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KEKER, VAN NEST & PETERS LLP

Robert A. Van Nest (SBN 84065)

rvannest@keker.com

Eugene M. Paige (SBN 202849)

epaige@keker.com

Justina Sessions (SBN 270914)

jsessions@keker.com

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 391-5400 

Facsimile: (415) 397-7188

CRAVATH, SWAINE & MOORE LLP 

Gary A. Bornstein (pro hac vice) 

gbornstein@cravath.com

Yonatan Even (pro hac vice)

yeven@cravath.com 

825 Eighth Avenue 

New York, New York 10019-7475 

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

Attorneys for Defendant 

QUALCOMM INCORPORATED

MORGAN, LEWIS & BOCKIUS LLP

Richard S. Taffet (pro hac vice)

richard.taffet@morganlewis.com

101 Park Avenue

New York, NY 10178-0060

Telephone: (212) 309-6000

Facsimile: (212) 309-6001

MORGAN, LEWIS & BOCKIUS LLP

Willard K. Tom (pro hac vice)

willard.tom@morganlewis.com

1111 Pennsylvania Avenue NW

Washington, DC 20004-2541

Telephone: (202) 739-3000

Facsimile: (202) 739-3001

MORGAN, LEWIS & BOCKIUS LLP

Geoffrey T. Holtz (SBN 191370)

gholtz@morganlewis.com

One Market, Spear Street Tower

San Francisco, CA 94105-1596

Telephone: (415) 442-1000

Facsimile: (415) 442-1001 

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

FEDERAL TRADE COMMISSION,

Plaintiff,

vs.

QUALCOMM INCORPORATED, a Delaware 

corporation,

Defendant. 

Case No. 5:17-cv-00220-LHK-NMC 

DEFENDANT QUALCOMM 

INCORPORATED’S REPLY ON

MOTION TO STRIKE PORTIONS OF 

REBUTTAL EXPERT REPORT OF 

DR. ROBERT AKL

Date: October 18, 2018

Time: 1:30 p.m.

Dept.: Courtroom 8, 4th Floor

Judge: Hon. Lucy H. Koh

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I. PRELIMINARY STATEMENT

In its Motion to Strike, Qualcomm established that Paragraphs 72-86 of the Rebuttal 

Expert Report of the FTC’s expert Dr. Robert Akl improperly present new opinions that go 

beyond the proper scope of rebuttal expert testimony. These paragraphs contain, for the first time 

in this case, qualitative assessments of specific patents held by firms other than Qualcomm. 

Contrary to the FTC’s assertions, these analyses do not rebut the opinions of Qualcomm’s 

technical expert, Dr. Jeffrey Andrews. Indeed, Dr. Akl himself conceded that Paragraphs 72-86 

concern “standardized technology areas not addressed by Dr. Andrews”. (Holtz Ex. 1 ¶ 5 (Akl 

Rebuttal Report) (ECF No. 797-2) (emphasis added).) In Opposition, the FTC primarily argues

that the “context of this case makes clear that both experts’ opinions are relevant to cellular SEP 

technology generally”. (Opp. at 1.) According to the FTC, Dr. Akl’s new patent opinions 

therefore are proper because they are within the “same subject matter” of Dr. Andrews’s opinions 

(i.e., “cellular SEP technology generally”). The FTC’s approach misstates the limited scope of 

allowed rebuttal testimony, which must be offered “solely to contradict or rebut evidence” of the 

opposing party, not to offer new opinions relevant to the “general” subject area. Dr. Akl’s 

opinions go far beyond the allowed scope of rebuttal and should be stricken. 

Critically, the FTC’s arguments in opposition are based on a misstatement of the purposes

for which Qualcomm is offering Dr. Andrews’s opinions. The FTC speculates that 

Dr. Andrews’s report is intended to show that the “relative value” of Qualcomm’s patents “might 

justify” the royalties that Qualcomm charges. (Opp. at 5.) This is incorrect. Qualcomm offered 

the exemplar patents addressed by Dr. Andrews to illustrate the flaws in the FTC’s experts’ 

reliance on simple patent counting as a basis for valuing Qualcomm’s portfolio. Specifically, in 

his initial report, Dr. Akl compiled a numerical “census” of the many thousands of patents that

were declared by industry participants to be potentially essential to various cellular standards, and 

