Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 1 of 8 PageID #: 2014
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`ZTE CORPORATION and
`ZTE USA INC.,
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`Defendants.
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`Case No. 5:16-cv-00179-RWS
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`JURY TRIAL DEMANDED
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`PLAINTIFF MAXELL, LTD.’S REPLY IN SUPPORT OF ITS THIRD DAUBERT
`MOTION TO EXCLUDE DR. ZHI DING’S UNRELIABLE OPINIONS ON
`OBVIOUSNESS OF U.S. PATENT NO. 6,408,193
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 2 of 8 PageID #: 2015
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`ZTE’s response (D.I. 54) to Maxell’s Third Daubert Motion1 never squarely addresses
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`Maxell’s primary reason2 to exclude the unreliable, improper obviousness opinions of its ’193
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`Patent expert (Dr. Ding). While Dr. Ding has provided an impossibly high number of potential
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`(but unidentified) obviousness combinations, ZTE refuses still to narrow its obviousness
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`combinations or to identify with specificity which of the over 100,000 combinations Dr. Ding
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`will actually present at trial. This tactic deprives Maxell and its expert of proper notice of the
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`opinions Dr. Ding will testify about and of a meaningful chance to respond to those opinions. Dr.
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`Ding’s obviousness opinions are unreliable, run afoul of the rules, and must be excluded.3
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`I.
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`ARGUMENT
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`Dr. Ding’s obviousness opinions cover over 100,000 combinations of prior art. Thus, his
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`opinions should be excluded as unreliable and as in violation of the federal and local rules.
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`A.
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`Dr. Ding’s Refusal to Narrow His Obviousness Opinions Violates the Local
`and Federal Rules.
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`As explained in Maxell’s Third Daubert Motion, Dr. Ding’s insistence on reserving over
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`100,000 possible prior art combinations violates at least Local Patent Rule 3-3 and Federal Rule
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`26(a). These rules serve to keep in check the very behavior that ZTE and its expert engage in
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`here: offering unreasonably vague positions that deprive the opposing party of a meaningful
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`chance to prepare a response.
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`1 Maxell’s motion was initially filed in lead case 5:16-cv-178 as D.I. 202, prior to the court’s order
`vacating consolidation. ZTE’s response and Maxell’s reply are filed in 5:16-cv-179.
`2 In its Response to Maxell’s Motion for Partial Summary Judgment of No Invalidity of the ’193 Patent,
`ZTE confirms that it “is no longer asserting that claim [sic] 1-7 of the ’193 patent are obvious in view of
`the AAPA to the ’193 Patent.” D.I. 57 at 2. Accordingly, this reply focuses on Maxell’s first argument for
`excluding Dr. Ding’s opinions: his unreasonably high number of combinations of prior art.
`3 Both grounds for exclusion relate to Dr. Ding’s unreliable methodology and failure to comply with
`applicable rules and legal framework. These are not the types of issues that can be addressed through
`cross-examination.
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 3 of 8 PageID #: 2016
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`The local rules require explicit disclosure of the combinations a party intends to rely on,
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`“not to create loopholes through which parties may practice litigation by ambush.” Cummins-
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`Allison Corp. v. SBM Co., No. 9:07-cv-196, 2009 U.S. Dist. LEXIS 22114, at *4 (E.D. Tex. Mar.
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`19, 2009); see also P.R. 3-3(b); Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144-LED-
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`JDL, 2009 U.S. Dist. LEXIS 114207, at *14 (E.D. Tex. Dec. 8, 2009).
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`ZTE’s responds to this authority by arguing that these cases are directed to invalidity
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`contentions rather than invalidity expert reports. See Resp. at 3. ZTE’s position is unsupportable.
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`The purpose of the local patent rules are to narrow the focus of the case and to set boundaries for
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`trial. This goal is ill served by allowing invalidity expert reports, which should only clarify the
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`case further, to make the same missteps that are plainly impermissible for invalidity contentions.
