Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`CIVIL ACTION NO. 1:20-CV-00034-ADA
`
`v.
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`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
`
`Defendants.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`JURY TRIAL DEMANDED
`
`CIVIL ACTION NO. 1:20-CV-00034-ADA
`
`v.
`
`JURY TRIAL DEMANDED
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`PUBLIC VERSION
`
`ANCORA’S MOTION TO EXCLUDE CERTAIN TESTIMONY OF
`LG ELECTRONICS’ TECHNICAL EXPERT DR. SUZANNE BARBER
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`

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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 2 of 11
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`Ancora brings this motion to exclude two aspects of the testimony and opinions of Dr.
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`Suzanne Barber, LG Electronics’ (“LGE”) proffered expert on invalidity and non-infringement.
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`Each of these three opinions flout the Federal Rules of Evidence and Daubert v. Merrell Dow
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`Pharm., Inc., 509 U.S. 579 (1993). The Court should exclude them.
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`First, Dr. Barber’s non-infringement opinions turn on claim construction arguments that
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`improperly “seek[] to limit the full scope of a term’s plain and ordinary meaning.” Huawei Techs.,
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`Co, Ltd v. Samsung Elecs. Co., 340 F. Supp. 3d 934, 968 (N.D. Cal. 2018).1 Such claim
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`construction opinions are improper and “must be stricken.” Id.; accord Ziilabs Inc., Ltd. v.
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`Samsung Elecs. Co., 2015 WL 8274055, at *2-4 (E.D. Tex. Dec. 8, 2015) (holding that experts
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`“cannot rely on statements in the prosecution history to limit the ordinary meaning of the term”).
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`Second, Dr. Barber uses her report to parrot expert reports of Samsung witnesses (e.g., Drs.
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`Nettles, Arbaugh, and Hicks) who LGE has not retained and has never disclosed as witnesses in
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`this case. Courts routinely reject such end-runs around the hearsay rule, Factory Mut. Ins. Co. v.
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`Alon USA L.P., 705 F.3d 518, 524 (5th Cir. 2013) (“[T]he expert may [not] simply parrot
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`impermissible hearsay evidence, thereby allowing a party to circumvent the rules against
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`hearsay.”), and the rules governing expert disclosures, Howard v. Bosch Thermotechnology Corp.,
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`2018 WL 2087259, at *3 (E.D. Mo. May 4, 2018) (precluding plaintiff’s expert from testifying
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`about report where plaintiff failed to timely disclose expert pursuant to court’s scheduling order).
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`I.
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`BACKGROUND
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`Ancora accuses LGE of infringing the methods claimed in U.S. Patent No. 6,411,941 (the
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`’941 Patent) by, e.g., remotely delivering software updates (OTA Updates) to LGE smart phones
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`and smart TVs, configuring those devices to write verification structures to BIOS memory, and
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`1 All emphases in this brief are added by Ancora unless otherwise noted.
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`1
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`

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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 3 of 11
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`verifying the software updates using that verification structure. LGE’s counsel retained Dr. Barber
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`as a “technical expert” to opine on, among other things, whether LGE practiced the ’941 Patent,
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`see Ex. 1 (Barber Rebuttal Rpt.) ¶¶ 1-2, and whether the ‘’941 Patent is valid, see Ex. 2 (Barber
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`Invalidity Rpt.2
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`II.
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`LEGAL STANDARD
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`Expert opinions are admissible only if they are relevant, “will help the trier of fact to
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`understand the evidence or to determine a fact in issue,” and are “the product of reliable principles
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`and methods” that were “reliably applied” to “the facts of the case.” Fed. R. Evid. 702. Thus, “[t]he
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`court, in its role as gatekeeper, must exclude expert testimony that is not reliable and not
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`specialized, and which invades the province of the jury to find facts and that of the court to make
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`ultimate legal conclusions.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1364
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`(Fed. Cir. 2008). LGE must “prove by a preponderance” that Dr. Barber’s challenged opinions are
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`admissible. Paz v. Brush Engineered Materials, Inc., 555 F.3d 383, 388 (5th Cir. 2009). It cannot.