Qualcomm’s relative “share” of that population of patents. (Opp. at 2.) Another FTC expert, 

Michael Lasinski, then performed mathematical calculations using that “census” “to adjust[] for 

portfolio size” and to determine a purportedly “reasonable” and “proportionate” royalty rate for 

Qualcomm’s patent portfolio relative to other companies’ portfolios. (Opp. at 3.) And yet 

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another FTC expert, Richard Donaldson, opined—on the basis of the same census—that 

Qualcomm’s “share of declared SEP families”, and by extension the value of Qualcomm’s 

portfolio, declined with each new generation of cellular standards. (Donaldson Report at 14.)1

Qualcomm served the reports of two experts—an economist and an engineer—that 

illustrate the shortcomings of the simplistic patent counting relied on by the FTC, including its 

inability to account for the value of fundamental inventions. At issue here is the report of 

Dr. Andrews, who describes exemplar fundamental, essential technologies invented by 

Qualcomm, in each generation of cellular technology. (Holtz Ex. 4 ¶ 3 (ECF No. 797-5).) 

Dr. Andrews did not purport to provide an opinion on every fundamental innovation made by 

Qualcomm, of which there are many, or even on fundamental innovations within every 

technology area relevant to cellular devices. Rather, he addressed certain technology areas that 

“have been particular focuses of [Dr. Andrews’s] research, teaching, and professional 

experience”. (Id.) Dr. Andrews’s Report concludes that without the innovations represented by 

the 34 exemplar Qualcomm SEPs he addressed, “3G, 4G, and 5G cellular would not be possible”. 

(Id. ¶ 7.) Dr. Andrews’s analyses illustrate Qualcomm’s arguments that Dr. Akl’s simple 

“census” cannot serve as a reliable basis for any opinion concerning the value of Qualcomm’s 

portfolio, whether across SEP holders (as done by Mr. Lasinski) or over time (as done by 

Mr. Donaldson), because it wrongly treats fundamental patents the same as less important patents. 

The new opinions from Dr. Akl addressed in this Motion do not disprove or contradict any

conclusions Qualcomm will ask the Court to draw from Dr. Andrews’s analyses, and therefore do 

not constitute proper rebuttal pursuant to Rule 26(a)(2)(D)(ii). Rather than explain how Dr. Akl’s 

new opinions rebut Dr. Andrews’s opinions that the patents he had identified are fundamental, or 

even Qualcomm’s broader position—that not all standard-essential patents are equally 

fundamental or important—the FTC’s Opposition misstates the purposes for which Qualcomm 

offers Dr. Andrews’s Report. The FTC argues that the “implication” of Dr. Andrews’s Report is 

that “Qualcomm’s patents are more valuable than those held by other licensors”, and that 

 1 Qualcomm previously filed the Donaldson Report under seal as Exhibit 1 to the Declaration of 

Geoffrey Holtz, ECF No. 799-2.

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Dr. Akl’s opinions are intended to rebut this “implication”. (Opp. at 5.) This “implication” is a 

straw man. Dr. Andrews’s Report is not intended to justify the value of Qualcomm’s SEPs 

“relative” to those of other cellular firms, which is why Dr. Andrews made no claim regarding 

cellular SEPs held by any other firm. Indeed, the FTC’s argument—that the value of 

Qualcomm’s SEPs must be determined not by the outcomes of numerous arms’-length licensing 

negotiations but by comparing them to SEPs held by other firms—is the FTC’s own position, not 

Qualcomm’s. The FTC should not be allowed to rely on its own misstated interpretation of 

Qualcomm’s position in order to justify Dr. Akl’s improper new opinions. 

Although the FTC has not explained how Dr. Akl’s assessments of any patents held by 

other firms rebut or contradict Qualcomm’s arguments, Qualcomm has conservatively moved to 

strike only a subset of Dr. Akl’s opinions, i.e., his assessments of patents in technology areas that 

Dr. Andrews did not address, because the resulting prejudice to Qualcomm from those opinions is 

doubly clear. If the FTC wanted to offer a qualitative assessment of other companies’ portfolios

in support of its assertion that other cellular firms have important patents, then it should have 

done so in its experts’ opening reports, so Qualcomm would have the opportunity (1) to analyze 

the alternative patents offered by the FTC and (2) to consider whether to offer fundamental 

Qualcomm patents in the same technology areas or in additional technology areas from within 

Qualcomm’s thousands of SEPs. The FTC’s tactical choice not to do so, but rather to provide

such assessments only as purported rebuttal, has unfairly deprived Qualcomm of those 

opportunities. Dr. Akl’s new opinions should be stricken. 

