Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 1 of 21 PageID #: 8137
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`CASE NO. 2:21-cv-00040-JRG
`(Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`
`CASE NO. 2:21-cv-00041-JRG
`(Member Case)
`
`JURY TRIAL DEMANDED
`
`§
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` §
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`§
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`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
`
`HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC.,
`
`Defendants.
`
`
`GESTURE TECHNOLOGY
`PARTNERS, LLC,
`
`Plaintiff
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`SAMSUNG DEFENDANTS’ OPPOSITION TO PLAINTIFF’S MOTION TO EXCLUDE
`PORTIONS OF THE EXPERT REPORT AND PROFERRED TESTIMONY OF
`DEFENDANTS’ EXPERT WITNESS, DR. ROBERT STEVENSON
`
`
`
`

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`Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 2 of 21 PageID #: 8138
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`
`TABLE OF CONTENTS
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`
`
`
`I.
`II.
`
`III.
`
`Page
`INTRODUCTION ............................................................................................................. 1
`ARGUMENT ..................................................................................................................... 1
`A.
`Dr. Stevenson did not attempt to construe the claims himself, but applied
`the Court’s constructions, including the plain meaning where applicable ............ 1
`1.
`’431 Patent, Claim 7: “means for controlling a function of said
`apparatus using said information” ............................................................. 3
`’431 Patent, Claim 1: “determining from said sensed light the
`movement of said finger” ........................................................................... 4
`’924 Patent, Claim 1: “a first camera oriented to view a user of the
`handheld device” ........................................................................................ 6
`’079 Patent: “light source” ......................................................................... 8
`4.
`Dr. Stevenson was not required to provide a legal opinion by identifying
`the applicable subsection of 35 U.S.C. § 102 for prior art references he
`relied on for invalidity ......................................................................................... 10
`Dr. Stevenson applied the correct legal standard when rendering his
`opinions regarding obviousness of the Asserted Method Claims ........................ 11
`Dr. Stevenson’s obviousness opinions regarding the “handheld” and
`“portable” claim limitations should not be excluded. .......................................... 13
`Dr. Stevenson will not provide anticipation opinions as to the MERL
`system with respect to Claims 1-4 and 6 of the ’431 Patent ................................ 15
`CONCLUSION ................................................................................................................ 15
`
`2.
`
`3.
`
`B.
`
`C.
`
`D.
`
`E.
`
`-i-
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`

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`Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 3 of 21 PageID #: 8139
`
`
`TABLE OF AUTHORITIES
`
`
`
`
`Page(s)
`
`Cases
`
`Apator Miitors ApS v. KAMSTRUP A/S,
`887 F.3d 1293 (Fed. Cir. 2018)................................................................................................11
`
`Apple, Inc. v. Samsung Elecs. Co., Ltd.,
`No. 12-CV-00630-LHK, 2014 WL 660857 (N.D. Cal. Feb. 20, 2014) .................................2, 7
`
`Carr v. Montgomery Cnty,
`No. H-13-2795, 2015 WL 5838862 (S.D. Tex. Oct. 7, 2015) .................................................11
`
`CytoLogix Corp. v. Ventana Med. Sys., Inc.,
`424 F.3d 1168 (Fed. Cir. 2005)..................................................................................................2
`
`In re Dailey,
`357 F.2d 669 (C.C.P.A. 1966) ...........................................................................................14, 15
`
`EMC Corp. v. Pure Storage, Inc.,
`CV No. 13-1985-RGA, 2016 WL 775742 (D. Del. Feb. 25, 2016) ......................................2, 3
`
`EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc.,
`859 F.3d 1341 (Fed. Cir. 2017)................................................................................................10
`
`Gardner v. TEC Sys., Inc.,
`725 F.2d 1338 (Fed. Cir. 1984)..........................................................................................14, 15
`
`Kraft Foods, Inc. v. Int’l Trading Co.,
`203 F.3d 1362 (Fed. Cir. 2000)..................................................................................................5
`
`In re Larson,
`340 F.2d 965 (C.C.P.A. 1965) .................................................................................................14
`
`In re Lindberg,
`194 F.2d 732 (C.C.P.A. 1952) .................................................................................................14
`
`Medgraph, Inc. v. Medtronic, Inc.,
`843 F.3d 942 (Fed. Cir. 2016)....................................................................................................1
`
`Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc.,
`No. 6:11-CV-492-RWS-KNM, 2017 WL 4020591 (E.D. Tex. Sept. 13, 2017),
`objections overruled sub nom. Network-1 Techs., Inc. v. Hewlett-Packard Co.,
`No. 6:13-CV-00072-RWS, 2017 WL 10222211 (E.D. Tex. Nov. 7, 2017) ..........................1, 9
`
`-ii-
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`

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`Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 4 of 21 PageID #: 8140
`
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page(s)
`
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018)................................................................................................12
`
`Salazar v. HTC Corp.,
`No. 2:16-cv-01096-JRG-RSP, Dkt. 247 (E.D. Tex. Apr. 27, 2018) ..........................................3
`
`Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd.,
`929 F.3d 1363 (Fed. Cir. 2019)................................................................................................10
`
`Skedco, Inc. v. Strategic Operations, Inc.,
`287 F. Supp. 3d 1100 (D. Or. 2018) ........................................................................................15
`
`SSL Servs., LLC v. Citrix Sys., Inc.,
`940 F. Supp. 2d 480 (E.D. Tex. 2013), aff’d, 769 F.3d 1073 (Fed. Cir. 2014) .................2, 7, 9
`
`Statutes
`
`35 U.S.C.
