Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 1 of 25
`
`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ALMONDNET, INC.,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC., AMAZON.COM SER-
`VICES LLC, and AMAZON WEB SERVICES,
`INC.,
`
`Defendants.
`
`Civil Action No. 6:21-cv-00898-ADA-DTG
`
`JURY TRIAL DEMANDED
`
`PUBLIC VERSION
`
`AMAZON’S OPPOSITION TO ALMONDNET’S MOTION TO
`EXCLUDE CERTAIN OPINIONS OF DR. HENRY HOUH
`AND TO STRIKE PORTIONS OF HIS EXPERT REPORT
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 2 of 25
`
`TABLE OF CONTENTS
`
`Page
`
`B.
`
`C.
`D.
`E.
`F.
`G.
`
`I.
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ...............................................................................................................1
`DR. HOUH’S OPINION ON NON-INFRINGING
`ALTERNATIVES IS PROPER. ..........................................................................................1
`DR. HOUH’S OPINIONS ARE CONSISTENT WITH
`THE COURT’S MARKMAN ORDER. ..............................................................................3
`A.
`Dr. Houh does not opine that the ’639 and ’586 patent claims require
`saturation. .................................................................................................................3
`Dr. Houh’s non-infringement opinions concerning the “sold” and “has
`paid” limitations apply the plain and ordinary meaning of those terms. .................5
`DR. HOUH CORRECTLY APPLIES PLAIN AND
`ORDINARY MEANING IN HIS NONINFRINGEMENT OPINIONS. ............................8
`A.
`Dr. Houh’s non-infringement opinions based on “first Internet site.” .....................8
`B.
`Dr. Houh’s non-infringement opinions based on “directing to a third
`party server.” ............................................................................................................9
`Dr. Houh’s non-infringement opinions based on “first price.” ..............................10
`Dr. Houh’s non-infringement opinions based on “authorizing.” ...........................11
`Dr. Houh’s non-infringement opinions based on “condition.” ..............................12
`Dr. Houh’s opinions relating to “expected profit.” ................................................12
`Dr. Houh’s non-infringement opinions based on a “third party server
`computer controlling advertising space.” ..............................................................13
`DR. HOUH’S OPINIONS ON CLAIM PREAMBLES ARE PROPER. ..........................14
`V.
`DR. HOUH’S OPINIONS ON CORPORATE ENTITIES ARE PROPER. .....................15
`VI.
`VII. DR. HOUH’S OPINIONS THAT
`
` HAVE AMPLE SUPPORT IN THE RECORD. ........................17
`
`
`
`
`i
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`

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`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 3 of 25
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Barkan Wireless IP Holdings, L.P. v. T-Mobile US, Inc.,
`No. 2:21-cv-00034, 2021 WL 8441761 (E.D. Tex. Dec. 10, 2021) ........................................17
`Biogen, Inc. v. Berlex Labs., Inc.,
`318 F.3d 1132 (Fed. Cir. 2003)..................................................................................................9
`Freshub, Inc. v. Amazon.com, Inc.,
`576 F. Supp. 3d 458 (W.D. Tex. Dec. 17, 2021) (Albright, J.) .............................................5, 8
`Glaukos Corp. v. Ivantis, Inc.,
`No. 18-cv-620, 2020 WL 10501852 (C.D. Cal. July 23, 2020).................................................3
`Haberman v. Gerber Prods. Co.,
`236 F. App’x 592 (Fed. Cir. 2007) ........................................................................................5, 6
`Intel Corp. v. Qualcomm Inc.,
`21 F.4th 801 (Fed. Cir. 2021) ..................................................................................................12
`Mentor Graphics Corp. v. Eve-USA, Inc.,
`851 F.3d 1275 (Fed. Cir. 2017)..................................................................................................1
`Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
`976 F.2d 1559 (Fed. Cir. 1992)..................................................................................................1
`Mobile Equity Corp. v. Walmart Inc.,
`No. 2:21-cv-00126, 2022 WL 19917855 (E.D. Tex. Sept. 23, 2022)......................................16
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)................................................................................................11
`PPG Indus. v. Guardian Indus. Corp.,
`156 F.3d 1351 (Fed. Cir. 1998)..................................................................................................5
`Salazar v. AT&T Mobility, LLC,
`No. 2:20-CV-00004-JRG, 2021 WL 11703427 (E.D. Tex. July 28, 2021) .....................5, 8, 10
`Salazar v. HTC Corp.,
`No. 2:16-CV-01096-JRG-RSP, 2018 WL 2033709 (E.D. Tex. Mar. 28, 2018) .......................3
`Sportspower Ltd. v. Crowntec Fitness Mfg. Ltd.,
`No. 4:19-cv-66, 2021 WL 111508 (E.D. Tex. Jan. 12, 2021) .................................................15
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)......................................................................................9, 10, 11
`
`ii
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`

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`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 4 of 25
`
`Table of Exhibits and Docket Cites
`
`..... /, ~·
`
`Dadtet N'o;;
`
`Dkt. 113
`
`Claim Constm ction Order and Memorandum in Suppo1t Thereof, filed June 19,
`2023 ("Order")
`
`Dkt. 135-5
`
`Dkt. 135-6
`
`U.S. Patent No. 8,67 1,139, titled "Media Properties Selection Method and Sys-
`tern Based on Expected Profit from Profile-Based Ad Delive1y ," granted Mar.
