Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 1 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`WACO DIVISION
`
`FLYPSI, INC. (D/B/A FLYP),
`
`Plaintiff,
`
`vs.
`
`GOOGLE LLC,
`
`Defendant.
`
`Civil Action No. 6:22-cv-31-ADA
`
`JURY TRIAL DEMANDED
`
`es
`
`
`
`FLYPSI, INC.’S REPLY IN SUPPORT OF ITS MOTION TO STRIKE
`THE EXPERT REPORTS OF DR. ODED GOTTESMAN,PH.D.
`REGARDING NONINFRINGEMENT AND INVALIDITY (ECF NO.152)
`
`

`

`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 2 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 2 of 19
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`TABLE OF CONTENTS
`
`Dr. Gottesman did not apply the plain and ordinary meaningof “switch,” “voice
`A.
`
`channel,” “bridge telephone number,”or “direct the switch to”—he engagedin prototypical
`claim construction to narrow those terms..................:ccecccesceeeseeesceeseeeeseeeseeeeseeeseeeeseeeseeeseeeseeeees 1
`
`Dr. Gottesman improperly narrowed the meaning of “switch,” “bridge telephone
`1.
`number”and “voice channel” to exclude VoIP based on statements in the prosecution
`history and Flyp’s commercial product. ..................cccccescceesceeseceesecesseeeseeeseceeseeesecesseeeeeesseeees 1
`2.
`Aside from a narrowing claim construction, Dr. Gottesman provides no basis for
`limiting “directing to” to exclude delivering instructions...................0.c:cceeceeseeeeceeeseeeeeeeeeeees 5
`3.
`The plain language does not support Dr. Gottesman’s construction of“at least one
`data channel” to require a single data chanmel. ...............0.....ccccccecccescceeseceseeeeseceseeesseeesseesseeees 6
`
`Dr. Gottesman confirmed during his deposition that he had no evidence of prior use
`
`B.
`
`regardin
`
`—andhis opinionsare based ona
`
`b ceeeceeeeesssaeeceeceeeeessssueececceeeeeesssaaececeeeecesssssaeeeeeeeeeeeees 7
`
`Dr. Gottesman confirmed during his deposition that Google knew aboutbut did not
`C.
`disclose the Nokia N80 Internet Edition before the close of fact discovery—Google should be
`precluded from relying On 1t MOW..............ccccescceseesceeseeeceeseceseeseeesecaecseceseceaeeseeeseceseeeateneeeaeeaeens 9
`
`Google is wrong that Dr. Gottesman’s motivations to combine are legally sufficient—
`D.
`and it is wrong that he has provided multiple motivations...................0.ccccccsccesceeesceeseeeeseeeeees 10
`E.
`Dr. Gottesman confirmed during his deposition that he understands the relevant inquiry
`for non-infringing alternatives to be whether they were non-infringing before the asserted
`patents 1SSUed. o.oo... cece eee eee cece ceeeccesceeseeeeseeeseeceseeesaeeeseeesaeceseeesaeeeseceseceseeeeseseeeeesecesseeeaeeeseeeees 11
`
`F. What Google frames as “corroborating” documents— thea documentary
`
`—and Google
`evidence supporting Dr. Gottesman’s opinions about
`improperly withheld them during fact discOVETY.................ccccccecceseeeseesecesceeseeseeesteeeeeseeeseeeseens 13
`
`Dr. Gottesman’s invalidity opinions about Google Voice are conclusory—and Google
`G.
