Sound View Innovations, LLC v. Hulu, LLC

OPPOSITION re: NOTICE OF MOTION AND MOTION to Exclude IN-PART THE TESTIMONY OF DR. JEFFREY CHASE 245 / Defendant's Opposition to Plaintiff's Daubert Motion to Exclude In-Part the Testimony of Dr. Jeffrey Chase

C.D. Cal.March 18, 2019

OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BRETT J. WILLIAMSON (#145235) bwilliamson@omm.com JOHN C. KAPPOS (#171977) jkappos@omm.com CAMERON W. WESTIN (#290999) cwestin@omm.com BO K. MOON (#268481) bmoon@omm.com BRADLEY M. BERG (#300856) bmberg@omm.com O’MELVENY & MYERS LLP 610 Newport Center Drive, 17th Floor Newport Beach, CA 92660 Telephone: (949) 823-6900 Facsimile: (949) 823-6994 Attorneys for Defendant and Counter-Claimant HULU, LLC UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA SOUND VIEW INNOVATIONS, LLC, Plaintiff, v. HULU, LLC, Defendant. Case No. 2:17-cv-04146-JAK-(PLAx) DEFENDANT’S OPPOSITION TO PLAINTIFF’S DAUBERT MOTION TO EXCLUDE IN- PART THE TESTIMONY OF DR. JEFFREY CHASE Hon. Judge John A. Kronstadt HULU, LLC, Counter-Claimant, v. SOUND VIEW INNOVATIONS, LLC, Counter-Defendant. Date: April 15, 2019 Time: 8:30 a.m. Courtroom No.: 10B Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 1 of 30 Page ID #:17473 TABLE OF CONTENTS Page - i - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION ........................................................................................... 1 II. ARGUMENT .................................................................................................. 2 A. Dr. Chase’s Opinions Merely Apply The Claim Language To The Accused Products And Do Not Provide Claim Construction ........ 2 1. Dr. Chase Correctly Applies Unconstrued Claim Terms To The Accused Products By Giving Those Terms Their Plain And Ordinary Meaning ..................................................... 3 a. “Downloading Said Portion … While Concurrently Retrieving A Remaining Portion…” ................................ 8 b. “Adjusting A Data Transfer Rate…” ............................... 9 2. Dr. Chase Correctly Applies The Court’s Construction For “Ring Buffer” To The Accused Products .......................... 10 3. At Most, The Court Should Resolve Any Disputes As To Claim Meaning, Not Exclude Dr. Chase’s Opinions ............... 11 B. Dr. Chase’s Discussion Of The Prior Art Is Consistent With What Is Described In The Patent Itself And Should Be Allowed ...... 12 C. Sound View’s Challenges To Dr. Chase’s Opinions Regarding The Footprint CDN Are Irrelevant As A Matter Of Fact And Baseless As A Matter Of Law ............................................................ 18 1. Dr. Chase’s Report Fully Complies With The Requirements Of Rule 26(a)(2) And Should Not Be Excluded Under Daubert .......................................................... 18 2. Dr. Chase’s Opinions Regarding The Footprint CDN Are Legally Appropriate And Not A “Practicing The Prior Art” Defense ............................................................................. 21 III. CONCLUSION ............................................................................................. 25 Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 2 of 30 Page ID #:17474 TABLE OF AUTHORITIES Page(s) - ii - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CASES 01 Communique Lab., Inc. v. Citrix Sys., Inc., 889 F.3d 735 (Fed. Cir. 2018) .......................................................... 15, 22, 23, 24 Acumed LLC v. Stryker Corp., 483 F.3d 800 (Fed. Cir. 2007) .............................................................................. 4 Alloc, Inc. v. Norman D. Lifton Co., 653 F.Supp.2d 469 (S.D.N.Y. 2009) ............................................................ 16, 17 Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-00630-LHK, 2014 WL 660857 (N.D. Cal. Feb. 20, 2014) ................................................................................................................. 5, 8 Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575 (Fed. Cir. 1995) ............................................................................ 17 Core Wireless Lic. S.A.R.L. v. LG Elecs., Inc. No. 2:14-cv-911-JRG-RSP, 2016 WL 4718963 at (E.D. Tex. July 12, 2016) ............................................................................................................. 17 Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 15-CV-05008 NC, 2016 WL 8231157 (N.D. Cal. Nov. 18, 2016) ................................................................................................................... 16 Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993) .................................................................................... passim Digital Reg of Texas, LLC v. Adobe Sys., Inc., No. C 12-1971 CW, 2014 WL 4090550 (N.D. Cal. Aug. 19, 2014) ................. 17 Elder v. Tanner, 205 F.R.D. 190 (E.D. Tex. 2001) ....................................................................... 21 Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314 (Fed. Cir. 2016) ............................................................ 4, 9, 11, 12 Ferring Pharmaceuticals Inc. v. PAR Pharmeceutical, Inc., No. 1:15-cv-00173, RGA, 2016 WL 6471246 (D. Del. 2016) ............................ 6 Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 1265009 (N.D. Cal. Mar. 19, 2015) ..................................................................................................................... 5 Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) ............................................................................ 4 Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 3 of 30 Page ID #:17475 TABLE OF AUTHORITIES Page(s) -iii- OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Huawei Technologies, Co. Ltd v. Samsung Elecs. Co., Ltd., 340 F. Supp 3d 934 (N.D. Cal. 2018) ................................................................... 7 Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 87 F. Supp. 3d 928 (N.D. Cal. 2015) .......................................................... 6, 7, 20 In re Nomiya,, 509 F.2d 566, 571 n. 5 (CCPA 1975) ................................................................. 13 Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., 554 F.3d 1010 (Fed. Cir. 2009) .......................................................................... 16 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), aff'd 517 U.S. 370 S.Ct. 1384 L.Ed.2d 577 (1996) ............................................................................. passim MediaTek Inc. v. Freescale Semiconductor, Inc., 2014 WL 971765 (N.D. Cal., Mar. 5, 2014) ........................................................ 6 Medtronic Inc. v. Edwards Lifesciences Corp., No. 12-cv-00327-JVS, 2013 WL 12113417, (C.D. Cal. Sept. 17, 2013) ................................................................................................................... 18 Mettler-Toledo Inc. v. Fairbanks Scales Inc., 2008 WL 11348468 ...................................................................................... 20, 21 Milos Misha Subotincic v. 1274274 Ontario Inc., No. 10-cv-1946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013) ................... 20 Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) ............................................................................ 