`11, 2014 ("' 13 9 patent")
`U.S. Patent No. 7,822,639, titled "Added-Revenue Off-Site Targeted Internet
`Adve1tising," granted Oct. 26, 2010 ("'639 patent")
`
`U.S. Patent No. 8,244,586, titled "Computerized Systems for Added-Revenue
`Dkt. 135-7 Off-Site Targeted Internet Adve1tising," granted Aug. 14, 2012
`("' 5 86 patent")
`
`Ex. 1
`
`Ex.2
`
`Ex. 3
`
`Ex.4
`
`Ex. 5
`
`Ex. 6
`
`Ex. 7
`
`Ex. 8
`
`Ex. 9
`
`Rebuttal Expe1t Report of Dr. Herny Houh regarding non-infringement, served
`July 28, 2023 ("Houh") (annotated)
`
`Excerpts from the August 9, 2023 deposition transcript of Dr. Herny Houh
`("8/9 Houh Dep.") (annotated)
`
`Exce1p ts from the Expe1t Repo1t of Dr. Eric Koskinen Regarding Infringement,
`se1ved June 16, 2023 ("Koskinen") (annotated)
`
`Exce1pts from the Expe1t Report of Jason Frankovitz Regarding Validity,
`se1ved July 28, 2023 ("Frankovitz") (annotated)
`
`Exce1pts from the August 15, 2023 deposition transcript of Dr. Eric Koskinen
`("Koskinen Dep.") (annotated)
`
`Supplemental Expe1t Repo1t of Dr. Eric Koskinen Regarding Infringement,
`se1ved August 9, 2023 ("Koskinen Supp.")
`
`Exce1p ts from the August 15, 2023 deposition transcript of Dr. Herny Houh
`("8/ 15 Houh Dep.") (annotated)
`
`Exce1pts from Defendants ' Objections and Responses to Plaintiffs' Notice of
`Deposition of Defendants Pursuant to Fed. R. Civ. P. 30(b)(6), se1ved March
`1, 2023 ("30(b )( 6) Response") ( annotated)
`
`Exce1pts from Exhibit A-10 to Plaintiffs AlmondNet, Inc. and Intent IQ, LLC 's
`Disclosm e of Final Infringement Contentions, se1ved Januaiy 26, 2023 ("Final
`Inf. A-1 0") ( annotated)
`
`111
`
`

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`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 5 of 25
`
`I.
`
`INTRODUCTION
`
`AhnondNet's request to strike entire sections and a staggering number of paragraphs from
`
`Dr. Houh's repo1t based on thirteen different arguments merely seeks to silence him and prevent
`
`the jwy from hearing relevant testimony. In essence, AlmondNet has taken a list of cross-exami(cid:173)
`
`nation points and conve1ted it into a motion to strike. Because Dr. Houh's reasoning is sound and
`
`based on his perspective as a skilled artisan, AlmondNet's motion must be denied.
`
`II.
`
`DR. HOUH'S OPINION ON NON-INFRINGING ALTERNATIVES IS PROPER.
`
`AhnondNet seeks to preclude testimony concerning non-infringing alternatives (Ex. 11
`
`("Houh") ,i,i 354-360), based on the asse1tion that Dr. Houh did not assume infringement as the
`
`law requires. (Dkt. 134 ("Mot.") at 1.) But Dr. Houh explained that
`
`(Houh, ,i 354.)2 With this mistaken premise con ected, the motion fails. Whether an alternative
`
`product design is non-infringing is a question of fact for the jwy . See, e.g., Minn. Mining & Mfg.
