Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`IGT and IGT CANADA SOLUTIONS ULC,
`
`v.
`
`ZYNGA INC.,
`
`Plaintiffs,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 6:21-CV-00331-ADA
`
`Judge: Honorable Alan D. Albright
`
`PUBLIC VERSION
`
`PLAINTIFFS’ PARTIAL MOTION TO EXCLUDE THE TESTIMONY
`OF MR. DAVID CRANE AND STRIKE UNTIMELY DISCLOSED
`FACTS REGARDING NON-INFRINGING ALTERNATIVES
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 2 of 21
`
`TABLE OF CONTENTS
`
`I.
`
`FACTUAL BACKGROUND .............................................................................................. 1 
`
`A. Overview of the Asserted Claims and Infringement by the Accused Products .......... 2 
`B. Discovery Relating to Zynga’s Proposed Non-Infringing Alternative ....................... 4 
`C.
`Expert Reports and Zynga’s New, Undisclosed Non-Infringing Alternative ............. 6 
`
`II.
`
`III.
`
`LEGAL STANDARDS ....................................................................................................... 9 
`
`ARGUMENT ..................................................................................................................... 10 
`
`A.
`
`B.
`
`C.
`
`Zynga Cannot Adequately Explain Why It Failed to Timely Disclose the New Non-
`Infringing Alternative Theory or Implementing Application .................................... 10 
`Evidence of a Non-Infringing Alternative to the Claims of the ’189 Patent Go to
`Non-Dispositive But Important Issues in the Case ................................................... 11 
`IGT Will Be Significantly Prejudiced If Zynga Is Allowed to Present Evidence of Its
`Belatedly Disclosed Non-Infringing Alternative ...................................................... 12 
`D. A Continuance is Not Warranted For Zynga’s Blatant Discovery Violation ............ 14 
`
`IV.
`
`CONCLUSION .................................................................................................................. 15 
`
`i
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`CQ, Inc. v. TXU Min. Co,
`565 F.3d 268 (5th Cir. 2009) .....................................................................................................9
`
`Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
`Case No. 2:15-CV-00037-RWS-RSP, 2017 WL 2651618 (E.D. Tex. June 20,
`2017) ........................................................................................................................................13
`
`Freeny v. Murphy Oil Corp.,
`No. 2:13-CV-791-RSP, 2015 WL 5144347 (E.D. Tex. June 4, 2015) ....................................11
`
`GREE, Inc. v. Supercell Oy,
`Case No. 2:19-cv-00071-JRG-RSP, 2020 WL 4288323 (E.D. Tex. July 26,
`2020) ..................................................................................................................................12, 13
`
`Holcombe v. United States,
`516 F. Supp. 3d 660 (W.D. Tex. 2021) ....................................................................................10
`
`Promethean Insulation Tech. LLC v. Sealed Air Corp.,
`Case No. 2:13-cv-1113-JRG-RSP, 2015 WL 11027038 (E.D. Tex. Oct. 13,
`2015) ............................................................................................................................12, 13, 14
`
`Rembrandt Vision Techs. LP v. Johnson & Johnson Vision Care, Inc.,
`725 F.3d 1377 (Fed. Cir. 2013)................................................................................................10
`
`ZiiLabs Inc., Ltd. v. Samsung Elecs. Co.,
`No. 2:14- CV-203-JRG-RSP, 2015 WL 6690403 (E.D. Tex. Nov. 2, 2015) ..........................10
`
`Rules
`
`Fed. R. Civ. P. 26 ...........................................................................................................................10
`
`Fed. R. Civ. P. 26(a) ........................................................................................................................9
`
`Fed. R. Civ. P. 26(e)(1)(A) ............................................................................................................10
`
`Fed. R. Civ. P. 30(b)(6)....................................................................................................................5
`
`Fed. R. Civ. P. 37 .....................................................................................................................10, 12
`
`Fed. R. Civ. P. 37(c) ........................................................................................................................9
`
`ii
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 4 of 21
`
`TABLE OF RELEVANT EXHIBITS
`
`33
`
`Ex. 1 Description
`29 U.S. Patent No. 9,159,189
`30 Expert Report of Mr. Stacy A. Friedman Regarding Infringement of U.S. Patent Nos.
`8,795,064 and 9,159,189, dated Nov. 10, 2022
`IGT’s Second Set of Interrogatories to Zynga (Nos. 15-17), dated March 2, 2022
`31
`32 Zynga’s Second Supplemental Response to IGT’s Second Set of Interrogatories (Nos.