3 O2 Micro Intern. Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir. 2008) .................................................................... 11, 12 Opticurrent, LLC v. Power Integrations, Inc., No. 17-CV-03597-WHO, 2018 WL 6727826 (N.D. Cal. Dec. 21, 2018) ................................................................................................................... 17 Parthenon Unified Memory Architecture LLC v. Apple Inc., ., No. 2:15-cv-621-JRG-RSP, 2016 WL 7743510 (E.D. Tex. Sept. 21, 2016) ............................................................................................................. 17 PerdiemCo, LLC. v. Industrack LLC, No. 215CV00727JRGRSP, 2016 WL 8135383 (E.D. Tex. Oct. 25, 2016) ................................................................................................................... 16 Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 4 of 30 Page ID #:17476 TABLE OF AUTHORITIES Page(s) -iv- OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 PersonalWeb Techs v. Int’l Bus. Machines Corp., 2017 WL 8186294 (N.D. Cal. 2017) .................................................................... 7 Peters v. Active Mfg. Co., 129 U.S. 530 (1889) ........................................................................................... 21 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ........................................................................ 3, 8 PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351 (Fed.Cir.1998) .............................................................................. 4 Realtime Data LLC v. EchoStar Corp., No. 6:17-CV-00084-JDL, 2018 WL 6271807 (E.D. Tex. Nov. 29, 2018) ................................................................................................................... 24 Rembrandt Diagnostics, LP v. Innovacon, Inc., No. 16-CV-00698-CAB-NLS, 2018 WL 3707023 (S.D. Cal. Aug. 3, 2018) ............................................................................................................... 23 Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002) ...................................................................... 4, 21 Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569 (Fed. Cir. 1991) .................................................................... 19, 20 Tate Access Floors, Inc. v. Interface Architectural Res., Inc. 279 F.3d 1357 (Fed. Cir. 2002) ......................................................................... 17 Thorner v. Sony Computer Entertainment Am., LLC, 669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 5 TiVo Inc. v. EchoStar Commn’cs Corp. 516, F3d. 1290 (Fed. Cir. 2008) ......................................................................... 24 YETI Coolers, LLC v. RTIC Cooler, LLC, 2017 WL 404519 (Jan. 27, 2017 E.D. Tex.) ........................................................ 7 Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., 522 F.3d 1348 (Fed. Cir. 2008) .................................................................... 23, 24 RULES Fed. R. Civ. P. 26(a)(2)(B)(i) ........................................................................ 2, 17, 18 Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 5 of 30 Page ID #:17477 - 1 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION Sound View’s motion to exclude certain opinions of Hulu’s technical expert, Dr. Jeffrey S. Chase (Dkt. No. 245), is based on a misstatement of Dr. Chase’s expert reports and is unsupported under the law. At bottom, Sound View simply disagrees with Dr. Chase’s conclusions, which is, of course, not the proper focus of a Daubert inquiry. The Court should deny the motion in its entirety. First, Sound View complains that Dr. Chase presents opinions regarding claim scope and application that “were not raised during Markman proceedings.” This complaint relies on a fundamental misunderstanding of the law as to how properly construed claim language—and, importantly, claim terms that are not construed as part of the Markman process—are to be compared to accused products for purposes of determining infringement. As both sides’ experts agreed in their respective reports, “unless a claim term is construed by the Court, words in the claims should be given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art [“POSA”], at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record.” Sound View further ignores the fact that, just as in virtually every other patent infringement case, the Court in this case did not construe all relevant claim terms; indeed, this Court expressly limited the total number of claim terms for construction during the Markman process. Perhaps most egregiously, two of Sound View’s three “claim language” arguments completely ignore Dr. Chase’s court-approved supplemental non-infringement report, which Hulu served after the Court issued its Markman order and which explains how his application of these terms to the accused products comports with the Court’s order. Second, Sound View’s objection to Dr. Chase’s opinions that purportedly “offer comparisons between” the accused products and prior art is really just an attempt to evade the adverse effect on its case of explicit statements in the patents. Those statements include, in particular, acknowledgments that POSAs knew about Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 6 of 30 Page ID #:17478 - 2 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 technologies such as the use of HTTP protocol to request content, and the use of Web proxy servers to cache that content to serve future requests, prior to the alleged inventions in the patents-in-suit. In fact, the patents actually disparage those “existing” methods and disclose alternatives that purport to improve upon them. There is simply no authority (and certainly none is cited in the four paragraph portion of Sound View’s motion dedicated to this argument) to support the proposition that Dr. Chase cannot explain to the jury that the accused products perform certain steps in exactly the manner disclaimed by the patents. Third, Sound View’s argument that Dr. Chase should not be permitted to provide an opinion on invalidity of the patents based on the Sandpiper “Footprint” prior art CDN system (the “Footprint CDN”) is primarily a recycled version of its failed motion to strike Hulu’s Final Invalidity Contentions related to the Footprint CDN (Dkt. No. 154-1). Dr. Chase’s report as it pertains to the Footprint CDN identifies each claim element, addresses that element in light of the intrinsic record, as interpreted by Dr. Richardson, and explains how each claim element is disclosed in that prior art reference, thus indisputably satisfying the requirement in Fed. R. Civ. P. 26(a)(2)(B)(i) of “a complete statement of [the opinion] and the basis and reasons for [it].” For similar reasons, Dr. Chase’s Footprint CDN opinion is not an example of the “practicing the prior art” defense. At most, Sound View’s criticism of Dr. Chase’s level of detail is a matter for cross-examination, not exclusion. II. ARGUMENT A. Dr. Chase’s Opinions Merely Apply The Claim Language To The Accused Products And Do Not Provide Claim Construction Sound View criticizes Dr. Chase for providing “claim