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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

1

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

THETA IP, LLC * December 16, 2021

*

VS. * CIVIL ACTION NO. W-20-CV-160

*

SAMSUNG ELECTRONICS ET AL *

BEFORE THE HONORABLE ALAN D ALBRIGHT

MOTION HEARING (via Zoom)

APPEARANCES:

For the Plaintiff: Denise M. De Mory, Esq.

Corey Johanningmeier, Esq.

Aaron R. Hand, Esq.

Hillary N. Bunsow, Esq.

Bunsow De Mory LLP

701 El Camino Real

Redwood City, CA 94063

B. Russell Horton, Esq.

George, Brothers, Kincaid & Horton LLP

114 West 7th Street, Suite 1100

Austin, TX 78701

For the Defendant: Martin J. Black, Esq.

Dechert LLP

2929 Arch Street, Cira Center

Philadelphia, PA 19104

Ruffin B. Cordell, Esq.

Fish & Richardson P.C.

1000 Maine Avenue, SW, Suite 1000

Washington, DC 20024

Seungtaik Michael Song, Esq.

Michael H. Joshi, Esq.

Dechert LLP

3000 El Camino Real

Five Palo Alto Square, Suite 650

James Travis Underwood, Esq.

Gillam & Smith

102 N. College, Suite 800

Tyler, TX 75702

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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Court Reporter: Kristie M. Davis, CRR, RMR

PO Box 20994

Waco, Texas 76702-0994

(254) 340-6114

Proceedings recorded by mechanical stenography,

transcript produced by computer-aided transcription.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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DEPUTY CLERK: Motion hearing in Civil Action W-20-CV-160,

styled Theta IP, LLC versus Samsung Electronics Company,

Limited and others.

THE COURT: Announcements from counsel, starting with the

plaintiff, please.

MR. JOHANNINGMEIER: Hello, Your Honor. This is Corey

Johanningmeier with Bunsow DeMory. And with me is Denise

De Mory. And we have Russ Horton on the line. We have Aaron

Hand. And then we also have our client representative,

Demetris Paraskevopoulos. And I believe earlier we had our

client representative, Bruce Bourbon on, I'm not sure if he is

right now. We also have a couple other lawyers from our firm

watching, Hillary Bunsow and Mike Flynn-O'Brien.

THE COURT: And Mr. Cordell? Or whoever else is going to

announce.

MR. CORDELL: Good afternoon, Your Honor. Ruffin Cordell

from Fish & Richardson. And with me are my colleagues, Marty

Black and Michael Song of the Dechert firm, and Travis

Underwood from Gillam & Smith. And I believe we have a client

representative, Mr. Tim Jezek.

THE COURT: And welcome to him, of course.

I have down -- I don't have really a chart. I know we

have three different issues to take up. The one that I have

that just popped up first is Theta's motion regarding lack of

noninfringing alternatives.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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But if there's something else you all wanted to argue

before that, I'm agnostic in what order we take them up.

MR. JOHANNINGMEIER: We're happy to do that one first,

Your Honor.

THE COURT: Okay. Then let's do that one first.

MR. JOHANNINGMEIER: I reckon that one will me talking.

We also -- we prepared some slides which I believe Mr. Hand is

going to attempt to display and run. So we'll see if that

works or not. I don't know if those are --

THE COURT: Works for me. I can see them.

MR. JOHANNINGMEIER: All right. Great. And so I'll just

call out slides as we go along.

So this is a motion for partial summary judgment that

Samsung has not presented any noninfringing alternatives, and

cannot do so at trial.

Let's go to Slide 23.

The fundamental issue here is that acceptability of

noninfringing alternatives must be considered in order for them

to be noninfringing alternatives. They don't work as

noninfringing alternatives if they're not acceptable --

THE COURT: I think you can skip over this part.

MR. JOHANNINGMEIER: All right. So I have two slides of

cases saying that. And so we'll go --

THE COURT: I'm up to speed on this issue.

MR. JOHANNINGMEIER: Right, right. So the -- let's go

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

5

then to Slide 26 and the specific testimony here.

So this is just a basic that it's Samsung's burden and

it's -- they failed to produce evidence on the specific issue

of -- on a number of issues, but specifically on acceptability.

So there's three categories of noninfringing alternatives

that they at least mentioned along the way. The first of which

here is the sort of ambiguous prior art solutions. They, all

the way through, even depo, refused to identify which prior art

references they were going to rely on here.

In fact, when I asked direct questions to their expert

about that, he couldn't tell me specific ones. But the bottom

line here is that, you know, we asked him straight out did he

consider whether or not any of those prior art solutions would

be technically feasible for Samsung to implement. That's not

in his report. I mean, that's his testimony. He didn't do it.

So there's no analysis from Samsung's expert, or anyone in

the case, about the feasibility of those arguments. So it's

just a straight up failure of proof. They don't get to present

those things as alternatives at trial without presenting

testimony about their feasibility. You know, whether or not

they'd be -- would work and all of that.

There's some mention in the opposition brief of, you know,

Samsung having pointed a few of these things out to our

witnesses in deposition. But, you know, their response to it

coming up for the first time live in a deposition was to say

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

6

things like, well, that isn't going to work.

But, of course, this is not our burden and they can't

shift the burden to us by putting these things in front of our

experts and asking them what they think. What they think is

this stuff doesn't work, but that's not the issue. The issue

here is that these prior art solutions aren't alternatives

unless Samsung does the work to show that -- you know, at least

a minimal showing that they would be commercially and

technically feasible. They haven't done anything on that

front. So these are just straight out.

The next slide is the -- Slide 27. So this is similar.

Here there's two prior art Theta patents, the '330 and the '728

that were in, you know, of -- the Court will -- may recognize

were in the prior case, the Eastern District of Texas case

there, the one that ended with the covenant and that we've been

discussing all along.

Now, those two patents, they've suggested that, you know,

because they have a license to those through the covenant, that

those are noninfringing alternatives. And the -- you know,

they, I guess, would have the right to practice those, of

course. But that isn't enough. And, in fact, there's cases in

our brief that say that that's not enough just to say you have

a license to something. You have to show you could actually do

it, that it would actually be feasible --

(Clarification by the reporter.)

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

7

MR. JOHANNINGMEIER: So you have to actually, then, show

that the alternative would be feasible, that they could

practice this. Now, no one in this case has analyzed whether

or not the accused products in this case practice those --

these patents. Samsung didn't do that. So we don't know.

They -- you know, they insist they didn't infringe before

in the prior case with different products. There's no overlap.

But with the different products they didn't infringe. With

these products that we're accusing now, they haven't done the

analysis.

But more importantly, they haven't even opined that

it's -- would be feasible to do. We asked the straight

question, would it -- you know, have you done any analysis of

it, whether or not it would be technically feasible for them to

implement those patents?

