. Core Wireless Licensing S.A.R.L.
`
`v. LG Elecs., Inc., No. 2:14-CV-911-JRG-RSP, 2016 WL 4719791 (E.D. Tex. Sep. 8, 2016).
`
`Consistent with this, LG Korea should be permitted to provide a fair and factual overview of
`
`AGIS’s business model, including that AGIS “does not make products, acquires patents through
`
`various means, and asserts those patents through licensing and litigation.” Mobile Telecomms.
`
`Techs., LLC, 2016 WL 8260584, at *3. AGIS’s motion goes too far, and should be denied to the
`
`extent it excludes factual descriptions that this Court has previously approved.
`
`3.
`
`AGIS’S MOTION NO. 3 TO PRECLUDE DISPARAGING THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`AGIS moves to exclude LG Korea from disparaging the United States Patent and
`
`-3-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 8 of 22 PageID #: 19306
`
`Trademark Office (“PTO”), suggesting that the PTO is prone to error, not diligent, or not
`
`competent, and from arguing that the U.S. patent system is flawed and requires reform. LG
`
`Korea agrees that the parties should not disparage the PTO. But AGIS’s motion is overbroad as
`
`it seeks to exclude references to the PTO that would be relevant and helpful to understanding the
`
`PTO’s role and functions. For example, LG Korea should, at least, be permitted to argue that:
`
`(1) there may be facts that the examiner did not consider; (2) mistakes may have been made
`
`during prosecution; (3) the examination process is not perfect; and (4) prosecution of a patent
`
`application takes place without input from people who might later be accused of infringement
`
`and, thus, should have a chance to challenge the patent in court. See Federal Judicial Center
`
`Video,
`
`The
`
`Patent
`
`Process:
`
`An Overview
`
`For
`
`Jurors
`
`(Jan.
`
`2013),
`
`https://www.fjc.gov/publications/patent-process-overview-jurors.2 LG Korea should be allowed
`
`to argue that for reasons such as the above, the PTO erred in issuing the patents-in-suit, which
`
`mistake the jury should correct. See Parthenon Unified Method Architecture LLC v. Apple Inc.,
`
`No. 2:15-cv-621-JRG-RSP, 2016 WL 7743510, at *1 (E.D. Tex. Sep. 21, 2016) (“[T]his limine
`
`shall not prevent [defendant] from making generalizations that the examiner was in error or on
`
`general matters regarding invalidity”). To the same extent the parties should not disparage the
`
`PTO, the parties also should not be permitted to bolster the PTO. See Mobile Telecomms., 2016
`
`WL 8260584, at *2 (ordering that “the parties SHALL NOT bolster or denigrate the USPTO”).
`
`4.
`
`AGIS’S MOTION NO. 4 TO PRECLUDE REFERENCES TO
`PROCEEDINGS OR SUCCESS RATES OF SUCH PROCEEDINGS
`
`IPR
`
`AGIS moves to preclude LG Korea from introducing any argument or evidence
`
`concerning the IPR proceedings filed by HTC and ZTE, Apple, and Google; the percentages of
`
`2 See also Model Patent Jury
`Instructions, The Federal Circuit Bar Association,
`https://fedcirbar.org/IntegralSource/Model-Patent-Jury-Instructions.
`
`-4-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 9 of 22 PageID #: 19307
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`patents that are invalidated in re-exams or IPRs; or the quality of the PTO’s examination process.
`
`LG Korea does not oppose exclusion of such argument, reference, evidence or testimony before
`
`the jury, to the extent the exclusion applies equally to AGIS. LG Korea should be permitted to
`
`use testimony or declarations from IPR proceedings for impeachment purposes, but LG Korea
`
`agrees not to identify the impeaching information as originating from an IPR proceeding.