scope opinions” as to three terms in the ’213 Patent, two of which were not even construed as part of the Markman process. As to these two terms, Sound View’s argument is directly contrary to controlling law (as explicitly acknowledged by Sound View’s own technical expert), and should be rejected out of hand. As to the remaining term at Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 7 of 30 Page ID #:17479 - 3 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 issue, Sound View mischaracterizes Dr. Chase’s opinion as being inconsistent with the Markman order. In fact, Dr. Chase’s opinion does not conflict with that order, and is precisely the type of opinion allowed because it will be helpful to a jury unfamiliar with how a POSA would understand the meaning of the terms or how to apply the technical language in the Court’s constructions. Moreover, if there is a dispute as to claim scope or claim construction, the appropriate remedy is additional claim construction, not using a Daubert motion to exclude one expert’s opinion in favor of another’s. 1. Dr. Chase Correctly Applies Unconstrued Claim Terms To The Accused Products By Giving Those Terms Their Plain And Ordinary Meaning Both technical experts agree that “unless a claim term is construed by the Court, words in the claims should be given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art [“POSA”], at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record.” Westin Decl., Ex.1 17 (Richardson Sup. Rpt.), ¶ 9 (emphasis added); see also Ex. 18 (Chase Sup. Rpt.), ¶ 10 (agreeing with Dr. Richardson). This formulation is consistent with Federal Circuit law that “[t]he ordinary meaning of a claim term is not ‘the meaning of the term in the abstract.’” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc). Instead, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Id.; see also Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (“The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose.”). Thus as a matter of law, expert opinions that apply the ordinary meaning of a claim term, in light of the claims, specification, and 1 “All citations to “Westin Decl., Ex.” refer to exhibits to the Omnibus Declaration of Cameron W. Westin In Support of Defendant Hulu, LLC’s Oppositions to Sound View’s Motions for Summary Judgment and Motions to Exclude (filed concurrently herewith).” Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 8 of 30 Page ID #:17480 - 4 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 prosecution history, to the accused products are not “claim construction opinions.” Indeed, one of the cases relied upon (and quoted verbatim) by Sound View, see Dkt. No. 245 at 13, is explicit that an expert is expected to state his “interpretation of the claim element.” Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). It is not surprising that there are differences in the two experts’ interpretations of the plain and ordinary meaning, given that “a court need not attempt the impossible task of resolving all questions of meaning with absolute, univocal finality. Such an endeavor could proceed ad infinitum, as every word— whether a claim term itself, or the words a court uses to construe a claim term—is susceptible to further definition, elucidation, and explanation.” Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016). The Federal Circuit has accordingly observed that “a sound claim construction need not always purge every shred of ambiguity.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007); see also PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed.Cir.1998) ( “[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact.”); Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1326 (Fed. Cir. 2013) (“Nearly every patent case will involve some amount of ‘word games,’ because claims and claim constructions are, after all, just words.”). Indeed, in this case the Court specifically limited the number of claim terms that would be construed as part of the Markman process. Dkt. 29 at 29 (parties to jointly identify the 10 terms likely to be most significant to the case). Courts have frequently rejected arguments to strike expert opinions regarding the plain and ordinary meaning of claim terms. For example, in Apple, Inc. v. Samsung Elecs. Co., Ltd., No. 12-CV-00630-LHK, 2014 WL 660857, at *4 (N.D. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 9 of 30 Page ID #:17481 - 5 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Cal. Feb. 20, 2014), Apple’s expert witness applied the plain and ordinary meaning to numerous unconstrued terms. Id. at *3. Samsung argued that “the elaborate and detailed constructions in Apple’s expert reports go far beyond ‘plain and ordinary meaning.’” Id. After summarizing the law (similar to that cited above) on determining the plain and ordinary meaning, the court noted: “At trial, parties may introduce evidence as to the plain and ordinary meaning of terms not construed by the Court to one skilled in the art, so long as the evidence does not amount to arguing claim construction to the jury.” Id. (citations omitted). The Court determined that “Apple’s experts’ opinions fit within a permissible explanation of those terms’ plain and ordinary meaning.” Id.. In that case, the allowed opinions concluded that “that a person of ordinary skill in the art would understand” certain terms like “video capture module” and “list” in specific ways in light of the specification. Id. at *4-5 (noting numerous citations to the specification relied upon by the expert). Far from striking the expert’s opinions with respect to the plain and ordinary meaning because they relied on the specification, the Court found that “[i]n light of the specification, a jury could (but would not have to) agree” with the expert’s understanding of the plain and ordinary meaning. Id. at *5.2 See also id. (“Once again, Dr. Storer's understanding of the plain and ordinary meaning of the term at issue is supported by the specification such that a jury could (but would not have to) agree with Apple’s noninfringement position.” (emphasis added)); Thorner v. Sony Comput. Entm’t Am., LLC, 669 F.3d 1362, 1369 (Fed. Cir. 2012) (holding that whether the accused product met the plain and ordinary meaning of “flexible” was a fact issue); Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 1265009, at *5-11 (N.D. Cal. Mar. 19, 2015) (denying motion to strike expert 2 The Court further concluded “[i]ndeed, prohibiting Dr. Storer from explaining why he believes the accused devices lack a ‘list’ as that term is ordinarily understood might create, rather than reduce, jury confusion.” Apple, Inc. v. Samsung Elecs. 