I don't have the details of that in my report.

He didn't do the analysis. They can't come in as

noninfringing alternatives without some analysis that they

would be feasible, that they would work.

Again, we have expert testimony that they wouldn't, but

that's not the issue because this is Samsung's burden. And

Samsung didn't produce any actual cogent evidence of this.

So now, the third one on the next slide, 28, so Samsung

in -- I guess it was in August, gave a list of technical

solutions that they thought were noninfringing alternatives.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

8

And they really only pursued one of those, in terms of actually

having their expert talk about it or having anyone say

anything. And that's this idea of, well, just use a larger

battery.

Now, here we have the same problem, though. Mr. Kiaei did

not look at the feasibility of using a larger battery. We

asked him if it was an insignificant effort to increase the

battery size, why wouldn't they have already done that, right?

And then he says, well, first, he says, I think you're

asking the wrong person, which I guess is a cute response,

given the lack of information we got from Samsung on this. But

then he says, there's a number of other things I would need to

look at, and to do a cost analysis of various different issues.

So he understands what he'd have to do.

Then the question: Did you do any of that analysis in

your report?

No. I was not asked to do that.

All right. He did not -- he focused on infringement and

invalidity. He did not consider the technical feasibility of

putting in a different battery, right? He just said, ah,

that'd be trivial, right?

And based on his experience, which is exactly the kind of

expert testimony that Daubert is meant to get rid of. Because

you can't just have an expert come in and say, look at me, I'm

credentialed. In my experience this would be simple. That

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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isn't reliable testimony. It's not based on any facts. The

actual facts that he could have done, he didn't do.

So on the next slide, 29, we have some more on that. He

didn't talk to anyone at Samsung, none of their witnesses about

any issue in this case, but definitely not about this one. He

didn't ask them about the possibility of increasing the battery

size. He didn't ask them how much it would cost, whether or

not there were bigger batteries available. He just didn't do

that analysis.

And then he also -- we asked him again, you didn't do any

analysis of how much it might cost in engineering time to

change to a different battery? He didn't do that analysis.

So we don't know how much it cost Samsung to develop a

bigger battery and put it in a phone. It's -- you know, that

could be a $1 million effort. It could be a $200 million

effort. We don't know that, because we don't have any

testimony from anyone. And their expert didn't ask and didn't

do the analysis. So they fall down on this one as well. Just

a failure of proof on feasibility of this alternative.

Now, there is -- you'll hear about some testimony, and we

went over it in our brief. A Mr. Choi from Samsung said that,

you know, there's many different batteries and we changed

batteries. But then when he was asked direct questions about

have you ever used, in any of these accused products, a battery

that was smaller than the biggest one you could find?

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

10

And he initially said, that's not a yes-or-no question,

started mirroring counsel's objections and, you know, refusing

to answer. We've got that in our brief, that testimony.

And then Samsung realized they weren't happy with that,

and so they had him go and talk to Dr. Ugone, the damages

expert about this, and, you know, tell him more than he told us

during depo, which is also very problematic. And then

Dr. Ugone has an opinion based on things that, you know, he

reportedly heard from Dr. Kiaei and from Mr. Choi about this

issue. But it all falls down on the fact --

THE COURT: Does he express those opinions in a report

anywhere?

MR. JOHANNINGMEIER: Yes. And we have that in our brief,

the citations to -- I believe to his report -- and if it's not

in ours, it's in theirs -- where he essentially says he talked

to Mr. Choi and Mr. Choi said that they have options on

batteries. And that it -- he's basically said this idea of

using a smaller one happens all the time.

But then when we asked him about that in deposition, about

whether or not he had any example of an accused product doing

that, he did not. So even though he did talk to Mr. Choi, they

still couldn't come up with an example in any of the accused

products of that happening. And that's all -- that's detailed

in the briefing.

Now, I will say, though, that that only gets to part of

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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the question, right? Whether or not it's something that could

be done, or whether or not they could develop a bigger battery

is one aspect of this. How much would it cost? Would it be

feasible? Would it cost less than paying Theta? None of that

is in the report. So they still have a fatal flaw in terms of

acceptability for this battery, even with the, you know, paltry

testimony that they've offered.

So now, the -- I guess the next slide.

Slide 30, just to make it -- the point here about

discovery. You know, we asked for this with a high degree of

specificity back in January. You know, describe in detail all

facts, including technical, commercial and financial details

and concerning any acceptable noninfringing alternative. That

was the rog.

The first meaningful response we got for this -- if you

show the next slide -- was in August. And this is what they

said on the battery. They said, an alternative is to include a

larger capacity battery. Okay. Well, that doesn't have much

detail. And then they also say in this one that they could get

this for free by waiting a year or two for a bigger battery.

Now, that, of course --

THE COURT: I can ask you -- I need to -- about

30 seconds. I'll be right back.

MR. JOHANNINGMEIER: Yeah. Okay.

THE COURT: Thank you very much for that. I'm happy for

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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you to continue.

MR. JOHANNINGMEIER: Okay. Thank you, Your Honor.

So I was just pointing out there, a couple aspects of

their rather short interrogatory response on this issue that,

you know, it has no details. But n one of the details they do

attempt to raise is the idea of waiting a year or two for a

significantly larger battery.

Now, I mean, I think anyone that has been to even anywhere

close to this business knows that Samsung is not going to wait

a year to release a phone for a bigger battery. So this gets

at the whole point of why it has to be commercially acceptable,

right?

You know, no one would -- you know, it hardly meets

reputation that that's not an option. And that isn't

ultimately what they argued, that they were going to wait a

year. But, you know, this was the response we got in

discovery, so this is what we had to work with going into the

deposition. And then when we got to the deposition, we got,

well, we didn't do the analysis.

So the point here, and I think I have it on the next

slide, Slide 32, is that, you know, the failure to disclose

these facts in discovery on its own is -- warrants exclusion

under the MLC case which people are citing a lot these days.

But the point there was the party had facts in their

possession that they didn't put in their responses. And they

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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got dinged and excluded for that. And this is, you know -- it

was, you know, based on -- but the Federal Circuit affirmed the

district court's discretion to exclude that.

So -- and then, again, also on the facts, they didn't

present enough to be -- to get above that bar, the discovery

bar. And on the expert opinion they gave nothing. And so, you

know, we have a whole list of cases in our brief. There's one

here on the screen, the LaserDynamics case where failure to

look at whether or not these alternatives would be feasible or

whether the company could implement them or how much they cost

is grounds for exclusion.

So I guess that is, in sum, our argument. And then I

will -- I'll let Mr. Cordell talk. And then we'll, I guess,

reserve a little time for rebuttal, if necessary.

THE COURT: Mr. Cordell, is it you or someone else?