`
`Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1577 (Fed. Cir. 1992) ("The exist-
`
`ence of a noninfringing substitute is a question of fact. ... "); Mentor Graphics Corp. v. Eve-USA,
`
`Inc. , 851 F.3d 1275, 1288 (Fed. Cir. 2017). And here, Dr. Houh has explained the basis for his
`
`opinion. The claims require authorizing or facilitating a delive1y of an adve1tisement after deter(cid:173)
`
`mining that a visitor visited a first Internet site.3 Given those requirements, Dr. Houh opines that
`
`1 Exhibits to the Declaration of Johnson K. Kuncheria filed herewith unless othe1w ise noted.
`2 All em basis is added unless otherwise noted.
`
`1
`
`

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`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 6 of 25
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`(Houh, ,i 355.) Indeed, AlmondNet never argues in its motion that this alternative infringes. (See
`
`Mot. at 1-4.)
`
`Instead, AlmondNet argues that the Court should exclude Dr. Houh's detailed analysis be-
`
`cause
`
`. (Mot. at 2.) But that is inelevant, since the
`
`reasons why the alternative technology does not infringe those claim limitations are different than
`
`those underlying Dr. Houh's non-infringement opinions for the accused technology. As Dr. Houh
`
`opmes,
`
`(Houh, iii! 356-57.) And
`
`(Id.) Simply put,
`
`. While Dr. Houh opines that
`
`. AlmondNet
`
`2
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`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 7 of 25
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`cites no case holding that non-infringing alternatives are not acceptable if they do not perfonn the
`
`same claim elements-albeit for different reasons-than the accused technology. To the contra1y,
`
`whether a non-infringing alternative is acceptable does not depend on the presence or absence of
`
`any particular claim limitation. See Salazar v. HTC Corp., No. 2:16-CV-01096-JRG-RSP, 2018
`
`WL 2033709, at * 3 (E.D. Tex. Mar. 28, 2018). In AlmondNet's single case excluding an opinion
`
`on non-infringing alternatives, the expe1t had expressly admitted "that these design-around alter(cid:173)
`
`natives would infringe some asserted claims." Glaukos Corp. v. Ivan tis, Inc., No. l 8-cv-620, 2020
`
`WL 10501852, at *12 (C.D. Cal. July 23, 2020) (citation and quotations omitted). No such ad(cid:173)
`
`mission is present here. The Comi should deny AhnondNet's prejudicial request to strike.
`
`III. DR. HOUH'S OPINIONS ARE CONSISTENT WITH THE COURT'S MARK(cid:173)
`MAN ORDER.
`
`A.
`
`Dr. Houh does not opine that the '639 and '586 patent claims require
`saturation.
`
`Again, AlmondNet's motion rests on a mistaken premise.
`
`deposition, Dr. Houh confirmed that
`
`(Houh, Section VII.B & C.) At his
`
`(Ex. 2 ("8/9
`
`Houh Dep.") at 104:1 8-21.) Thus, AlmondNet's inflammato1y suggestion that Dr. Houh testified
`
`that he "need not follow the holdings in the Comt's Markman order" is false. (Mot. at 5.)4 The
`
`4 AlmondN et' s co
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`3
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`

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`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 8 of 25
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`Comt should therefore deny AhnondNet's motion.
`
`To be clear, AhnondNet has res01ted to cheny-picking phrases from Dr. Houh's opinions
`
`in a way that misconstrnes them. First, Dr. Houh never opined that
`
`(Id.) Instead, Dr. Houh
`
`(Ex. 3 ("Koskinen"), ,i 24.) Dr. Houh explains that,
`
`(See Houh, ,i 238
`
`■).) These opinions are offered specifically to rebut Dr. Koskinen' s own asse1tions and pro(cid:173)
`
`posed testimony to the jmy-
`
`there is no ground to exclude them, especially when both expe1ts
`
`agree that
`
`. Indeed, even Almond-
`
`Net's validity expe1t Mr. Frankovitz stated in his report that
`
`-
`
`· (See Ex. 4 ("Frankovitz"), ,i 24.) AlmondNet's position is thus that Dr. Houh should be
`
`forbidden from mentioning "satmation" while its own expe1ts testify freely about it. (See, e.g. ,
`
`Koskinen, ,i,i 24, 29; Frankovitz, ,i,i 24, 29, 399,415, 421, 422,431 , 432, 456,461 , 494, 495, 502,
`
`4
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 9 of 25
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`509.)5 There is no basis for such indiscriminate exclusion. Dr. Houh is entitled to rely on the
`
`specification 's disclosmes just as Almond.Net's own experts have done.