2014 WL 660857, at *5, n.4 Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 10 of 30 Page ID #:17482 - 6 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 testimony as to plain and ordinary meaning). As discussed below, Dr. Chase’s opinions do not delve into impermissible claim construction by limiting the scope of the plain and ordinary meaning in view of the intrinsic record. Sound View fails to identify any contrary cases that would require the Court to exclude Dr. Chase’s opinions under Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993). In fact, the cases it cites actually support Hulu’s position of allowing the challenged testimony to go forward, subject, of course, to cross- examination. For example, in Ferring Pharms. Inc. v. PAR Pharm., Inc., No. 1:15- cv-00173, RGA, 2016 WL 6471246 at *1 (D. Del. 2016), the Court expressly held that the experts were not “precluded from opining on the plain and ordinary meaning or from making any reference at all to the patent specification and prosecution history.” Id. (“the determination of whether the testimony amounts to claim construction will be made on an objection by objection basis.”). Similarly, in MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-5341 YGR, 2014 WL 971765 (N.D. Cal. Mar. 5, 2014), the Court found that “[w]hether any evidence as to a term’s plain and ordinary meaning is admissible must be considered in the context of the issues to be tried.” Id. at *4. In MediaTek, the Court excluded some opinions that “extend[ed] far too far into the territory of claim construction,” for example by limiting claim terms to specific embodiments. Id. at *5-6 (excluding arguments for “at least one” to mean “only one,” and for “controller” to be limited to hardware embodiments). But the Court denied the Daubert motion with respect to other differences over the plain and ordinary meaning, even where the challenged expert had relied on the specification and prosecution history, finding that those opinions “d[id] not veer into a prohibited claim construction.” Id. at *7 (denying the motion with respect to the term “same priority” and partially denying the motion with respect to the term “information indicating the clock frequency requirement”). Similarly, in Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 87 F. Supp. 3d 928 (N.D. Cal. 2015), the court concluded that it is appropriate Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 11 of 30 Page ID #:17483 - 7 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 at trial for an expert to “introduce evidence as to the plain and ordinary meaning” of claim terms, just so long as that evidence “does not amount to arguing claim construction to the jury.” Id. at 945. The remaining cases cited by Sound View are all distinguishable. In YETI Coolers, LLC v. RTIC Coolers, LLC, No. A-15-CV-597-RP, 2017 WL 404519 (Jan. 27, 2017 E.D. Tex.), the challenged expert was attempting to argue constructions that directly conflicted with the Court’s claim construction order—which Sound View does not. In Huawei Techs., Co, Ltd v. Samsung Elecs. Co, Ltd., 340 F. Supp. 3d 934 (N.D. Cal. 2018), the expert’s opinion was excluded because his understanding of the plain and ordinary meaning found “no support in the intrinsic evidence” and even conflicted with embodiments in the specification. Id. at 967- 68. And in PersonalWeb Techs. v. Int’l Bus. Machs. Corp., No. 16-cv-01266-EJD, 2017 WL 8186294 at *5 (N.D. Cal. July 25, 2017), the court excluded expert arguments that “substantially unique” included five specific requirements found in a particular embodiment of the patent. Sound View indisputably knows that the case law expressly allows the types of opinions it seeks to exclude from Dr. Chase, since its own technical expert—Dr. Richardson—has provided exactly the same type of opinions. For example, Dr. Richardson opines: I understand that the Court has not construed the term “non pre- configured playout history buffer.” The specification of the ’796 patent describes non pre-configured playout history buffers as buffers that are “allocated in response to a request for a live SM broadcast object.” See ’796 patent, 8:38-39. In my opinion, that description of a non pre- configured playout history buffer is consistent with what a person of ordinary skill in the art at the time of the invention of the ’796 patent would consider the term “non pre-configured playout history buffer” to mean. Westin Decl., Ex. 19 (Richardson Rpt.), ¶ 544. See also id. at ¶ 449 (relying on the file history to support his opinion that “non-segmented” means “created on-the-fly, as opposed to being previously stored A/V files stored at the network server”), ¶ 689 (relying on specific portions of the specification to conclude “[u]ncorrected Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 12 of 30 Page ID #:17484 - 8 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 element 9(c) and corrected element 9(c) have the same scope.”) (emphasis added), ¶ 746 (relying on the specification description of cache placement and replacement processes in mapping unconstrued claim language to the accused products). Applying the appropriate legal standards, Dr. Chase cannot be precluded from offering his opinions as to how the plain and ordinary meanings of “downloading said portion … while concurrently retrieving a remaining portion…” and “adjusting a data transfer rate…” apply to the Accused Products, since those opinions are precisely the type explicitly allowed under this Federal Circuit law. a. “Downloading Said Portion … While Concurrently Retrieving A Remaining Portion…” Dr. Chase explains that a POSA would not find the ’213 Claim 16 limitation of “downloading said portion … while concurrently retrieving a remaining portion…” in the Accused Products because any downloading concurrent with retrieving takes place in separate buffers, rather than in the buffer allocated in response to a request for an SM object as required by the previous step of Claim 16. Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶¶ 142-146. Although this meaning is implicit in the claim itself (otherwise there is no purpose to allocating a buffer), Dr. Chase elucidates his understanding by reference to the prosecution history. Id. As noted by Dr. Chase, the applicant overcame a rejection over the prior art by representing that the prior art reference did not meet the limitation because “the applicants’ invention concurrently empties and fills the buffer,” referring to the buffer allocated in the previous step. Westin Decl., Ex. 21 (’213 File History, Office Action Response dated 06/26/2003), SVI-HULU00001277-1291, SVI- HULU00001289 (underlining in original, bold added). Accordingly, Dr. Chase opines that a POSA applying the plain and ordinary meaning of this claim term “in light of … the prosecution history of record” would conclude that this element is not met by the Accused Products. This opinion is exactly the type permitted by the controlling law. See, e.g., Phillips, 415 F.3d at 1321; Apple, Inc. v. Samsung Elecs. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 13 of 30 Page ID #:17485 - 9 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2014 WL 660857, at *3-5. b. “Adjusting A Data Transfer Rate…” Dr. Chase opines that the Accused Products do not meet the “adjusting a data transfer rate…” limitation because the “data transfer rate” does not change during the servicing of a request because each request is serviced at the maximum network speed.3 Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶¶ 135-141; Ex. 18 (Chase Sup. Rpt.), ¶¶ 127-139. In order to correctly apply the plain and ordinary meaning of this claim term “in light of … the specification,” Dr. Chase identified portions of the specification consistent with his understanding of what it means to adjust a data transfer rate. Importantly, Dr. Chase did not limit his understanding of “adjusting” to the specification, and explicitly noted that “other types of data transfer rate adjustments may be sufficient to meet this claim limitation.” Westin Decl., Ex. 18 (Chase Sup. Rpt.), ¶ 130. Sound View does not, and cannot, argue that Dr. Chase’s opinions contradict the Court’s constructions, as the Court did not construe this claim term. Moreover, Sound View’s argument that Dr. Chase’s opinions were “considered and rejected” by the Court is contrary to established Federal Circuit law: “[S]imply rejecting one proposed construction does not mean that a general jury instruction to give terms their plain and ordinary meaning resolves the relevant dispute.” Eon Corp., 815 F.3d at 1319-20. Sound View also fails to disclose that in his court-approved Supplemental Report, with the benefit of the Claim Construction Order, Dr. Chase more fully elaborated on his opinions with respect to these two terms and illustrated how his application of these terms to the Accused Products comports with the Court’s Order. See Westin Decl., Ex. 18 (Chase Sup. 3 In his court-approved Supplemental Rebuttal Expert Report of Dr. Jeffrey S. Chase Regarding U.S. Patent Nos. 6,708,213, 6757,796, and 9,462,074, Dr. Chase explained that his opinion that the helper server must “control” the “adjusting of a data transfer rate,” was consistent with the Court’s Order inasmuch as it encompassed the scenario where the rate is adjusted in response to a request from a client. See, e.g., Westin Decl., Ex. 13 (Chase Dep. Tr.) at 165:9-16; Ex. 18 (Chase Sup. Rpt), ¶ 131. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 14 of 30 Page ID #:17486 - 10 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Rpt.), ¶¶ 127-139. 2. Dr. Chase Correctly Applies The Court’s Construction For “Ring Buffer” To The Accused Products Sound View’s final “claim term scope” argument challenges Dr. Chase’s application, in his initial non-infringement report, of the Court’s tentative construction for “ring buffer” to the Accused Products. Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶ 100. Again, Sound View improperly fails to advise the Court that in his court-approved Supplemental Report, with the benefit of the Claim Construction Order, Dr. Chase elaborated on his opinions as to how the “ring buffer” limitation is missing from the Accused Products comport with the Court’s Order. See Westin Decl., Ex. 18 (Chase Sup. Rpt.), ¶¶ 66-89. In any event, the tentative construction for “ring buffer” applied by Dr. Chase in his initial report was nearly identical to the Court’s ultimate construction of “ring buffer.” See, e.g., Dkt. 148 at 22. None of Dr. Chase’s opinions regarding “ring buffer” conflict in any way with the Court’s final construction, as an objective comparison of his reports to the Court’s Claim Construction Order attests. Dr. Chase specifically opined that the Accused Products do not meet the “ring buffer” limitation because, among other reasons, the caches in the Accused Products are associated with multiple SM objects, rather than a single SM object as required for a ring buffer. Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶¶ 107-117; Ex. 18 (Chase Sup. Rpt.), ¶¶ 66-89. Dr. Chase further opined that this understanding of “ring buffer” was mandated from the Court’s construction as informed by other portions of the Court’s order, as well as by the specifications and claim language. See, e.g., Westin Decl., Ex. 18 (Chase Sup. Rpt.), ¶¶ 78-81. Accordingly, Dr. Chase’s opinions regarding how the Court’s construction applies to the Accused Products should be allowed. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 15 of 30 Page ID #:17487 - 11 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3. At Most, The Court Should Resolve Any Disputes As To Claim Meaning, Not Exclude Dr. Chase’s Opinions As set forth above, none of Hulu’s challenges to Dr. Chase’s alleged “claim scope” opinions has merit. At best, Sound View has simply identified material differences between the parties with respect to the plain and ordinary meaning, and scope, of unconstrued claim terms—i.e., questions of law. To the extent there is a dispute between the parties as to the proper construction of claim terms (or the meaning of already construed terms), Sound View’s appropriate remedy is to seek additional claim construction guidance from the Court, not to exclude Dr. Chase’s opinions while allowing those of its own expert to go forward. “The purpose of claim construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be infringed.’ When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.” O2 Micro Int’l. Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)). The Court went on to explain that: A determination that a claim term “needs no construction” or has the “plain and ordinary meaning” may be inadequate when a term has more than one “ordinary” meaning or when reliance on a term's “ordinary” meaning does not resolve the parties’ dispute. In this case, for example, the parties agreed that “only if” has a common meaning, but then proceeded to dispute the scope of that claim term, each party providing an argument identifying the alleged circumstances when the requirement specified by the claim term must be satisfied (e.g., at all times or during steady state operation). In this case, the “ordinary” meaning of a term does not resolve the parties’ dispute, and claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit. Id. at 1361 (emphasis added). For example, in Eon Corp., the district court found during Markman that certain claim terms should be given their plain and ordinary meaning, noting “the terms ‘do not require construction because their meanings are clear in the context of Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 16 of 30 Page ID #:17488 - 12 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 the claims and will be readily understandable to the jury.’” Eon Corp. 815 F.3d at 1317 (citations to the district Court omitted). However, “[d]uring trial, the parties’ experts disputed the meaning of [these] limitations.” Id. at 1317-18. The Federal Circuit held that [T]he court did not resolve the parties’ dispute by instructing the jury that the claims should be given their plain and ordinary meaning…. By determining only that the terms should be given their plain and ordinary meaning, the court left this question of claim scope unanswered, leaving it for the jury to decide. This was legal error. Id. at 1319 (citing O2 Micro, 521 F.3d at 1362). So too here, if there is a dispute as to claim scope or claim construction, the appropriate remedy is additional claim construction, not using a Daubert motion to exclude one expert’s opinion in favor of another’s. To the extent the Court is otherwise inclined to grant Sound View’s Daubert motion with respect to the application of claim terms to the Accused Products (though as set forth above, there is no legal basis to do so), Hulu requests that the Court instead authorize additional claim construction briefing to determine the scope and construction of these challenged claim terms. B. Dr. Chase’s Discussion Of The Prior Art Is Consistent With What Is Described In The Patent Itself And Should Be Allowed Sound View next contends that Dr. Chase has made irrelevant and improper