`has failed to distinguish the relevant case law. ..................ccccccesceesceeeceeeseeeeeeceseeeeeeceseeeseeeeeeesees 14
`
`

`

`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 3 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 3 of 19
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Comcast Cable Comme’ns, LLC v. Promptu Sys. Corp.,
`838 F. App'x 555 (Fed. Cir. 2021) ........cccccccccccccecceecccesceeseeeeseceseecsecesseceseceeesesecesseenseeeseeeees 11
`
`Finjan LLC v. SonicWall, Inc.,
`84 F4th 963 (Fed. Cir. 2023) .....ccccccccccccccccccescceeseceseeeseceseecaceeseecaeeeseeceseceeeesseeeseeseseeesees 6
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)... .eccccccccecccessccesceeseeseseceseeeseceseecssecesseceseceseecaeeeseeeeseeeseeceseeesseesseeeseeeees 10
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)..00.....00cccccccccccccccsccceesceeesseccesseccesseceesseceessceesssesesseeeesseeeesseeees 13
`
`Mettler-Toledo, Inc. v. Fairbanks Scales, Inc.,
`2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) 2... ....ccceecceccccccceseeeeseeesseeesecesseeeseeenseeeseees 14
`
`Mobile Equity Corp. v. WalmartInc.,
`2022 WL 19917854 (E.D. Tex. Sept. 23, 2022) .......cccecceccceccecceseceseeeceseeeseeeeeseeseeeeeeaes 4,6
`
`Myco Indus., Inc. v. BlephEx, LLC,
`955 F.3d 1 (Fed. Cir. 2020)......00cccccccccccccccecscceseceeseeesecesecessccsecessceesecesseeeseeesseensecesseeeseeesaee 5
`
`Pisony v. Commando Constructions, Inc.,
`2020 WL 4934463 (W.D. Tex. Aug. 24, 2020) ..0.....ceccecccccccceecceecceeeceeeeeceseeeeeetseeeneeenseeesees 9
`
`Poly-America, L.P. v. GSE Lining Technology, Inc.,
`383 F.3d 1303 (Fed. Cir. 2004). 2.0... ..ccccccccccccccccceceeseeeseeesecesecesecessecsseeesseceseeseeessseesseeeseeesees 8
`
`Securus Techs., Inc. v. Glob. Tel*Link Corp.,
`701 F. App'x 971 (Fed. Cir. 2017) .......cccccccccccccecccesccesscceseeesseceseceseecesecesseceseceseceseeeseeeeseeesaes 11
`
`TO Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019). .......ccccccccccccccccsccesccceseeeseecescceseeceaeceseeeeseceseeeeseeesseesseeeseeeees 10
`
`Ziilabs Inc., v. Samsung Elecs. Co.,
`2015 WL 8274055 (E.D. Tex. Dec. 8, 2015)........ccccecccecccescceceeeseceseeeseeceseeeseecessesseeeeseeesees 4
`
`STATUTES
`
`35 U.S.C. § 273(D) ceeccsccsssssseessssssessssssvessssseesssssesssssivsssssssssssssessssssessssssesssssuvesssssiesssssesesssiessseseeeeeen 12
`
`

`

`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 4 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 4 of 19
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`Google’s Response (ECF No. 173) tries to backfill holes in Dr. Gottesman’s analysis with
`
`new arguments and supplemental evidence. But Dr. Gottesman’s report and deposition transcripts
`
`tell the tale. His analysis hinged on improperclaim constructions, was strikingly conclusory, and
`
`often directly contradicts controlling law. The Court should thus exclude the opinions identified
`
`in Flyp’s Motion to avoid confusing the jury and interjecting significant legal errors.
`
`A.
`
`Dr. Gottesman did not apply the plain and ordinary meaning of “switch,”
`“voice channel,” “bridge telephone number,” or “direct the switch to”—he
`engagedin prototypical claim construction to narrow those terms.
`
`Google is wrong that Dr. Gottesman did not construe the limitations “switch,” “voice
`
`channel,” “bridge telephone number,” and “direct the switch to” in his noninfringementreport.
`
`Thathe did so is evident from his deposition testimony and the analysisin his report.
`
`1. Dr. Gottesman improperly narrowed the meaning of “switch,” “bridge
`telephone number” and “voice channel” to exclude VoIP based on
`statementsin the prosecution history and Flyp’s commercial product.
`
`Google incorrectly suggests that Dr. Gottesman excluded VoIP from the claim scope based
`
`on the plain and ordinary meaning of “switch,” “bridge telephone number,” and “voice channel.”!
`
`To start, Google misrepresents that “Dr. Gottesman does not
`
`... even suggest there was a
`
`disclaimer.” (Resp. at 3.) Google misdirects the Court by stating that “Dr. Gottesman did not use
`
`the term ‘disclaimer’ in any deposition” but omits that he answered in the affirmative when asked
`
`whether he had considered a disclaimer of VoIP when forming his opinions:
`
`Q. So you feel like there is potentially a disclaimerin the file history
`that differentiates the voice channel from Voice over IP?
