LBS Innovations, LLC v. Apple Inc.

Filing 76

MEMORANDUM ORDER -. Signed by Magistrate Judge Roy S. Payne on 3/24/2020. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LBS INNOVATIONS, LLC,
Plaintiff,
v.
APPLE INC.,
Defendant.

§
§
§
§
§
§
§

Case No. 2:19-cv-00119-JRG-RSP

MEMORANDUM ORDER
Before the Court is Defendant Apple Inc.’s Motion to Strike. Dkt. No. 60.1 Apple argues
that the expert declaration submitted by Plaintiff LBS Innovations, LLC’s (“LBSI”) expert Scott
A. Denning (Dkt. No. 54-8) should be stricken for two different reasons. Dkt. No. 60. First, Apple
argues that the declaration should be stricken because the Denning Declaration was not identified
or disclosed to Apple prior to LBSI filing its opening claim construction brief, in violation of Local
Patent Rules 4-2 and 4-3. Id. at 2–6. Second, Apple argues that the Court should strike four exhibits 2 comprising legal briefs from other cases that LBSI attempts to incorporate by reference because they are an improper attempt to exceed the Court’s page limits. Id. at 6–7. Apple also requests that LBSI be required to pay for Apple’s attorneys’ fees that it incurred as a result of the
Motion to Strike. Id. at 7–8.
After due consideration, the Motion to Strike is GRANTED-IN-PART. The failure to
identify the Denning declaration was a violation of Local P.R. 4-2(b) and 4-3, and the filing the
briefing from other cases as exhibits to the Motion to Strike effectively circumvented the Court’s

1

All citations within to documents provided from the CM/ECF system refer to page numbers
provided in the original documents rather than the page number provided by the CM/ECF system
unless otherwise noted.
2
The exhibits include Exhibit 4 (Dkt. No. 54-4), Exhibit 5 (Dkt. No. 54-5), Exhibit 6 (Dkt. No.
54-6), and Exhibit 7 (Dkt. No. 54-7) to the LBSI’s opening claim construction brief.
1/6

page limits for claim construction briefing. Thus, to the extent Apple’s Motion seeks to strike the
Denning Declaration and strike portions of the exhibits that were incorporated by reference, the
Motion is GRANTED. The Court DENIES the Motion to the extent Apple seeks attorneys’ fees
for the filing of this Motion.
I.

VIOLATION OF LOCAL PATENT RULES
a. Applicable Law
Local Patent Rule 4-2 requires the exchange of preliminary claim constructions and extrin-

sic evidence approximately thirty (30) days after the service of Invalidity Contentions. P.R. 4-2(b)
provides that:
At the same time the parties exchange their respective “Preliminary
Claim Constructions,” they shall each also provide a preliminary
identification of extrinsic evidence, including without limitation,
dictionary definitions, citations to learned treatises and prior art, and
testimony of percipient and expert witnesses they contend support
their respective claim constructions or indefiniteness positions. . . .
With respect to any such witness, percipient or expert, the parties
shall also provide the identity and a brief description of the substance of that witness’ proposed testimony.
(emphasis added).
Local Patent Rule 4-3 requires the submission of a Joint Claim Construction and Prehearing Statement not later than sixty (60) days after service of Invalidity Contentions. P.R. 4-3(a)(2)
requires this Joint Claim Construction and Prehearing Statement to include:
Each party’s proposed claim construction or indefiniteness position
for each disputed claim term, phrase, or clause, together with an
identification of all references from the specification or prosecution
history that support that position, and an identification of any extrinsic evidence known to the party on which it intends to rely either to support its position or to oppose any other party’s position,
including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art, and testimony of
percipient and expert witnesses . . . .

2/6

(emphasis added).
Other portions of the Local Patent Rules are relevant here for context. Local P.R. 4-4 provides: “Not later than 30 days after service and filing of the Joint Claim Construction and Prehearing Statement, the parties shall complete all discovery relating to claim construction, including any
depositions with respect to claim construction of any witnesses, including experts, identified in the
Joint Claim Construction and Prehearing Statement.” Additionally, the party claiming infringement is required to serve and file an opening brief not later than 45 days after serving and filing
the Joint Claim Construction and Prehearing Statement. P.R. 4-5(a).
b. Analysis
Here, the Denning Declaration should be stricken. The Denning Declaration constitutes a
declaration that falls within the purview of P.R. 4-2 and 4-3, but the Denning Declaration was not
disclosed as required under those rules. Apple argues that the Denning Declaration was not disclosed until the filing of LBSI’s opening brief, LBSI does not dispute this point. The opening brief
was filed on January 29, 2020 (Dkt. No. 54), the Joint Claim Construction and Prehearing Statement required by P.R. 4-3 was filed on December 20, 2019 (Dkt. No. 47), and LBS filed its Notice
of Compliance with P.R. 4-2’s requirement for Preliminary Claim Constructions and Extrinsic
Evidence on November 22, 2019 (Dkt. No. 42). By disclosing the Denning Declaration for the first
time in the opening brief, the declaration was disclosed sixty-eight (68) days after it was required
to be disclosed in the preliminary claim constructions and forty (40) days after it was required to
be disclosed in the Joint Claim Construction and Prehearing Statement. Further, the close of claim
construction discovery effectively fell on Monday, January 20, 2020, so the Denning Declaration
was first brought to Apple’s attention nine (9) days after the close of claim construction discovery,
effectively precluding Apple from deposing Mr. Denning. See P.R. 4-4.
3/6