assertions that the Accused Products use “prior art” features, and seeks to exclude them based on three conclusory arguments: (1) that Dr. Chase’s opinions are not relevant to non-infringement; (2) that Dr. Chase’s opinions are not relevant to invalidity; and (3) that Dr. Chase’s opinions may confuse the jury. Dkt. No. 245 at 20-21. None have any legal merit. To the extent that Dr. Chase refers to the prior art at all in his non-infringement opinions, it is only in the specific context in which the prior art is discussed by the asserted patents themselves and thus serve as express disclaimers of claim scope. None of the challenged paragraphs from Dr. Chase’s reports purport to relate to invalidity at all. And Dr. Chase’s testimony in Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 17 of 30 Page ID #:17489 - 13 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 this regard will obviously be helpful to a jury, because the asserted patents distinguish themselves from the prior art in specific ways, and Dr. Chase’s opinions provide the proper context for understanding the claimed features in light of what the patents admit they do not cover. There is simply no merit to Sound View’s attempt to exclude these opinions. See In re Nomiya, 509 F.2d 566, 571 n. 5 (CCPA 1975) (“a statement by an applicant, whether in the application or in other papers submitted during prosecution, that certain matter is ‘prior art’ to him, is an admission that that matter is prior art for all purposes”) (emphasis added). In describing the context for the alleged inventions, the asserted patents provide a detailed description the state of Web caching and video streaming in some depth. For example, the ’213 Patent explains that “Web caching has been extensively implemented on the Internet…. The utilization of Web caching on the Internet has been extensively studied.” Dkt. No. 259-1, Ex. 31, pg. 1026 at 2:4-8.4 The ’213 Patent goes on to describe limitations with those caching systems— namely that they are restricted to supporting static web objects rather than streaming media objects. Id. at 2:19-54. The ’213 Patent even disparages the “natural solution” of “break[ing] video objects into smaller pieces for the purpose of caching” and treating those pieces independently. Id. Given this background, the ’213 Patent notes that its aim is to “enhanc[e] existing caching systems to better support streaming multimedia,” and particularly by “using helper servers…which operate as caching and streaming agents inside the network.” Id. at 2:57-67. In view of the role of the existing (i.e., prior art) caching systems, a proper 4 The ’213 Patent also incorporates several references providing a detailed discussion of the state of Web caching at the time of the ’213 Patent, including papers describing the squid cache and other proxy caches with which Dr. Chase is familiar. See, e.g., Westin Decl., Ex. 13 (Chase Dep. Tr.), 187:6-10 (“And I had reviewed Squid proxy code... as part of academic research projects. I have seen this code before, and that would have been in the mid to late 1990s.”); Ex. 20 (Chase Rebuttal Rpt.), ¶ 14 (“From 1996-2001 I conducted research on Web proxy caching systems. Working with a collaborator at AT&T Research, my group extended the Squid proxy cache software…”). Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 18 of 30 Page ID #:17490 - 14 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 understanding of the prior art web caching features is critical in understanding how the claimed techniques differ from the accused products, particularly when the accused products function in ways identical to the very caching techniques described as prior art by the patents themselves. The paragraphs identified by Sound View in its Daubert motion discuss prior art only in ways consistent with this disclosure in the patent. For example, in these paragraphs, Dr. Chase explains that MPEG-DASH and HLS (the techniques used by the accused products) use HTTP requests—i.e., the same type of requests that would have been commonly used to request static objects from the existing Web caching proxies described by the ’213 Patent. See, e.g., Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶¶ 44-48, 80, 81, 90; Ex. 18 (Chase Sup. Rpt.), ¶¶ 20, 41, 42, 44. Other paragraphs describe that MPEG-DASH and HLS break video objects into smaller pieces which are independently requested—i.e., a solution identical to the “natural solution” disparaged by the ’213 Patent. See, e.g., Westin Decl., Ex. 20 (Chase Rebuttal Rpt.), ¶¶ 80, 83; Ex. 18 (Chase Sup. Rpt.), ¶ 85.5 Dr. Chase’s opinions will also assist a jury in understanding portions of the Court’s construction of “SM object” such as the word “file” included in the construction in acknowledgement of the disclaimer in the patent itself. See, e.g., Dkt. 148 at 16 (“As Defendant notes, ’breaking video objects into smaller pieces and treating each portion of the data as an individual SM object would go against the purported goals of the invention and other statements in the specification.’” (internal quotes omitted)). Still other paragraphs relate specifically to caching techniques related to “ring buffer” and “playout history buffer.” Westin Decl., Ex. 18 (Chase Sup. Rpt.), ¶¶ 71, 75. For these construed claim terms, a comparison to the caching structures 5 Dr. Richardson provides a similar discussion of the type of requests utilized by MPEG-DASH and HLS to request portions of a video (i.e., HTTP requests) and caching structured utilized in prior art caching systems to request non-video (i.e., static) objects. See, e.g., Westin Decl., Ex. 19 (Richardson Rpt.), ¶¶ 61-68. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 19 of 30 Page ID #:17491 - 15 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 employed by the “existing caching systems” is appropriate and helpful in applying the court’s construction to these terms. For example, the Court’s construction of “ring buffer” includes that it is “a type of short term storage to service multiple requests for the same SM object within a certain fixed time interval, which advances and stores successive portions of the SM object.” Dkt. No. 148 at 22 (emphasis added). In order to explain to a jury why this construction does not apply to the Accused Products, it is critical they understand how the elements of the Court’s construction contribute to a structure different from that used by the existing caching systems as explained in the patents. These opinions are all entirely proper. Dr. Chase has engaged in a detailed, limitation-by-limitation analysis of both infringement and invalidity, of which references to prior art are limited entirely to statements in the patents themselves, and play only a limited role in explaining why certain claim limitations do not apply to the Accused Products and describing why Dr. Richardson’s mappings to the Accused Products is insufficient. This use is relevant and allowed. For example, in 01 Communique Lab., Inc. v. Citrix Sys., Inc., 889 F.3d 735 (Fed. Cir. 2018), the court explained that the problem with a “practicing the prior art” defense to literal infringement is that “an accused infringer forsakes any comparison between the asserted claims and the accused product, relying instead upon purported similarities between the accused product and the prior art.” Id. at 742. However, because the accused infringer in that case had provided a clear mapping of the particular claim limitations it claimed were not met in the accused products and why those limitations were not met, the court found that the references to the prior art were not improper. Id. In Icon-IP, the Court found that the expert’s analysis was “distinguishable” from the proscribed approach because he did not argue that the patent was “invalid because the prior art is identical to an infringing product.” 