`15-17), dated Oct. 19, 2022
`IGT’s Notice of Deposition of Defendant Zynga, Inc. Under Fed. R. Civ. P. 30(b)(6),
`dated June 21, 2022
`34 Deposition Transcript of Benjamin Hall, dated Sept. 1, 2022
`35 Expert Report of Keith R. Ugone, Ph.D., dated Nov. 10, 2022
`36 Appendix A to the Expert Report of Keith R. Ugone, Ph.D.
`37 Expert Report of David Crane Regarding Non-Infringement, dated Dec. 22, 2022
`38 Deposition Transcript of David Crane, Volume II, dated Jan. 12, 2023
`39 Expert Report of Douglas Kidder Regarding Damages, dated Dec. 22, 2022
`43 Deposition Transcript of Douglas Kidder, dated Jan. 12, 2023
`
`1 Exhibit numbers refer to the exhibits to the Declaration of Jennifer Kurcz, which is being filed
`contemporaneously with this Motion.
`
`iii
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 5 of 21
`
`This motion is a simple one. During fact discovery, Defendant Zynga, Inc. (“Zynga”)
`
`disclosed a hypothetical non-infringing alternative to the asserted claims of U.S. Patent No.
`
`9,159,189 (“the ’189 Patent”) via an interrogatory response. Zynga designated a 30(b)(6) witness
`
`to discuss that hypothetical non-infringing alternative, whom IGT deposed. Months later, after the
`
`close of fact discovery and after IGT’s expert had reviewed and opined on the previously disclosed
`
`non-infringing alternative in his opening report, Zynga then disclosed for the first time in its
`
`expert’s rebuttal report (Mr. Crane) the existence of a allegedly functional prototype of Zynga’s
`
`alleged non-infringing alternative. Not only was this a newly created prototype first produced
`
`with Mr. Crane’s report, but it was different from the one previously disclosed in Zynga’s
`
`interrogatory response. Specifically, the alternative proposed by Zynga during fact discovery and
`
`to which IGT’s experts all addressed, involved
`
`Accordingly, Zynga’s new proposed non-infringing alternative, and its expert’s reliance on
`
`and discussion of it in his report, should be stricken and excluded because the new and different
`
`non-infringing alternative was never disclosed. Rather, Zynga reserved it for its expert’s rebuttal
`
`report, depriving IGT any ability to conduct discovery or have its expert discuss the same.
`
`I.
`
`FACTUAL BACKGROUND
`
`IGT and IGT Canada Solutions ULC (together, “IGT”) commenced this suit against Zynga
`
`on April 26, 2021, with an amended complaint filed on April 26, 2022. Dkts. 1, 70. At all times,
`
`and in relevant part, IGT alleged that certain Zynga games infringe claims of the ’189 Patent. See,
`
`e.g., Dkt. 84 at ¶ 84.
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 6 of 21
`
`A.
`
`Overview of the Asserted Claims and Infringement by the Accused Products
`
`The ’189 Patent is titled “Mobile Gaming Device Carrying Out Uninterrupted Game
`
`Despite Communications Link Disruption” and was filed on April 11, 2013, later issuing on
`
`October 13, 2015. Ex. 29 at cover. At a high level, the claims of the ’189 Patent involve gaming
`
`methods and systems, such as slots games, in which the game is played locally at the user’s mobile
`
`device with the outcome and award for the game determined by a central server after the game is
`
`started at the player’s local device. The server then sends the outcome and award to the player’s
`
`local device where both are displayed to the user. More specifically, the claims of the ’189 patent
`
`“address[] communication link failures that might occur during a game, such as after slot spin has
`
`been initiated but before the spin has completed and the outcome displayed to the user, by
`
`‘extending the game animation’ on a user’s device and then, when communication has been
`
`reestablished, transmitting the final game outcome and award and ending the animation, such
`
`that—from the user’s perception—the game was uninterrupted by the communication failure.”
