Case 2:16-cv-00695-RWS-RSP Document 55 Filed 10/13/23 Page 1 of 8 PageID #: 1031
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:16-cv-00695-RWS-RSP
`(MEMBER CASE)
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`ALACRITECH, INC.,
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`v.
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`DELL INC.,
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`and
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`Plaintiff,
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`Defendant,
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`INTEL CORPORATION, et al.,
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`Intervenors.
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`ORDER
`Before the Court is Plaintiff’s Motion for Summary Judgment of No Invalidity in View of
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`the Connery System, Intel Zero Copy, Whetten, and SMB Technical Standard. Docket No. 605.
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`This motion is fully briefed. Docket Nos. 605, 642, 644, 678, 708, 710. The case was referred to
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`United States Magistrate Judge Roy S. Payne in accordance with 28 U.S.C. § 636. The Magistrate
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`Judge issued a report recommending that this motion be denied. Docket No. 848. Plaintiff objected
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`to the report’s recommendations. Docket No. 872. Defendants responded to those objections.
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`Docket No. 888. For the reasons given below, Plaintiff’s objections are OVERRULED and the
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`Court ADOPTS the Magistrate Judge’s report and recommendations.
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`I.
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`BACKGROUND
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`Plaintiff filed suit against Dell, on June 30, 2016. No. 2:16-cv-695, Docket No. 1. Plaintiff
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`alleged certain of Dell’s servers, storage devices, network adapters, network controllers, other
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`network interface devices, and converged products indirectly and directly infringed U.S. Patent
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`Case 2:16-cv-00695-RWS-RSP Document 55 Filed 10/13/23 Page 2 of 8 PageID #: 1032
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`Nos. 7,124,205; 7,237,036; 7,337,241; 7,673,072; 7,945,699; 8,131,880; 8,805,948; and
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`9,055,104. Id. ¶¶ 4, 6, 28, This action proceeded through discovery and was then stayed pending
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`inter partes review (“IPR”) proceedings and subsequent appeals to the Federal Circuit. Docket
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`Nos. 451, 482. After the stay was lifted, only U.S. Patent Nos. 7,124,205, 8,131,880, and 8,805,948
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`(collectively, “the Asserted Patents”) remained. See, e.g., Docket No. 514 at 4. Trial is now
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`imminent. See e.g., Docket No. 599.
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`In anticipation of trial, Plaintiff filed a Motion for Summary Judgment of No Invalidity
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`that addresses four references: the Connery System, the Intel Zero Copy System, the Whetten
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`reference, and the SMB Technical Standard. Docket No. 605. Dell and Intel (“Defendants”)
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`eventually withdrew their defenses related to the Intel Zero Copy and Connery Systems. See
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`Docket Nos. 708, 834. The Magistrate Judge issued a report recommending that Plaintiff’s motion
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`be denied for the Whetten and SMB Technical Standard references. Docket No. 848 at 4–6. The
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`Magistrate Judge also recommended the motion be denied as moot as to the Intel Zero Copy and
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`Connery systems because Defendants withdrew these systems as invalidity defenses. Id. at 4.
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`Plaintiff timely filed objections. Docket No. 872.
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`II.
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`LEGAL STANDARD
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`Summary judgment exists, in part, “to isolate and dispose of factually unsupported claims
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`or defenses.” Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986). A court may grant summary
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`judgment when the moving party shows that “there is no genuine dispute as to any material fact
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`and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a); see also, Celotex
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`Corp., 477 U.S. at 327. A genuine dispute of material fact exists when “the evidence is such that
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`a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 248 (1986).
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`III. ANALYSIS
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`Plaintiff’s objections address two alleged errors in the Magistrate Judge’s report. Docket
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`No. 872. First, Plaintiff argues that there is no genuine dispute “that Defendants failed to provide
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`any admissible, much less clear and convincing, evidence to establish the public availability of the
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`SMB Technical Standard.” Id. at 2. Plaintiff then argues the report erred by mooting Plaintiff’s
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`motion as to the Connery and Intel Zero Copy systems because “Defendants still intend to rely on
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`those system references at trial.” The Court addresses each argument in turn.