II. ARGUMENT

A. Dr. Akl Concedes that Paragraphs 72-86 of His Rebuttal Report Offer 

Opinions Beyond the Scope of Dr. Andrews’s Opinions.

In Dr. Akl’s Opening Report, Dr. Akl presented a so-called “census” of the “cellular SEPs

declared as essential to various cellular standards by different entities”. (Holtz Ex. 3 ¶ 1 (ECF 

No. 797-4).) Dr. Akl’s Opening Report performed no qualitative assessment of any specific 

patents, whether held by Qualcomm or any other cellular firm; instead, he engaged in a pure 

counting exercise. Mr. Lasinski’s Opening Report uses Dr. Akl’s census to compare “Qualcomm 

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SEP royalties to those of other major licensors” using mathematical calculations that purportedly 

“account for variations in portfolio size and strength”. (Opp. at 10.) And Mr. Donaldson opines, 

on the basis of the same SEP census, that Qualcomm’s “share of declared SEP families” declined 

in succeeding generations of cellular standards. (Donaldson Report at 14.)

In his report, Dr. Andrews described and analyzed specific examples of SEPs in 

Qualcomm’s patent portfolio in four areas of cellular technology: cellular waveform, carrier 

aggregation, heterogenous cellular networks and unlicensed spectrum. As Dr. Andrews stated in 

his report, “[t]he patents discussed in this report demonstrate that Qualcomm possesses a wideranging portfolio in a broad range of subject areas. These patents address fundamental 

innovations. Without these concepts, 3G, 4G, and 5G cellular would not be possible.” (Holtz 

Ex. 4 ¶ 7.) Dr. Andrews further explained, contrary to the FTC’s contentions, that Qualcomm’s 

portfolio of cellular patents has “continued to grow and expand over time” on the basis of “newer

fundamental patents” relevant to later cellular standards. (Id. ¶ 8.) Because of the breadth and 

quantity of Qualcomm’s contributions to cellular technologies, Dr. Andrews made clear that he 

was not addressing all important Qualcomm inventions within these technology areas, nor was he 

addressing important Qualcomm inventions in all potentially relevant technology areas. Rather, 

he focused on areas that “have been particular focuses of [his] research, teaching, and 

professional experience.” (Id. ¶ 3.) 

Dr. Akl’s Rebuttal Report spends only about three pages (out of a 46-page report) 

describing Dr. Akl’s “Disagreements with Dr. Andrews’s Analysis of Qualcomm Patents”. 

(Holtz Ex. 1 at 2-5.) Much of the remainder of Dr. Akl’s Rebuttal Report presents Dr. Akl’s 

assessments of patents held by “major licensors other than Qualcomm” (Ericsson, Nokia and 

InterDigital) that Dr. Akl asserts to be “of similar importance to those identified by 

Dr. Andrews”. (Id. at 15-44.) Qualcomm moved to strike a subset of these new patent 

assessments: those that touch on technology areas that Dr. Andrews had not even addressed in 

his Report, as conceded by Dr. Akl. 

Although the FTC’s Opposition now asserts that Dr. Andrews’s Report 

“addressed . . . cellular standards as a whole”, including “two of the four technology areas 

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Qualcomm now argues Dr. Akl raised for the first time” (Opp. at 4, 7), Dr. Akl’s Rebuttal Report 

itself confirms that the FTC’s assertion is unfounded. Dr. Akl’s Rebuttal Report explained that 

Paragraphs 72-86—which comprise the opinions Qualcomm is moving to strike—address patents 

“in standardized technology areas not addressed by Dr. Andrews”. (Holtz Ex. 1 ¶ 5 (emphasis 

added); see also id. ¶ 72 (identifying the subsequent paragraphs as describing patents relevant to 

“other portions” of cellular standards that Dr. Andrews did not address).) Dr. Akl’s concession 

confirms that his new patent opinions are not offered “solely to contradict or rebut evidence on 

the same subject matter” addressed by Dr. Andrews’s Report, and they therefore are not proper 

rebuttal under Rule 26(a)(2)(D)(ii).2 

The FTC cannot justify its failure to disclose Dr. Akl’s new patent analyses on the basis 

that it could not have anticipated that Qualcomm would offer qualitative evidence concerning its 

fundamental innovations, which have long been a key issue in the case. (Mot. at 2.) In Amos v. 