`
`Ex. 30 ¶ 57 (citing Ex. 29 at 23:23-59, 24:23-61). Independent claim 1 is recited below (which is
`
`identical in independent claim 10):
`
`1. A remote gaming method comprising:
`
`establishing a wireless communications link between a mobile
`gaming device, operated by a player, and a stationary gaming
`terminal that carries out a gaming program;
`
`receiving player control signals by the gaming terminal from the
`mobile gaming device to initiate a game;
`
`displaying game animation on the mobile gaming device for the
`game conveying to the player that the game is presently occurring;
`
`carrying out the game by the gaming terminal, including
`determining a final outcome of the game and any award for the
`outcome;
`
`2
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 7 of 21
`
`transmitting signals from the gaming terminal to the mobile gaming
`device identifying the final outcome of the game and the award;
`
`stopping the game animation for the game and displaying, by the
`mobile gaming device, the final outcome of the game and the award;
`
`in the event of a communications link failure between the mobile
`gaming device and the gaming terminal during the game, prior to
`receiving the signals by the mobile gaming device identifying the
`final outcome of the game and the award but after the game
`animation for the game has begun, performing the method
`comprising:
`
`extending the game animation for the game by the mobile
`gaming device during the communications link failure
`beyond a typical time for the game until the communications
`link has been re-established; and
`
`once the communication link has been re-established,
`transmitting the signals to the mobile gaming device
`identifying the final outcome of the game and the award,
`stopping the game animation for the game, and displaying,
`by the mobile gaming device, the final outcome of the game
`and the award, such that the game perceived by the player is
`not interrupted during the communications link failure.
`
`Ex. 29 at 23:23-59.
`
`IGT asserts that Zynga’s (1) Hit It Rich!, (2) Game of Thrones, and (3) Black Diamond
`
`Casino games (“Accused Products”) infringe independent claims 1 and 10 of the ’189 Patent. See,
`
`e.g., Dkt. 84 at ¶ 84; Ex. 30 ¶ 3. The Accused Products are all virtual slot machine games, which
`
`provide spinning reels type slot games, such as would traditionally be played in a casino. Ex. 30
`
`¶¶ 100, 117, 170. In relevant part, IGT asserts that the Accused Products infringe the asserted
`
`claims of the ’189 Patent because, in the event of a communications link interruption during play
`
`of a game (such as loss of an internet connection by the mobile gaming device (e.g., computer,
`
`iPhone) on which the game is being played), the Accused Products “continue the spinning reels
`
`(extend the game animation)” until the communications link is re-established (e.g., the device’s
`
`internet connection is restored). Ex. 30 ¶¶ 292-294. Once the communications link is restored,
`
`3
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 8 of 21
`
`
`
`the mobile gaming device receives the outcome of the game and any resulting award from the
`
`Zynga server, the reels stop spinning, and the reel outcome and award is displayed. Ex. 30 ¶¶ 297,
`
`299. Because the reels continue spinning during the communications failure and until
`
`communications is restored and the outcome and award are received from the server, the “game
`
`perceived by the player is not interrupted during the communications link failure.” Ex. 30 ¶ 297.
`
`B.
`
`Discovery Relating to Zynga’s Proposed Non-Infringing Alternative
`
`On March 2, 2022, IGT served its Second Set of Interrogatories to Zynga (Nos. 15-17),
`
`requesting that Zynga:
`
`For each IGT Patent-in-Suit, state the identity of any acceptable
`non-infringing alternatives (whether a product, technology, method,
`or other approach), why such alternative would be acceptable to
`customers, why such alternative does not infringe, whether such
`alternative was available at the time infringement began, any costs
`associated with implementing such alleged acceptable non-
`infringing alternative, and identify all documents referred to in
`preparing an answer to this interrogatory.
`
`Ex. 31 at 7 (Interrogatory 16). Zynga served a supplemental response to Interrogatory 16 on
`
`August 19, 2022, describing
`
` Ex. 32 at 10. As disclosed by Zynga,
`
` Ex. 32 at 10-11.
`
`Zynga further disclosed
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 9 of 21
`
`
`
`Ex. 32 at 11 (emphasis added).
`
`
`
`On June 21, 2022, IGT served Zynga with a Rule 30(b)(6) deposition notice, seeking
`
`testimony from Zynga regarding “[a]ny non-infringing alternatives to the accused technology
`
`contained in the Accused Zynga Products” and “[a]ny actual or contemplated plans or attempts by
`
`Zynga to design around the IGT Patents-in-Suit.” Ex. 33 at 7 (respectively Topics 19 and 20).