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`A.
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`There is a Genuine Dispute of Material Fact as to the Public Availability of the
`SMB Technical Standard
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`Plaintiff argues the report erred by considering inadmissible hearsay when determining
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`whether there is sufficient evidence to create a genuine dispute of material fact as to the public
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`availability of the SMB Technical Standard. Docket No. 872 at 2–3. Specifically, Plaintiff argues
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`that Dr. Wicker’s reliance on the Rampersad letter, the Open Group declaration,1 and the copyright
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`information itself is improper because these materials are hearsay. See generally id. Plaintiff
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`further argues that the production of the Open Group declaration was untimely and that it did not
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`have the opportunity to depose Schlachterman, the Open Group declarant, because the IPR
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`proceedings were terminated. Id. at 3.
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`First, Plaintiff fails to persuasively argue that Defendants’ reliance on the Open Group
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`declaration is prejudicial. Defendants argue the Open Group declaration was produced more than
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`5 years ago.2 Docket No. 708 at 8. Defendants also argue that even if there was late disclosure, it
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`1 Plaintiff calls this declaration the Schlachterman declaration. See generally Docket No. 872
`(citing Docket No. 642-5).
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`2 Defendants’ response to the objection alleges the declaration was made almost 6 years ago.
`Docket No. 888 at 4.
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`was harmless because Plaintiff was aware of the Open Group declaration due to its use in the IPR
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`proceedings. Docket No. 710 at 9 (Textron Innovations Inc. v. SJ DJI Tech. Co., No. W-21-CV-
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`00740-ADA, 2023 WL 3681712, at *2-3 (W.D. Tex. Mar. 29, 2023)). Plaintiff admits it was aware
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`of the Open Group declaration due to its use during the IPR proceedings. See Docket No. 872 at
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`3.
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`Second, the parties dispute whether the Rampersad letter, the Open Group declaration, and
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`the SMB Technical Standard itself are inadmissible hearsay. For example, Defendants argue that
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`the Open Group declaration is subject to the unavailable witness hearsay exception because it was
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`submitted as testimony in the IPR proceeding and Plaintiff chose to forgo cross-examination. See,
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`e.g., Docket No. 710 at n.4. Defendants also argue that the Rampersad letter, “which forms part of
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`the patent’s own prosecution history,” qualifies under the residual exception of Federal Rule of
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`Evidence 807. Docket Nos. 642 at 12, 888 at 3. Defendants also argue that Dr. Wicker may rely
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`on inadmissible hearsay if it is the type of evidence that is reasonably relied upon by experts in
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`informing their opinions. See Docket No. 642 at 12 (citing Hewlett-Packard Co. v. Quanta
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`Storage, Inc., 961 F.3d 731, 739 (5th Cir. 2020)). At this stage of the proceeding, Defendants
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`persuasively argue there is sufficient evidence to create a genuine dispute of material fact as to the
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`public availability of the SMB Technical Standard. The Court notes, however, that at trial
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`Defendants must establish that this evidence is admissible under a hearsay exception.
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`Finally, Plaintiff argues the report erred by considering the copyright date disclosed on the
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`SMB Technical Standard as circumstantial evidence of public availability. Docket No. 872 at 4.
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`Plaintiff argues that precedent supports its position that a copyright alone may not establish a
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`genuine dispute of material fact as to public availability. Id. (citing Textron Innovations Inc. v. SJ
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`DJI Tech. Co., No. W-21-CV-00740-ADA, 2023 WL 3681712, at *3 (W.D. Tex. Mar. 29, 2023),
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`report and recommendation adopted sub nom. Textron Innovations Inc. v. SZ DJI Tech. Co., No.