`
`B.
`
`Dr. Houh's non-infringement opinions concerning the "sold" and "has paid"
`limitations apply the plain and ordinary meaning of those terms.
`
`The "task of detennining whether the construed claim reads on the accused product is for
`
`the finder of fact." PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998).
`
`This means that the jury is "free to apply" an expe1t' s description of a claim te1m that the Comt
`
`has construed to have its plain meaning. See Haberman v. Gerber Prods. Co. , 236 F. App'x 592,
`
`600 (Fed. Cir. 2007). Likewise, where the Comt has not construed a te1m, an expe1t "is free to
`
`opine as to the plain and ordinaiy meaning of the te1m as known within the art to a person of
`
`ordina1y skill." See Salazar v. AT&T Mobility, LLC, No. 2:20-CV-00004-JRG, 2021 WL
`
`11703427, at *1-2 (E.D. Tex. July 28, 2021) ("AT&T Mobility"). Almond.Net's next ai·gmnent
`
`and those in the following sections violate these principles. This Comt has itself previously re(cid:173)
`
`jected similai· arguments. Freshub, Inc. v. Amazon.com, Inc. , 576 F. Supp. 3d 458, 463 (W.D. Tex.
`
`Dec. 17, 2021) (Albright, J.) (holding that where the Comt did not constr11e a claim te1m, there is
`
`no critical flaw in an expert applying the ordinaiy meaning based on his own understanding of the
`
`te1m in view of its use in the patent).
`
`Ahnond.Net contends that Dr. Houh applies constructions of the tenns "sold" and "has
`
`paid" that the Comt rejected at claim construction. But that is incon ect. Neither te1m was pro(cid:173)
`
`posed for construction. Instead, the Comt construed broader phrases in which these te1ms appeai·
`
`5 For exam le, without an
`of Dr. Houh's'
`-
`" even though they re o
`at 5; see, e.g. , Houh ,I 53
`to str·ike pai·agraphs merely because
`(Mot. at 5 ( citing Houh ,i,i 252, 272, 304, 310 .
`-
`
`5
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 10 of 25
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`to have their “plain-and-ordinary” meanings. (Order at 9, 15.) Dr. Houh expressly applies plain
`
`and ordinary meaning in his report, and the jury is free to adopt his opinions if “consistent with
`
`the jury’s understanding.” Haberman, 236 F. App’x at 600.
`
`At claim construction, the parties disputed the meaning of two claim phrases. The first was
`
`“delivery to visitor computers visiting a second, different Internet site of advertisements sold, for
`
`a first price, for placement on visitor computers that have visited the first Internet site,” that appears
`
`in the ’639 and ’586 patents. (Order at 9.) The Court explained that a dispute was whether “an
`
`advertisement be previously sold for display on the first Internet site” and rejected Amazon’s pro-
`
`posed construction. (Order at 12, 13-14.) The Court thus rejected the suggestion that the claims
`
`require a previous sale for the first site, not that the advertisement must have been previously sold
`
`at all, as AlmondNet argues.
`
`The Court also considered whether a statement during prosecution of the ’639 patent—that
`
`“the off-site advertisement arises from the advertiser having ‘paid to display…’”—disclaimed
`
`plain and ordinary meaning by requiring making a payment before the advertisement was dis-
`
`played. The Court stated—while discussing this statement— that “the plain language of this state-
`
`ment does not describe that payment must occur prior to the placement of the advertisement at the
`
`second Internet site.” (Id. at 14-15.) Thus, it concluded “that Applicant’s statement [during pros-
`
`ecution] do[es] not meet the ‘exacting’ standard required for a prosecution disclaimer.” (Id. at
`
`14.) The Court did not rule on the plain and ordinary meaning of “sold,” let alone rewrite the claim
`
`to state “to be sold” or “sell.” (Id. 9-15.)
`
`does not conflict with the Markman order.