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`III. ARGUMENT
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`A.
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`Dr. Barber’s Claim Construction Arguments That Seek to Limit The Plain
`and Ordinary Meaning of Claim Terms Must Be Stricken.
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`Dr. Barber’s non-infringement opinion depends on her artificial narrowing of the plain
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`meaning of three claim terms that (a) the Court construed to have their plain and ordinary meaning
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`or (b) were never proposed for construction.3 Specifically, and as summarized in the below table,
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`Dr. Barber’s non-infringement opinion as to each term is based entirely on her attempt to limit the
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`scope of the term by importing limitations from the specification or prosecution history.
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`2 All exhibits are appended to the March 31, 2021 Declaration of Steven M. Seigel. See D.I. 193.
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`3 The “plain and ordinary meaning” applies both when the court “adopt[s]” the plain and ordinary
`meaning during Markman and when “neither party request[s] [a term’s] construction.” YETI
`Coolers, LLC v. RTIC Coolers, LLC, 2017 WL 404519, at *1 (W.D. Tex. Jan. 27, 2017).
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`2
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 4 of 11
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`To do so, Dr. Barber conducts what amounts to an (incorrect) Markman analysis—relying
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`on the claim language, specification, and prosecution history of the ’941 Patent to limit the
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`meaning of each term. This is improper.
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`/ Court’s
`Term
`Construction
`“memory of the
`BIOS”
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`Court’s Construction:
`This term does not
`require construction.
`See D.I. 69 (Final
`Claim Construction
`Order) at 3.
`
`
`“license”
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`Court’s Construction:
`The portion of the
`preamble reciting “a
`method of restricting
`software operation
`within a license . . . .”
`is non-limiting, and
`the term “license”
`does not need to be
`construed. D.I. 69 at
`2.
`
`
`“pseudo-unique key”
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`Court’s Construction:
`Not proposed for
`construction.
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`Dr. Barber’s Claim Construction Opinion
`
`•
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`“[M]emory of the BIOS” excludes “secondary storage.” See Ex. 1
`(Barber Rebuttal Rpt.) at:
`•
`Id. ¶ 287 (“[T]he plain meaning is evident to a person of ordinary
`skill based on the disclosures and the figures [of the ’941 Patent]
`as discussed below.”);
`Id. ¶ 288-89 (in “Figure 1 of the ’941 Patent . . . , no secondary
`storage
`(like hard drives, dongles, etc.)
`is shown or
`contemplated.”);
`Id. ¶ 290 (“Further evidence that RAM or secondary memory
`storage is not the claimed memory of the BIOS is found in the
`specification at several places . . .”);
`Id. ¶ 295-301 (“[T]he claims, like the specification, lack any
`statement, or even any suggestion, that the ‘erasable, non-volatile
`memory area of a BIOS’ could be . . . secondary memory . . . .
`The file history confirms this understanding.”)
`
`•
`
`•
`
`
`“license” means “legal permission to use software” and excludes
`confirming a program’s authorization or verification to run on a device:
`•
`Id. ¶ 154 (“The use of ‘license’ in the ’941 patent is consistent
`with the understanding of a person having ordinary skill in the art
`that it relates to a legal permission to use software.”);
`Id. ¶ 155 (“ ‘[T]he plain and ordinary meaning of the term
`‘license,’ . . . is a legal right to use software.’”);
`Id. ¶ 156-57 (“The ‘restrictions’ discussed in the patent include
`procedures used to penalize a user that is believed to have
`obtained software inappropriately.”);
`Id. ¶ 168 (“[L]icensed programs are intended to be limited to the
`purchaser / licensee. Only specific computers or people that are
`identified with a particular license can operate the software.”)