`§ 102.....................................................................................................................................1, 10
`§ 102(a) ....................................................................................................................................10
`§ 102(b) ....................................................................................................................................10
`§ 103.........................................................................................................................................10
`
`Other Authorities
`
`Fed. R. Civ. Proc. 26(a)(2)(C) .......................................................................................................11
`
`Fed. R. Evid. 702 ...........................................................................................................................11
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`-iii-
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`

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`
`I.
`
`INTRODUCTION
`
`GTP misquotes and mischaracterizes Dr. Stevenson’s opinions in an effort to exclude
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`proper non-infringement analysis that applies the Court’s constructions, or the plain and ordinary
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`meaning where appropriate, to the specific technology at issue. Despite arguing Dr. Stevenson
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`improperly opined as to matters of law for non-infringement, GTP argues he should have opined
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`as to a legal question for invalidity, namely the subsection of 35 U.S.C. § 102 under which each
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`prior art system qualifies as such. GTP also mischaracterizes Dr. Stevenson’s invalidity opinions
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`as incorrectly applying the law, yet GTP ignores the tables to Dr. Stevenson’s report in which he
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`provides his detailed opinions. Because GTP has failed to meet its burden of proof on any ground
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`presented in its motion, GTP’s motion should be denied in its entirety.
`
`II.
`
`ARGUMENT
`A.
`
`Dr. Stevenson did not attempt to construe the claims himself, but applied the
`Court’s constructions, including the plain meaning where applicable
`
`GTP attempts to distort Dr. Stevenson’s proper opinions concerning non-infringement, a
`
`question of fact, into improper claim construction in an effort to exclude his analysis. Medgraph,
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`Inc. v. Medtronic, Inc., 843 F.3d 942, 949 (Fed. Cir. 2016) (“Infringement is a question of fact.”)
`
`(citation omitted); Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., No. 6:11-CV-492-RWS-
`
`KNM, 2017 WL 4020591, at *5 (E.D. Tex. Sept. 13, 2017), objections overruled sub nom.
`
`Network-1 Techs., Inc. v. Hewlett-Packard Co., No. 6:13-CV-00072-RWS, 2017 WL 10222211
`
`(E.D. Tex. Nov. 7, 2017) (“Whether the accused products infringe under the Court’s claim
`
`construction is for the jury to decide.”). Dr. Stevenson explicitly states that he did not construe
`
`any term, but rather applied the Court’s constructions or the plain meaning of terms the Court did
`
`not construe:
`
`I have applied the Court’s constructions and the constructions
`agreed upon by the parties as part of the analysis for my Report. For
`
`-1-
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`

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`the terms that the Court did not construe or that the parties did not
`agree upon, I applied the plain and ordinary meaning of the term to
`a person of ordinary skill in the art.
`
`Ex. 1 ¶ 39; see also id. at ¶¶ 40-41. Dr. Stevenson’s discussion of intrinsic evidence to educate
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`the jury on teachings of the Patents-in-Suit does not constitute impermissible claim construction,
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`especially given that he continually ties his non-infringement analysis back to the claim language.