`
`1 Google strains credulity
`arguing that it had “no indication” before claim construction that
`
`the
`.
`(Resp. at 4.) Google’s corporate designee on the operation of
`
`
`
`
`accused product,
`, testified that
`
`. (See Mot. Ex. 12 at 22:15-23:3.) Google knew
`
`how its own product operated before claim construction. If Google believed the term “switch” had
`, it should have proposedit then.
`a special meaningin the patents that would exclude
`
`
`1
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 5 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 5 of 19
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`A. I see there’s -- yeah. Yes. ...
`
`So you base your application of voice channel for your
`Q.
`noninfringement analysis on that apparent disclaimer in the patent
`prosecution history?
`
`A. That’s also a consideration....
`
`(Mot. Ex. 3 at 183:11-184:10.) He testified similarly about bridge telephone number. (/d. at
`
`242:11-243:9.) Dr. Gottesman’s reliance on this purported disclaimer of VoIP embodiments
`
`impermissibly pervades his opinions—whether Google wants to acknowledgeit ornot.
`
`This is evident from Dr. Gottesman’s narrow construction of “switch.” Dr. Gottesman
`
`adinits that VoIP switches were known in the art before 2013. (Mot. Ex. 2 § 47, and Ex. 4 at 283:7-
`
`25.) Yet he excludes them from the claims because he believes the patentee disclaimed VoIP and
`
`is limited to PSTN embodiments. (Mot. Ex. 3 at 55:4-56:2 (“Q. Whatis a switch? A. It depends
`
`on the context. If you talk about the patent, a switch is basically a PSTN switch.”’); 66:8-11 (“If
`
`you talk about a PSTN, whichI believe the scope ofthe patent, then soft switch is not part -- is not
`
`within the scope of a PSTN switch.”), 183:11-184:10 (“There is no way you can come back now
`
`and claim voice over IP. You already gave up voice over IP. That's gone.”’).)
`
`Dr. Gottesman likewise admits that he limited the meaning of “voice channel.” According
`
`to Dr. Gottesman, voice channel is broad (and could “mean anything” to a POSITA)—but he
`
`excluded from its scope RTP, the protocol that carries voice information for VoIP:
`
`Q. Well, let's just start with what a person of ordinary skill in the art
`would understand “voice channel” to mean. What do you think a
`person of ordinary skill in the art would understand "voice channel"
`to mean?
`
`A. There is no definition for that. Voice channel can mean anything.
`... And I think within the context of this patent and the way the
`inventors view that, there is a consistency. Both refer to PSTN or
`cellular voice service, not just data service carrying voice on RTP.
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 6 of 19
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`Q. So just to make sure I understand, it’s your opinion that voice
`channel doesn’t have an ordinary meaningin theart, it has a specific
`meaning within the context of the patents? ...
`
`A. I think the voice channelin the patent has specific context. And
`that context, when youtry to apply that, then that falls into PSTN
`and voice service overcellular and so on....
`
`A. It’s not RTP.It’s not RTP.
`
`(Mot. Ex. 3 at 154:17-156:5.)
`
`The same is true for “bridge telephone number.” Dr. Gottesman concedes that the term
`
`“telephone number”is broader than a numberthat can be “dialed” on a telephone, as he construes
`
`bridge telephone number. Forinstance, when confronted with evidence that the primary telephone
`
`numberin the claims can be an electronic serial number (ESN), Dr. Gottesman admitted that a
`
`telephone number“can beall kind of numbers that are used to identify the handset, for example.”
`
`(Id. at 246:19-249:2.) But he limits bridge telephone numberPo
`Po becausehe has unilaterally excluded VoIP from the claim scope
`
`based on the disclaimer that he perceives in the prosecution history:
`
` > T
`
`hus, for switch, voice channel, and bridge telephone number, Google is wrong that
`
`Dr. Gottesman is simply applying the plain and ordinary meaning. Dr. Gottesman admitted that
`
`each has a broader plain meaning than he applied, and he confirmed that he narrowed that plain
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 7 of 19
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`meaningbased onhis interpretation of statements madein the prosecution history. This is improper
`
`and risks confusing the jury. Mobile Equity Corp. v. Walmart Inc., 2022 WL 19917854,at *2 (E.D.
