Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 1 of 12 PageID #: 21149
`
`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
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`
`§§§§§§§§§
`
`§§§§§§§§§
`
`§§
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION, et al.
`
`Defendant.
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC.
`
`Defendant.
`
`DEFENDANTS HTC CORPORATION AND LG ELECTRONICS INC.’S SUR-REPLY
`TO AGIS’S MOTION TO STRIKE PORTIONS OF THE EXPERT REPORT OF MR.
`SCOTT ANDREWS
`
`

`

`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 2 of 12 PageID #: 21150
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`TABLE OF CONTENTS
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`Page
`
`Defendants Have Been Diligent in Putting AGIS on Notice .............................................. 2
`I.
`AGIS Does Not Need a Chart to Know How the ’724 Patent Applies to the Location
`II.
`Sharing Patents................................................................................................................................ 2
`III.
`Any Combinations Involving the ’724 Patent Would Not Be “New Combinations”......... 3
`IV.
`Conclusion .......................................................................................................................... 5
`
`i
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`

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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 3 of 12 PageID #: 21151
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Cases
`
`LML Patent Corp. v. JPMorgan Chase & Co.
`No. 2:08-CV-448, 2011 WL 5158285 (E.D. Tex. Aug. 11, 2011) ....................................1, 4, 5
`
`Realtime Data, LLC v. Packeteer, Inc.
`2009 WL 4782062 (E.D. Tex. Dec. 8, 2009) ............................................................................3
`
`Tyco Healthcare Group LP v. Applied Med. Res. Corp.,
`No. 9:06–CV–151, 2009 WL 5842062 (E.D. Tex. Mar. 30, 2009) ...........................................1
`
`ii
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`

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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 4 of 12 PageID #: 21152
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`AGIS’s reply merely parrots the arguments in its Motion, arguing again that the portions
`
`of Mr. Andrews’ report regarding the ’724 Patent should be excluded based on the five factors
`
`listed in LML Patent Corp. v. JPMorgan Chase & Co. that courts consider when deciding
`
`whether to exclude evidence based on a party’s failure to comply with the Patent Rules:
`
`1.
`2.
`3.
`
`4.
`
`5.
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`The danger of unfair prejudice to the non-movant;
`The length of the delay and its potential impact on judicial proceedings;
`The reason for the delay, including whether it was within the reasonable control
`of the movant;
`The importance of the particular matter, and if vital to the case, whether a lesser
`sanction would adequately address the other factors to be considered and also
`deter future violations of the court’s Scheduling Orders, Local Rules, and the
`Federal Rules of Civil Procedure; and
`Whether the offending party was diligent in seeking an extension of time, or in
`supplementing discovery, after an alleged need to disclose the new matter became
`apparent.
`
`No. 2:08-CV-448, 2011 WL 5158285, at *4 (E.D. Tex. Aug. 11, 2011) citing Tyco Healthcare
`Group LP v. Applied Med. Res. Corp., No. 9:06–CV–151, 2009 WL 5842062, *1-*2 (E.D. Tex.
`Mar. 30, 2009).
`
`Although Defendants dispute any allegation that they have not complied with the Patent
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`Rules (see D.I. 154, Response at 3-5), AGIS has failed to show how these factors favor exclusion
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`of the ’724 Patent from Mr. Andrews’ report. The inclusion of the ’724 Patent in Mr. Andrews’
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`report did not result in any prejudice to AGIS or any delay in this case. Nor could it. As the
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`patent owner, AGIS not only knew of the ’724 Patent, but relies on the ’724 Patent to establish
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`written description and priority date support for the ’838, ’055, and ’251 Patents (collectively,
`
`the “Location Sharing Patents”). And, election of the ’724 Patent as prior art is contingent on
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`determination of the priority date for the Location Sharing Patents and the failure to incorporate
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`the ’724 Patent by reference in the Location Sharing Patents, which issue is pending before the
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`Court. Therefore, the Court should deny AGIS’s motion to strike the expert report of Mr. Scott
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`Andrews (“Motion”) (D.I. 108).
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`1
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`