`
`This Court has found such testimony permissible. SSL Servs., LLC v. Citrix Sys., Inc., 940 F. Supp.
`
`2d 480, 492 (E.D. Tex. 2013), aff'd, 769 F.3d 1073 (Fed. Cir. 2014) (finding expert testimony
`
`concerning preferred embodiments in the specification in support of non-infringement opinions
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`admissible because it “amounted to nothing more than an effort to educate the jury about the
`
`teachings of the ‘796 patent” and the expert “continually tie[d] [his] analysis back to the claim
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`language”) (alterations added). It is hardly controversial in a patent case for an expert to refer to
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`the specification or other intrinsic evidence to support his opinions on fact issues.
`
`The cases GTP cites simply reiterate that an expert cannot provide legal opinions such as
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`construing a claim term, not that an expert is precluded from relying on any intrinsic evidence to
`
`support his non-infringement opinions. See CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d
`
`1168, 1172-73 (Fed. Cir. 2005). For example, in the Apple v. Samsung case cited by GTP, the
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`court declined to exclude an expert’s opinions that referenced the patent specification to support
`
`his understanding of a “video capture module.” Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 12-
`
`CV-00630-LHK, 2014 WL 660857, at *5 (N.D. Cal. Feb. 20, 2014) (“Dr. Storer similarly notes
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`(correctly) that ‘the specification only uses the term ‘video capture module’ in conjunction with
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`‘video card.’”) (alteration in original). In EMC Corp. v. Pure Storage, the court precluded experts’
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`testimony relying on the specification where it amounted to re-arguing claim construction and
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`improperly “suggest[ed] that literal infringement can be established by a comparison between
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`accused products and specification embodiments.” EMC Corp. v. Pure Storage, Inc., CV No. 13-
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`-2-
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`1985-RGA, 2016 WL 775742, at *4 (D. Del. Feb. 25, 2016). Moreover, the court held that “the
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`determination whetherthe testimony amounts to claim construction will have to be made on an
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`objection by objection basis in the context of the trial.” Jd. Here, Dr. Stevenson doesnot rely on
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`the specification “to narrow the plain meaning” of any term. Cf Salazar v. HTC Corp., No. 2:16-
`
`cv-01096-JRG-RSP, Dkt. 247 (E.D. Tex. Apr. 27, 2018) (Mot. Ex. A) at 4. Rather, as explained
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`below, Dr. Stevenson used the specification and other intrinsic evidence only to educate the jury
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`about the patented technologyasit pertains to his non-infringement opinions. Dr. Stevenson does
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`not, and will not attempt to, construe any claim term.
`
`1.
`
`°431 Patent, Claim 7: “meansfor controlling a function of said
`apparatususing said information”
`
`GTP’s motion seeks to exclude the last three sentences of paragraph 105 andthe entirety
`
`of paragraph 106 of Dr. Stevenson’s non-infringement report. Mot. at 3. The opinions GTP seeks
`
`to exclude are simply Dr. Stevenson’s understanding of Mr. Occhiogrosso’s own position:
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`
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`Ex. 1 § 105 (emphasis in original). These opinions reflect Dr. Stevenson’s efforts to make sense
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`of what unspecified “software and hardware” Mr. Occhiogrosso is relying on as corresponding
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`structure for the recited “means for controlling.” Jd. Dr. Stevenson interprets Mr. Occhiogrosso’s
`
`tetht
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`refers to the Figure 17 embodiment in the ’431 Patent and to GTP’s proposed construction for
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`“means for controlling” in the Joint Claim Construction Statement merely to explain why “it is
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`

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`understandable”that Mr.Osshioso
`SS not to construe or limit any claim terms. Ex. 1 §§ 105-06. When askedin deposition
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`which interpretation of “means for controlling” he applied, Dr. Stevenson confirmed he applied
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`the Court’s construction rather than attempting to construe the claim himself:
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`. Youstate in the second sentence, read that correctly?
`
`A. Yes.
`
`Q. Whatinterpretation of the claims are you using?
`
`A. The court’s.
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`Ex. 2 at 145:15-146:4.! Dr. Stevenson’s opinions are simply interpreting Mr. Occhiogrosso’s own
`
`position in view of the surrounding evidence, and are not opinions regarding claim construction.
`
`Dr. Stevenson’s opinionsas to this limitation should not be excluded.
`
`2.
