Case 2:16-cv-00695-RWS-RSP Document 105 Filed 10/20/23 Page 1 of 5 PageID #: 2812
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ALACRITECH, INC.,
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`Plaintiff,
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`Defendants,
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`2:16-cv-00695-RWS-RSP
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`JURY TRIAL DEMANDED
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`v.
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`DELL INC.,
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`and
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`INTEL CORPORATION, et al.,
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`Intervenors.
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`RESPONSE TO PLAINTIFF’S OBJECTIONS TO DR. ALMEROTH’S
`REBUTTAL TESTIMONY AND DEMONSTRATIVES
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`Case 2:16-cv-00695-RWS-RSP Document 105 Filed 10/20/23 Page 2 of 5 PageID #: 2813
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`Over Alacritech’s objections, and despite Defendants’ dropping their invalidity defenses,
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`Intel’s invalidity expert Dr. Wicker was permitted to offer an opinion challenging, among other
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`things, the Asserted Patents’ priority claim to a 1997 provisional patent application. E.g., Trial Tr.
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`at 1113:16-25. Dr. Wicker’s opinions are improper and incorrect. And absent rebuttal testimony
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`from Dr. Almeroth, or a curative instruction from the Court, Dr. Wicker’s testimony is prejudicial
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`to Alacritech and highly likely to mislead or confuse the jury.
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`Allowing Dr. Almeroth to provide rebuttal testimony regarding the topics addressed by Dr.
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`Wicker is proper and necessary in these circumstances. By comparing the accused functionality
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`to the 1997 provisional, Dr. Wicker presented new matters for the jury to consider in deciding this
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`case. See Rodriguez v. Olin Corp., 780 F.2d 491, 494 (5th Cir. 1986) (“[R]ebuttal is a term of art,
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`denoting evidence introduced by a plaintiff to meet new facts brought out in his opponent’s case
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`in chief.” (citation omitted)). Although the 1997 provisional was discussed at times prior to Dr.
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`Wicker’s testimony, its contents and scope “w[ere] not fairly and adequately presented to the trier
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`of fact before the defendant’s case in chief.” Id. at 496. Disputes regarding provisional
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`applications and priority dates typically arise in the context of defense and rebuttal. See Tech.
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`Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1328-29 (Fed. Cir. 2008) (burden of production
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`for priority date dispute shifts to patentee if alleged infringer raises sufficient evidence challenging
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`it). And Defendants’ suggested such would be the case here by bringing and maintaining their
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`invalidity defense until after Alacritech had already rested its case and disclosed Dr. Almeroth as
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`a rebuttal witness. See Trial Tr. at 930:2-8.
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`Alacritech had no reason to anticipate that Defendants would drop their invalidity defenses
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`or to know exactly when they might do so. And, in any event, Alacritech was not obligated to
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`structure its case in chief in a way to account for such possibilities. See Rodriguez, 780 F.2d at
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`Case 2:16-cv-00695-RWS-RSP Document 105 Filed 10/20/23 Page 3 of 5 PageID #: 2814
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`496. (“[A] plaintiff’s [sic] has the right to adduce whatever evidence is necessary to establish its
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`prima facie case and is under no obligation to anticipate and negate in its own case in chief any
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`facts or theories that may be raised on defense.”). Defendants requested that the Court instruct the
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`jury that it contended that Alacritech’s Asserted Patents are invalid. See, e.g., Dkt. 56, Ex. H at 8,
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`21. And even after withdrawing their invalidity defense on the record, Defendants insisted on
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`maintaining written description and enablement instructions in their proposed final jury
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`instructions (even after Dr. Wicker testified). See Dkt. 99-1 at 32-36.
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`Defendants’ argument that Dr. Almeroth’s rebuttal testimony is now precluded under the
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`parties’ Agreed MIL No. 1 is further evidence that the withdrawal of their final invalidity defenses
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`at this late stage of the case is a clear attempt at gamesmanship. Defendants cannot be permitted
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`to use the MILs to preclude Dr. Almeroth from offering highly relevant rebuttal testimony—
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`testimony necessitated by calling their invalidity expert to the stand. If Dr. Wicker’s testimony is
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`to remain available for consideration by the jury, Alacritech only seeks the opportunity to provide
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`its full side of the story regarding the same issues.
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`Unrebutted, Dr. Wicker’s testimony remains highly misleading and prejudicial and is in
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`need of correction. Indeed, any probative value it has to the true matters in dispute is far
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`outweighed by its confusing and misleading nature. Thus, if Dr. Almeroth is not permitted to
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`testify on rebuttal, Alacritech requests in the alternative that the Court strike or provide a curative
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`instruction instructing the jury to disregard the testimony of Dr. Wicker.
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`Case 2:16-cv-00695-RWS-RSP Document 105 Filed 10/20/23 Page 4 of 5 PageID #: 2815
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`Dated: October 20, 2023
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`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
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`/s/ Brian E. Mack
`Joe Paunovich
`joepaunovich@quinnemanuel.com
`California State Bar No. 228222
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
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`Brian E. Mack
`brianmack@quinnemanuel.com
`California State Bar No. 275086
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
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`T. John Ward, Jr.
`Texas State Bar No. 00794818
`jw@wsfirm.com
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`claire@wsfirm.com
`WARD & SMITH LAW FIRM
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
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`Attorneys for Plaintiff Alacritech, Inc.
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`3
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`Case 2:16-cv-00695-RWS-RSP Document 105 Filed 10/20/23 Page 5 of 5 PageID #: 2816
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with notice of the filing of this sealed document
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`via the Court’s CM/ECF system pursuant to Local Rule CV-5(a) on October 20, 2023, and a copy
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`of this sealed document, in its entirety, via electronic mail. All counsel who are not deemed to
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`have consented to electronic service are being served by U.S. first-class mail.
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`/s/ Brian E. Mack
`Brian E. Mack
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`4
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