`
`Tex. Sept. 23, 2022) (“Furthermore, experts ‘cannot rely on statements in the prosecution history
`
`to limit the ordinary meaning of the term. Thatis for the Court.’” (quoting Ziilabs Inc., v. Samsung
`
`Elecs. Co., 2015 WL 8274055, at *2 (E.D. Tex. Dec. 8, 2015)).
`
`Dr. Gottesman also improperly reliedPO in formulating his
`
`understanding of the claim scope. Recognizing this problem, Googletries to recast Dr. Gottesman
`
`as relying on expert testimony from the inventors. But Dr. Gottesman testified otherwise. He
`
`explained that his understanding that the claim scope excludes VoIP wasbased iii
`Tt
`
`Q. And yousayhere in the next sentence that that makesit clearthat
`Flyp's patents are not VoIP. So my
`
`questionis:
`
`
`
`
`Q. And howdid that help you understand whetherornot the patents
`cover VoIP?
`
`eS
`
`In other words, despite Google’s representation in its opposition that Dr. Gottesman was
`
`simply relying on “expert testimony” from the inventors, Dr. Gottesman plainly limited the claims
`
`4
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 8 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 8 of 19
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`to exche VorP bedon
`
`just as Dr. Gottesman may notlimit the claims based on statements in the prosecution history, he
`
`maynotlimit the claimsee. See, e.g., Myco Indus., Inc. v.
`
`BlephEx, LLC, 955 F.3d 1, 15 (Fed. Cir. 2020).
`
`The Court should accordingly strike Dr. Gottesman’s noninfringementpositions based on
`
`his improper and untimely constructions of switch, voice channel, and bridge telephone number.
`
`2. Aside from a narrowing claim construction, Dr. Gottesman provides no
`basis for limiting “directing to” to exclude delivering instructions.
`
`Google is wrong that Dr. Gottesman has not applied a specialized meaning of “receiving,
`
`at the switch, information from the server directing the switch to: (a) connect the outgoingcall ...
`
`and (b) identify a telephone number from which the outgoing call is being made.” Aside from
`
`saying it disagrees with Flyp, Google does not provide any substantive analysis that explains how
`
`Dr. Gottesman’s opinion follows the plain meaning of this limitation. Rather, Dr. Gottesman’s
`
`testimony belies Google’s position. Dr. Gottesman confirmedthat he has adopted a specialized
`
`meaning ofthis limitation that excludesinstructions sent to the switch from the server. He admitted
`
`LS 50. £:. 5 201523-18)
`
`But he explained that he has construed this limitation as requiring more than the switch receiving
`
`instructions from the server. (/d. at 134:1-6.)
`
`Google does not even attempt to rebut Flyp’s characterization of this testimony. Instead,it
`
`essentially argues that it was justified in withholding this interpretation of the claim because Dr.
`
`Nettles’ application ofee. This cannot
`
`be true. Dr. Nettles’ application is consistent with (and in part based on) Google’s corporate
`
`testimony, which confirmed thatPe
`ee
`
`

`

`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 9 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 9 of 19
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`8.) If Google believed the claims should be construed narrowly such that instructions from the
`
`server|oD to the switch (} do satisfy this limitation, it could have proposed a construction
`
`in accordance with the case schedule based on its understanding of its own accused product. It
`
`cannot use Dr. Gottesman as a mouthpiece for doing so now.
`
`3. The plain language does not support Dr. Gottesman’s construction of “at
`least one data channel”to require a single data channel.
`
`Google tacitly concedes that Dr. Gottesman’s noninfringement opinion premised on “at
`
`least one data channel” is based on an untimely claim construction and prototypical claim
`
`construction arguments. (Resp. at 6). Yet it proffers no excuse for withholding this claim
`
`construction position until now. Andit proffers no justification for letting Dr. Gottesman present
`
`these claim construction arguments to the jury. The Court should strike Dr. Gottesman’s related
`
`opinions onthat basis alone. See, e.g., Mobile Equity, 2022 WL 19917854,at *2.