`
`°431 Patent, Claim 1: “determining from said sensed light the
`movementof said finger”
`
`GTP’s motion also seeks to exclude the second to last sentence of paragraph 98 of Dr.
`
`Stevenson’s non-infringement report as offering impermissible claim construction based on claim
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`differentiation. GTP’s argument has no merit.
`
`Rather than construing the limitation, as GTP incorrectly asserts, Dr. Stevenson appliedits
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`plain meaning, which requires “determining .
`
`.
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`. the movement of said finger.” Dr. Stevenson
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`explains that he seensedpro's
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`' All emphases added unless otherwisestated.
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`

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`specifically points to how the accused products
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`testimony of Samsung engineers that
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`. See id. Dr. Stevenson
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`
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`
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` Id. ¶ 99. He also cites to the
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`
`
` Id. ¶ 98 (citing Cho. Tr. at 33:24-25).
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`Thus, Dr. Stevenson applies the plain meaning of the claim terms, which require determining the
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`movement of a finger, to the specific technology of the accused products, in a fact-driven non-
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`infringement analysis that is well within the purview of a technical expert.
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`Dr. Stevenson only uses Claims 5 and 6 as examples of how Claim 1 and its dependent
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`claims consistently specify the movement of the fingers, not of a hand. See Ex. 1 ¶ 98. Dr.
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`Stevenson does not use the scope of Claims 5 and 6 to limit the scope of Claim 1, but describes
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`his understanding of “determining the movement . . . of said finger” in a way that neither limits
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`nor endows additional meaning to the term. Id. at ¶¶ 96, 98; see Kraft Foods, Inc. v. Int’l Trading
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`Co., 203 F.3d 1362, 1366-67 (Fed. Cir. 2000) (defining claim differentiation as a presumption that
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`two claims of a patent are of different scope).
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`It is GTP that is construing the claims. Despite Claim 1 expressly reciting determining the
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`movement of a finger, GTP attempts to broaden the scope to include alternatively determining the
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`movement of a hand. Not only did GTP fail to advance such a construction during Markman
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`proceedings, but it is contrary to the plain language of the claim requiring determining movement
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`of a finger. Claim 1 distinguishes a hand from the fingers, reciting “moving at least one finger in
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`space . . .” while separately reciting “holding said device in one hand,” thereby conferring separate
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`purposes and meanings to the two. In addition, the specification clearly distinguishes hands from
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`-5-
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`fingers. See, e.g., Ex. 3 (’431 Patent) at 22:25-30 (“. . . which through software determines the
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`position of eyebrows, lips, hands, fingers . . .”); id. at 3:34-37, 11:2-6.
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`Dr. Stevenson’s opinions regarding the term “movement of said finger” are an application
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`of the plain meaning of the term to the specific technology of the accused products for purposes
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`of a fact-based non-infringement analysis, not an attempt to construe any term as having a special
`
`meaning, and thus his opinions as to this limitation should not be excluded.
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`3.
`
`’924 Patent, Claim 1: “a first camera oriented to view a user of the
`handheld device”
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`GTP’s motion also seeks to exclude Dr. Stevenson’s opinions on this limitation based on
`
`misinterpretation of the Court’s Claim Construction Order. GTP argues the Court’s rejection of
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`Defendants’ IPXL argument somehow amounts to a finding that the claims do not require the first
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`camera to be looking at a user for it to be “oriented to view a user.” GTP’s selective quoting of
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`the Court’s Order misses a key detail—the Court found Defendants’ argument that a user must use
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`the device in a particular way for a camera to be “oriented to view a user” requires a configuration
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`of the device rather than performance of an action by the user:
`
`Defendants’ argument that ‘[w]hether the camera is oriented to view
`a user cannot be determined until a user actually uses the device in
`a particular way’ is likewise unavailing. Defendants do not
`persuasively show that this requires performance of an action by the
`user rather than a configuration of the device.
`
`Dkt. 93 at 46. That is, the position in which the user places the device is part of the configuration
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`of the camera, i.e., its orientation, not a method step. Thus, a camera in the claimed configuration
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`is one that is placed in an orientation where it is looking at the user. This is further explained in
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`Defendants’ pending motion for partial summary judgment. See Dkt. 140 at 14-17.
