Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 1 of 8 PageID #: 1760
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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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`TRIAL BRIEF REGARDING IMPROPER COMPARISONS OF THE ACCUSED
`PRODUCTS TO ANYTHING OTHER THAN THE ASSERTED CLAIMS
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 2 of 8 PageID #: 1761
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`Plaintiff Alacritech, Inc. (“Alacritech”) hereby seeks and renews its motion in limine
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`seeking to preclude evidence and argument characterizing Alacritech’s asserted patents as limited
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`to its commercial TOE technology and comparisons between Intel’s accused products and TOE as
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`opposed to the asserted claim language. “It is a bedrock principle of patent law that the claims of
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`a patent”—not any commercial embodiments—“define the invention to which the patentee is
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`entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(citations omitted). Accordingly, “it is error for a court to compare in its infringement analysis the
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`accused product or process with the patentee’s commercial embodiment or other version of the
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`product or process; the only proper comparison is with the claims of the patent.” Zenith Lab'ys,
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`Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir. 1994) (citation omitted). Yet it is
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`clear through two days of trial that Defendant Intel Corporation (“Intel”) is improperly focusing
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`the jury on a comparison of Intel’s accused RSC functionality with Alacritech’s commercial TOE
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`technology and other improper placeholders for claim language.
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`1. Day 1 Improper Comparisons Between Accused Functionality and TOE
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`For example, in his opening remarks, Dell’s counsel expressly invited the jurors to compare
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`TOE with RSC as part of their evaluation of the evidence. See 10/16/23 Trial Tr. at 215:10-14
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`(“Please, as we go through the evidence in this case, every document that you see, every witness
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`that you hear, make sure that you understand whether we're talking about TOE or RSC because
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`those things are different, as the Plaintiff just told you.”) (all emphases added unless noted
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`otherwise). In his opening remarks, Intel’s counsel likewise stressed to the jurors that RSC is not
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`TOE and, importantly, that “the reason why that matters so much” is because the asserted patents
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`and claims nowhere recite the phrase RSC. Id. at 219:3-220:20 (“RSC is not the same thing as
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`TOE. They're different. And here's what -- the reason why that matters so much. And, again,
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`1
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 3 of 8 PageID #: 1762
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`why the details matter, why careful consideration matters. In a patent case like this, the patent
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`owner is limited to the boundaries of their patent. They can’t stretch those boundaries. You’re not
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`permitted to move the fence line so to speak. You’re limited to what you actually came up with,
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`your actual invention and the boundary lines in that patent.”).
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`2. Day 2 Improper Comparisons Between Accused Functionality and TOE
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`On day 2 of trial, Intel continued to intimate that Alacritech’s patents are directed to TOE
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`throughout his questioning of Alacritech’s corporate designee, Larry Boucher. For example,
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`asking Mr. Boucher a line of questions designed to suggest to the jury that the Alacritech patents
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`asserted in this case are TOE patents—“Q. The first and only time Alacritech told Intel that its
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`RSC products somehow infringe TOE patents is right here in this case, isn’t that true?” (10/17/23
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`Trial Tr. 366:16-367:4)—and whether Alacritech ever put Intel on notice of RSC (id. at 373:13-
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`374:5). The questioning and repeated emphasis on the undisputed point that “TOE is different
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`than RSC” is all aimed at inviting the jury to determine whether there is infringement by the
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`accused products based on whether the asserted patents contain the term “RSC” as opposed to
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`evaluating and comparing the accused products against the claim language.
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`3. Forthcoming Improper Comparisons of Accused Functionality
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`Now, heading into Intel’s case-in-chief, it is apparent they intend on presenting the same
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`misdirection through not just their experts, but their fact witnesses as well. For example,
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`demonstratives disclosed to be used with Intel’s corporate designee appear to be designed to have
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`a lay witness provide a technology tutorial and demonstrate the purported processing of
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`“Alacritech NIC[s]” that practiced TOE with “Intel NIC[s]” that practice RSC. See Dkt. 86-1
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`(10/18/23 Notice of Morning Disputes). Thus, Intel attempts to do through fact testimony what
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`this Court has already precluded its experts from doing—i.e., comparing the accused products to
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 4 of 8 PageID #: 1763
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`Alacritech’s commercial TOE technology as opposed to the asserted claims. See Dkt. 875 at 7-8
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`(“Dr. Heegard’s opinions comparing Alacritech’s TOE products to Intel’s accused products do not
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`involve comparing the asserted claims to the accused products. Therefore, those opinions will not
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`help the jury understand whether the accused products include each and every limitation recited in
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`the asserted claims. FED. R. EVID. 702. And any marginal probative value that testimony has is
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`substantially outweighed by a danger of confusing the issues and misleading the jury. FED. R.