`
`Subject to its objections on the topics, Zynga designated Mr. Benjamin Hall, a vice president of
`
`engineering at Zynga, to provide testimony on Topics 19 and 20. Ex. 34 at 12:14-16, 23:17-24:5.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mr. Hall also confirmed the specific operation of the originally proposed alternative as
`
`described in Zynga’s interrogatory response. Mr. Hall testified that the proposed non-infringing
`
`alternative would operate by
`
`165:5). Mr. Hall explained that
`
`152:2.
`
`5
`
`
`
`
`
` (id. at 164:16-
`
`
`
`. Id. at 151:17-
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 10 of 21
`
`
`
`
`
`
`
`
`
`
`
`see also id. at 137:15-138:24
`
`139:5-12
`
`
`
`
`
`
`
`
`
`
`
` 145:11-24
`
` 146:1-19
`
` 164:18-19
`
`
`
`C.
`
`Expert Reports and Zynga’s New, Undisclosed Non-Infringing Alternative
`
`On November 10, 2023, IGT served the expert report of Mr. Stacy A. Friedman concerning,
`
`among other things, the absence of non-infringing alternatives to the ’189 Patent. Ex. 30 ¶¶ 321-
`
`331. In his report, Mr. Friedman opined that Zynga’s proposed non-infringing alternative to the
`
`’189 Patent was “commercially unacceptable and infeasible” based upon his review of Zynga’s
`
`supplemental interrogatory response and the deposition transcript of Mr. Hall. Ex. 30 ¶ 321; see
`
`also id. ¶¶ 323-324, 327-330. Dr. Ugone, IGT’s damages expert, relied upon Zynga’s
`
`interrogatory response, Mr. Hall’s 30(b)(6) deposition testimony, and Mr. Friedman’s analysis for
`
`his opinion relating to the availability of non-infringing alternatives to the ’189 Patent in
`
`calculating a reasonable royalty using the Georgia-Pacific Factors. See Ex. 35 ¶ 210-12; Ex. 36
`
`at 10, 14.
`
`6
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 11 of 21
`
`
`
`On December 22, 2022, Zynga served the rebuttal expert report of Mr. David Crane
`
`containing his opinions that, among other things, the asserted claims of the ’189 Patent were not
`
`infringed by the Accused Products (Ex. 37 ¶ 13) and that Zynga’s redesign to avoid the claims of
`
`the ’189 Patent was non-infringing, feasible, and commercially acceptable (id. ¶ 14). Like Mr.
`
`Friedman, Mr. Crane explained that he reviewed Zynga’s August 19, 2022 supplemental response
`
`to interrogatory 16 and the deposition testimony of Mr. Hall. Ex. 37 ¶¶ 167, 170-72. However,
`
`Mr. Crane’s opinions relied upon and related to
`
`
`
` that was different from that disclosed by Zynga and testified to by its designated witness
`
`during fact discovery. Mr. Crane also explained that he reviewed
`
`
`
`
`
` Ex. 37 ¶¶ 167, 173-196.2 Mr. Crane further acknowledged that he spoke with Mr. Hall
`
`regarding
`
` prior to finalizing his
`
`opinions relating thereto. Ex. 38 at 317:24-318:3. In total, Mr. Crane devoted 31 pages, and 59
`
`paragraphs, of his rebuttal report to this
`
`Ex. 37 ¶¶ 166-225. Zynga produced the
`
`
`
` to IGT for the first time
`
`concurrently with Mr. Crane’s rebuttal report but has not produced to IGT the Zynga code
`
`implementing those changes and, with fact discovery closed, IGT has had no opportunity to
`
`question Mr. Hall regarding
`
`3
`
`
`22 Mr. Crane later testified that
`
`. Ex. 38 at 431:24-433:6
`3 At some point after first producing on December 22, 2022, the
`
`
`
`7
`
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 12 of 21
`
`
`
`As Mr. Crane emphasized in his report and confirmed at deposition,
`
` Ex. 32 at 11 (emphasis added). Mr. Hall confirmed in deposition that
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`152:2.
`
`By contrast, Zynga’s
`
` Ex. 34 at 151:17-
`
`
`
`
`
` Ex. 37 ¶ 180; see also id. at ¶¶ 181-86; Ex.
`
`38 at 425:21-427:8. As Mr. Crane confirmed in his deposition,
`
`431:21-23.
`
` Id. at 430:12-431:12.