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`Dr. Stevenson relied on the Court’s claim construction set forth in its Claim Construction
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`Order. Ex. 1 ¶¶ 153-54, 157. Moreover, Dr. Stevenson explicitly stated that he was applying the
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`-6-
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`plain meaning of “oriented to view”: “The term ‘oriented to view’ byits plain meaning requires
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`that the camera be currently lookingat or facing the user.” Ex. 1 § 155. That Dr. Stevenson applies
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`the plain meaning1s further evident from the testimony of G7P’s technical expert, who agreed that
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`a camera is not oriented to view until it is lookingat the user:
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`
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`Ex. 4 at 102:9-14.
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`Dr. Stevenson does not use the specification to narrow the scope of the claim term orto
`
`limit the claim to an embodiment, but only to educate the jury about the teachings of the patent as
`
`they relate to Dr. Stevenson’s non-infringement opinions. There is nothing to warrant exclusion
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`of his application of the plain meaning of “oriented to view” for purposes of non-infringement.
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`See SSL Servs., 940 F. Supp. 2d at 492; Apple, 2014 WL 660857, at *5. GTP also mischaracterizes
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`Dr. Stevenson’s opinions as based on “alleged disclaimer during prosecution,” even though Dr.
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`Stevenson neverreferred to any such disclaimer. Dr. Stevenson refers to the applicant’s addition
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`of the Figure 18 embodimentto the specification to overcome a written description rejection in
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`order to identify the embodiment mostrelevant to the claims for purposes of educating the jury.
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`Ex. 1 § 156. Dr. Stevenson never stated or opined that this should narrow the claims. Moreover,
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`Dr. Stevenson tied his analysis of the accused products back to the claim language, not the
`
`specification. Jd. at § 159-61; SSZ Servs., 940 F. Supp. 2d at 492 (finding expert’s reliance on
`
`embodiments for non-infringement admissible wherehetied his analysis back to claim language).
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`GTP’s mischaracterizations of the Court’s Claim Construction Order and Dr. Stevenson’s
`
`opinions are unavailing. Dr. Stevenson’s fact-based opinionsasto the “first camera oriented to
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`-7-
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`view a user of the handheld device” should not be excluded. Moreover, even if the Court were to
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`find that Dr. Stevenson’s reference to intrinsic evidence constitutes improper claim construction
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`despite the foregoing analysis, he shouldstill be permitted to testify regarding his understanding
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`of the plain meaning of “oriented to view” without reference to such intrinsic evidence.
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`4.
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`°079 Patent: “light source”
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`GTP’s motion further seeks to exclude Dr. Stevenson’s opinions asto the “light source”
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`terms as applying a construction inconsistent with the Court’s Claim Construction Order. Dr.
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`Stevenson, however, faithfully applied the Court’s plain meaning construction of these terms.
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`First, Dr. Stevenson did not opine thatall displays are not light sources, nor did he apply
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`Defendants’ rejected claim construction requiring that the light source be designed to directly
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`illuminate the work volume or body part therein. Mot. at 4. Rather, Dr. Stevenson applied the
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`plain meaning ofthe “light source” terms with respect to the accused products. GTP’s complaint
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`boils down to faulting Dr. Stevenson for applying the express claim language:
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`GTP’s Argument
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`“Here use Dr.|Claim 1: “providingalight source adaptedto directagain, Defendants
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`Stevenson in an attempt to contravene the|illumination through a work volume above the
`Court’s claim construction order.
`Dr.|
`light source”
`Stevenson opines that ‘the light source
`must be adapted to direct illumination|Claim 11: “a light source adapted to illuminate a
`throughthe work volumeor to illuminate|human bodypart within a work volume generally
`the human body part in the work|above the light source”
`
`volume.’” Mot. at 5-6.
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`
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`Claim 21: “providing a light source in fixed relation
`relative to the camera and adapted to direct
`illumination through the work volume”
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`GTP also misquotes Dr. Stevenson’s opinions:
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`Dr. Stevenson’s Opinion
`GTP?’s Mischaracterization
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`“Moreover, Dr. Stevenson opines that the|“As explained in the ’431 Patent by the same
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`‘light source’ must the light|inventor, a light source is used even under‘overwhelm[]
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`ighting,’ which overwhelms the light
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`

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`the object of interest.’” Mot. at 6 (citing Mot.
`Ex. B ¶ 211).
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`source illumination everywhere except for on
`the object of interest.” Mot. Ex. B ¶ 211.