Makita U.S.A., for example, a defendant who was accused of causing a fire chose not to present 

an initial expert report concerning the fire’s cause, even though the defendant was obviously on 

notice that causation was a critical issue in the case. 2011 WL 43092, at *2 (D. Nev. Jan. 6, 

2011). On rebuttal, however, the defendant’s expert offered two opinions: (1) that the plaintiff’s 

expert’s opinion on the causation of the fire was incorrect, and (2) that there was actually another 

cause of the fire. Id. The Court allowed the first opinion as proper rebuttal but excluded the 

 2 With respect to the two technology areas the FTC asserts Dr. Andrews opined that Qualcomm 

had developed—semi-persistent scheduling (“SPS”) and discontinuous reception (“DRX”)—the 

FTC simply has misread the portion of Dr. Andrews’s Report on which it relies. The FTC’s 

Opposition states that Dr. Andrews opines that “these technologies were ‘introduced in 

Qualcomm’s HDR system’”, and therefore infers that “he clearly offers an opinion that 

Qualcomm developed these technologies”. (Opp. at 9.) In fact, Dr. Andrews’s Report stated in 

relevant part that “these features focus on improving scheduling of a common data channel, 

which, as discussed above, was introduced in Qualcomm’s HDR system, for different types of 

data”. (Holtz Ex. 4 ¶ 29 (emphasis added).) Dr. Andrews was opining that the “common data 

channel” was introduced in Qualcomm’s HDR system, a precursor of the CDMA technology later 

standardized as EV-DO. (Id. ¶ 52.) However, SPS and DRX (which “improv[ed]” the common 

data channel) were not part of the HDR system, but were developed and standardized as part of a 

separate WCDMA standard called HSPA+. (Id. ¶ 62.) Qualcomm may present at trial percipient 

witness testimony concerning its invention of fundamental elements of SPS and DRX. The 

FTC’s assertion that other cellular firms may have patents relevant to SPS and DRX would not

contradict that factual evidence.

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second, because the new theory of fire causation was “outside the scope of the opinions” of the 

plaintiff’s expert and because it was “an expected and anticipated portion” of the defendant’s 

case-in-chief that should have been disclosed earlier. Id.; see also IBM Corp. v. Fasco Indus., 

1995 WL 115421 (N.D. Cal. Mar. 15, 1995) (“The supplemental or ‘rebuttal’ experts cannot put

forth their own theories; they must restrict their testimony to attacking the theories offered by the 

adversary's experts.”). Qualcomm does not move to strike the portion of Dr. Akl’s opinions that 

express “disagreements” with Dr. Andrews’s analyses of Qualcomm patents, or even Dr. Akl’s 

assessments of third-parties’ patents in technology areas addressed by Dr. Andrews (even though 

they do not directly contradict Dr. Andrews’s patent analyses). However, Qualcomm moves to 

strike Dr. Akl’s patent assessments in other technology areas not addressed by Dr. Andrews 

because they, like the stricken opinions in Amos and IBM, are “outside the scope of”

Dr. Andrews’s opinions and should have been disclosed in the FTC’s initial expert reports. 

Because the FTC did not disclose Dr. Akl’s qualitative patent assessments until his 

Rebuttal Report, Qualcomm and its experts were denied the opportunity to perform two critical 

tasks that would rebut Dr. Akl’s new opinions, unfairly prejudicing Qualcomm and requiring that 

the new patent opinions be stricken. First, Qualcomm was deprived of the opportunity to present 

fundamental patents in technology areas that Dr. Andrews expressly did not address in his report. 

Based on the scheduled length of trial and the scope of Qualcomm’s patent portfolio, Qualcomm 

could not address fundamental innovations in all relevant technology areas in the allotted time.