`
`8
`
`
`
` Ex. 38 at
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 13 of 21
`
`
`
`
`
`Significantly, Mr. Crane repeatedly and expressly relies upon this previously undisclosed
`
`change in design in critiquing IGT’s expert’s opinions and in reaching his own opinions regarding
`
`whether Zynga’s redesign would be acceptable to Zynga’s customers. For example, IGT’s expert,
`
`Mr. Friedman, opined that Zynga’s
`
`
`
`
`
`
`
`fact that Zynga’s
`
` Ex. 30 ¶¶ 328-30. Mr. Crane expressly relied on the
`
`
`
`
`
` Ex. 37 ¶¶ 221, 223.
`
`Finally, Zynga’s damages expert, Douglas G. Kidder, relied on Mr. Crane’s analysis of the
`
`previously undisclosed proposed non-infringing alternative for his opinions relating to the
`
`availability of a non-infringing alternative as it relates to Georgia-Pacific Factors 9 & 10, based
`
`on a discussion with Mr. Crane on December 21, 2022, the day before Mr. Kidder’s and Mr.
`
`Crane’s rebuttal reports issued. Ex. 39 ¶¶ 254-57, 266.
`
`II.
`
`LEGAL STANDARDS
`
`“If a party fails to provide information or identify a witness as required by Rule 26(a) or
`
`(e), the party is not allowed to use that information or witness to supply evidence on a motion, at
`
`a hearing, or at a trial, unless the failure was substantially justified or is harmless.” Fed. R. Civ.
`
`P. 37(c). It is relevant for the court to consider: “(1) [the disclosing party’s] explanation for its
`
`failure to disclose the evidence, (2) the importance of the evidence, (3) the potential prejudice to
`
`[the opposing party] in allowing the evidence, and (4) the availability of a continuance.” CQ, Inc.
`
`9
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 14 of 21
`
`
`
`v. TXU Min. Co, 565 F.3d 268, 280 (5th Cir. 2009). Zynga bears the burden to prove that its failure
`
`to comply with Rule 26 was “substantially justified or harmless.” Rembrandt Vision Techs. LP v.
`
`Johnson & Johnson Vision Care, Inc., 725 F.3d 1377, 1381 (Fed. Cir. 2013). “A district court has
`
`broad discretion in deciding whether to strike expert testimony as a sanction for a violation of Rule
`
`37.” Holcombe v. United States, 516 F. Supp. 3d 660, 669 (W.D. Tex. 2021).
`
`III. ARGUMENT
`
`Notwithstanding specific and targeted discovery requests and 30(b)(6) deposition topics
`
`regarding the existence and implementations of any proposed non-infringing alternatives, Zynga
`
`failed to produce
`
` until its
`
`expert’s rebuttal report. Zynga chose instead to sandbag IGT with a newly proposed non-
`
`infringing alternative, failing to produce the new alternative until well after Zynga’s 30(b)(6)
`
`witness testified, and after IGT’s technical expert had already opined on the originally proposed
`
`alternative, demonstrating that it was not commercially acceptable. Zynga’s tactics are a clear
`
`violation of the Federal Rules and highly prejudicial to IGT. Zynga’s new
`
`
`
`should be
`
`stricken, and Mr. Crane and Zynga precluded from discussing same.
`
`A.
`
`Zynga Cannot Adequately Explain Why It Failed to Timely Disclose the New
`Non-Infringing Alternative Theory or Implementing Application
`
`Zynga was obligated to disclose facts regarding its new non-infringing alternative and
`
` by supplementing its responses during
`
`fact discovery. See Fed. R. Civ. P. 26(e)(1)(A). Instead, Zynga disclosed these facts, and the very
`
`existence of this new theory and application, for the first time in Mr. Crane’s rebuttal report. These
`
`belated disclosures should be stricken. See ZiiLabs Inc., Ltd. v. Samsung Elecs. Co., No. 2:14-
`
`CV-203-JRG-RSP, 2015 WL 6690403, at *1 (E.D. Tex. Nov. 2, 2015) (striking non-infringing
`
`10
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 15 of 21
`
`
`
`alternatives disclosed “at the eleventh hour” when defendant could have supplemented its response
`
`earlier). Zynga has no legitimate basis for withholding these facts critical to its proposed non-
`
`infringing alternative until its rebuttal expert reports. Cf. Freeny v. Murphy Oil Corp., No. 2:13-
`
`CV-791-RSP, 2015 WL 5144347, at *2 (E.D. Tex. June 4, 2015) (striking portion of expert report
`
`relying on conversation with witness not identified during fact discovery).