`
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`Dr. Stevenson never construed the claims to require that the light source somehow overwhelm its
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`own illumination. Rather, Dr. Stevenson explains the technological background of light sources
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`and their use in determining gestures with reference to the specification, Ex. 1 ¶¶ 211-14, and how
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`technology advanced such that light sources have become unnecessary for object recognition, id.
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`¶ 215. Educating the jury about the background and development of the technology is well within
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`the purview of a technical expert. SSL Servs., 940 F. Supp. 2d at 492; Network-1 Technologies,
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`2017 WL 4020591, at *3. Dr. Stevenson further explained that the specification disclosures are
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`consistent with his understanding of what was well-known in the art at the time of the invention,
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`making clear he was not relying solely on the intrinsic evidence for his understanding of the
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`technology, but also on his professional experience and extrinsic evidence. Ex. 1 ¶ 211.
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`Dr. Stevenson further explained how the displays in certain accused products
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`
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`Ex. 1 ¶¶ 217-19. Dr. Stevenson thus concluded that these specific accused displays do not satisfy
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`the plain language of the claims, which recite determination of “the gesture performed in the work
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`volume and illuminated by the light source,” not that all displays can never satisfy the claims. Id.
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`at ¶¶ 218-19. To the contrary, it is GTP’s efforts to exclude such permissible opinions concerning
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`the specific accused display technology and related technological background that constitute
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`improper, belated claim construction. GTP essentially argues that a display must necessarily
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`constitute the claimed light source, contradicting the Court’s express finding that a display and a
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`light source, while not mutually exclusive, are “not the same thing.” Markman Tr. at 40:14-20;
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`Dkt. 93 at 34. There is no legitimate basis to exclude Dr. Stevenson’s opinions in this regard
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`either. GTP’s motion should be denied.
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`-9-
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`B.
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`Dr. Stevenson was not required to provide a legal opinion by identifying the
`applicable subsection of 35 U.S.C. § 102 for prior art references he relied on
`for invalidity
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`GTP complains that Dr. Stevenson did not identify the specific subsections of 35 U.S.C. §
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`102 under which each prior art reference anticipates and/or renders obvious the Patents-in-Suit,
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`with more specific complaints directed to the system prior art. Mot. at 6-7. These criticisms are
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`misguided. The specific subsections of the Patent Act under which prior art anticipates and/or
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`renders obvious a patent is a legal question reserved for the court. See Samsung Elecs. Co., Ltd.
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`v. Infobridge Pte. Ltd., 929 F.3d 1363, 1369 (Fed. Cir. 2019) (“The ultimate question of whether
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`a reference is prior art under § 102(b), however, is a legal question we review de novo.”) (citation
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`omitted); EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345 (Fed.
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`Cir. 2017) (“Whether a reference qualifies as prior art under 35 U.S.C. § 103 is a legal question
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`we review de novo.”) (citation omitted). Plainly, Dr. Stevenson is not a legal expert and cannot
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`opine as this legal question. Dr. Stevenson testified that he relied on public demonstration of the
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`prior art system as well as documents describing the system for invalidity of the asserted claims
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`as laid out in his report, but that he could not provide the legal opinion as to how the system
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`qualifies as prior art. Ex. 5 at 16:4-18:15, 19:12-20:20, 21:21-24:17.
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`Defendants gave notice of the specific prior art subsections in their invalidity contentions,
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`which GTP did not move to strike because they complied with the patent local rules. Ex. 6 at 27
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`(“Defendants contend the following prior art uses, sales, and/or offers for sale anticipate or render
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`obvious one or more Asserted Claims of the Asserted Patents under 35 U.S.C. 102(a) and/or (b)
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`or 35 U.S.C. 103.”); see also id. at 22-26 (same for patents and printed publications). Nor did GTP
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`move for summary judgment that any reference is not prior art under any subsection.
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`Further, GTP’s allegation that it could potentially prove earlier conception and reduction
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`to practice is baseless bordering on falsehood. In an interrogatory response, GTP alleged that Dr.