Given the lack of any qualitative assessment of patents in the FTC’s opening reports, Qualcomm 

focused on a limited set of exemplar fundamental SEPs in its portfolio. Qualcomm is thus 

prejudiced by its inability to address the new opinions offered by Dr. Akl on rebuttal. Second, 

Qualcomm was deprived of the opportunity to present expert testimony challenging Dr. Akl’s 

assessments of other firms’ patents, for example by offering opinions that those patents are not 

valid, are not actually essential to cellular standards, are not as “fundamental” as Dr. Akl 

contends, or are otherwise not “of comparable importance” to Qualcomm patents identified by 

Dr. Andrews. (Cf. Holtz Ex. 1 ¶ 87.) As noted above, Qualcomm does not seek to exclude 

patents described by Dr. Akl that are within the technology areas addressed by Dr. Andrews, even 

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though the FTC’s failure to disclose the patents in its opening reports prejudiced Qualcomm with 

respect to all newly disclosed patents. However, this prejudice compounds the problem with 

respect to patents in new technology areas that Dr. Andrews explicitly chose not to address. 

The FTC asserts that there is no prejudice to Qualcomm because Qualcomm purportedly 

had notice “that the FTC’s experts would compare Qualcomm’s SEP portfolio to the SEP 

portfolios of other licensors”, and it cites to initial expert reports submitted by Dr. Akl and 

Mr. Lasinski. (Opp. at 10.) But Qualcomm’s opportunity to rebut the numerical census and other 

patent counting in the FTC’s opening expert reports is not at issue here. Qualcomm could and did 

rebut that comparison, by offering the exemplar patents described in Dr. Andrews’s Report and 

opinions in a Report submitted by Dr. Mark Schankerman, an economist who explained that 

“simple patent counts cannot indicate the quality of individual patents”. (Opp. at 3.) Rather, the 

problem is that Dr. Akl’s rebuttal report offers brand new qualitative assessments of a sort that the 

FTC’s opening reports did not disclose. Because none of the FTC’s experts disclosed in their 

initial reports any qualitative comparison of any Qualcomm patents to patents held by any other 

firm, Qualcomm had no opportunity to present qualitative rebuttals. Indeed, the FTC concedes 

that the opinions in its experts’ initial reports “did not depend” on what it refers to as Dr. Akl’s 

later “patent-level analysis”. (Opp. at 10.) The initial expert reports could not have provided any 

notice that Dr. Akl intended to present any qualitative opinions concerning any firms’ specific 

patents, much less give Qualcomm any opportunity to rebut Dr. Akl’s opinions on those specific 

patents. See Clear-View Techs. v. Rasnick, 2015 WL 3509384, at *4 (N.D. Cal. June 3, 2015) 

(despite knowing that its opponent would make an argument at trial, a party “attempted to 

sandbag” its opponent by delaying its disclosure of relevant expert testimony until rebuttal, which 

“cannot be countenanced”). 

B. The FTC’s Attempt to Reframe Dr. Andrews’s Opinions Should Be Rejected.

To avoid its own expert’s concession that Dr. Akl’s rebuttal report addresses different 

subjects than those addressed in Dr. Andrews’s Report, the FTC seeks to expand the scope of 

Dr. Andrews’s opinion to broadly encompass “cellular technology generally”. (Opp. at 9.) As a 

threshold matter, this argument is both incorrect and beside the point. As the FTC’s cited case 

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recognized, Rule 26(a)(2)(D)(ii) requires both that the rebuttal opinions be “in the same subject 

matter” and that they are intended “solely to contradict or rebut evidence” within that subject 

matter. See, e.g., FTC v. Innovative Designs, Inc., 2018 WL 3611510, at *3 (W.D. Pa. July 27, 

2018) (“[E]xpert reports that simply address the same general subject matter as a previouslysubmitted report, but do not directly contradict or rebut the actual contents of that prior report, 

do not qualify as proper rebuttal or reply reports.” (emphasis added)); (see also Opp. at 6). For 

example, in TCL v. Ericsson, the court excluded certain expert rebuttal opinions that were “not 

based on any affirmative argument made by” the opposing party’s experts, even though the 

experts had addressed the same general topic “in the abstract”. 2016 WL 7042085, at *6 (C.D. 