`
`As Zynga’s expert testified,
`
` Ex. 38 at 419:25-420:12, 423:15-20. Prior to that, the only disclosure of any non-
`
`infringing alternative was via Zynga’s supplemental interrogatory response,
`
`
`
`
`
`
`
`had intended to rely on
`
` Ex. 34 at 137:4-7. If Zynga
`
`
`
`, it should not have waited until after the close of fact discovery and after IGT served its
`
`opening expert reports
`
`
`
`
`
`. This factor favors striking the new non-infringing alternative.
`
`B.
`
`Evidence of a Non-Infringing Alternative to the Claims of the ’189 Patent Go
`to Non-Dispositive But Important Issues in the Case
`
`The issues in this case relate to infringement of, among other patents, claims of the ’189
`
`Patent and damages relating to that infringement. Recognizing this importance, IGT sought
`
`discovery on any non-infringing alternatives in March of 2022, long before the close of fact
`
`discovery. However, all IGT received prior to service of its expert report was a
`
`
`
` of a hypothetical non-infringing alternative that nevertheless described certain basic
`
`functionality of the proposed alternative that its own fact witness confirmed in discovery was
`
`accurate and consistent with the proposal as envisioned and disclosed. Ex. 34 at 136:18-138:8.
`
`11
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 16 of 21
`
`
`
`IGT’s expert relied upon this disclosure in reaching his opinions. This in turn factored into IGT’s
`
`damages expert’s analysis, relating to the reasonable royalty calculation for infringement of the
`
`’189 Patent. Ex. 35 ¶ 210-12 & Appendix A at 10, 14.
`
`Relatedly, the belatedly disclosed non-infringing alternative was discussed in the rebuttal
`
`damages analysis of Zynga’s damages expert, Mr. Kidder. See Ex. 39 ¶¶ 254-57, 266. While IGT
`
`separately challenges Mr. Kidder’s cost analysis for the ’189 alleged non-infringing alternative as
`
`untimely and unreliable, Mr. Kidder solely relies on the projections of time needed to implement
`
`the alleged non-infringing alternative identified by Mr. Hall in forming his opinion.4 As
`
`infringement and damages are key issues in this and every patent case, but as the existence of a
`
`purported non-infringing alternative is only one consideration in a reasonable royalty case such as
`
`this, this factor favors striking Zynga’s late non-infringing alternative. See, e.g., GREE, Inc. v.
`
`Supercell Oy, Case No. 2:19-cv-00071-JRG-RSP, 2020 WL 4288323, at *3 (E.D. Tex. July 26,
`
`2020) (finding evidence was important as demonstrated by the fact that two experts were relying
`
`on it but still striking under Rule 37) cf. Promethean Insulation Tech. LLC v. Sealed Air Corp.,
`
`Case No. 2:13-cv-1113-JRG-RSP, 2015 WL 11027038, at *1 (E.D. Tex. Oct. 13, 2015) (finding
`
`first request for document coming after fact discovery weighed against finding of importance).
`
`C.
`
`IGT Will Be Significantly Prejudiced If Zynga Is Allowed to Present
`Evidence of Its Belatedly Disclosed Non-Infringing Alternative
`
`By withholding information regarding a new and specific implementation of an allegedly
`
`non-infringing alternative until rebuttal expert reports, Zynga deprived IGT the opportunity to
`
`examine the factual bases and theories underlying these new positions, which is extremely
`
`prejudicial to IGT. As a result, Zynga’s expert’s opinions on the new non-infringing alternative
`
`implementation, which also expressly relied upon new previously undisclosed features and
`
`
`4 Ex. 43 at 225:12-23 (relying on estimate from Mr. Hall’s deposition).
`
`12
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 17 of 21
`
`
`
`functionality, are unrebutted. See Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, Case
`
`No. 2:15-CV-00037-RWS-RSP, 2017 WL 2651618, at * (E.D. Tex. June 20, 2017) (finding late
`
`disclosed non-infringing alternatives prejudiced plaintiff because defendants’ experts would be
`
`allowed to present unrebutted testimony and plaintiff “ha[d] not had a chance to test the underlying
`
`merits of th[o]se conclusions through discovery”).