`
`Similarly, the Court should preclude AGIS from referencing the pending IPR proceedings or the
`
`success rate of those proceedings. To the extent that evidence from IPR proceedings and
`
`references to PTAB decisions are relevant to questions for the Court to decide, such as the
`
`priority date of U.S. Patent Nos. 9,408,055; 9,445,251; and 9,467,838, such evidence is
`
`admissible before the Court, but LG Korea does not oppose exclusion from the jury.
`
`5.
`
`AGIS’S MOTION NO. 5 TO PRECLUDE EVIDENCE OR TESTIMONY
`REGARDING UNRELATED LITIGATION INCLUDING VERDICTS
`
`AGIS seeks to exclude evidence, testimony, or argument regarding prior litigation
`
`involving AGIS, Inc., namely Advanced Ground Information Systems, Inc. v. LIFE360, Inc.,
`
`Case No. 9:14-cv-80651 (S.D. Fla.) (the “Life360 case”). LG Korea understands AGIS’s motion
`
`to be directed to evidence or testimony regarding the Life360 case, not the Life360 product that
`
`was at issue in that case. LG Korea opposes AGIS’s motion because certain evidence is relevant
`
`in three narrow circumstances. First, evidence or testimony of the Life360 case is permissible
`
`impeachment evidence. Stafford v. Lamorak Ins. Co., No. 18-60160, 2018 WL 5099628, at *3
`
`(5th Cir. Oct. 18, 2018) (ruling that defense counsel could “impeach based on inconsistent
`
`statements from the second lawsuit”) (emphasis in original). To the extent that AGIS takes
`
`inconsistent positions regarding its patents, the AGIS LifeRing product, and/or the Life360
`
`product, evidence and testimony from the Life360 case is at least admissible for impeachment.
`
`-5-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 10 of 22 PageID #: 19308
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`Second,
`
`
`
`
`
` As such, it is relevant to the damages analysis in this
`
`case, in particular to the hypothetical negotiation. See Riles v. Shell Exploration & Prod. Co.,
`
`298 F.3d 1302, 1312 (Fed. Cir. 2002) (“The economic relationship between the patented method
`
`and non-infringing alternative methods, of necessity, would limit the hypothetical negotiation.”);
`
`see also TracBeam L.L.C. v. AT&T Inc., No. 6:11-CV-96, 2013 WL 6175372, at *4 (E.D. Tex.
`
`Nov. 25, 2013) (“The hypothetical negotiation is limited by acceptable non-infringing
`
`alternatives.”). The determination in the Life360 case that the Life360 application did not
`
`infringe goes towards showing that the Life360 product is a non-infringing alternative in this
`
`case because AGIS is barred under claim preclusion from asserting against Life360 any patents
`
`that existed at the time of the judgment in that case, which includes at least the ’970 Patent in suit
`
`in this matter. Accordingly, the Life360 case is relevant to showing that the Life360 product is a
`
`non-infringing alternative for the damages analysis.
`
`Finally, testimony from the Life360 case regarding the AGIS LifeRing product is
`
`relevant because LifeRing is a commercial embodiment of the Patents-In-Suit. (D.I. 1, ¶¶ 11-
`
`12.) As such, evidence about the development, functionality, and sale of the LifeRing product
`
`made and sold by AGIS and/or AGIS, Inc. is relevant to “the determination of the amount of a
`
`reasonable royalty for a patent license.” See Georgia-Pac., 318 F. Supp. at 1120 (tenth factor
`
`includes consideration of “[t]he nature of the patented invention” and “the character of the
`
`commercial embodiment of it as owned and produced by the licensor”). Relying on any such
`
`evidence from the Life360 matter should be permitted, and does not require referencing the
`
`outcome of the prior litigation, so AGIS cannot show any prejudice by this use.
`
`-6-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 11 of 22 PageID #: 19309
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`6.