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`Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 15 of 21 PageID #: 8151
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`Pryor, the named inventor of the Patents-in-Suit, “conceived the inventions a few months prior to
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`the filings of” the provisional applications. Ex. 7 at 9. Defendants’ system prior art that GTP now
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`challenges was available and publicly demonstrated more than a “few months” before the filing of
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`the earliest provisional application in November 1998. Ex. 8 ¶¶ 166 (MDScope demonstrated in
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`1997 or early 1998), 172 (MERL demonstrated around 1996). Moreover, Dr. Pryor testified that
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`. Ex. 9 at 265:21-268:8, 274:23-
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`275:25, 286:12-287:10, 295:8-25. GTP is thus unable to provide any corroborating evidence of
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`conception whatsoever. Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1295 (Fed. Cir.
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`2018) (referencing the “well established” law that a party seeking to establish conception through
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`inventor testimony must proffer corroborating evidence). GTP’s representation that but for Dr.
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`Stevenson’s alleged failings it could potentially “swear behind” lacks any credible basis.
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`Moreover, GTP seeks to exclude Dr. Stevenson’s opinions under Daubert and Rule 702 of
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`the Federal Rules of Evidence, but cites case law concerning Rule 26(a)(2)(C) of the Federal Rules
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`of Civil Procedure. Mot. at 7 (“[F]ailure to comply with Rule 26 interefer[es] with attorney’s
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`preparation”) (emphasis added); Carr v. Montgomery Cnty, No. H-13-2795, 2015 WL 5838862,
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`at *4 (S.D. Tex. Oct. 7, 2015) (relating to defendants’ motion to exclude under Rule 26(a)(2)(C)
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`for failure to properly designate an expert); id. Dkt. No. 51 at 2 (“These designations do not comply
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`with Rule 26(a)(2)(C)”). These irrelevant cases cannot support GTP’s motion.
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`C.
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`Dr. Stevenson applied the correct legal standard when rendering his opinions
`regarding obviousness of the Asserted Method Claims2
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` GTP incorrectly alleges that Dr. Stevenson failed to apply the proper legal standard for
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`determining the obviousness of the Asserted Method Claims because he did not explicitly cite to
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`2 Claims 1-3, 6, 14-22, 25-28 and 30 of the ’431 Patent, and Claims 1-6, 8-9, 21-25, 28, and 30 of
`the’079 Patent (collectively, “Asserted Method Claims”).
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`Case 2:21-cv-00040-JRG Document 169 Filed 12/22/21 Page 16 of 21 PageID #: 8152
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`the purported “standard of Parker Vision.” Mot. at 8 (citing ParkerVision, Inc. v. Qualcomm Inc.,
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`903 F.3d 1354, 1363 (Fed. Cir. 2018)). ParkerVision merely reiterates that to demonstrate the
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`obviousness of a method claim, it must be shown that a POSITA would have been motivated to
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`combine teachings of the prior art references to achieve the claimed inventions with a reasonable
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`expectation of success. ParkerVision, 903 F.3d at 1363. Dr. Stevenson states the same standard
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`as provided by counsel: “An obviousness analysis involving two or more references or systems
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`generally requires a reason why a POSITA in the relevant filed would have combined aspects of
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`those references or systems in the way the Asserted Claims do.” Ex. 8 ¶ 32; see also id. ¶ 35.
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`Whether Dr. Stevenson explicitly cited to the ParkerVision case is immaterial; he presented and
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`followed the same standard in his obviousness analysis of the Asserted Method Claims.
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`As supposed proof that Dr. Stevenson ignored the “Parker Vision standard,” GTP points
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`solely to ¶¶ 258-260, 265-272 in the body of Dr. Stevenson’s report, which provides a summary
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`of his prior art invalidity opinions. Inexplicably, GTP ignores the extensive tables attached to Dr.
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`Stevenson’s report that provide his complete, detailed invalidity analysis, including with respect
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`to obviousness. GTP marked these tables as exhibits in its deposition of Dr. Stevenson, yet here
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`ignores them in seeking to strike the opinions they contain. That tactic is readily dismissed.
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`In ParkerVision, the Federal Circuit found that Qualcomm failed to prove obviousness of
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`certain method claims because it did not show that a POSITA would have been motivated to
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`operate a prior art device to perform a claimed method step. 903 F.3d at 1363. Dr. Stevenson did
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`the opposite. In the tables attached to his report, which GTP ignores, he repeatedly explains in
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`detail why a POSITA would have been motivated to combine the prior art to perform the claimed
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`steps of the Asserted Method Claims. See, e.g., Ex. 8 at Ex. E, p. 3 (“A POSITA would have been
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`motivated to