MR. CORDELL: I -- it'd be me, Your Honor. Good

afternoon. Ruffin Cordell from Fish & Richardson on behalf of

Samsung.

You know, this issue is one that comes up a lot. And, you

know, we --

(Clarification by Reporter.)

MR. CORDELL: This headset and I don't get along very

well, it turns out.

So we spent a lot of time in the briefing discussing who

shot John. But the way this case unfolded is pretty profound.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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You know, counsel just brought up my MLC Micron case and said

you know, gosh, they should have put this in their discovery

responses early on.

But we did. We put in the noninfringing alternatives that

we could ascertain, because the difficulty we were having is

that Theta, right at the outset, didn't say anything about

their theory of infringement or what it was worth.

And if we're going to talk about MLC Micron, they should

have put these disclosures in their Rule 26 submission. It

should have come right at the outset of the case. And that's

what MLC tells us the plaintiff is supposed to do. And had

they done that, we wouldn't be having any of these discussions,

because a complete record would have been created.

Instead what we got is, you infringe. And, in fact, they

pointed to a different instrumentality. They pointed to the

IntelliCeiver portion of what they thought was in the Qualcomm

chip in Samsung's phones.

Turns out they were wrong. And in June of this year they

finally gave us new infringement contentions and switched their

theories altogether. But the suggestion that somehow we should

have been able to predict, you know, some kind of divining

process about exactly what it is they were going to claim

simply just -- it's not supported in this record. Just the

opposite is true.

What happened is they tell us finally -- well, in

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

15

discovery they tell us, we're not going to give you any

disclosure about our damages. You're just going to have to

wait. And you're going to have to wait until the expert

reports have happened in September.

And in their expert report they actually gave us something

that was a little bit of a surprise. Because Your Honor has

seen a lot of these cases, and typically the plaintiffs come in

and while the valuation they asked for, the $200 million, was

substantial, they claim that the (audio disruption) in this

case contributes to battery life by 2.6 percent. A very modest

amount, what counsel accurately called trivial. This was a

trivial change in the amount of power savings that we're

talking about.

And so yes, our experts --

(Clarification by the reporter.)

MR. CORDELL: But what we found is that they deposed our

expert, and he said, yes, I've got a lot of experience in

choosing batteries. I worked at Motorola for many years. I've

been through this process a great deal. And it's not a big

deal that, you know, you talk to the vendors and they tell you

what's available. And you kind of pick a battery based on a

lot of things.

But what he said very specifically is that 2.6 percent

doesn't require a significant amount of work. It just doesn't.

And they deposed Mr. Choi and they asked him. And he went

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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through lots of the processes that Samsung goes through as

they're choosing batteries. And very little of it has to do

with a 2.6 percent increase in the capacity of the battery.

But the evidence that came from those two witnesses is

that what you're talking about is a couple of human hairs, that

if you made the battery two human hairs thicker, you would

achieve this 2.6 percent capacity increase.

Plaintiff doesn't like that. They want NASA-level

analysis to support that kind of evidence. But they can't deny

that these two witnesses have a great deal of experience in

acquiring these batteries and implementing these batteries, in

putting them in exactly these systems. And that's the evidence

they offered.

I looked back through all of what plaintiff pointed to,

and I looked beyond it in the depositions and whatnot, and at

no time did they ask them a straight-up question, how much

would it cost to implement a 2.6 percent increase in battery

capacity? They danced around it. They asked lots of

background questions. They asked about how the process works,

but they never put that question straight up.

And so Dr. Ugone, when he was doing his actual

noninfringing alternatives analysis, did that -- did that very

analysis. And he went right at it chapter and verse.

And let me see if I can share my screen, which is always a

dangerous thing.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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This is Exhibit 8 to the motion papers, Your Honor. And

you can see this is from Dr. Ugone's report, our damages

expert. And he specifically talks about Alternative 8, using a

higher capacity battery. And he immediately says, I understand

that Samsung could have obtained the additional battery life

attributed by Theta to the patents-in-suit through a small

increase in the size of the batteries in the accused products.

And then he goes through it in great detail. And he

points out that he did have a conversation with Mr. Choi, and

relates much of what's in Mr. Choi's deposition about how

Samsung gets bids from multiple battery suppliers for a

particular size battery. And then they do a comparison, and

that capacities can differ by 2 to 3 percent across suppliers.

And that they pick a battery based on lots of different

factors. But some of which may be charging or other things

that Mr. Choi mentions. But that they ultimately make that

decision.

And he made it very clear that battery size and battery

capacity are variable rather than fixed during the development

of the phone. That it is -- it's not only possible that you

would choose a different one, but it often happens. That it's

a variable you can fix, up or down or however it is that you

choose.

He then goes into the fact that the plaintiff's expert,

Dr. Larson, somehow -- and we've got a motion on this -- but he

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somehow divines that this -- these patents-in-suit that deal

with somehow changing the amplification of certain signals

extends battery life by 20.9 minutes. It really is a

breathtaking analysis, and I look forward to the day when we

argue that motion.

But taking that for what it is, he then goes into a very

specific analysis of discussions with our witness and Dr. Kiaei

about what it would take to achieve the same result. And what

he concludes here is that you need an increase in the range of

1 percent to 3 percent of the battery capacity in order to

achieve the results that the plaintiff is claiming.

He then goes into a very detailed analysis where he looks

at the costs of the batteries. And using a proportionality he

ends up with a table here, Table 12 which I've got on the

screen, where he does a very precise calculation of what this

additional battery capacity would cost. If, in fact, one were

to need to adopt it instead of the patented approach.

So the bottom line is there is an enormous amount of

evidence here. There's an enormous amount of information that

was available to the plaintiff. They explored it to the extent

they wanted to. And what I'm left with, as I look at this, is

that it really is a -- it's the subject of perhaps vigorous

cross-examination. But the decision we're talking about here

is trivial. It's why did you pick Coke versus Pepsi? Nobody

denies that you could pick Coke versus Pepsi. And you may have

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lots of reasons, one way or the other, that we --

THE COURT: I don't take the decision of Coke versus Pepsi

as a trivial decision.

(Laughter.)

THE COURT: That may be one of the most important

decisions I have to make every day at lunch. So -- because I

won't drink Pepsi, ever.

MR. CORDELL: Well, not to pander to Waco, but I'm a

Dr. Pepper guy myself.

THE COURT: So, very good.

MR. CORDELL: But it's still a decision.

With respect to the other sort of classes of noninfringing

alternatives, there are really two. One is the prior art. And

counsel says, you know, there's no evidence that you could have

gone back and used the Hutchinson patent, the Qualcomm

patent -- patented approach as part of your -- as a

noninfringing alternative.

But there is a stark admission from his expert,

Dr. Larson. It's a stark admission that that was not only

available, but it would probably have worked. It's at

Exhibit 14, 288, 15 through 291, 20.