`
`Moreover, Google’s claim construction position is wrong. Asit points out, all three times
`
`this term is recited in the exemplary claim,it is recited as “at least one data channel:”
`
`acquiring first digital information from the handsetoverat least one
`data channel. .
`.
`
`acquiring second digital information from the handset over the at
`least one data channel...
`
`transmitting pre-call information to the handset overthe at least one
`data channel.
`
`(770 Patentat cl. 1.) It does nof recite “acquiring first digital information from the handset over a
`
`data channel” or “acquiring second digital information from the handset over the data channel.”
`
`Rather, at each step, the claim reaffirms that the method may use more than one data channels.
`
`Trying to support its untimely claim construction position, Google misapplies the Federal
`
`Cireuit’s caselaw. Finjan LLC v. SonicWall, Inc. did not, as Google suggests, address a claim
`
`6
`
`

`

`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 10 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 10 of 19
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`limitation like this where the plain languagerecited “at least one.” See 84 F.4th 963, 974 (Fed. Cir.
`
`2023). Instead, the claim there recited “a computer”—andthe patentee attempted to read into this
`
`that “‘a’ indicates that ‘one or more’ computers can perform the varioussteps ofthe claim,” despite
`
`later steps referring to “the computer.” Jd. at 973-74. But here it is Google trying to strike “at least
`
`one data channel” from each limitation—effectively trying to rewrite the claim to be more like
`
`those in Finjan—to recite “‘a data channel”as the antecedentbasis for later recitations of “the data
`
`channel.” Put differently, unlike Finjan, the antecedentbasis here (“at least one data channel”) and
`
`the later recitations (“the at least one data channel”) contemplate embodimentsthat use more than
`
`one data channelto practice the invention. The Court should strike Google’s untimely efforts to
`
`exclude those embodiments via Dr. Gottesman.
`
`B.
`
`Dr. Gottesman confirmed during his deposition that he had no evidence of
`
`_ use = re: his — are based on
`
`Google tries to recast Dr. Gottsman’s opinionoii and their purported
`
`integration with Google Voice as contending that the combination “teaches” the claimed invention.
`
`Google appears to concede that Dr. Gottesman hasno evidenceofactual use of Google Voice with
`
`Po in the mannerhe describes before the priority dates, as explained in the Motion.
`
`The Court should therefore exclude any opinions from Dr. Gottesman that Google Voice and
`
`P| werein use before then.
`
`Google’s new “teaching” theory fares no better. Nothing in Dr. Gottesman’s report or
`
`testimony suggests that technical details about the purported integration between Google Voice
`
`Mm= were publicly available before the priority date. Google points to Table T-1
`
`from Dr. Gottesman’s invalidity report. But Table T-1 underscoresthat for almost every limitation,
`
`Dr. Gottesman relies nearlyexcel
`
`7
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 11 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 11 of 19
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`ECF No.44 (Protective Order) at 1 (providing for designation of “any document, information, or
`
`material that constitutes or includes, in whole orin part, confidential or proprietary information or
`
`trade secrets”).) Accordingly, if Google is contending that Dr. Gottesman’s opinion that Google
`
`Voice anticipates turns on whatit “taught” based on publicly available information aboutit, then
`
`the Court should strike Dr. Gottesman’s opinionasit relates toPo
`
`Finally, Google has failed to distinguish Poly-America, L.P. v. GSE Lining Technology,
`
`Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004). Google suggests this case is different because the
`
`purported priorart in Po/y-America was based on a hypothetical use in a manner for which the
`
`prior art system wasnotoriginally designed. But that accurately describes Dr. Gottesman’s opinion
`
`a 0
`
`0... 4 0352:17-20
`(Id. at 354:15-355:4, 356:10-356:17.)i. (1c1.) He
`150isrrr)
`
`contrary to Google’s assertion, this is much like Po/y-America, L.P.
`
`The purported integration betweena. and the Nokia N80 handsetis
`also entirely hypothetical. Dr. Gottesman confirmedtha
`
`a. (Id. at 338:10-339:20.) Google tries to backfill this with an FCC letter that does not mention
`
`the Nokia N80 and has no implementation details—and material that it “produced”(buttacitly
`
`concedes Dr. Gottesman neverrelied on) that only confirmsPe
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 12 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 12 of 19
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`I i
`
`n original)).)