`
`The parties also disputed a second phrase—
`
`
`
`, and thus his opinion
`
`direction of at least one off-site advertisement to visitor computers visiting a second
`
`6
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 11 of 25
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`Internet site . . . which off-site adve1iisement concerns at least one offering of a
`third-party adve1iiser that has paid to display said adve1iisement on visitor comput(cid:173)
`ers that have visited the first Internet site
`
`-
`
`that appears only in the '586 patent. The prosecution histo1y statement discussed above does
`
`not appear in the file wrapper of the '586 patent, only that of the predecessor '639 patent, and it
`
`was made in the context of adding the word "sold" to the claim. Even to the extent relevant, at
`
`most, the Comt rejected a prosecution disclaimer argument, and still construed this term to have
`
`its plain and ordinaiy meaning. It did not interpret the words "has paid" in the claim as anything
`
`other than a simple past tense English verb, nor did it rewrite the claim to state "to be paid" or
`
`"cmTently being paid."
`
`In his repo1t, Dr. Houh states that
`(Houh, ,r,r 246, 254-57, 305, 313-16.) Almond.Net's expe1t Dr.
`
`Koskinen
`
`these verbs and the Comi did not hold othe1w ise in merely rejecting the prosecution hist01y dis(cid:173)
`
`There cannot be any other plain and ordinaiy meaning of
`
`claimer argument discussed above. 6
`
`6 Almond.Net also seeks to sti-ike additional portions of Dr. Houh's repo1i that have nothin
`do with the issue it raises. For exam le it seeks to exclude:
`69 and 75 in the
`
`,
`These op
`tion order and Almond.Net's attempt to lump them in and exclude them without offering relevant
`argument must be rejected.
`
`7
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 12 of 25
`
`IV. DR. HOUH CORRECTLY APPLIES PLAIN AND ORDINARY MEANING IN
`HIS NONINFRINGEMENT OPINIONS.
`A.
`
`Dr. Houh’s non-infringement opinions based on “first Internet site.”
`
`The asserted claims of the ’639 and ’586 patents require a “first Internet site.” Neither this
`
`term nor the term “site” was construed and accordingly, the plain and ordinary meaning governs.
`
`In his rebuttal report responding to Dr. Koskinen, Dr. Houh explains that
`
`
`
`
`
` (See, e.g., Houh, ¶¶ 242,
`
`279-280, 322-323, 344-345.) In other words, Dr. Koskinen’s mashing together of
`
` does not meet the plain and ordinary meaning of the singular term “site.”
`
`AlmondNet argues that Dr. Houh’s theory is inconsistent with the file history. (Mot. at 8.)
`
`That is a point for cross-examination, not a basis to exclude his testimony. See AT&T Mobility,
`
`2021 WL 11703427, at *2; Freshub, 576 F. Supp. 3d at 463 (explaining that “jury is free to judge
`
`the credibility” and “weigh” expert testimony on ordinary meaning). But in any event, AlmondNet
`
`is incorrect, because the file history does not equate a “site” with “a collection of Internet pages or
`
`properties.” (Mot. at 8 (quoting Dkt. 135-9 at 3377).) The excerpt AlmondNet cites explains that
`
`“sites”—i.e., the plural—refers to “collections of one or more Internet pages.” (Id.) The word in
`
`the claim, however, is a singular “site” and nowhere does the prosecution history define it to refer
`
`to multiple pages or properties, let alone an arbitrary amalgamation like the collection AlmondNet
`
`has identified. The excerpt does state that a “site” does not “refer to any particular URL, domain
`
`name, or IP address,” because “a given site may have multiple URLs, domain names, or IP ad-
`
`dresses,” but Dr. Houh does not opine otherwise. (See id.)
`
`
`
` -
`
`8
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`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 13 of 25
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`To the extent Almond.Net now argues lexicography, Almond.Net never proposed this te1m
`
`for construction and does not identify any disclosure in the specification supp01ting its position.
`
`Nor does the excerpt it cites define the te1m unambiguously; and of course, a disavowal cannot
`
`broaden the scope of the tenn, as AlmondNet desires, it can only nruTow it. Thorner v. Sony
`
`Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 20 12) (disavowal arises "when the patentee
`
`disavows the full scope of a claim te1m either in the specification or during prosecution"); Biogen,
`
`Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) ("[r]epresentations during prose(cid:173)
`
`cution cannot enlarge the content of the specification."). AlmondNet's request to strike paragraphs
`
`related to "first Internet site" should be denied.7
`
`B.