So, you know, again, what we're talking about here is

whether or not there is evidence in the record of that

acceptability, and it's certainly there.

And then finally, with respect to the parent patents, I

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really got a kick out of this, Judge. Because if you remember

what we're arguing about here is they sued us in 2016 on two

patents. And they -- we went through -- on to litigation. We

had experts. We had about 18, 20 months of fighting about

this. And we go to depose their expert on infringement on

these patents. And what does he say? He ends up conceding

that there is no infringement. And the case kind of founders,

of course. I mean, their expert admits that he thinks there's

no infringement.

We, then, negotiated a covenant not to sue. You've heard

a lot of these facts before. And we executed the covenant not

to sue. So we have the God-given right now to practice those

two patents.

What, now, Theta says is, well, wait a minute. You're on

the horns of a dilemma. You can't have it both ways. You

can't have not infringed those and yet choose it as a

noninfringing alternative today. Because -- and by the way, we

think maybe the patents are the same. The patents from the old

case and the patents in this case are the same.

But really, Your Honor, they're the ones that have the

dilemma. They're the ones that are facing either double

patenting invalidity or an admission that, in fact, they're

different. And they're going to have to choose that, and I

suspect they're going to choose that the patents are different.

The issue for a noninfringing alternative is not whether

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or not we're using it today. It's not whether or not anybody

ever actually used it. The issue is could it be used? And the

reality is the entirety of that first case, the entirety of

their allegations and the entirety of their assertions in that

case support one basic notion, which is, it is a viable system.

And the idea that we have to somehow prove that with extrinsic

evidence is not part of the case law.

What Grain Processing tells us is that it's got to be a

viable alternative. But it doesn't have to be proven to the

level that plaintiff, you know, asks. The Grain Processing

case, of course, they were 12 years beyond when the

implementation actually happened. So it really isn't that kind

of a didactic analysis.

So with that, Your Honor, unless there are other

questions, I'll pass the podium.

THE COURT: Response from plaintiff?

MR. JOHANNINGMEIER: Yeah. I have a couple of things.

First I'll just start where counsel did with the -- I

guess, the discovery record in this case. So, you know,

battery savings is a claim element here.

He mentions our Rule 26 disclosures. So I just kind of

want to read something from that that we have here, about

whether or not we disclosed our theory. So "Plaintiff

preliminarily identifies potential royalty bases associated

with the implementation of the patents-in-suit as including

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incremental revenue and/or cost savings" -- there it is on the

screen -- "associated with power savings associated with such

implementation, including, e.g., reduction in power

requirements, battery capacity, size, et cetera." So it's just

nonsense that we didn't disclose our theories of this case.

Now, we've heard a lot over this case about our

contentions and whatever. As Your Honor knows, we had three

rounds of contentions in this case, because -- and we had

motion practice after our second round in which Your Honor

ordered them to produce more documents and we volunteered to

give additional contentions in June.

So, you know, we've disclosed everything that we had to

disclose all along, including in our Rule 26. There is no

question here.

What actually happened in this case is that Samsung didn't

believe that they need to show feasibility, or didn't

understand that they didn't, and did not, right? Mr. Cordell

said the question is, could it be used? Well, you have a

license to it, right? In the case of the prior patents. Could

you build it? Well, no. I mean, we don't know, right?

What Mr. Larson said about the Hutchinson reference the

first time he was shown it was that, you know -- because it had

not been identified prior to his deposition as a noninfringing

alternative. He was shown it and he said, well, I mean, maybe

you'd save some power, but that's not a very good solution.

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But, again, it's not our burden to demonstrate this stuff,

it's theirs. They have the burden to show noninfringing

alternatives, and they didn't meet it. They did not analyze

the cost. Is it viable? We don't know, because we don't have

any testimony from them.

So our speculation about, you know, the fact that we might

say it's not, that we might say, well, you know, those prior

patents aren't as good these patents which we have. And that,

you know, that these ones we have now are better. That isn't

the issue.

The issue here is that they have to show feasibility,

viability, whether it could be used, availability,

commercial -- I mean, however you want to say it. They have to

show that they actually have it as an available alternative,

and they have not done so with the specific reference to

Mr. Ugone's testimony and Mr. Choi.

So Mr. Choi told us -- we asked them direct questions

like, would your group ever pick a battery that did not meet

the largest capacity of the options presented? Or do you

always choose the option with the highest capacity?

Then there was an objection: Compound. Calls for

speculation.

His answer: I agree. It depends on the circumstances and

it does require speculation.

I mean, we have this exchange in our brief that basically

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he was refusing to answer. All of this stuff that's in Ugone's

report from Mr. Choi is not testimony. It's his conversation

with Mr. Choi, right? And that is not admissible evidence,

right?

So they want to come in at trial and have him present

things that he talked to Mr. Choi about. But when we talked to

Mr. Choi, he was evasive and couldn't answer these questions.

So we put the direct question of costs to Mr. Kiaei who

put himself out as an expert who worked on batteries at

Motorola. And he said, well, I'd need to do a cost analysis.

And then we said: Did you do it?

No. He didn't do it.

So what else is there for us to do at that point, right?

It's their burden. They put up an expert that says he didn't

analyze the costs. That should be the end of it. He shouldn't

get to come to trial with a cost analysis, right?

And as far as Mr. Ugone goes, I think Mr. Cordell

described it as a complicated analysis. He took the percentage

that we put forward as what we put forward a percentage for

battery savings. Their expert used some different numbers and

calculated it the same way to get a lower percentage. And then

Mr. Ugone just subtracted that percentage from the cost of the

battery, right? That's his analysis.

He said, well, okay, it's 1.whatever percent. Here's

1.whatever percent of the battery costs. That's not an

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analysis of whether or not it would be feasible. Its not an

analysis of whether or not they could put a bigger battery in.

And it's not an analysis of how much it would cost them in

engineering time, lost market opportunity and whatever else to

actually build that. That's the thing they're missing, not the

price of the battery. We know the price of the battery. We

can figure out a percentage and a price. But what they're

missing is the actual analysis.

So with that, I don't have anything else unless Your Honor

has questions.

THE COURT: I don't. I'm going to deny that motion.

Let me turn to the next motion. Give me one second.

And to the extent there's a motion to strike that is

overlapping with this, I'm going to deny that as well.

The next motion we have is -- and, again, I think there

are two motions left. I don't care what order we take them up

in. The one opened -- when I opened it was Samsung's motion

for summary judgment of indefiniteness. Is that the one that's

best to take up next? I don't care.

MR. BLACK: Yes, Your Honor. I'm going to take that one.

THE COURT: Okay.