87 F. Supp.3d at 943. Instead, the expert “assume[d] [the Plaintiff’s] understanding of the construed claim [was] correct, and then proceed[ed] to Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 20 of 30 Page ID #:17492 - 16 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 demonstrate how, in his opinion, each element is found in the prior art.” Id. Importantly, the expert did “not dodge the claim language and simply compare the accused product to the prior art.” Id.; see also, Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 15-CV-05008 NC, 2016 WL 8231157, at *1 - *2 (N.D. Cal. Nov. 18, 2016) (denying a motion to exclude expert testimony comparing the accused products to the prior art because the “experts do not dodge the claim language.”). Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010 (Fed. Cir. 2009), is also instructive. There, the court agreed with the Defendant that comparisons to the prior art had proper uses including to “rebut [Plaintiff’s] allegations of … willful infringement, to prove lack of intent to induce infringement, and to impeach [Plaintiff’s] experts unsubstantiated distinctions between the gauze in the prior art and the gauze used with the [accused products].” Id. at 1025 (“We agree with Defendants and the district court that the arguments to which KCI objects had proper uses or were made in response to issues raised by KCI.”); see also PerdiemCo, LLC. v. Industrack LLC, No. 2:15-CV-00727-JRG- RSP, 2016 WL 8135383, at *3 (E.D. Tex. Oct. 25, 2016) (finding Defendant’s non- infringement rebuttal opinions were permissible because the expert “simply explains why Dr. Schonfeld's infringement opinions are untenable,” where Defendant’s expert opined that if Plaintiff’s expert’s “analysis is correct, the Asserted claims should be invalid based on the prior art” (Id. at *2).). So too here, Dr. Chase’s references to the prior art are relevant at least to rebut Dr. Richardson’s opinions of distinctions between the accused products and prior art, and may be relevant to topics such as inducement and willful infringement as well. Similarly, in Alloc, Inc. v. Norman D. Lifton Co., 653 F.Supp.2d 469 (S.D.N.Y. 2009), the court rejected plaintiff’s claim that defendant’s reliance on the prior constituted an impermissible “practicing the prior art” defense because defendant “does not use the [prior art] to demonstrate the [asserted patent’s] invalidity; rather, it uses the [] ’prior art’ to ‘support its defense of no infringement’ by suggesting that the Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 21 of 30 Page ID #:17493 - 17 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 [accused products], by design, do not [meet the claim limitation].” Id. at 474-475, n.4.6 The “practicing the prior art” cases cited by Sound View are inapposite. While courts have rightly criticized defendants who rely entirely on comparing the accused products to the prior art in order to establish non-infringement or invalidity, see, e.g., Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1583 (Fed. Cir. 1995) (rejecting an argument that relied entirely on comparing the accused product to a prior art product); Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1365 (Fed. Cir. 2002) (contention that the accused products “cannot literally infringe because they merely practice the prior art” lacks merit) (emphasis added), Dr. Chase does not rely on comparisons to the prior art to “establish” either invalidity or non-infringement.7 As detailed above, his opinions do nothing more than recite language in the asserted patents as part of his non- infringement analysis. For the same reason, Parthenon Unified Memory Architecture LLC v. Apple Inc., No. 2:15-cv-621-JRG-RSP, 2016 WL 7743510 at *2 (E.D. Tex. Sept. 21, 2016) and Core Wireless Lic. S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-911-JRG-RSP, 2016 WL 4718963 at *3 (E.D. Tex. July 12, 2016) are distinguishable. In both, the court prohibited opinions relying on prior art for establishing non-infringement or invalidity, but allowed these opinions for identifying apparent contradictions or inconsistencies between the plaintiff’s infringement and validity theories. Id. Opticurrent, LLC v. Power Integrations, Inc., No. 17-CV-03597-WHO, 2018 WL 6727826 at *15 (N.D. Cal. Dec. 21, 2018), is similarly distinguishable, as the challenged opinions in that case “interspersed” 6 If the Court denies Hulu’s Summary Judgement Motion of No Direct Infringement (Dkt. 253) and allows Sound View to proceed with a Doctrine of Equivalents argument, this provides an additional independent basis for denying Sound View’s Daubert Motion. See, e.g., Tate 279 F.3d at 1366-67 (“The doctrine of equivalents expands the reach of claims beyond their literal language. That this expansion is guided and constrained by the prior art is no surprise…”). 7 Digital Reg of Texas, LLC v. Adobe Sys., Inc., No. C 12-1971 CW, 2014 WL 4090550, at *8 (N.D. Cal. Aug. 19, 2014) uses same language as Tate and is distinguishable for the same reason. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 22 of 30 Page ID #:17494 - 18 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 invalidity opinions in the defendant’s non-infringement opinions. Here, none of the challenged opinions have anything do with (and appear nowhere in) Dr. Chase’s separate invalidity report, and the referenced sections of the patents are cited for non-infringement purposes only.8 C. Sound View’s Challenges To Dr. Chase’s Opinions Regarding The Footprint CDN Are Irrelevant As A Matter Of Fact And Baseless As A Matter Of Law Sound View’s final purported “Daubert” argument seeks to preclude Dr. Chase from testifying regarding the Footprint CDN prior art. This is essentially a do-over of Sound View’s motion to strike Hulu’s Final Invalidity contentions related to the Footprint CDN, which the Court denied in December (Dkt. No. 224). Having failed to convince the Court then, Sound View now seeks to exclude Dr. Chase’s opinions regarding the Footprint CDN based solely on (1) a criticism of the detail included in his report, and (2) a misapplication of patent invalidity law. Both arguments for exclusion are meritless. Dr. Chase’s report as it pertains to the Footprint CDN identifies each claim element, addresses that element in light of the intrinsic record, as interpreted by Dr. Richardson, and explains how each claim element is disclosed in that prior art reference, thus indisputably satisfying the requirement in Fed. R. Civ. P. 26(a)(2)(B)(i) of “a complete statement of [the opinion] and the basis and reasons for [it].” Indeed, Dr. Chase’s report provides a detailed claim chart mapping every element of the asserted claims to the Footprint CDN. Sound View’s criticism of the level of detail in Dr. Chase’s report is a matter for cross-examination, not exclusion. And as to the purported legal deficiency of the opinion, Sound View’s analysis is simply wrong. 