`
`Ultimately, Dr. Gottesman’s testimonyclarified that the potential use of Google Voice by
`
`ieT3c possible
`integration betweenPo with the Nokia N80, were entirely hypothetical
`
`and there is no evidence either were used the way he describes. These hypothetical systems are
`
`likely to confuse the jury and the Court should strike Dr. Gottesman’s opinions based on them.
`
`Cc.
`
`Dr. Gottesman confirmed during his deposition that Google knew about but
`did not disclose the Nokia N80 Internet Edition before the close of fact
`discovery—Google should be precluded from relying on it now.
`
`Google incorrectly suggests that the Nokia N80 is merely “one of multiple examples of
`
`VoIP endpoints.” Butit is the only example of a VoIP endpoint that Dr. Gottesman contendsis the
`
`mobile device/handset for Google Voice as required in the claims, other than usingP|
`eS
`
`It is simply nottrue, as Google suggests, that “it was only in preparing his invalidity report
`
`that Dr. Gottesman discovered the publicly disclosed Nokia N80 Internet Edition.” (Resp. at 11.)
`
`Dr. Gottesman testified that he had known about the Nokia N80 for years. (Motion Ex.3 at 337:6-
`
`5)
`
`on that information and that evidence until it served Dr. Gottesman’s report. Google proffers no
`
`excuse for its inaction because the inaction is inexcusable.
`
`This Court’s decision in Pisony v. Commando Constructions, Inc., 2020 WL 4934463, at
`
`*] (W_D.Tex. Aug. 24, 2020) does not excuse Google. There, plaintiff complained that defendants
`
`had identified new combinations of otherwise disclosed art, and the Court determined that those
`
`combinations weresufficiently disclosed. See id. at *3-4. Here, Google has identified forthe first
`
`9
`
`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 13 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 13 of 19
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`time a piece of purported prior art in an expert report—the Nokia N80.Po
`
`Moreover, Google now contends (without elaboration) the Nokia N80 is “one of multiple
`
`examples” of such endpoints that were disclosed in its invalidity contentions. There should thus
`
`be no significant prejudice in striking this untimely example, and the Court should excludeit.
`
`D.
`
`Google is wrong that Dr. Gottesman’s motivations to combine are legally
`sufficient—andit is wrong that he has provided multiple motivations.
`
`Google is wrong that Dr. Gottesman offered many motivations to combinein his invalidity
`
`report. Dr. Gottesman, with the benefit of its report and accompanyingtables, could only identify
`
`the “natural evolution of systems” as a motivation, as informed bythe fact that some systems use
`
`“the same standards and protocols.” (See Mot. Ex. 2 § 200, 205, and Ex. 4 485:23-486:17.)
`
`Dr. Gottesman could not identify any others. (Mot. Ex. 4 at 493:1-15.)
`
`In its opposition, Google incorrectly suggests that Dr. Gottesman’s “natural evolution”
`
`approach “meets the obviousnesstest set forth in KSR.” (Resp. at 12.) But KSR did not abrogate
`
`the requirementof articulating a motivation to combine.See, e.g., KSR Int’] Co. v. Teleflex Inc.,
`
`550 U.S. 398, 418 (2007) (noting courts must “determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue”). By contrast,
`
`Dr. Gottesman’s approach would eviscerate the motivation to combine requirement. His “natural
`
`evolution” opinion assumes there is always a motivation to combine telephony references. (See
`
`Mot. Ex.4 at 490:1-491:10 (“ Q. So in your opinion then, there is always a motivation to combine
`
`and bring in new features to telephony;is that right? ... A. Generally speaking, that's the natural
`
`evolution, that's the natural motivation to combine.”’).) The Federal Circuit has explicitly rejected
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`this kind of reasoning as incompatible with KSR. See TO Delta, LLC v. Cisco Sys., Inc., 942 F.3d
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`1352, 1359 (Fed. Cir. 2019).