`
`•
`
`•
`
`•
`
`
`“pseudo-unique key” must be “unique to a[] particular device or a user”
`and excludes “public keys”:
`•
`Id. ¶¶ 252-261 (citing extensive portions of the specification to
`argue for narrow construction of “pseudo-unique key”);
`Id. ¶¶ 262-267 (citing extensive portions of the file history to
`argue that “pseudo-unique key” must mean a key that “uniquely
`identif[ies] the . .
`. device that is performing the accused
`verification operation”).
`
`•
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`3
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`

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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 5 of 11
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`“Because claim construction is a matter of law to be decided by the court, and, by
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`implication, experts are not permitted to argue claim construction to the jury, an expert’s opinion
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`that seeks to limit the full scope of a term’s plain and ordinary meaning must be stricken.” Huawei,
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`340 F. Supp. 3d at 968. In short, impermissible claim construction for unconstrued terms happens
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`when an expert does exactly what Dr. Barber does here: “relies heavily on the prosecution history
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`[and] specification[] . . . to explain and expound upon a specific meaning and/or requirements of
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`the terms identified.” MediaTek Inc. v. Freescale Semiconductor, Inc., 2014 WL 971765, at *5
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`(N.D. Cal. Mar. 5, 2014); see Ziilabs Inc., 2015 WL 8274055, at *2-3 (striking expert testimony
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`that “determined the plain and ordinary meaning of the term ‘processor’ from the specification of
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`the ’584 patent” and used “statements in the prosecution history to limit [its] ordinary meaning”).
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`Thus, if a term is to be given its “plain and ordinary meaning,” the Court should preclude
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`an expert from arguing a more limited construction. Maxell, Ltd. v. Apple Inc., 2020 WL 8269548,
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`at *21 (E.D. Tex. Nov. 11, 2020) (striking expert opinion that “use[d] embodiments from the
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`specification to limit [a] term’s plain and ordinary meaning”); Finjan, Inc. v. Secure Computing
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`Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (finding no O2 Micro violation where district court
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`precluded the Defendants’ expert from arguing to the jury that a term that was given its plain and
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`ordinary meaning “required an IP address”). As demonstrated below, Dr. Barber violates this rule
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`for each of these three terms by relying on the prosecution history and specification to advocate
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`for a construction far narrower than the “full range of [a term’s] ordinary meaning.” Trustees of
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`Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016).
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`(a) “memory of the BIOS”: Dr. Barber’s argument that “memory of the BIOS” excludes
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`any “secondary memory” is based entirely on her interpretation of the ’941 Patent’s specification
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`and prosecution history. See Ex. 1 (Barber Rebuttal Rpt.) at ¶¶ 287-306. Dr. Barber extensively
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`4
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 6 of 11
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`analyzes the claim language, id. ¶¶ 294-295, the specification, id. ¶¶ 288-292 (citing ’941 Patent
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`at Fig. 1, 1:19-26, 1:44-52; 2:10-26; 3:4-17, 3:25-34; 5:9-18), and the “file history,” see id. ¶¶ 296-
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`301, to arrive at her conclusion that “secondary storage cannot be part of any ‘erasable, non-
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`volatile memory area of a BIOS of the computer,” id. ¶ 301.
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`“These excerpts show [that Dr. Barber] was not relying on h[er] own expertise in
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`explaining the plain and ordinary meaning of the term, but rather relying on the patent’s intrinsic
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`record to narrow [the term’s] plain meaning.” Salazar v. HTC Corp., 2018 WL 1992417, at *2
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`(E.D. Tex. Apr. 27, 2018) (striking expert opinion). She cannot be permitted to do so at trial.