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`EVID. 403.”).
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`Not stopping with its fact witnesses, Intel’s experts also appear intent on presenting
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`improper comparisons of the accused products to things other than the asserted claims. For
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`example, Intel’s non-infringement expert, Dr. Heegard, shortcuts the proper infringement analysis
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`through several demonstratives, including slides aimed at comparing “Intel RSC” with an
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`illustration of “Alacritech Patents” untethered to the claim language—all as a shortcut for arguing
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`non-infringement. See Dkt. 86-3 (10/18/23 Notice of Morning Disputes). Not only is this
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`misleading, but it is an attempt to draw a distinction with Intel’s characterization of Alacritech’s
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`TOE technology.
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`Similarly, Intel’s invalidity expert, Dr. Wicker, improperly compares Intel RSC with
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`Alacritech’s provisional patent application as opposed to the asserted claims—as a shortcut for a
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`proper written description analysis, which requires comparing the asserted claims to the underlying
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`priority document. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
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`(en banc) (focusing written description inquiry on “whether the disclosure of the application
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`relied upon reasonably conveys to those skilled in the art that the inventor had possession of the
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`claimed subject matter as of the filing date”). Dr. Wicker’s flawed analysis comparing the accused
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 5 of 8 PageID #: 1764
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`products to a priority document is yet another backdoor attempt to imply to the jurors that there is
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`no infringement by comparing Intel RSC with something other than the asserted claims:
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`Dkt. 86-4 at 8-18 (10/18/23 Notice of Morning Disputes).
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`*
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`*
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`Any one of Intel’s tactics alone is improper, and Alacritech believes that a curative
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`instruction is appropriate in light of the repeated improper arguments during trial. Moreover,
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`Alacritech requests that the Court preclude any further argument or examination before the jury is
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`left with the irreversible impression that there is no infringement in this case—not because the
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`claim limitations are not practiced by the accused products, but because they could not find the
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`term “RSC” or “receive side coalescing” in the claims or because Intel “RSC” is not Alacritech
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`“TOE.” Indeed, this is not an unfamiliar issue for courts in this District, yet it is one that has
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`uniformly been addressed through curative instructions throughout trial making clear to the jury
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`that “the only correct comparison is between the accused products and the language of the claim
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`itself.” See, e.g., Personalized Media Commc’ns v. Google, Case No. 2:19-cv-00090-JRG, Trial
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`Tr. at 945:12-20 (E.D. Tex.) (“To determine whether there is infringement, you must compare the
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 6 of 8 PageID #: 1765
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`asserted claims, as I have defined each of them to you, to the accused product. You should not
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`compare the accused product with any other specific example set out in the patents in reaching
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`your decision on infringement. As I've reminded you during the trial, the only correct comparison
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`is between the accused products and the language of the claim itself.”); id. at 951:3-12 (same).
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`Accordingly, Alacritech respectfully apprises the Court of the issue and asks for relief in
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`the form of either a curative instruction akin to that given by other Courts in this District (id.) and
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`by allowing Alacritech’s attorneys to make standing objections to lines of questioning and
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`testimony that compares the accused products to anything other than the asserted claims.
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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 7 of 8 PageID #: 1766
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`Dated: October 18, 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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`Case 2:16-cv-00695-RWS-RSP Document 92 Filed 10/18/23 Page 8 of 8 PageID #: 1767
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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 18, 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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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`Pursuant to Local Rule CV-5, the undersigned counsel hereby certifies that
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`authorization for filing under seal has been previously granted by the Court in the Protective
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`Order entered in this case.
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`/s/ Brian E. Mack
`Brian E. Mack
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`7
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