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`See Fed. R. Civ. P. 26(a)(2)(B) (requiring expert reports to be “detailed and complete”). ZTE and
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`Dr. Ding ignore these rules and leave themselves free to choose from more than 100,000 possible
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`combinations, with no warning or notice to Maxell. This is litigation by ambush, and Dr. Ding’s
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`obviousness opinions should at least be excluded for violating the local and federal rules.
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`B.
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`ZTE Responds to the Wrong Argument.
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`ZTE mischaracterizes the problems with Dr. Ding’s unreliably vague opinions. While
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`ZTE would make this an issue about the number of references Dr. Ding relies on, the actual issue
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`concerns the number of combinations he presents. In paragraphs 409 and 412 through 419 of his
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`report, Dr. Ding broadly and vaguely references a series of possible obviousness combinations
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`without ever clarifying precisely which pieces of prior art he may rely on for each asserted claim
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`element or even which prior art he intends to use for each combination. The result is an
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`unreasonable, “impossibly high” number of combinations that leaves ZTE free to put off
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`choosing its actual obviousness positions until the eve of trial, with no notice to Maxell.
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`ZTE does not dispute that, in paragraphs 409 and 412-419 of his invalidity report, Dr.
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 4 of 8 PageID #: 2017
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`Ding opines that the claims of the ’193 Patent are obvious over several base references combined
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`with “one or more of” up to sixteen secondary references. ZTE also does not dispute that Dr.
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`Ding’s obviousness opinions cover more than 100,000 unique combinations. Yet ZTE has not
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`identified where Dr. Ding – either in his report or at his deposition – clarified precisely which
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`obviousness combinations he intends to rely on at trial. Nor has ZTE used its response to inform
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`Maxell of precisely which obviousness opinions Dr. Ding will present at trial.
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`Rather than dispute these fatal flaws with Dr. Ding’s opinions, ZTE responds to an
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`entirely different argument: that an obviousness analysis cannot be faulted for the number of
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`references used. See Resp. at 3-5. While it may be true that “the proper criterion for evaluating
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`obviousness ‘is not the number of references, but what they would have meant to a person of
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`ordinary skill in the field of the invention,’” id. at 3 (internal citation omitted), Maxell does not
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`take issue with the number of references presented. Rather, Maxell takes issue with the number
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`of possible combinations of those references—a point that ZTE fails to refute.
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`In short, neither Dr. Ding nor ZTE have provided Maxell with clear notice of whether
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`this expert intends to present a seventeen-reference combination, a two-reference combination,
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`or something in between. By failing to identify the specific combinations Dr. Ding will use at
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`trial, ZTE fails to put Maxell on real, meaningful notice and thwarts the primary purpose of his
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`expert report. See Biscotti Inc. v. Microsoft Corp., No. 2:13-CV-01015-JRG-RSP, 2017 U.S.
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`Dist. LEXIS 79832, at *7 (E.D. Tex. May 24, 2017) (“The primary purpose of an expert report is
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`to provide notice to the opposing side of the scope of an expert’s potential trial testimony.”).
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`Moreover, by failing to identify specific combinations of references, ZTE also failed to
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`follow a proper obviousness analysis. Because ZTE failed to identify the obviousness
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 5 of 8 PageID #: 2018
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`combinations, ZTE further failed to ascertain the differences between the claimed invention and
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`each combination. Thus, Dr. Ding’s obviousness opinions should be rejected as unreliable.
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`C.
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`ZTE’s Suggestion That Dr. Ding Might Present “Essentially” a 17-Reference
`Obviousness Combination Contradicts Dr. Ding’s Sworn Testimony.
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`ZTE offers no support for its assertion that Dr. Ding actually meant that the ’193 Patent’s
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`claims “are obvious in view of essentially a combination of 17 references.” Resp. at 2. Setting
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`aside the vague use of “essentially,” ZTE’s assertion directly contradicts Dr. Ding’s sworn,
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`unmistakable deposition testimony.