`
`Dr. Houh's non-infringement opinions based on "directing to a third party
`server."
`
`The tenn "directing, to a third pruty server" appears in the ' 139 patent, and Dr. Houh ap(cid:173)
`
`plies its plain and ordina1y meaning. AlmondNet argues that Dr. Houh's opinions contradict cer(cid:173)
`
`tain statements in the file histo1y by the applicant that "directing" includes "indirect" fo1ms of
`
`communication. (Mot. at 9.) These file histo1y statements were noted in an applicant's "Interview
`
`Repo1t" and Almond.Net does not show they were ever acknowledged, much less accepted by the
`
`Examiner. (Dkt. 135-8 at 33.) Nor could these self-serving statements expand the disclosures in
`
`the specification. See Biogen, 318 F.3d at 1140 ("[r]epresentations during prosecution cannot en(cid:173)
`
`large the content of the specification"). Again, this is at most a point for cross-examination.8
`
`these as well.
`8 Almond.Net again seeks to strike ru·agraphs in Dr. Ho
`.
`.
`.
`
`'
`
`9
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 14 of 25
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`C.
`
`Dr. Houh's non-infringement opinions based on "first price."
`
`The te1m "first price" appears in asserted claims of the '639 and '586 patents. The tenn
`
`"first price" has not been constrned. Accordingly, the general rnle applies: "The words of a claim
`
`are generally given their ordinaiy and customaiy meaning as understood by a person of ordinaiy
`
`skill in the aii when read in the context of the specification and prosecution histo1y ." Thorner, 669
`
`F.3d at 1365; see also AT&T Mobility, 2021 WL 11703427, at *1-2 (holding that where the Comi
`
`has not construed a te1m, an expe1i "is free to opine as to the plain and ordina1y meaning of the
`
`tenn as known within the aii to a person of ordinaiy skill").9 In his repo1i, Dr. Hou h -
`
`(Houh, ,r 246; see also id. ,r 256
`
`facts, es eciall where there is no enuine dispute that
`(citing
`).)
`9 AlmondNet's argmnent that Dr. Houh failed to opine that lexicography or disclaimer required
`the Comito constrne the te1m (Mot. at 10) is thus non-sequitur.
`
`. (Id.
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 15 of 25
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`. (See, e.g., Houh, ¶¶ 246, 304.)
`
`AlmondNet’s suggestion that Dr. Houh is merely importing limitations from the specifica-
`
`tion is thus incorrect. (Mot. at 9.) Even AlmondNet’s motion
`
`—it just chose not to bold and italicize relevant portions. (See id. (quoting Houh, ¶ 256);
`
`-
`
`see also Houh, ¶¶ 258, 317 (
`
`
`
`); id. (citing also ’586 patent,
`
`cls. 8 and 9).) In any event, AlmondNet does not explain why it is impermissible for Dr. Houh to
`
`refer to the specification. It is not—Dr. Houh was required apply the plain meaning of the claims
`
`in the context of the specification and prosecution history. Thorner, 669 F.3d at 1365; Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). The Court must therefore deny AlmondNet’s
`
`motion.10
`
`D.
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`Dr. Houh’s non-infringement opinions based on “authorizing.”
`
`Claim 37 of the ’139 patent recites “for each of a multitude of different electronic visitors
`
`to a first media property” “authorizing” the “automat[ic] . . . display of an advertisement” “when
`
`the electronic visitor visits the second media property at a time after the electronic visitor visits
`
`the first media property.” (’139 patent, cl. 37.) Thus,
`
`
`
`
`
`
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`(See, e.g., Houh, ¶ 208); Thorner, 669 F.3d at 1365; Phillips, 415 F.3d at 1313 (“[T]he person of
`
`ordinary skill in the art is deemed to read the claim term not only in the context of the particular
`
`
`10 As with its other requests, AlmondNet seeks to strike paragraphs that provide a technology
`background (¶ 69), directly rebut Dr. Koskinen (¶¶ 257, 258), contain non-infringement positions
`unrelated to this issue (¶¶ 246-47, 255-57 263, 271, 272, 274, 276-78, 304-305, 315, 320), and
`otherwise analyze the specification (¶¶ 246, 272-73, 281, 317, 324). The Court should deny this
`request.