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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 14 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 14 of 19
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`So too has the Federal Circuit rejected Dr. Gottesman’s approach of presuming a
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`motivation to combine simply because the references may involve similar technology or use
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`similar protocols. See, e.g., Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 976
`
`(Fed. Cir. 2017); Comcast Cable Commce’ns, LLC v. Promptu Sys. Corp., 838 F. App’x 555, 557
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`(Fed. Cir. 2021). And despite Google’s after-the-fact attempts to reframe Dr. Gottesman’s
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`opinions as based on specific disclosures in various pieces of prior art, Dr. Gottesman could not
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`identify during his deposition any such motivation beyond the “natural evolution” theory in
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`| 200-205 ofhis invalidity report. (Mot. Ex. 4 at 493:1-15.) The new arguments that Google sets
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`forth in its opposition based on disclosures in Backhaus, Saskena, Winblah, and Quon are
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`transparent attempts to backfill an obvious hole in Dr. Gottesman’s analysis with information that
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`he did not (and could not) provide during his deposition.
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`The Court should thus strike Dr. Gottesman’s motivation to combine opinionsin §{ 200-
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`205 of his invalidity expert report and the obviousnesstheories that turn on them.
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`E.
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`Dr. Gottesman confirmed during his deposition that he understands the
`relevant inquiry for non-infringing alternatives to be whether they were non-
`infringing before the asserted patents issued.
`
`Google’s assertion that “Dr. Gottesman did not testify that the hypothetical negotiations
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`date fell on or before 2013”is a stark misrepresentation. It begins with a misquote of a relevant
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`question that Flyp’s counsel posed to Dr. Gottesman.In its opposition, Google misquotes Flyp’s
`
`counsel as having “asked Dr. Gottesman if he understood ‘the non-infringing analysis to take
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`place in 2013.’” (Resp. at 14 (misquoting Resp. Ex. 2 at 456:2-5 (emphasis added)).) In fact, the
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`question was: “So you understand the non-infringing alternative analysis to take place in 2013;
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`is that ght?” (/d. at 456:2-5 (emphasis added).) Dr. Gottesman’s unequivocal testimony wasthat
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`he understood the non-infringing alternative analysis to take place long before the asserted patents
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`issued:
`
`11
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`

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`|A
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`n
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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 15 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 15 of 19
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`(Mot. Ex. 4 at 454:24-456:5 (emphasis added).) The questions and the answers are clear.
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`Dr. Gottesman understood the question of whether potential non-infringing alternatives were in
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`fact non-infringing to be framed in 2010, 2011, or 2012, long before the patents issued, and long
`
`before the 2017 hypothetical negotiation date that Google now incorrectly contends that
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`Dr. Gottesman applied. (Resp. at 15 n.11.)?
`
`? Google incorrectly contends that Flyp has not substantively challenged some of Dr. Gottesman’s
`non-infringing alternatives. (Resp. at 15 n.12.) But as Flyp explained in its Motion, it “requests
`that the Court strike and exclude any of Dr. Gottesman’s opinions on non-infringing alternatives.”
`(Mot. at 28.) Dr. Gottesman’s error in analyzing noninfringement before the patents issued is a
`legal error that infects all related opinions.
`
`12
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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 16 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 16 of 19
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`Googleis also wrong that Dr. Gottesman’s opinionsare not conclusory. Google incorrectly
`
`suggests that Dr. Gottesman was confused during his deposition because “Flyp’s counsel refused
`
`to identify the relevant portions of Dr. Gottesman’s report.” (Resp. at 15.) But Flyp’s counsel
`
`directed Dr. Gottesman to the specific paragraphsofhis report that described his opinions on non-
`
`infringing alternatives. (Mot. Ex. 3 at 14:4-9 (directing Dr. Gottesman to the paragraph disclosing
`
`his non-infringing alternative opinion), and Ex.4 at 437:4-22 (directing Dr. Gottesman to his non-
`
`infringing alternative section).) Yet he could identify neither the patents that he was opining about
`
`nor the details of the proposed alternatives, even with the benefit of his report and significant
`
`efforts by Google’s counsel to assist him by speaking into the record and explaininghis report to
`
`him. (See Mot. Ex. 3 at 14:5-16:23, and Ex. 4 at 444:24-458:12.)
`
`Dr. Gottsman’s non-infringing alternative positions are flawed legally and unsupported
`
`factually. They will only confuse the jury and introduce legal error. The Court should strike them.