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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 5 of 12 PageID #: 21153
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`I.
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`Defendants Have Been Diligent in Putting AGIS on Notice
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`Defendants have been diligent regarding disclosing their intent to rely on the ’724 Patent.
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`As explained in their opposition to AGIS’s Motion, Defendants put AGIS on notice of the intent
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`to use to the ’724 Patent as prior art at least as early as the elections of prior art. Furthermore, as
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`explained in Defendants’ opposition, AGIS was aware that the ’724 Patent would be a critical
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`issue in this litigation well before the final elections of prior art were due. See D.I. 154,
`
`Response at 2-3. Given AGIS’s knowledge of the importance of the ’724 Patent and
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`Defendants’ disclosure of their intent to rely on the ’724 Patent, AGIS suffers no prejudice from
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`the inclusion of the ’724 Patent in Mr. Andrews’ Report.
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`II.
`
`AGIS Does Not Need a Chart to Know How the ’724 Patent Applies to the Location
`Sharing Patents
`
`AGIS argues that the ’724 Patent should be excluded from Mr. Andrews’ report because
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`Defendants have not charted the ’724 Patent. See Reply at 3. It is true that Mr. Andrews did not
`
`provide an analysis in chart form for the ’724 Patent. But, he did provide a complete element-
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`by-element analysis regarding invalidity over the ’724 Patent in his report. See, e.g. Ex. A,
`
`Andrews Report at 370-372. And, in any event, the arguments here are nothing new to AGIS.
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`AGIS had already taken the position that the ’724 Patent provides written description support for
`
`the Location Sharing Patents.1 Now, AGIS contends that it cannot understand how the claims of
`
`the Location Sharing Patents are disclosed by the ’724 Patent without an analysis in chart form.
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`AGIS cannot have it both ways. AGIS is either aware of what elements of the Location Sharing
`
`Patents are disclosed in the ’724 Patent or the ’724 Patent does not actually disclose any
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`elements of the Location Sharing Patents and therefore does not provide written description
`
`1 See D.I. 173, AGIS’s Response Regarding LG Korea’s Motion for Summary Judgment
`Summary Judgment That U.S. Patent No. 7,630,724 May Not Be Relied Upon to Show That
`U.S. Application No. 14/027,410 Provides Written Description Support for U.S. Patent Nos.
`9,408,055; 9,445,251; And 9,467,838 (D.I. 106).
`
`2
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`