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`Specifically, when asked what he meant by the statement in his expert report that the
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`claims are obvious over “one or more of” seventeen references, Dr. Ding testified that his use of
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`“one or more” in his report meant that the combinations could include “at least one of” the cited
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`references—perhaps one, perhaps two, or perhaps more. See Ex. B to Nese Decl. (Ding Dep.) at
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`95:24-96:18, Maxell, Ltd. v. Huawei Techs. Co., Ltd., No. 5:16-cv-00178-RWS (E.D. Tex. Mar.
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`2, 2018), ECF 202-4. That ZTE and its expert have divergent opinions on these obviousness
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`theories further demonstrates the problematic lack of clarity as to which arguments ZTE will
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`actually present for the ’193 Patent. This is further reason to exclude these unreliable opinions.
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`If Dr. Ding had truly wanted to present a properly noticed seventeen-reference
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`obviousness combination to the jury, he might have been free to do so with proper notice. For
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`example, Dr. Ding could have replaced the vague “one or more of” language in his report with
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`something more concrete, such as “each of.” Dr. Ding also could have clarified at his deposition
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`that he actually intended to rely on each of the sixteen or seventeen references in his
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`combinations, rather than reserve the right to rely on “at least one of” his secondary references
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`for each combination. But he did neither, and Maxell is left to wonder about which of Dr. Ding’s
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`100,000+ obviousness opinions will materialize at trial. This gamesmanship should be rejected.
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 6 of 8 PageID #: 2019
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`D.
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`“The State of the Art” Does Not Justify ZTE’s Reserving the Right to Rely
`on Over 100,000 Obviousness Combinations.
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`The Court should also reject ZTE’s excuse that “the number of references, and therefore
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`obviousness combinations, is fundamentally a result of the state of the art.” Resp. at 3.
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`Regardless of whether this is true, Dr. Ding’s report must present a manageable number of prior
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`art combinations that he actually intends to present at trial, not every possible combination of
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`prior art that he was able to cobble together. ZTE and Dr. Ding can and should be faulted, not
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`“for this abundance” of arguments, but for their failure to narrow them by setting forth the actual
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`combinations they intend to rely on.
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`E.
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`Dr. Ding’s Four-Reference Combinations Are Equally Problematic.
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`ZTE downplays the problems with its “smaller” (four-reference) combinations. For
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`example, ZTE claims that Dr. Ding’s report contains “clear, specific combinations,” such as
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`“Wheatley with one or more of: Kim, Black, and Toda.” Resp. at 2-3 (quoting Nese Decl., Ex. A
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`(Ding Rep.), ¶¶ 467-72). But this four-reference combination contains the same fundamental
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`issues (albeit on a smaller scale) as the rest of Dr. Ding’s obviousness combinations.
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`Specifically, this combination uses the same vague “one or more of” language that pervades Dr.
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`Ding’s other opinions. See id. This language leaves Maxell to wonder whether Dr. Ding intends
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`to present Wheatley with one, two, or all three of the secondary references. See Mot. at 6-7.
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`II.
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`CONCLUSION
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`Allowing Dr. Ding to cling to so many unique blends of the prior art deprives Maxell of a
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`meaningful chance to respond to and address the arguments Dr. Ding will actually present at
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`trial. Thus, Dr. Ding should be precluded from testifying about the obviousness combinations he
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`summarizes in paragraphs 408, 409, and 412 to 419 of his report because those opinions are
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`unreliable, are unhelpful to a jury, and in violation of the applicable rules and legal framework.
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 7 of 8 PageID #: 2020
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`Dated: March 27, 2018
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`By:
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`/s/ Jamie B. Beaber
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`
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`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`Bryan Nese
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`
`Robert G. Pluta
`Amanda S. Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:16-cv-00179-RWS Document 70 Filed 03/27/18 Page 8 of 8 PageID #: 2021
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 27th day of March, 2018, with a copy of this document
`via electronic mail pursuant to Local Rule CV-5(d).
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`/s/ Jamie B. Beaber
`Jamie B. Beaber
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