`
`AGIS’S MOTION NO. 6: TO PRECLUDE TESTIMONY, EVIDENCE, OR
`ARGUMENT RELATED TO LITIGATION FUNDING
`
`AGIS seeks to preclude LG Korea from introducing any evidence related to litigation
`
`funding, fees incurred by either party or obtained by counsel as a result of this case, and fee
`
`agreements of any party’s counsel in this case. (D.I. 156 at 10.) LG Korea agrees that such
`
`evidence is generally irrelevant to the issues in this case as long as any exclusion regarding
`
`payment of litigation fees is bilateral. However, to the extent that AGIS attempts to gain the
`
`sympathy of the jury by implying that the relative size of the parties justifies a damages award or
`
`seeks to generally portray AGIS as an “underdog” or as having financial hardships, LG Korea
`
`should be permitted to introduce evidence of AGIS’s litigation funding. Finally, any ruling on
`
`this motion should not prevent evidence of the financial interests of any testifying witness.
`
`Rembrandt, 2015 WL 627430, at *3 (“Granted as to the financial interest of counsel, however,
`
`this limine does not apply to testifying witnesses’ financial interests”) (emphasis in original);
`
`SSL Servs, LLC v. Citrix Sys., Inc., No. 2:08-cv-158-JRG, 2012 WL 1290691, at *1 (E.D. Tex.,
`
`May 24, 2012) (“The parties shall be permitted however, to introduce evidence regarding any
`
`testifying witnesses’ financial interest in any of the companies that are parties to this suit.”).
`
`7.
`
`AGIS’S MOTION NO. 7: TO PRECLUDE TESTIMONY, EVIDENCE, OR
`ARGUMENT RELATED TO POTENTIAL TARGETS FOR LITIGATION
`
`AGIS seeks to exclude testimony, evidence, and argument related to “potential targets for
`
`litigation” based on its conclusory claim that such information is irrelevant and “would mislead
`
`the jury into resolving this case based on factors other than the evidence and the law.” (D.I. 156
`
`at 11.) To the extent that AGIS seeks to exclude testimony that has the purpose of showing the
`
`parties AGIS has internally considered suing for patent infringement but did not ultimately sue,
`
`LG Korea agrees not to introduce such evidence here. However, LG Korea should be permitted
`
`-7-
`
`

`

`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 12 of 22 PageID #: 19310
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`to reference the fact that AGIS did not sue any other LG entity and no LG U.S. companies are
`
`parties to this action. LG Korea should also be permitted to introduce evidence related to third-
`
`parties, such as Google LLC, that are relevant to this case and have not been sued by AGIS.
`
`Further, LG Korea should be permitted to introduce evidence of parties to whom AGIS
`
`has offered to license its patents, including the Patents-In-Suit, and parties whom AGIS has sued
`
`for patent infringement. Such testimony is relevant and not unfairly prejudicial for the following
`
`reasons. First, evidence of parties whom AGIS has sued or has offered to license its patents is
`
`relevant to damages. Evidence of parties to whom AGIS has offered to license its patents shows
`
`that AGIS is a willing licensor, which would have been considered in a hypothetical negotiation
`
`under Georgia-Pacific factors 1, 4, and 12. Second, AGIS’s success or failure in licensing the
`
`technology of the asserted patents is relevant to secondary considerations of obviousness. See
`
`Graham, 383 U.S. at 17–18. These limited exceptions are permissible especially where AGIS
`
`argues for exclusion without offering any explanation for how evidence related to potential
`
`targets for litigation would unfairly prejudice AGIS or mislead the jury. United States v. D.K.G.
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`Appaloosas, Inc., 630 F. Supp. 1540, 1563 (E.D. Tex. 1986), aff’d, 829 F.2d 532 (5th Cir. 1987)
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`(rejecting “an argument that its admission was ‘highly prejudicial,’ ‘extremely harmful,’ and
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`‘prevented a fair trial,’” noting that “[n]o reasons support these conclusory statements”).
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`8.