MR. BLACK: We appreciate your jumping on this, Your

Honor. We were looking at the preparation for trial last week,

and with all the motions pending, we thought we ought to single

out the ones that could have the most importance to shaping the

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trial coming up. And of course when we got on, Mr. Cordell, my

co-counsel, stole my thunder by getting his motion argued

first, but of course that was inevitable.

But we actually asked for this hearing to have this motion

heard.

THE COURT: Well, as at least some of you know, if you

clerked, I get no credit for this. I played no role in the

decision to set this hearing. I just -- I asked what I was

doing on Thursday afternoon and y'all are up. So credit goes

to my favorite law clerk, whichever one it is that is working

on this case that set this. So he gets all the credit. They

don't -- they learned it's better, you know, to just get in

trouble later than to ask for permission ahead of time. So

we're all here today together.

MR. BLACK: All right. Well, I've heard he's an

extraordinary clerk, Your Honor, from people in doubt.

So we asked for the hearing because of a serious problem

in claim construction which has arisen as a result of moves

that the plaintiff has made during the course of the case.

They originally filed this case based on one theory and one

instrumentality called IntelliCeiver and then they amended

their contentions and their theories dramatically in the middle

of the case. And as that's happened, the claim construction

has moved, and then by the time we got to expert reports, we

got expert depositions with some pretty remarkable admissions

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which I'd like to show you in a moment.

But let me just share my screen and I can show you where

we started the case. Can everybody see that?

THE COURT: I cannot.

MR. BLACK: Okay. Try again. How's that?

THE COURT: Yes, sir. I've got it.

MR. BLACK: Okay. Thank you, Your Honor.

So we started the case -- the issue in these claims is

that they have signal strengths that are defined as high or

low, and there's the desired signal which is the signal that

you want to receive at the phone and then there's interference

which can get in the way, and the patents deal with how you

address the interference.

So here's some sample signal levels on the left. Typical

phone might go from negative 20 dBm down to a negative 110 dBm,

and the desired signal and the interfering signals would be

measured at those levels and various things done in the claim.

So the whole thing starts, the whole alleged invention starts

with determining what's the signal level? Is it a high level

or a low level?

So no real dispute that negative 20, the highest that the

phone could hear would be a high, and that negative 110, which

is just a whisper, about to lose the signal, would be a low.

But we said, look. You need an upper bound for low and a lower

bound for high which is objective in order to meet Section 112

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indefiniteness requirements. And that there was a big question

mark because there is nothing in the claim on these terms of

degree which would tell you where the lower boundary of high

was and where the upper boundary of low was.

And Theta responded and said -- they brought in an expert

Mr. Goldberg, and he said, well, you could do it. An engineer

could -- there's nothing in the spec and there's no -- nothing

that would tell you, but you could look at standard or an

engineer could figure it out and therefore you should go with

plain meaning.

And that's what the Court did, and we understand that and

we continued litigating the case.

Mr. Goldberg, who was their infringement -- the claim

construction expert at the beginning of the case, had this

testimony where he clearly said that he understood the claims

we did, that you were trying to figure out which signal levels

were high and which ones were low. And he said here at the

bottom, well, I'd look at -- we would need to look at the

requirements of the receiver, the bit error rate, the

sensitivity, a bunch of other things listed in my report,

et cetera, to determine what low is. And so that's how one

would know what low is.

And then the same thing with the interferer signal.

So plain meaning was, we look at a number, an engineer

would know which ones of the numbers that the receiver could

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handle were high and which ones were low, and we disagree with

that because we thought the upper boundary of low and the lower

boundary of high were indefinite, but we understood they got a

plain meaning construction and we moved on.

Then they changed their infringement contentions and went

with this new theory and they didn't say anything in the expert

reports about how they were interpreting high or low. We did

not get a report that said, well, we would look at the LTE

standard X to determine what high levels are and what low

levels are or an engineer would do this or that, and it was

extremely puzzling because they had a plain meaning

construction but they had absolutely no description of how an

engineer would go about determining high and low.

So Mr. Song asked at the depositions. And this is the

deposition of Dr. Larson and the question was, what are the

boundaries? That was the question beginning of the case. And

he said, so -- so there's no unambiguous boundary, and,

therefore, in my opinion, between high and low, except that

clearly in the order of magnitude that's high and equal is not

high, and where the exact boundary occurs is ambiguous.

This is their expert, their evidence, not our expert,

saying that the boundary's ambiguous twice.

He said it again in the section at the bottom. And that

there's a transition from high to low equal where the

transition is is unclear. And, you know, I -- we could --

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people could genuinely and honestly disagree about that.

When POSAs can genuinely and honestly disagree about

something, when there's no objective standard when a line in a

claim term that you need in order to determine the metes and

bounds of the -- in the mention are unclear and ambiguous, that

is a definition of indefiniteness.

So by changing their case and changing their position on

what high and low meant, they have rendered the claims

indefinite in their application.

Now, this was not an accident. Dr. Larson said also that

his order of magnitude construction was, quote, "approximate."

Still kind of, you know, low.

And then their invalidity expert said that their

construction, which is that any signals which measure ten

decibels apart, that's an arbitrary number. So here's their

invalidity guy -- their infringement guy saying it's ambiguous,

their validity guy saying the infringement guy's numbers are

arbitrary. That's the summary judgment record.

So based on the way they've applied the claims, they have

rendered the claims indefinite, and we, therefore, seek a

summary judgment of indefiniteness.

Now, in the alternative, Your Honor, what they've done

here is issued a -- only through the -- only through the

deposition testimony -- they've taken a very odd position.

They now say that high and low are not numbers, that they're

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not specific numbers, but the negative 20, negative 30,

negative 40, they're saying that you compare the two signals

against each other, and the louder one is high and the softer

one is low. So that any signal could be both high and low.

And there's no objective way to determine when.

So, for example, let's saw there's a negative 60 db

signal. The construction that we were discussing during claim

construction was, well, we don't know whether that's high or

medium, and they said, don't worry about it. Our expert will

be able to definitively tell you at the time we get to the end

of this case by looking at specifications, by looking at

standards, by looking at other things, but that's not the

position they've taken now. The position they've taken now is

that the 60 dBm desired signal would be high if the

interferer's lower, but that same 60 dBm signal would be low if

the interferer is higher. They're really reading these to

things as higher and lower rather than high and low. These are

relative -- they've turned this claim into a relativity problem

when before we had a basis for at least having a discussion

about which signal levels fell within which category.

This is a serious issue. It is a claim construction issue

that should have been raised at claim construction time and it

was not. It is not a plain meaning construction. And what

that means is that their expert report on infringement is

founded on a -- not on your construction, which was plain

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meaning, but on a construction that they made up and first told

us about during the deposition. The prejudice here is severe.

Had we known this was their position, we would have had

additional prior art issues. We would have had additional 112

issues because there's no support for this in the specification

at all. And it would have led to other depositions and other

things that could have been done in the case, but it wasn't.