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`(b) “license” / “license record”: Dr. Barber also opines that the term “license”—and the
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`related unconstrued term “license record”—refers only to “a legal permission to use software” and
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`excludes the concept of authorizing or verifying a program to run on a computer. Ex. 1 (Barber
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`Rebuttal Rpt.) at ¶ 154. As with other terms, Dr. Barber grounds her opinion entirely in her reading
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`of the patent’s specification, id. ¶¶ 152, 156, 160, 167-168, arguing that “license” can mean only
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`one thing: “a legal permission to use software.” Id. ¶ 154. This is improper, as “an expert’s opinion
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`that seeks to limit the full scope of a term's plain and ordinary meaning must be stricken.” Huawei,
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`340 F. Supp. 3d at 968.
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`(c) “pseudo-unique key”: Finally—and most egregiously—Dr. Barber engages in an
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`extended 10-page claim construction argument to opine that “pseudo unique key” must be limited
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`to a key that is “unique to a[] particular device or a user.” Ex. 1 (Barber Rebuttal Rpt.) ¶ 246. As
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`with the two previous terms, Dr. Barber reaches this conclusion by analyzing the claim language,
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`id. ¶¶ 260-263, 273, specification, id. ¶¶ 257-261, 270, 272, and prosecution history, id. ¶¶ 262-
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`264, ultimately concluding that a “pseudo-unique key” excludes any key that “does not uniquely
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`identify the [] device that is performing the accused verification operation.” Id. ¶ 267.
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`5
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`

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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 7 of 11
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`In sum, for each of these three terms, Dr. Barber improperly seeks to “argue claim
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`construction to the jury” by resorting to “intrinsic . . . evidence to explain the meaning of a claim
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`term” and narrow its meaning. MediaTek, 2014 WL 971765, at *5. Each of these impermissible
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`claim construction arguments should be excluded. Accord Salazar, 2018 WL 1992417, at *2
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`(striking expert opinion that relied on “intrinsic record” rather than “his own expertise in
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`explaining the plain and ordinary meaning of the term”); CardSoft, Inc. v. VeriFone Sys., Inc.,
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`2012 WL 12895875, at *2-*3 (E.D. Tex. June 3, 2012) (expert opinions on “the proper scope of
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`[patent] claims” are inadmissible); Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
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`1364 n.6 (Fed. Cir. 2008) (“[A]llowing a witness to testify before the jury on claim construction
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`would be improper.”).
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`B.
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`Dr. Barber’s Opinions That Back-Door the Testimony of Samsung’s Experts
`Should Be Excluded.
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`The Court should also preclude Dr. Barber from acting as an improper conduit for the
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`opinion of other undisclosed experts that will not be subject to cross-examination—namely,
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`experts disclosed by Samsung but whom LGE has not disclosed or retained in this case.
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`In a 7-page section of her invalidity report, Dr. Barber opines that “Arbaugh,” one of LGE’s
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`prior art references, is entitled to a priority date of March 1997. See Ex. 2 (Barber Invalidity
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`Report) ¶¶ 225-244. To reach that opinion, Dr. Barber relies extensively on the expert reports of
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`Drs. Nettles, Hicks, and Arbaugh—experts that Samsung disclosed in its case, but for which LGE
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`produced no Rule 26 expert report and failed to include in its Rule 26 Initial Disclosures. Indeed,
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`in Dr. Barber’s summary paragraph for this 7-page section, she admits that:
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`6
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 8 of 11
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`Id. ¶ 225. Dr. Barber then weaves into her analysis statements and factual assertions by these
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`individuals, including egregious double hearsay such as:
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` Id. ¶ 235.
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`Dr. Barber must be precluded from serving as the hearsay mouthpiece for experts and
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`witnesses who will not appear in LGE’s case in chief. Although “experts may base their opinions
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`on otherwise-inadmissible information, such as hearsay,” FRE 703 “was not intended to abolish
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`the hearsay rule and to allow a witness, under the guise of giving expert testimony, to in effect
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`become the mouthpiece of . . . witnesses on whose statements or opinions the expert purports to
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`base his opinion.” Factory Mutual, 705 F.3d at 524 (citation and quotation marks omitted).