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`AGIS’S MOTION NO. 8: TO PRECLUDE EVIDENCE RELATED TO AGIS’S IP
`MONETIZATION OR LITIGATION EFFORTS GENERALLY
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`AGIS’s efforts to monetize the Patents-In-Suit and related patents are relevant to this
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`case. How and whether a patentee licenses its patents is relevant to damages under Georgia-
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`Pacific factors 1 and 4. Georgia.-Pac., 318 F. Supp. at 1120 (describing factors 1—“[t]he
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`royalties received by the patentee for the licensing of the patent in suit, proving or tending to
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`prove an established royalty”—and 4—“[t]he licensor’s established policy and marketing
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`-8-
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`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 13 of 22 PageID #: 19311
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`program to maintain his patent monopoly by not licensing others to use the invention or by
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`granting licenses under special conditions designed to preserve that monopoly.”). AGIS’s
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`monetization and litigation efforts for the Patents-In-Suit and related patents show its willingness
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`to license the asserted patents, the success or failure of the technology of the asserted patents in
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`the market, and the sufficiency of monetary damages for any infringement. AGIS’s willingness
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`to license the Patents-In-Suit and related patents and the amounts for which AGIS licenses these
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`patents are also relevant to the hypothetical negotiation as part of this case’s damages analysis.
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`9.
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`AGIS’S MOTION NO. 9: TO PRECLUDE REFERENCES OR TESTIMONY
`COMPARING ACCUSED PRODUCTS TO PURPORTED PRIOR ART
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`AGIS seeks to exclude all references “comparing any Accused Product or alleged
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`commercial embodiment to any purported prior art device, a prior art patent, or any other prior
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`art.” (D.I. 156, at 12.) LG Korea does not contest that comparing an accused product to other
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`prior art is not the standard for establishing non-infringement or invalidity. Nevertheless, LG
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`Korea may properly compare the accused products to other prior art for three reasons. First, this
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`motion should not be used to exclude LG Korea from relying upon the accused products or other
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`commercial embodiments as prior art under the correct priority date for the Patents-In-Suit, as
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`may be determined by the Court in this case. Second, LG Korea should be permitted to identify
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`apparent contradictions or inconsistencies between AGIS’s infringement position and its validity
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`theories. See Core Wireless, 2016 WL 4718963, at *3 (“LG may identify apparent
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`contradictions or inconsistencies between Core’s infringement theories and Core’s validity
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`theories as a means of cross-examination or impeachment.”) (emphasis in original); Parthenon,
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`2016 WL 7743510, at *2 (same). Third, LG Korea should be permitted to compare the accused
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`applications to prior art to rebut AGIS’s damages theory. Specifically, AGIS’s damages expert,
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`Mr. Ratliff,
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`-9-
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`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 14 of 22 PageID #: 19312
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`10.
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`AGIS’S MOTION NO. 10: TO PRECLUDE REFERENCES OR TESTIMONY,
`REGARDING AGIS’S ELECTION OF PATENT CLAIMS
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`LG Korea does not oppose AGIS’s motion so long as the Court reciprocally excludes any
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`reference, evidence, or testimony by AGIS regarding LG Korea’s election of prior art references.
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`11.