So our request, Your Honor, is that the claims be held

indefinite as applied by Theta. That in the alternative, the

Court find noninfringement because they did not apply a plain

meaning construction. And if that fails, Your Honor, we've got

an 02 Micro where we need a construction, we need some guidance

from the Court on what construction is going to be applied at

trial so that we can resolve the issue definitively. But given

the way they've applied it, given the admissions of their

experts that the claim language is ambiguous, this case is the

rare one that meets the definition of summary judgment on

indefiniteness based on the expert's own admission.

That's our submission, Your Honor.

THE COURT: If you guys would hold on just a second.

Obviously I'm going to let plaintiff respond, but I'm going to

take just a minute or two break. I'll be right back.

(Pause in proceedings.)

THE COURT: If we could go back on the record.

I don't want to seem unfair to the plaintiff, but -- and

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not give them a chance to argue. If you -- let me tell you

what I'm thinking about doing and then you can tell me what --

whether or not you think it's the most efficient way.

I think, given the argument that I just heard, and I'm

not -- I'm making no decision in terms of the merits at this

second about what Mr. Black just said. But it seems to me that

the appropriate thing to do is to have you all brief -- have

the plaintiff brief why its infringement -- its expert's

application of plain and ordinary meaning to this claim term

with respect to the infringement of these products is plain and

ordinary meaning. And the defendant can argue that it's not.

In essence, I'm happy to have another Markman on this to

determine whether or not the plaintiff's infringement -- I'm

calling it contention, it's not really that, but it is the

infringement position -- is consistent with what is the plain

and ordinary meaning or whether or not the expert's gone

astray.

That seems to me to be the most efficient and fair and

effective way of doing this. Let me hear from the plaintiff

about what you think about going about it in that manner.

MR. JOHANNINGMEIER: Well, Your Honor, so, I mean, I am --

I was prepared to, you know, a number of -- I'll just say a

number of things that Mr. Black just said I completely disagree

with and think are misrepresenting what happened. But I was

prepared to rebut this and talk about it now and to talk about

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with our meaning is. You know, we have a number of slides, a

whole list of -- so I can either -- I'm sorry.

THE COURT: I'm sorry. If you'd like to do that right

now -- I'm just saying that I want to -- I'm trying to protect

y'all's record on both sides. And so if you think -- and

Mr. Black, you know, unless Mr. Black's violently opposed to

this, you know, I'm happy to hear you make that -- an argument

that is -- entwines what I just said as well.

And then I may hold off on ruling today and make that one

of the things -- I think that's one of the options Mr. Black

gave me, was determination that it -- your opposition was not

consistent. I'm totally happy to take it up today. I just

wanted to make sure you all had an adequate time to brief it.

If you think you're prepared to move forward with it today

because of the briefing, I'm happy to move forward with it

today, and we can get something done much quicker. I'm fine

with that.

MS. DE MORY: Your Honor, could we have just a moment to

discuss?

THE COURT: Sure. Again, I want to do two things: One,

make sure I'm fair to everybody in giving you all time to brief

what is most beneficial to me, and, number two, to not have you

all go up on appeal where there was a fight over what the plain

and ordinary meaning was. I get that, and I'm going to avoid

that.

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MR. JOHANNINGMEIER: And I appreciate that, Your Honor. I

mean, I guess -- I mean, this obviously is a case dispositive

issue. I mean, it's essentially a -- they're asking to

reconsider Your Honor's Markman ruling. You know, I think it's

very clear that we didn't do what they just accused us of

doing. I can explain that, but, I -- again, I agree I would

not want to go up on appeal with sort of a ruling from the

bench today. So on one hand I would very much like to respond

to Mr. Black, but, you know, if Your Honor would be more happy

to have briefing and maybe even a separate hearing, then we're

fine with that as well.

THE COURT: I'm happy to do whatever. And I'm not saying

this to cover myself. I really want you all to do what's the

most prophylactic for both of your sides' cases. What happened

in my first trial was probably because it was my first trial,

we wound up having the experts fighting during trial over

whether or not the other had used the plain and ordinary

meaning of a word, and that doesn't work. And so in one of my

last two trials we had this situation and I did the Markman

during the trial to try and get it right. So all I want to do

is if there's a fight over whether or not -- if -- Mr. Black

can help me if I've got this wrong, but one of his arguments is

that the way your expert has construed the plain and ordinary

meaning of a claim term falls outside of the ambit of plain and

ordinary meaning and that is something that is as a matter of

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law that I need to decide, and I am -- I am going to decide

that and not have the jury figure that out.

MR. JOHANNINGMEIER: Of course, Your Honor. And I think

that the issue here what we have is actually -- maybe I should

just present really quickly what I have and then we can take

the issue off because I do want to respond and clarify

something here. I don't think there is an expert dispute

because their expert honestly hasn't really taken issue. What

we're dealing with here is counsel has an argument about what

we're doing and then we have a bunch of testimony that says

what a person of ordinary skill would understand. So I can

explain -- let me just walk through that briefly, I guess, and

then, you know, we're very happy to -- because this is such a

significant issue, if Your Honor thinks there is a potential

for a dispute at trial, which honestly, you know, there could

well be that it might make sense to brief it and have a

decision and have a clear instruction from the Court about what

can and can't be said on this issue at trial. We're very

interested in that because, otherwise, you know, we could be

having -- you know, to the extent what counsel just argued is

going to come out of the mouth of their expert at trial, that

would be inappropriate. So I do think it's an important issue.

So let me just --

MR. BLACK: I was just going to say just to answer Your

Honor, I do believe that protecting the record for everybody is

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important and that some clarity in briefing would be very

beneficial. We did want to -- when I was looking at this, I

saw, you know what? We're going to have a train wreck at this

trial if we don't sort this, and that's why we asked for the

motion last week, and we think briefing was a very good idea.

THE COURT: Yeah. I think I'm going to go ahead and do

that. I'm just going to put a pause -- I don't want --

Mr. De Mory (sic), I'm worried that you're thinking, gosh, I've

only heard one side of it and that's not fair. I know you want

to get yours out too, but truly, fortunately for you all, I

actually had some cases that involve this technology. So as

you were going through the arguments, I actually understood

what you were saying. And so I -- in other words, I understand

what the fight is. And so what I would propose we do on this

one, and Mr. -- I'm curious for a second, Mr. Black. What is

the other last of the motions that we have?

MR. BLACK: The last motion is a motion to deal with trial

management really. We had earlier in the case filed a motion

to bifurcate the implied license defense. Actually filed a

motion asking for certification on appeal which hasn't been

acted on. It's a little late for that. But we do think that

that's an issue for the bench, not for the jury and that we

kind of need that sorted before January 4th which is six days

before trial. We think the most efficient thing would be to

have Your Honor try that issue because it's equitable, try it

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first, but if not, we need to make sure the evidence that comes

in in front of the jury only is related to evidence that's

necessary.