`
`In a case with an exceedingly similar posture to the motion at hand, a court in the Eastern
`
`District of Texas found the prejudice factor to favor the moving party because “[m]uch of this new
`
`information was disclosed only in Supplemental or Rebuttal Expert Reports, after GREE’s experts
`
`had completed their reports, preventing GREE’s experts from opining on this information.”
`
`GREE, 2020 WL 4288323, at *3; see also Promethean Insulation Technology LLC, 2015 WL
`
`11027038, at *2 (finding prejudice to moving party because document “was disclosed after expert
`
`reports had been served, ... depriv[ing the moving party] of the opportunity to have its expert opine
`
`about it”). Here, because of Zynga’s failure to timely disclose the new non-infringing alternative
`
`and
`
` IGT is equipped only with its analysis of a
`
` of a hypothetical non-infringing alternative that
`
`
`
`
`
`
`
`Further, like here, the court in GREE found relevant that plaintiff was unable to depose the
`
`fact witnesses with knowledge of the non-infringing alternatives, and instead plaintiff would be
`
`forced to “accept Supercell’s experts’ characterization of their conversations with” those
`
`witnesses. 2020 WL 4288323, at *3. Here, Mr. Crane has testified that he discussed the newly
`
`proposed alternative with Zynga’s engineer, Mr. Hall, after its development (Ex. 38 at 317:24-
`
`318:1, 419:13–420:9), yet IGT was unable to depose Mr. Hall after the new non-infringing
`
`13
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 18 of 21
`
`
`
`alternative was developed and/or disclosed.5 The prejudice to IGT if Zynga is allowed to rely
`
`upon its
`
`weighs in favor of striking the evidence.
`
`
`
`D.
`
`A Continuance is Not Warranted For Zynga’s Blatant Discovery Violation
`
`A continuance is not warranted here. Importantly, IGT has expended substantial time and
`
`effort in fact and expert discovery only to be sandbagged in Zynga’s rebuttal expert report with a
`
`20. Zynga had been working on creating
`
`
`
` Ex. 38 at 423:15–
`
` and
`
`deliberately chose not to alert IGT to that fact via supplemental discovery responses. Instead,
`
`Zynga chose to wait until IGT had completed and served its expert reports, based on the original
`
`proposed alternative, to disclose even the existence of a specific allegedly non-infringing
`
`alternative comprising functionality different from that disclosed in Zynga’s prior interrogatory
`
`responses. Now, with expert discovery closed and dispositive and Daubert motions being filed, it
`
`would serve only to further delay this case and pose yet more substantial costs on IGT if a
`
`continuance was granted―fact discovery would be reopened (including source code review), new
`
`expert report submissions would be required, and additional expert depositions would result. See
`
`Promethean Insulation Technology LLC, 2015 WL 11027038, at *2 (“The Court finds that
`
`granting a continuance to cure the prejudice to Promethean would significantly delay resolution of
`
`the case and impose substantial costs; it is therefore unwarranted.”).
`
`5
`
`
`
`
`
`14
`
`
`
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 19 of 21
`
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, Plaintiffs IGT and IGT Canada Solutions ULC respectfully
`
`request that the Court grant its Motion and strike paragraphs 166-225 of Mr. Crane’s rebuttal expert
`
`report and preclude Zynga and its expert from testifying as to the
`
`
`
`
`
`15
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 20 of 21
`
`
`
`
`
`Dated: February 2, 2023
`
`Respectfully submitted,
`
`
`
`
`
`By:
`
`
`
` /s/ Leif R. Sigmond Jr.
`Deron R. Dacus
`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Telephone: 903-705-1117
`Facsimile: 903-581-2543
`ddacus@dacusfirm.com
`
`Leif R. Sigmond Jr.
`Illinois State Registration No. 6204980
`Baker & Hostetler LLP
`One North Wacker Drive
`Suite 4500
`Chicago, IL 60606-2841
`Telephone: 312-416-6275
`Facsimile: 312-416-6201
`LSigmond@bakerlaw.com
`
`Attorneys for IGT and IGT Canada
`Solutions ULC
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-00331-ADA Document 151 Filed 02/09/23 Page 21 of 21
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5.2(e), I hereby certify
`
`that, on February 2, 2023, all counsel of record who have appeared in this case are being served
`
`with a copy of the foregoing sealed document via email.
`
`
`
` /s/ Leif R. Sigmond Jr.
`Leif R. Sigmond Jr.
`
`
`
`
`
`
`
`
`
`