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`AGIS’S MOTION NO. 11: TO PRECLUDE REFERENCES OR TESTIMONY
`CONCERNING “FORUM SHOPPING” OR “LITIGATION ABUSE”
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`LG Korea does not oppose exclusion of disparaging statements that AGIS engaged in
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`“forum shopping” or “litigation abuse.” But, LG Korea should be permitted to reference and to
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`introduce evidence of LG Korea’s lack of connections to this district because LG Korea has
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`contested and continues to contest the exercise of personal jurisdiction over it. Similarly, to the
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`extent that AGIS opens the door by attempting to establish or burnish its own claimed
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`connections with this district, LG Korea should be permitted to test those connections. See
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`Droplets, Inc. v. Overstock.com, Inc., No. 2:11-CV-401-JRG-RSP, 2014 WL 11515642, at *1
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`(E.D. Tex. Dec. 10, 2014) (“[T]his limine shall not prevent Defendants from probing into a
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`particular witness’s connections to Marshall, Texas if the witness so represents such
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`connections.”); Rembrandt, 2015 WL 627430, at *4 (“This limine further shall not limit
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`Defendants’ ability to inquire as to Plaintiff’s connections with Texas if Plaintiff suggests such
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`ties.”). For example, to the extent that AGIS introduces evidence regarding the existence of an
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`office in this district, LG Korea should be permitted to explore the motivations for opening the
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`office. Also, this motion should not be used to preclude LG Korea from introducing any
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`-10-
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`Case 2:17-cv-00514-JRG Document 224 Filed 02/21/19 Page 15 of 22 PageID #: 19313
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`evidence, argument, or testimony regarding limiting damages to sales in Texas.
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`12.
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`AGIS’S MOTION NO. 12: TO PRECLUDE EVIDENCE OF PRIOR ART NOT
`INCLUDED IN LG’S FINAL ELECTION OF PRIOR ART
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`AGIS’s motion is overbroad. Prior art references are relevant to the state of the art,
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`motivations to combine, and the level of ordinary skill in the art. Courts in this district, including
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`in cases cited by AGIS, have permitted introduction of unelected prior art for these purposes.
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`See Core Wireless, 2016 WL 4718963, at * 2; Smartflash LLC v. Apple Inc., No. 6:13-CV-447-
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`JRG-KNM, 2015 WL 11089593, at *1 (E.D. Tex. Jan. 29, 2015) (“This Motion in Limine does
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`not preclude experts from opining generally about the state of the art.”) (emphasis in original);
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`Nobelbiz, Inc. v. Glob. Connect, L.L.C., No. 6:12-CV-244-RWS, 2015 WL 11072170, at *3
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`(E.D. Tex. Sept. 2, 2015) (precluding expert from “citing references that were not elected as
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`prior art in his invalidity analysis,” but allowing the expert to talk about the state of the art);
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`Freeny v. Murphy Oil Corp., No. 2:13-CV-791-RSP, 2015 WL 11108703, at *1 (E.D. Tex. May
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`29, 2015) (denying motion “to preclude any evidence or argument regarding any prior art
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`references not listed in [defendant’s] Final Election of Asserted Prior Art”). Accordingly, LG
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`Korea should be permitted to introduce evidence of unelected prior art for those purposes,
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`including, but not limited to, establishing the state of the art. LG Korea further opposes this
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`motion to the extent that the Court’s determinations of the priority dates for the Patents-In-Suit
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`may affect the scope of references that may be considered prior art. (See D.I. 106.)
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`13.
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`14.
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`AGIS’S MOTION NO. 13: TO PRECLUDE LG FROM INTRODUCING
`CORRESPONDENCE RELATED TO DISCOVERY DISPUTES
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`LG Korea agrees to this motion so long as the exclusion is bilateral.
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`AGIS’S MOTION NO. 14: TO PRECLUDE LG’S EXPERT FROM TESTIFYING
`REGARDING FACTS AS TO THE FBCB2 SYSTEM AS PRIOR ART
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`AGIS seeks to prevent LG Korea’s expert Mr. Andrews from testifying about
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`-11-
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` AGIS has not established that there is any requirement that an
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`expert must have personal experience using a prior art system in order to opine on it. AGIS cites
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`Virnetx Inc. v. Apple Inc., No. 6:10-CV-417, 2016 WL 7177541, at *3 (E.D. Tex. Sep. 15, 2016),
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`for the proposition that “[The expert] cannot testify regarding information outside of his
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`firsthand experiences.” (D.I. 156 at 15 (bracketing by AGIS).) This is misleading as the quote
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`does not in fact refer to an expert w