In response, LBSI argues that the Denning Declaration does not fall within the requirements of P.R. 4-2 and 4-3. LBSI argues that those rules only require declarations and/or the disclosure of expert witnesses if they will support a party’s respective claim constructions or indefiniteness positions. Dkt. No. 65 at 1. LBSI argues that the Denning Declaration is merely being
used to show that the current claim construction positions taken by LBSI are consistent with positions taken by LBSI in previous litigation over this patent. Id.
The Court rejects LBSI’s argument. Even accepting as true that the Denning Declaration
is limited to showing the consistency of the arguments presented here, that declaration would still
fall within the purview of P.R. 4-2 and 4-3. LBSI fails to point to any other cases where this Court
has recognized such an exception, and a common sense reading of the rule suggests that the declaration falls within the requirements of Rule 4-2 and 4-3. By arguing that the claim construction
positions in this case are consistent with claim construction positions taken in previous cases, the
Denning Declaration necessarily provides support for LBSI’s claim construction positions in this
case.
Moreover, a review of the Denning Declaration reveals that the declaration is being used
to support LBSI’s claim constructions and indefiniteness positions, and it does much more than
simply showing that the claim construction positions taken here are consistent with previous claim
construction positions. Denning opined on the level of skill in the art (Dkt. No. 54-8 at ¶¶ 15–21)
and opined on issues of indefiniteness (id. at ¶¶ 36–71, ¶ 37 (“After careful consideration, I have
concluded that the claim phrases are not indefinite, sufficiently inform those skilled in the art about
the scope of the invention, and provide clear notice of what is being claimed.”)). A significant
portion of Denning’s discussion on indefiniteness issues focuses on text within the patent specification, not prior arguments made by LBSI in previous cases. See, e.g., id. at ¶¶ 66, 69.

4/6

Consequently, the Denning Declaration should have been disclosed pursuant to P.R. 4-2
and 4-3, yet it was not. Plaintiff has not shown good cause to use this declaration despite the disclosure violation. The Court therefore STRIKES the Denning Declaration.
II.

PAGE LIMITATIONS
Apple argues that LBSI improperly attempted to exceed the page limits prescribed for

claim construction briefing by incorporating briefing from previous cases by reference. Dkt. No.
60 at 6–7. Apple argues that LBSI cited these briefs on the critical claim construction issue of
whether the preamble of the asserted claim is limiting, and the briefs contain 11 pages in total of
argument on this issue. Id. LBSI’s claim construction brief addressed this preamble issue and concluded that discussion by stating that “[t]o the extent further analysis on this issue is needed, LBSI
incorporates by reference its prior briefing.” Dkt. No. 54 at 12.
Unless the Court grants leave to exceed the page limitations, a plaintiff’s opening claim
construction brief is limited to thirty (30) pages. P.R. 4-5(e); Local Rule CV-7(a)(1). LBSI’s opening brief was itself thirty (30) pages long. Dkt. No. 54. Thus, by “incorporating by reference”
eleven additional pages, LBSI’s opening claim construction brief was effectively forty-one (41)
pages long. The practice of “incorporation by reference” should not be used as a means to circumvent the page limitations.
The Court GRANTS Apple’s Motion with respect to its arguments that LBSI exceeded the
page limitations. It is therefore ORDERED that Exhibits 4, 5, 6, and 7 are stricken from LBSI’s
opening brief.
III.

SANCTIONS
The Court DENIES Apple’s request for attorneys’ fees related to the filing of the present

Motion. The Court cannot conclude that LBSI was acting in bad-faith by failing to disclose this
5/6

declaration and by incorporating previous briefing by reference. The harm of any violations was
.
relatively small here, and the Court concludes that striking the declaration and any briefing incorporated by reference is a sufficient remedy.
IV.

CONCLUSION
Apple’s Motion is therefore GRANTED-IN-PART. To the extent Apple’s Motion seeks

to strike the Denning Declaration and strike portions of the exhibits that were incorporated by
reference, the Motion is GRANTED. The Motion is DENIED to the extent it seeks attorneys’ fees
for the filing of this Motion.
SIGNED this 3rd day of January, 2012.
SIGNED this 24th day of March, 2020.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

6/6