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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 6 of 12 PageID #: 21154
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`support for them. A claim chart mapping the ’724 Patent against the Location Sharing Patents
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`would be redundant with the knowledge of the ’724 Patent and Location Sharing Patents that
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`AGIS already has as their owner. And, it would be cumulative of Mr. Andrews element-by-
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`element prose analysis. Accordingly, AGIS has not shown how the lack of a claim chart for
`
`the ’724 Patent has resulted in any prejudice to AGIS. AGIS’s Motion should be denied.
`
`AGIS cites Realtime Data, LLC v. Packeteer, Inc. in support of its argument that the
`
`Defendants should have charted the ’724 Patent. The Realtime Data defendants, however, relied
`
`on invalidity theories based on references that were buried in an appendix of over 500 other prior
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`art references. See 2009 WL 4782062, at *3 (E.D. Tex. Dec. 8, 2009). Here, Defendants
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`specifically identified the ’724 Patent as potential prior art and noted the ongoing dispute
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`regarding the priority date of the Patents-in-Suit. Furthermore, the ’724 Patent is AGIS’s own
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`patent, and as discussed above, AGIS has relied on the ’724 Patent in rebutting Defendants’
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`arguments regarding the priority date of the Location Sharing Patents. Unlike the Realtime Data
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`plaintiff, AGIS has been aware of the similarities between the ’724 Patent and the Location
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`Sharing Patents since well before the filing of these lawsuits. Therefore, the inclusion of
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`the ’724 Patent in Mr. Andrews’ report does not cause any unfair prejudice to AGIS.
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`III.
`
`Any Combinations Involving the ’724 Patent Would Not Be “New Combinations”
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`AGIS also argues that any combinations involving the ’724 Patent should be excluded as
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`untimely disclosures of “new combinations.” See Reply at 4. The only combination involving
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`the ’724 Patent in Mr. Andrews’ expert report, however, is AGIS’s own LifeRing software
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`product in view of the ’724 Patent. See, e.g., Ex. A, Andrews Report at 404, ¶659 (“A POSITA
`
`would have been motivated to combine the AGIS LifeRing software product and the ‘724 patent
`
`because these two references describe the features of the same product.”). AGIS admits that the
`
`LifeRing product practices the Location Sharing Patents. See D.I. 117-8, AGIS’s December 7,
`
`3
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 7 of 12 PageID #: 21155
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`2018 Second Supplemental Response to LG Korea’s Interrogatory No. 14, 4-6. And, as
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`discussed above, AGIS argues that the ’724 Patent provides written description support for the
`
`Location Sharing Patents. Any combinations in Mr. Andrews’ expert report involving the ’724
`
`Patent would already be known to AGIS. Therefore, based on AGIS’s own admissions, the use
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`of the ’724 patent in combination with the LifeRing software product is not a “new
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`combination,” and the inclusion of a combination of the two related pieces of prior art in Mr.
`
`Andrews’ report does not cause unfair prejudice to AGIS.
`
`Notably, AGIS does not attempt to strike the portions of Mr. Andrews’ report analyzing
`
`the LifeRing software product. Defendants charted the LifeRing software product against the
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`Location Sharing Patents and elected it as prior art. See, e.g., Ex. B, LG Korea’s Invalidity
`
`Contentions, Exhibit C-8; See, e.g., Ex. C, HTC’s Invalidity Contentions, Exhibit C-8; D.I. 154-
`
`18, HTC’s Election of Prior Art; D.I. 154-19, LG Korea’s Second Election of Prior Art.
`
`Although AGIS complains that the ’724 Patent must be charted, any claim charts of the ’724
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`Patent would be redundant with those of the LifeRing software product. Because Defendants
`
`have charted the LifeRing software product, AGIS has not suffered any unfair prejudice.
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`AGIS’s relies on LML Patent to support its argument to strike obviousness combinations
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`relying on the ’724 Patent. 2011 WL 5158285. In LML Patent, the court granted plaintiff’s
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`motion to strike 28 new obviousness combinations based on previously disclosed constituent
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`references. Id. The ’724 Patent and LifeRing software product, however, were not merely
`
`disclosed; AGIS is the owner of both the ’724 Patent and the LifeRing software product and has
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`made affirmative arguments that both the ’724 Patent and the LifeRing software product either
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`embody or provide written description support for the Location Sharing Patents. Furthermore, as
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`described above, it is Mr. Andrews’ opinion that the ’724 Patent and the LifeRing software
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`4
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 8 of 12 PageID #: 21156
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`product describe the same product. The single obviousness combination at issue in this case is
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`much more specific than the 28 combinations at issue in LML Patent. AGIS has not shown how
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`a single combination of prior art describing its own product would result in any unfair prejudice.
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`IV.
`
`Conclusion
`
`For the reasons described above and in Defendants’ Opposition, none of the factors
`
`outlined in LML Patent favor exclusion of the ’724 Patent from Mr. Andrews’ report. AGIS’s
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`Motion should be denied.
`
`
`
`Dated: February 27, 2019
`
`Respectfully submitted,
`
`By:
`
`/s/ Michael A. Berta
`J. Mark Mann (SBN: 12926150)
`G. Blake Thompson (SBN: 24042033)
`MANN TINDEL THOMPSON
`300 West Main Street
`Henderson, Texas 75652
`Tel: (903) 657-8540
`mark@themannfirm.com
`blake@themannfirm.com
`
`Michael A. Berta
`ARNOLD & PORTER KAYE SCHOLER LLP
`Three Embarcadero Center, 10th Floor
`San Francisco, CA 94111-4024
`Tel: (415) 471-3277
`Michael.Berta@arnoldporter.com
`
`5
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 9 of 12 PageID #: 21157
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`Matthew M. Wolf
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001-3743
`Tel: (202) 942-5000
`Matthew.Wolf@arnoldporter.com
`
`James S. Blackburn
`Nicholas H. Lee
`Justin J. Chi
`ARNOLD & PORTER KAYE SCHOLER LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, CA 90017-5844
`Tel: (213) 243-4156
`James.Blackburn@arnoldporter.com
`Nicholas.Lee@arnoldporter.com
`Justin.Chi@arnoldporter.com
`
`Bonnie Phan
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306-3807
`Tel: (650) 319-4500
`Bonnie.Phan@arnoldporter.com
`
`Attorneys for Defendant LG Electronics Inc.
`
`6
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 10 of 12 PageID #: 21158
`
`/s/ Miguel Bombach
`Matthew C. Bernstein, (Lead Attorney)
`CA State Bar No. 199240
`mbernstein@perkinscoie.com
`Miguel J. Bombach
`CA State Bar No. 274287
`mbombach@perkinscoie.com
`Kyle R. Canavera
`CA State Bar No. 314664
`kcanavera@perkinscoie.com
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130-2080
`Tel: (858) 720-5700
`Fax: (858) 720-5799
`
`Eric Findlay
`State Bar No. 00789886
`efindlay@findlaycraft.com
`Brian Craft
`State Bar No. 04972020
`bcraft@findlaycraft.com
`FINDLAY CRAFT, P.C.
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Tel: (903) 534-1100
`Fax: (903) 534-1137
`
`ATTORNEYS FOR DEFENDANT
`HTC CORPORATION
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 11 of 12 PageID #: 21159
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`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
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`CM/ECF system per Local Rule CV-5(a)(3) on February 27, 2019.
`
`/s/ Michael A. Berta
` Michael A. Berta
`
`
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`Case 2:17-cv-00514-JRG Document 265 Filed 03/04/19 Page 12 of 12 PageID #: 21160
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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 paragraphs 26 and 27 of the Protective Order entered in this case.
`
`/s/ Michael A. Berta
` Michael A. Berta
`
`
`
`9
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