`
`F.
`
`What Google frames as “corroborating” documents provide the a
`
`documentary evidence supporting Dr. Gottesman’s opinions about
`—and Google improperly withheld them during fact discovery.
`
`Google does not (and cannot) rebut Flyp’s position that Dr. Gottesman is relying on
`
`documents that Google had but did not produce during fact discovery. Google does not dispute
`
`tat Dr.Gots
`a. (Mot. Ex. 4 at 326:11-22.) These are not simply publicly available documents
`
`that corroborate Dr. Gottesman’s opinions, as Google suggests. These are the primary documents
`
`that Dr. Gottesmanrelies on to support his opinion about the operation iii. (Mot.
`
`13
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`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 17 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 17 of 19
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`Ex. 2 at §§ 93, 98-100.) By withholding them during fact discovery, Google prejudiced Flyp,
`
`including depriving it of a meaningful opportunity to depose Google’s corporate witnesses about
`
`the disclosures in those documents. By contrast,
`
`the prejudice to Google in striking Dr.
`
`Gottesman’s reliance on these documents would apparently be nil based on Google’s position that
`
`they merely “corroborate” other materials on which Dr. Gottesman already relies. Thus, given the
`
`significant prejudice to Flyp in permitting Dr. Gottesman to introduce these untimely materials,
`
`and the lack of prejudice to Google in excluding them, the Court should strike them.
`
`G.
`
`Dr. Gottesman’s invalidity opinions about Google Voice are conclusory—and
`Google hasfailed to distinguish the relevant case law.
`
`Dr. Gottsman’s invalidity report lacks any meaningful analysis. In the main, he simply
`
`copies and pastes disclosures from various documents without any accompanying analysis about
`
`howthose disclosures relate to the claim language. (See, e.g., Mot. Ex. 10.) Google unsuccessfully
`
`tries to distinguish this from charts found unacceptable in Mettler-Toledo, Inc. v. Fairbanks Scales,
`
`Inc. because (according to Google) the charts there “broadly point to documents as a whole” and
`
`omitted the (purported) citations to “specific passages” in Dr. Gottesman’s charts. (Resp. at 19
`
`(citing 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008)).) This misrepresents Meftler-Toledo and
`
`doesnotdistinguish it. The charts there also included somecites to specific “page or line numbers.”
`
`2008 WL 11348468,at *4. The problem wasthat the expert never “connect[ed] the dots between
`
`the exhibit or deposition extract that he points to and his conclusions.” Jd. As explained in the
`
`Motion, the sameis true for Dr. Gottesman. The Court should thus strike his invalidity opinions
`
`about Google Voice as impermissibly conclusory.
`
`14
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`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 18 of 19
`Case 6:22-cv-00031-ADA Document 212 Filed 12/12/23 Page 18 of 19
`
`DATED:December5, 2023
`
`Respectfully submitted,
`
`/s/ Thomas M. Melsheimer
`Thomas M. Melsheimer
`
`Texas Bar No. 13922550
`tmelsheimer@winston.com
`M.Brett Johnson
`
`Texas Bar No. 00790975
`mbjohnson@winston.com
`Michael A. Bittner
`Texas Bar No. 24064905
`mbittner@winston.com
`C. Charles Liu
`Texas Bar No. 24100410
`ccliu@winston.com
`Steven R. Laxton
`
`Texas Bar No. 24120639
`slaxton@winston.com
`WINSTON & STRAWN LLP
`2121 North Pearl Street, Suite 900
`Dallas, TX 75201
`Telephone: (214) 453-6500
`
`Matthew R. McCullough
`California Bar No. 301330
`mrecullough@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`Telephone: (650) 858-6500
`
`William M. Logan
`Texas Bar No. 24106214
`wlogan@winston.com
`Evan D. Lewis
`Texas Bar No. 24116670
`edlewis@winston.com
`WINSTON & STRAWN LLP
`800 Capitol Street, Suite 2400
`Houston, TX 77002
`Telephone: (713) 651-2766
`
`ATTORNEYS FOR PLAINTIFF
`
`15
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`

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`Case 6:22-cv-00031-ADA Document 212 Filed 12/