THE COURT: Mr. Black, let me tell you the way I've done

this in the past, and this may not make you happy, but it's the

way it's been most efficient for me and then tell me what you

think of this. I've had several cases now where we've had

inequitable conduct which I don't submit to the jury. What

we've done in those cases is we have tried the case, and then

while the jury is deliberating, I've tried the bench trial on

the equitable issues. That way we don't lose time, but I also

have kept out evidence if it -- for example, if there's

evidence that only went to the inequitable conduct claim and

someone objected, I kept it out from the jury. So to me that

would make the most sense to me, given how close we are to

trial, but if you're telling me that a -- if I heard your case

first on this to the bench, I might say we don't need a trial.

Obviously, there is some appeal to that as well.

MR. BLACK: That is exactly right, Your Honor. If you

hear the --

(Simultaneous conversation.)

MR. BLACK: -- implied license defense goes to -- I'm

sorry. Go ahead.

THE COURT: No, no. Please. Go ahead.

MR. BLACK: I was going to say the implied license defense

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goes back to the really central issue in the case which is in

the first litigation they sued us on these two patents and then

dropped it, gave us a license and a covenant not to sue. Then

they made some minor changes to the claims and sued us again.

And we're saying -- to the extent we're operating at all, we're

operating within that license and we're allowed to do what

we've done.

So there's some case law on this. Your Honor issued a

summary judgment ruling against us and said there's a triable

issue. Our view is, okay. We understand that's the law of the

case, but that's a triable issue for the Court to decide and it

would be a one day trial probably and could -- definitely a one

day trial and could sort out this whole case and --

THE COURT: Let me make this offer. I'll keep bidding and

see how this goes. I mean, and so -- and, you know,

remembering when you're giving your Yelp reviews how

cooperative I was. So...

But what if we did this? And the reason -- if this were

any other day other than the 3rd, you know, the problem is we

don't have that week before. Here's what I'm thinking we could

do. We could -- if you think you could get that part of the

case tried in the morning, we'll pick the jury when we pick the

jury. I'm assuming we're doing it sometime ahead of the trial,

and ordinarily I would start Monday morning at 9:00 with the

jury trial. What we could do is we could just have the jury

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come in at 1:00 and you all could try that case, your -- that

bench trial in the morning at 9:00. And you'd have three hours

to try it, and then, you know, we'd have the -- obviously if I

decided in your favor, then the jury would come in for a very

short time. If I decided not in your favor, then we would try

the case. And that way we wouldn't lose too much time -- oh,

wait. In fact, even -- oh, no. I was going to say we could do

this, but y'all will actually be attending the jury picking.

So let's see.

MS. DE MORY: Your Honor, can I --

THE COURT: Are y'all on the 10th or the 3rd?

MS. DE MORY: We're on the 10th.

MR. BLACK: We're on the 10th.

MS. DE MORY: May I be heard briefly on this, Your Honor?

THE COURT: Sure.

MS. DE MORY: This is on behalf of Theta. Good morning or

good afternoon, as the case may be.

So we oppose bifurcation of this issue going first. The

issue here has already been litigated twice fully, and the

Court issued a summary judgment order in which it unequivocally

said there are disputed questions of fact. And those questions

of fact are not the questions of fact that should be resolved

by the Court. They are questions of fact that actually go

essentially to contract formation. What was the deal between

Samsung and Theta? Was there a deal? So the Court has already

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determined that there was no integrated contract here, that

parol evidence is coming in to determine what the intent of the

party is. Under Texas law this formation issue is a question

of fact. It goes to the jury. So although ultimately the

Court may decide based on some findings from the jury that in

fact whatever the jury finds there was a deal and it had, you

know, these -- you know, this was the meeting of the minds,

this was the mutual intent, then the Court may say, okay. Then

I'm going to direct a result, but the summary judgment order is

very clear and the Court has actually considered this twice

already.

There was a motion to dismiss and then there was a summary

judgment motion on this issue. And the Court in the summary

judgment order said a number of things. It said first,

however, a fact issue exists as to the mutual intent of the

parties precluding summary judgment. But Theta demonstrated a

material issue of fact, that these -- the cases that Samsung

relies on are distinguishable because there's clear contrary

evidence here of intent of the parties which this Court sees as

a fact issue precluding summary judgment.

So this is not one of those issues where it's a bench

trial on just the documents, and Samsung has already had that

bench trial on the documents twice. And the Court has reached

its determination. In fact, in the summary judgment order, the

Court also says that Samsung argues Theta rejected Samsung's

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request for a broad piece and, therefore, it's entitled to this

presumption that it should have an implied license. But the

record evidence shows that Theta expressly reserved the right

to sue for infringement on the continuation patents or, rather,

every patent other than those named in the C&S and strong

enough to defeat a presumption and raise a fact issue for the

jury.

So we -- we've already -- I mean, you've already actually

considered this issue twice and determined that there was a

fact issue that should go to the jury.

And in addition to that, it's not just that this -- that

you've made that determination. It's that all of these facts

are going to the jury anyway. Because these issues -- the

Court just denied the motion on noninfringing alternatives. So

that means the covenant is coming in, and we're talking about

whether or not Samsung could feasibly practice the patents that

were from the prior litigation.

We -- these are method claims, so we're talking about

inducement. And our evidence of inducement is completely

linked in the same as the evidence relating to the implied

license defense.

We resolved the last -- the last suit ended when

Samsung -- we gave Samsung a covenant. It came back to us. It

asked us, will you expand that covenant to cover the pending

continuations which Samsung knew about and Samsung admits? We

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said no. And so there's -- that's going to be evidence of

knowledge, willful blindness, and it also comes in as to

willfulness.

So these issues are fully intertwined with the trial.

They are not going to simplify anything, and the Court has

already decided that there are disputed questions of fact that

should go to the jury on this. And so --

THE COURT: I got it. If y'all will give me just a

second, I need to check something with my clerk. I'll be back

in just a few seconds.

(Pause in proceedings.)

THE COURT: Okay. Here's what we're going to do. The

pretrial conference is January 4th. I need you all to get

together and figure out how you're going to do the briefing on

this claim term issue. Again, it seems to me the way to do it

is for the plaintiff to get me a short brief on why the --

explaining why the expert believes that the product -- Samsung

products infringe and what he did in terms of his analysis, why

it infringes this claim term, and then why the claim term is,

in fact, plain and ordinary meaning within the context of the

patent and the specification. That needs to be done quickly.

I don't know how many days, but it needs to be done quickly.

Then I need a response from the defendant, and that needs to be

done quickly, and then if the plaintiff wants to have a very,

very short reply, that needs to be done and to us by

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December 3rd (sic) because my understanding is our pretrial

conference is on the 4th.