Cal. Aug. 17, 2016). Even if both Dr. Andrews’s and Dr. Akl’s opinions concern “cellular 

technology generally”, the FTC does not explain how Dr. Akl’s opinions specifically rebut 

Dr. Andrews’s. Indeed, taken to its ultimate conclusion, the FTC’s approach would allow it to 

offer for the first time, in its rebuttal reports, any new opinion touching tangentially on “cellular 

technology”. That position is untenable. See Vu v. McNeil–PPC, Inc., 2010 WL 2179882, at *2 

(C.D. Cal. 2010) (“If the phrase ‘same subject matter’ is read broadly to encompass any possible 

topic that relates to the subject matter at issue, it will blur the distinction between ‘affirmative 

expert’ and ‘rebuttal expert.’ More importantly, such a broad reading of Rule 26(a)(2)(D)(ii) will 

render the scope of the subject matter limitless and will lead to unjust results.”)

This Court’s decision in High-Tech Employees (cited by the FTC at 6, 10) also confirms 

that Dr. Akl’s new analyses are not proper rebuttal. There, as the FTC’s Opposition 

acknowledges, the Court permitted a rebuttal expert to “justif[y] with greater detail on rebuttal” 

his “use of a variable [in his opening report]” “in response to criticism by opposing experts”. See 

In re High-Tech Emp. Antitrust Litig., 2014 WL 1351040, at *13 (N.D. Cal. Apr. 4, 2014). But 

Dr. Akl’s new “patent-level” opinions do not seek to “justify with greater detail” his or 

Messrs. Lasinski or Donaldson’s use of patent counting in their opening reports; they instead 

introduce an entirely new methodology—not used by Dr. Andrews or in the FTC’s opening 

reports—that compares Qualcomm’s patents to those of other firms on a qualitative (rather than 

purely numerical) basis. 

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The FTC further seeks to justify Dr. Akl’s new opinions by asserting that Dr. Andrews’s 

opinions are intended to demonstrate that Qualcomm is “alone in possessing important cellular 

SEPs” and that only Qualcomm “own[s] SEPs that are technically valuable to important 

subcategories within cellular standards”. (Opp. at 7-8.) These are straw men: the FTC’s 

Opposition provides no deposition testimony or report citations to show that these were the 

purposes of Dr. Andrews’s report, but instead infers these purposes from “the context of this 

case” and based on an “implication” of Dr. Andrews’s report. (Opp. at 1, 5.) But Dr. Andrews 

does not opine that the value of Qualcomm’s cellular SEPs could or should be determined by 

comparing its portfolio to those of other SEP licensors. To the contrary, Dr. Andrews testified 

that he is not offering an opinion on other firms’ SEPs. (Holtz Ex. 6 at 34:8-35:8 (ECF No. 797-

7).) It is the FTC, not Qualcomm, that has asserted that the value of Qualcomm’s SEPs should be 

determined not by market outcomes but rather by mathematically comparing them to SEP 

portfolios held by other licensors. (Opp. at 5 (arguing that the FTC’s theory is that Qualcomm’s 

royalties are “disproportionate” compared to other SEP holders’).)3 Where a party bears the 

burden of proof on an element of its case—like the FTC’s claim that Qualcomm’s royalties are 

“disproportionate”—any expert opinions that do not directly rebut an opposing party’s expert 

must be included in the proffering party’s initial expert reports. See Clear-View Techs, 2015 WL 

3509384, at *2.

4

 If the FTC intended to rely on qualitative patent-level opinions in support of its 

“disproportionality” argument, then it was obligated to disclose them in its initial expert reports. 

 3 Qualcomm will disprove the FTC’s contentions at trial. Among other things, Qualcomm will 

present expert testimony that, contrary to the FTC’s central theory that Qualcomm leveraged its 

alleged chip power to obtain “supra-FRAND” royalties, hundreds of licensees accepted 

Qualcomm’s typical royalty terms, including many that indisputably were not subject to any 

alleged chip-related leverage. Accordingly, the FTC’s assertion that none of Qualcomm’s experts 

“performed any calculations showing that Qualcomm’s cellular SEP portfolio royalties are 

justified or reasonable” (Opp. at 3) is simply incorrect.

4 The FTC cites TCL v. Ericsson for the proposition that “there should not be a rule prohibiting 

providing only rebuttal expert opinion on an anticipated portion of the opponent’s case-in-chief”. 