`
`11
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`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 16 of 25
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`claim in which the disputed term appears, but in the context of the entire patent, including the
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`specification.”). AlmondNet contends that “at a time after the electronic visitor visits the first
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`media property” refers to a current event such that the claimed “authorization” and the “visit[] [to]
`
`the second media property” occur concurrently. That interpretation is wrong because it reads the
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`“at a time after” language out of the claim. Cf. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 810
`
`(Fed. Cir. 2021) (claim terms should not be read “in a way that renders them void, meaningless,
`
`or superfluous”) (collecting cases). But in any event a dispute between experts as to the application
`
`of plain and ordinary meaning is not a basis to exclude testimony. Thus, no basis exists to strike
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`paragraphs 69, 208, 252, and 310 or exclude related testimony.
`
`E.
`
`Dr. Houh’s non-infringement opinions based on “condition.”
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`Dr. Houh does not opine that
`
` yet that is the premise of AlmondNet’s motion to strike paragraph 202 of Dr. Houh’s
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`report. (Mot. at 12 (arguing that he “presumably” makes such an argument).) Instead,
`
`
`
` (Houh,
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`-
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`¶ 202.)
`
`
`
`
`
`
`
`
`
`
`
` Paragraph 202 also
`
`spans nearly four pages and covers subject matter unrelated to the issue AlmondNet purports to
`
`raise; yet, AlmondNet again seeks to strike broad swaths of Dr. Houh’s infringement opinions
`
`resulting in an unfair advantage at trial. This request should also be denied.
`
`F.
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`Dr. Houh’s opinions relating to “expected profit.”
`
`The asserted claims of the ’139 patent do not recite an “expected profit,” nor does
`
`
`
`-
`
`12
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`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 17 of 25
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`tion of Dr. Houh’s
`
`. Consistent with this, AlmondNet failed to identify any por-
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` (Mot. at 12-13; see also Houh, Section VII.A.)
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`This fact alone is sufficient to deny the motion.
`
`The relevant paragraphs (51, 59, and 69) appear in sections addressing
`
`
`
`
`
`. (See Houh, Section V.C & VI.)
`
`That Dr. Houh answered counsel’s questions about this theory and the related portions of the spec-
`
`ification at his deposition does not mean that he “intends to testify at trial” (see Mot. at 12) to non-
`
`infringement opinions other than those disclosed in his report. The Court should deny Almond-
`
`Net’s request.
`
`G.
`
`Dr. Houh’s non-infringement opinions based on a “third party server com-
`puter controlling advertising space.”
`
`AlmondNet seeks to strike paragraph 203 of Dr. Houh’s report because it disagrees with
`
`-
`
`his non-infringement opinion. AlmondNet points to nothing in its motion showing that
`
` For this reason alone, AlmondNet’s request must be denied.
`
`Paragraph 203 spans nearly a page and a half and
`
`Dr. Houh explains that
`
`
`
`
`
`.
`
`
`
`claim 37 introduces this language, follows it by a colon, and then lists steps (a)-(d). (’139 patent,
`
`cl. 37.) Dr. Houh next explains
`
`. Dr. Koskinen
`
` (Houh, ¶ 203.) Indeed,
`
`makes only the conclusory allegation that
`
` (Koskinen, ¶ 125),
`
`
`
`13
`
`-
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 18 of 25
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`. (Houh, ¶ 203.) Finally,
`
`
`
`
`
`
`
`This reasoned and thorough analysis by Dr. Houh is clearly more detailed than the
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`conclusory statements by Dr. Koskinen regarding a “multitude of different electronic visitors.”
`
`(Compare id., with Koskinen, ¶ 125.)
`
`To manufacture an argument that Dr. Houh’s analysis contradicts the specification,11 Al-
`
`mondNet cobbles together disparate excerpts of it to attempt to show that multiple server comput-
`
`ers—rather than a single server computer—can be used to control advertising space at a second
`
`media property. (Mot. at 14.). AlmondNet’s argument fails because step (a) of claim 37 recites
`
`“second media property” in its singular form, as opposed to “media properties” [plural] as Al-
`
`mondNet quotes from the specification. (Compare ’139 patent, cl. 37, with Mot. at 14 (quoting
`
`’139 patent, 8:30-32).) And contrary to AlmondNet’s argument, whether a media property uses
`
`one or more servers is not the issue—rather it is whether claim step (a)’s “directing” is performed
`
`in connection with the “multitude of different electronic visitors to a first media property.” (’139
`
`patent, cl. 37.)