So that's what we're going to do with that part. On the

other part we are going to -- I'm going to not take up the

issue of -- that Mr. Black raised until like -- I'm going to do

it in my ordinary course of business which is if at the end of

trial there still is an issue that I believe I need to take up

and that it should not go to the jury, then I'll do that at a

bench trial while the jury is out.

And as we go through the course of the trial, if there's

evidence that one side believes is or is not admissible based

on it not pertaining to an issue that's going to be tried by

the jury, we'll just -- the lawyers can object during the

trial.

So I think that resolves everything that we had today.

But I'll start with Mr. Black who's in my screen and ask if

there's anything else -- oh, I'm sorry. My clerk just pointed

out. We need -- I'm going to deny the motion for interlocutory

certification as well.

So is there anything else that we need to take up today?

MR. BLACK: I did not have high hopes for the motion for

interlocutory appeal, Your Honor, and I thank you for jumping

on this and your creativity in dealing with that.

I will say one thing, that under English common law, which

is what actually governs through the Seventh Amendment, what we

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have a right to trial by jury on, the fact that there's intent

and other issues involved, like for inequitable conduct, makes

no difference. This issue, Your Honor, implied license, it is

for you, and we look forward to trying it to you.

THE COURT: Well, you have Mr. Horton who may be the only

one of you all that has appeared recently in the Supreme Court.

So maybe when he and I are at lunch someday, I'll ask him to

explain to me the English common law because -- I'm kidding.

(Off-the-record discussion.)

THE COURT: Well, this is just more evidence of why since

just about everyone on this call is a thousand times sharper

than I am why it's a good thing I got this alternative job and

don't have to practice law and compete against any of you.

So it's -- but it's -- so I'm going to amend what I said.

I'm going to invite both you and Mr. Horton to lunch and we can

all talk about the common law and find it fascinating. So...

MR. BLACK: That'll be fabulous, Your Honor.

THE COURT: Is there anything else we need to take up

today?

MR. CORDELL: Just one little nit, Your Honor, if I may.

This is Ruffin Cordell. And I don't know anything about the

English common law because all I know is the principle code.

So I'm stuck in a different world, but...

(Laughter.)

MR. CORDELL: We had a little bit of a problem in that we

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had our corporate representative slated for trial, and he's got

a bunch of conflicts. And so we're -- we would like to propose

someone else from the same department so that it's as close a

match as possible, but we want to be able to allow him to be

deposed now out of time. Does the Court have a problem with

that?

THE COURT: I have no problem with that.

MR. CORDELL: So we'll put him up.

MS. DE MORY: Your Honor?

THE COURT: Look. I mean, this stuff happens. You know,

we're all doing the best we can. We've got -- you know, I

don't know what a corporate representative is going to say.

And so, you know, I don't know that he's even going to be

called. I don't know what you would depose him about. And

so -- other than he's going to come in and say, I work for

Samsung. And so...

MR. CORDELL: We gave them a proffer just to try to

short-circuit the process, but we'll get it done.

MS. DE MORY: That's all good. We'll work it out. It's

not a problem.

THE COURT: I would do the same with you. I've allowed

witnesses to appear by Zoom, you know, where it's a time when

we've just all had to be limber and get things done.

MS. DE MORY: We'll work it out.

I think there's one other small issue that would help us

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all avoid sending you more paper, which is that we have

motions -- oppositions to motions in limine and the draft

pretrial order due tomorrow. I know everyone on all sides has

been very distracted by getting ready for this hearing. So we

all collectively proposed that we move that date till Tuesday,

and so I would just ask --

THE COURT: No way.

(Laughter.)

THE COURT: I was going to spend my weekend going through

those. No.

MS. DE MORY: It'll just save a motion.

THE COURT: No. That's -- that is 100 percent fine with

me. As far as I'm -- yeah. No. I don't -- I really don't

need -- not to let you behind the Wizard of Oz' door, but I

will look at the motions in limine on whatever the date our

pretrial hearing is. I will go through -- I'll be reading them

as I'm -- I'll go through them and tell you what I'm going to

do as I read through them. And if I have any questions about

why -- if there's something where I think I don't know why they

want that, I'll ask you, but that part of this will go -- the

motions in limine will go very quick.

And so you understand, this is the way I see motions in

limine, which is on 99 percent of it I'm just saying you can't

bring it up during opening argument or without asking

permission of the Court. I'm not typically ruling that it's

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inadmissible. Now, if there's something different, you know,

can you turn and ask opposing counsel what they said to their

client? No. That's a motion in limine that's kind of one of

the permanent ones, but if it's case specific, my view of

motions in limine is this: They're out until someone comes up

and says, Judge, we'd like -- this is why this is going to come

in, and that's fine.

Also, I have recently had more people objecting during

opening arguments and closing arguments than I had seen in the

past. I am a schizophrenic on this. On the one hand, like

most judges, I don't like it very much. On the other hand,

it's your client you're protecting, and if you feel like you

need to object to something, then that's your right and you

should do it. You should not not object during opening or

closing because you're worried what I'm going to do. You need

to protect your client. And so that's the way I see the world.

And so that's the way to deal with openings and closings.

So is there anything else we need to take up today?

MS. DE MORY: Nothing else, Your Honor. Thank you.

MR. CORDELL: Nothing from defendants, Your Honor. Thank

you.

THE COURT: Well, as always, I have the best job in the

world. I get to work with great lawyers over interesting

stuff, and I don't have to bill hours. So those two things are

pretty wonderful.

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

U.S. DISTRICT COURT, WESTERN DISTRICT OF TEXAS (WACO)

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So I hope you all have a Merry Christmas or a happy

holiday or whatever it is -- whatever it is you observe, I hope

you have a wonderful holiday season. I hope that you have a

wonderful new year. I hope those of you who are more local, I

hope I see you in person in the near future at some point, and

if there's anything else we need take up before the pretrial

hearing, just let Jeff Melsheimer know and we'll do it. So

take care, everyone.

(Hearing adjourned at 3:19 p.m.)

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KRISTIE M. DAVIS, OFFICIAL COURT REPORTER

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UNITED STATES DISTRICT COURT )

WESTERN DISTRICT OF TEXAS )

I, Kristie M. Davis, Official Court Reporter for the

United States District Court, Western District of Texas, do

certify that the foregoing is a correct transcript from the

record of proceedings in the above-entitled matter.

I certify that the transcript fees and format comply with

those prescribed by the Court and Judicial Conference of the

United States.

Certified to by me this 16th day of December 2021.

/s/ Kristie M. Davis

KRISTIE M. DAVIS

Official Court Reporter

800 Franklin Avenue

Waco, Texas 76701

(254) 340-6114

kmdaviscsr@yahoo.com

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