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`6:21-CV-00740-ADA, 2023 WL 4084509 (W.D. Tex. June 20, 2023)). But the Federal Circuit has
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`considered copyright dates as circumstantial evidence of public availability, especially when that
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`copyright date is disclosed by a publisher, with an ISBN number. See VidStream LLC v. Twitter,
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`Inc., 981 F.3d 1060, 1066 (Fed. Cir. 2020) (noting additional evidence from the Copyright Office
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`had also been introduced); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d
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`1365, 1376 (Fed. Cir. 2018), as amended (Sept. 20, 2018) (considering the “March 2003” date on
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`the cover of the reference as “relevant evidence . . . . of public accessibility).
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`Here the SMB Technical Standard not only discloses a copyright date, it also discloses an
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`ISBN number and states it was published by a specific company—X/Open Company Ltd., U.K.
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`Docket No. 605-38 at 2. Defendants’ expert relied on the Rampersad Letter (Docket No. 605-39),
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`a declaration from the Open Group, L.L.C. (Docket No. 642-5), and this copyright date to establish
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`public availability (Docket No. 605-38 at 2). Docket No. 642 at 6. Dell also argues that the IPR
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`proceeding was instituted after Intel “made a sufficient threshold showing” about the public
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`availability of the SMB Technical Standard based on the Open Group declaration. Docket No. 644
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`at 11 (citing 644-7,3 644-8). Accordingly, Defendants persuasively argue this is relevant
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`circumstantial evidence as to public availability.
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`For these reasons, Plaintiff’s objections are OVERRULED.
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`3 The Rampersad letter states the SMB Technical Reference “was receipted and catalogued by The
`British library on the 29th of October 1992 and would have been available for public use from that
`date” but instructs Defendants to contact the publisher for the actual date of publication. Docket
`No. 644-7 at 2.
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`Case 2:16-cv-00695-RWS-RSP Document 55 Filed 10/13/23 Page 6 of 8 PageID #: 1036
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`B.
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`Plaintiff’s Objections as to the Connery System and Intel Zero Copy System
`are Moot
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`As Plaintiff admits, Dell and Intel agreed not to rely on the Connery and Intel Zero Copy
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`as prior art. See e.g., Docket No. 872 at 4–6. But Plaintiff objects to the report’s recommendation
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`that Plaintiff’s motion for summary judgment be denied as moot with respect to these systems. Id.
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`Plaintiff argues this will allow Dell and Intel to “backdoor” these systems into trial as prior art. Id.
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`at 5–6. Plaintiff asks that Dell and Intel be prohibited from referencing the Connery and Intel Zero
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`systems. Id. Plaintiff seeks further relief and asks that Dell and Intel be prohibited from using these
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`systems to show the state-of-the-art or demonstrate Defendants’ independent development of
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`technology at trial. Id. at 6.
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`The Court has conducted a de novo review of the record. This review of the record shows
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`that Plaintiff’s objections are moot given Defendants’ representations and the Court’s extensive
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`guidance as to how Defendants may use the Connery and Zero Copy systems. For clarity of the
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`record, the Court summarizes Defendants’ representations, as well as the Court’s guidance, here.
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`First, as discussed at the pretrial conferences, and the Court’s order concerning Plaintiff’s second
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`motion in limine, Plaintiff’s sought relief is overbroad. Docket No. 876 at 2. Defendants have
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`unequivocally asserted that they will not rely on these systems as prior art. See e.g., Docket No.
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`848 at 117:17–118:22; see also Docket Nos. 708 at 5–6, 834.4 And the Magistrate Judge’s report,
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`as well as discussions during the pretrial conferences, have made clear that the Court will hold
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`Defendants to that representation. If Defendants assert, or imply, that the Intel Zero Copy system
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`4 The Court notes that Dell’s response and sur-reply kept the issue of the Connery system live. See
`e.g., Docket Nos. 644, 710. Dell’s subsequent withdrawal of these filings, and joinder of Intel’s
`response and sur-reply, render Plaintiff’s objections moot because Dell’s joinder results in the
`affirmative withdrawal of Intel Zero Copy and the Connery systems as prior art in support of an
`invalidity defense.