`
`V.
`
`DR. HOUH’S OPINIONS ON CLAIM PREAMBLES ARE PROPER.
`
`AlmondNet cites no legal authority for the extreme proposition that opinions made only
`
`“to the extent that the preamble is limiting” must be stricken, particularly when they are offered in
`
`rebuttal. AlmondNet’s own expert Dr. Koskinen opined
`
`
`
`. (Koskinen, ¶¶ 115-116, 165-166,
`
`
`11 AlmondNet’s argument that Dr. Houh’s analysis contradicts the specification is difficult to
`square with the other parts of its brief that Dr. Houh should not have considered the specification
`and may not discuss it at trial. (Compare Mot. at 14-15, with id. at 9-13.)
`
`14
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 19 of 25
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`217-218, 248-249, 276-277.) AlmondNet offers no reason why Dr. Houh should not be permitted
`
`to respond to Dr. Koskinen’s theories on this subject. AlmondNet’s request should be denied.
`
`VI. DR. HOUH’S OPINIONS ON CORPORATE ENTITIES ARE PROPER.
`
`AlmondNet’s infringement expert Dr. Koskinen has already served a supplemental expert
`
`report on August 9 concerning corporate entities. (Ex. 6 (“Koskinen Supp.”), ¶¶ 18-25.) That
`
`supplement was served nearly a week before either expert was deposed on their respective in-
`
`fringement and non-infringement reports. And Amazon has not sought to prevent Dr. Koskinen
`
`from testifying about the opinions in his supplemental report. These facts alone are sufficient to
`
`deny AlmondNet’s requests to strike Dr. Houh’s opinions and there is no prejudice where it has
`
`been cured by a supplemental expert report. See, e.g., Sportspower Ltd. v. Crowntec Fitness Mfg.
`
`Ltd., No. 4:19-cv-66, 2021 WL 111508, at *3 (E.D. Tex. Jan. 12, 2021). AlmondNet received a
`
`full and fair opportunity to not only to respond to Dr. Houh’s opinions through its first supple-
`
`mental report but also to depose him on that subject matter and on the supplemental opinions. (Ex.
`
`7 (“8/15 Houh Dep.”) at 106:2-8, 108:10-12 (
`
`
`
`
`
`)
`
`And AlmondNet in fact did depose Dr. Houh on this topic. (See, e.g., 8/15 Houh Dep. at 50:7-13
`
`(confirming that
`
`).) Despite hav-
`
`ing this full and fair opportunity, AlmondNet still seeks to exclude Dr. Houh’s opinions while it
`
`presents its own expert opinions on the same topic. AlmondNet’s arguments lack merit.
`
`AlmondNet claims that it served a Rule 30(b)(6) topic
`
`
`
`
`
`
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` The deposition topic, however, did not give fair notice
`
`15
`
`

`

`Case 6:21-cv-00898-ADA Document 185 Filed 09/14/23 Page 20 of 25
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`that it sought this info1mation, but instead asked vaguely for
`
`•
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`and separately about
`
`(Ex. 8 ("30(b)(6) Response") at 6.) In response,
`
`Amazon notified AlmondNet that
`
`1s an
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`that is among other things
`
`because it
`
`(Id. at 6-7.) As a result,
`
`any other agreement on this topic nor did it move to compel.12
`
`(Id.) AlmondNet did not seek
`
`(See '639 patent, cl. 24; compare Ex. 9 ("Final Inf. A-10") at 31 (claim element
`
`[24b]), with id. at 65 (claim element 24[c]); (Compare id. at 4 (claim element 24[a]), with id. at
`
`98-99 (claim element [24f]).) Instead, it was not until well after all Amazon witnesses had been
`
`deposed in this case when Dr. Koskinen served his infringement repoli on June 16, that Amazon
`
`learned that AlmondNet had shifted its infringement theo1y. While AlmondNet's infringement
`
`contentions
`
`Dr. Koskinen instead accused a broader collection of
`
`as t h e .
`
`12 Even if a discove1y deficiency existed (it did not), "the appropriate remedy ... is not to
`exclude an expe1t's opinions, but rather to file a motion to compel." See Mobile Equity Corp. v.
`Walmart Inc., No. 2:21-cv-00126, 2022 WL 19917855, at *2 (E.D. Tex. Sept. 23, 2022).
`
`16
`
`

`

`Case 6:21-c