(Opp. at 7 n. 25.) But Qualcomm does not assert that if Dr. Akl’s opinions properly rebutted 

Dr. Andrews, then they must have been disclosed in the FTC’s initial reports. The problem here 

is that Dr. Akl’s opinions do not rebut Dr. Andrews’s. Elsewhere, the TCL court recognized that 

where a party has the burden of proof, it had an affirmative obligation to offer expert opinions 

meeting that burden in its initial reports, and it struck opinions that “stray[ed] from the subject 

matter” of the opposing party’s reports. 2016 WL 7042085, at *6.

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10 Reply on Motion to Strike

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The cases relied upon by the FTC do not establish that Dr. Akl’s new patent opinions are 

proper rebuttal because they “contextualize” Dr. Andrews’s opinions or relate to the same subject 

matter in “the context of the case”, as the FTC asserts. (Opp. at 1, 8.) In Van Alfen v. Toyota 

Motor Sales, an expert designated by Toyota opined that Toyota’s safety practices were “state of 

the art”. 2012 WL 12930456, at *6 (C.D. Cal. Nov. 9, 2012). The Court determined that the 

plaintiff’s rebuttal reports contradicted that opinion by concluding that Toyota had failed to meet 

the requirements of a separate safety standard that Toyota’s expert had not addressed. Id. But 

Dr. Akl’s challenged opinions do not contradict Dr. Andrews’s opinions concerning Qualcomm’s 

SEPs by demonstrating, for example, that Qualcomm lacks important SEPs or that Dr. Andrews 

incorrectly concluded that the Qualcomm SEPs he identified were fundamental and important; 

Dr. Akl also offers opinions of this nature, and Qualcomm has not moved to strike them. But 

Dr. Akl’s opinion that other SEP holders have patents in other technology areas, which

Dr. Andrews expressly refrained from addressing, does not contradict any of Dr. Andrews’s 

opinions or the conclusions Qualcomm will ask the Court to draw from them. And General 

Electric Co. v. Wilkins (cited at Opp. 8) rejected a party’s argument that its rebuttal expert had 

addressed the “same subject matter” as its opponent’s expert because the party, like the FTC, had 

defined the proper subject matter of rebuttal “too broad[ly]”. 2012 WL 5398407, at *3 (E.D. Cal. 

Nov. 2, 2012). It does not support the FTC’s contention that other firms’ cellular SEPs are 

necessarily within the same “subject matter” as Dr. Andrews’s opinions. 

III. CONCLUSION

For these reasons and those in Qualcomm’s Motion to Strike, the identified portions of the 

Akl Rebuttal Report (¶¶ 72-86) should be stricken as improper rebuttal.

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11 Reply on Motion to Strike

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Dated: October 4, 2018

By:

CRAVATH, SWAINE & MOORE LLP

s/ Gary A. Bornstein

Gary A. Bornstein (pro hac vice)

Yonatan Even (pro hac vice)

Worldwide Plaza

825 Eighth Avenue

New York, NY 10019-7475

Tel.: (212) 474-1000

Fax: (212) 474-3700

gbornstein@cravath.com

yeven@cravath.com

Robert A. Van Nest (SBN 84065)

Eugene M. Paige (SBN 202849)

Justina Sessions (SBN 270914)

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 391-5400 

Facsimile: (415) 397-7188

Richard S. Taffet (pro hac vice)

MORGAN, LEWIS & BOCKIUS LLP

101 Park Avenue

New York, NY 10178-0060

Tel.: (212) 309-6000

Fax: (212) 309-6001

richard.taffet@morganlewis.com

Willard K. Tom (pro hac vice)

MORGAN, LEWIS & BOCKIUS LLP

1111 Pennsylvania Avenue NW

Washington, DC 20004-2541

Tel.: (202) 739-3000

Fax: (202) 739 3001

willard.tom@morganlewis.com

Geoffrey T. Holtz (SBN 191370)

MORGAN, LEWIS & BOCKIUS LLP

One Market, Spear Street Tower

San Francisco, CA 94105-1596

Tel.: (415) 442-1000

Fax: (415) 442-1001

gholtz@morganlewis.com

Attorneys for Defendant 

QUALCOMM INCORPORATED

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