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`comprises prior art, Plaintiff should object. Docket No. 876 at 2. Similarly, if Defendants imply or
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`assert that other dropped invalidity defenses, such as the Connery system, are prior art, Plaintiff
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`should object. See id.; see also Docket No. 796 at 2 (Agreed MIL #1). As discussed in the Court’s
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`order adopting the Magistrate Judge’s report recommending Plaintiff Alacritech’s Partial Motion
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`for Summary Judgment of No Invalidity in View of IPR Estoppel (Docket No. 607) be denied as
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`moot as to these references, the Court understands that Intel and Dell are no longer asserting these
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`references as prior art. Docket No. 887 at 4–5.
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`Moreover, Plaintiff re-raised its concerns about Defendants using their development story
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`as a “backdoor” for introducing dropped prior art at the October 10, 2023 pretrial conference in
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`reference to their “Bucket 2” objections. See Docket No. 879.5 Defendants again reiterated that
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`they would not use these systems, or other Intel materials, to suggest that the patents are invalid.
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`Instead, Defendants explained how such systems are critical to understanding Defendants’
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`independent development of the accused technology, which is relevant to the willfulness
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`allegations. Defendants also agreed to have a categorical limiting instruction that instructs the jury
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`that they may not consider the Intel materials used to show independent development, which the
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`Court understands to include these systems, as invalidating prior art. The Court believes that
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`Defendants should be able to present a story of their independent development to address the
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`allegations of willfulness. To the extent these systems were used during Defendants’ independent
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`development, Defendants’ presentation of evidence related to these systems is relevant.6
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`5 At the time of this order, the final transcript of the October 10, 2023 pretrial conference is
`incomplete. Accordingly, the Court reviewed the rough transcript.
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`6 The Court expects that Defendants’ presentation of evidence related to these references will be
`relatively high level. If Plaintiff believes the discussion of these references is becoming too
`distracting, it should ask for a sidebar.
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`Case 2:16-cv-00695-RWS-RSP Document 55 Filed 10/13/23 Page 8 of 8 PageID #: 1038
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`Accordingly, the Court overruled Defendants’ objections to these exhibits and directed the parties
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`to work together to propose language for the limiting instruction.7
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`The record is clear that the Court’s orders prohibit Defendants from using either the
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`Connery or Intel Zero Copy systems to “backdoor” prior art. The report was correct, and Plaintiff’s
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`objections as to the Connery and Intel Zero Copy systems are moot. Accordingly, Plaintiff’s
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`objections are OVERRULED.
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`IV.
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`CONCLUSION
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`The Court has conducted a careful de novo review of those portions of the Magistrate Judge’s
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`proposed findings and recommendations to which the Plaintiff objected. See 28 U.S.C.
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`§ 636(b)(1)(C) (District Judge shall “make a de novo determination of those portions of the report
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`or specified proposed findings or recommendations to which objection is made.”). Upon such de
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`novo review, the Court has determined that the report of the Magistrate Judge is correct and the
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`Plaintiff’s objections are without merit. Accordingly, it is
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`ORDERED that Plaintiff’s objections (Docket No. 872) are OVERRULED. It is further
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`ORDERED that the Report of the Magistrate Judge (Docket No. 848) is ADOPTED as
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`the opinion of the District Court.
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`7 Defendants propose a stipulation with the following language: “Intel is not arguing in this case
`that any Intel products, prototypes, or documents render invalid any of the Asserted Claims of the
`Asserted Patents.” Docket No. 888 at 7. It is unclear from Defendants’ briefing whether Plaintiff
`has agreed to the language of this stipulation. The Court expects the parties to meet and confer to
`reach agreed language for both a stipulation, and a limiting instruction, addressing this issue.
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`____________________________________
`ROBERT W. SCHROEDER III
`UNITED STATES DISTRICT JUDGE
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`So ORDERED and SIGNED this 13th day of October, 2023.
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