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`This risk of back-dooring hearsay is all the more problematic here because LGE has
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`identified none of these individuals as witnesses—meaning they will not testify at trial and their
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`hearsay statements (which Dr. Barber relies on) are not subject to cross examination. Bryan v. John
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`Bean Div. of FMC Corp., 566 F.2d 541, 546 (5th Cir. 1978) (“[T]o admit the hearsay opinion of
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`an expert not subject to cross-examination goes against the natural reticence of courts to permit
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`expert opinion unless the expert has been qualified before the jury to render an opinion.”). LGE’s
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`failure to disclose Drs. Nettles, Arbaugh, and Hicks as witnesses—as required by the Court’s
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`scheduling order—further compels the exclusion of any testimony from Dr. Barber that relies on
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`such witnesses’ reports or declarations in other cases. See Howard, 2018 WL 2087259, at *3
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`(precluding plaintiff from offering expert testimony about a timely-disclosed report where plaintiff
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`never disclosed the expert as a witness pursuant to the court’s scheduling order).
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`7
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 9 of 11
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`In sum, all of Dr. Barber’s testimony that purports to rely on the opinions and statements
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`of Samsung witnesses (Drs. Nettles, Arbaugh, and Hicks) should be stricken.
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`IV. CONCLUSION
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`The Court should strike and preclude Dr. Barber from testifying about: (1) improper claim
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`construction opinions (e.g., ¶¶ 152-170, 175, 185, 244-273, 283-285, 287-306, 355-364 of Dr.
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`Barber’s Rebuttal Report, Ex. 1) and (2) opinions premised on hearsay testimony of undisclosed
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`experts (e.g., ¶¶ 225-244 of Dr. Barber’s Invalidity Report, Ex. 2).
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`Date: March 31, 2021
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`
`
`/s/ Steven M. Seigel
`Charles Ainsworth
`State Bar No. 00783521
`Robert Christopher Bunt
`State Bar No. 00787165
`PARKER, BUNT & AINSWORTH, P.C.
`100 E. Ferguson, Suite 418
`Tyler, TX 75702
`903/531-3535
`charley@pbatyler.com
`rcbunt@pbatyler.com
`
`Lexie G. White (Texas 24048876)
`SUSMAN GODFREY LLP
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Tel: (713) 651-9366
`Fax: (713) 654-6666
`lwhite@susmangodfrey.com
`
`Andres Healy (pro hac vice)
`Steven M. Seigel (pro hac vice)
`Nicholas S. Crown (pro hac vice)
`SUSMAN GODFREY LLP
`1201 Third Avenue, Suite 3800
`Seattle, Washington 98101
`Tel: (206) 516-3880
`Fax: 206-516-3883
`ahealy@susmangodfrey.com
`sseigel@susmangodfrey.com
`ncrown@susmangodfrey.com
`
`
`8
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 10 of 11
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`Zachary B. Savage (pro hac vice)
`SUSMAN GODFREY LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, New York 10019
`Tel: (212) 336-8330
`Fax: (212) 336-8340
`zsavage@susmangodfrey.com
`
`COUNSEL FOR PLAINTIFF ANCORA
`TECHNOLOGIES, INC.
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`9
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`Case 1:20-cv-00034-ADA Document 206 Filed 04/08/21 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
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`being notified of the filing of this document via the Court’s CM/ECF system per Local Rule CV-
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`5(b)(1). I also hereby certify that LGE’s counsel of record are being served with a copy of the
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`foregoing document via electronic mail on this 31st day of March, 2021.
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`/s/ Steven M. Seigel
`Steven M. Seigel
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`CERTIFICATE OF CONFERENCE
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`I certify that on March 26, 2021, counsel for Ancora conferred with counsel for LGE
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`concerning the relief sought in this motion, and was advised that counsel for LGE opposed.
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`/s/ Steven M. Seigel
`Steven M. Seigel
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`10
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