1. Dr. Chase’s Report Fully Complies With The Requirements Of Rule 26(a)(2) And Should Not Be Excluded Under Daubert Contrary to Sound View’s assertion, Dr. Chase’s analysis goes far beyond 8 Sound View’s reliance on Medtronic Inc. v. Edwards Lifesciences Corp., No. 12- cv-00327-JVS, 2013 WL 12113417, at *24 (C.D. Cal. Sept. 17, 2013) is similarly misplaced as it only discusses references to prior art in the context of invalidity. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 23 of 30 Page ID #:17495 - 19 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 simply leaving it to the reader to figure out whether the prior art meets the claims. Dkt. 245 at 24. Rather, Dr. Chase’s report provides detailed claim charts, mapping specific portions of numerous documents produced by Level 3 to each claim element of each claim asserted by Sound View. Westin Decl., Ex. 12 (Chase Opening Rpt.), pgs. 296-358. Moreover, during his deposition, counsel asked Dr. Chase his opinion with respect to certain key claim elements such as “content server” and “helper server,” and Dr. Chase elaborated on his opinion on the basis of his claim chart and testified that the disclosures cited illustrated how the Footprint CDN mapped to the Court’s claim construction. Westin Decl., Ex. 13 (Chase Dep. Tr.), 196:12-199:11. When repeatedly asked if there was any “textual analysis mapping the Footprint CDN to the claims on an element-by-element basis,” Dr. Chase testified: “Well, there’s 60 pages of claim charts here that map particular citations to particular elements of the claims, and there’s a great deal of text pertaining to the Footprint CDN and aspects that are relevant to the claims.” Id. at 201:9-24. Other portions of Dr. Chase’s extensive opening report opining on invalidity provide further relevant analysis. For example, Dr. Chase engages in detailed analysis regarding the Court’s claim constructions and how the prior art maps to the asserted claims throughout his Opening Report. This analysis applies equally to the Footprint CDN, even if not set forth at length again in that section. See, e.g., Westin Decl., Ex. 12 (Chase Opening Rpt.), ¶ 96 (“As these terms are found throughout the asserted claims, I address the party’s constructions here. This section is incorporated, as appropriate, throughout this opinion.”). The report containing Dr. Chase’s opinions identifies each claim element, states his interpretation of the claim element, and explains in detail how each claim element is disclosed in the prior art reference. This is all that is required. See, e.g., Fed. R. Civ. P. 26(a)(2)(B)(i); Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1576 (Fed. Cir. 1991) (rejecting the contention that plaintiff did not make a prima facie Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 24 of 30 Page ID #:17496 - 20 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 case of infringement when its expert’s opinions relied solely on claim charts); Icon- IP, 87 F. Supp. at 943 (denying plaintiff’s motion arguing that an expert’s claim chart opinions were insufficiently detailed, finding “the claim charts appended to Werner’s report are sufficiently detailed to satisfy Specialized’s disclosure requirements and to establish that his opinions will be helpful to the jury.”). The cases cited by Sound View in support of its attempt to exclude Dr. Chase’s opinions present a far different situation than exists here. For example, in Milos Misha Subotincic v. 1274274 Ontario Inc., No. SACV 10-cv-01946 AG, 2013 WL 3964994 (C.D. Cal. Apr. 9, 2013), the only Central District of California case cited by Sound View, the expert had relied exclusively on claim charts with no additional analysis. Id. at *13. Far from excluding the entire opinion, the Court relied on Federal Circuit precedent to note that the expert’s “exclusive reliance on claim charts in his report ‘bears a degree of risk,’ but is not independently fatal.” Id. (citing Symbol Techs., 935 F.2d at 1576). Accordingly, the Court in Milos Misha allowed testimony based on the majority of the claim chart, and only prohibited the expert from testifying with respect to one particular element regarding the movement of the accused devices. Id. For that limitation, the claim chart merely included a picture with no “indication of what the movement is.” Id.9 The claim chart relied on by Dr. Chase is more analogous to the portions allowed by the Court than the portion containing just a picture of the accused product that was disallowed. Sound View’s remaining two cases, both from the Eastern District of Texas, also fail to support exclusion. In Mettler-Toledo, Inc. v. Fairbanks Scales, Inc., No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) at *4, the Court noted that the expert’s testimony, as embodied by a claim chart, was “beyond succinct,” apparently consisting only of citations to certain deposition testimony and exhibits, 9 Given this missing element, the Court also prohibited the expert from testifying regarding the ultimate question of infringement. Id. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 25 of 30 Page ID #:17497 - 21 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 often without specifying a specific page or line number. Dr. Chase, by contrast, has excerpted specific portions of various documents regarding the Footprint CDN. Moreover, unlike in Mettler-Toledo, the claim charts are not the “sum total” of Dr. Chase’s opinions. Indeed, Dr. Chase provides a detailed analysis of the claim language under both his interpretation and Dr. Richardson’s interpretation earlier in the report. See, e.g., Ex. 12 (Chase Opening Rpt.), ¶ 96. These portions also apply to the Footprint CDN. The court in Mettler-Toledo also noted that the Plaintiff had designated another infringement expert to whom the Defendant had not objected, so the plaintiff would not be foreclosed from presenting its infringement case. 2008 WL 11348468 at *4. The Court further concluded that in light of this second expert’s testimony “any probative value of [the excluded expert’s] testimony would be substantially outweighed by the ‘needless presentation of cumulative evidence.’” Id. at n.4. In the last case relied on by Sound View, Elder v. Tanner, the Court criticized the expert for simply listing the resources utilized and then stating an ultimate opinion without some discussion of their thought process. 205 F.R.D. 190, 194 (E.D. Tex. 2001). By contrast, Dr. Chase’s claim chart goes far beyond simply listing resources, and his selection of specific portions of specific documents for each element illustrates his thought process.10 2. Dr. Chase’s Opinions Regarding The Footprint CDN Are Legally Appropriate And Not A “Practicing The Prior Art” Defense “That which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co. 129 U.S. 530, 537 (1889). Sound View ends its Daubert motion by seeking to circumvent this century-old maxim so that it can continue divorcing its characterization of the claims for infringement purposes from the invalidity analysis. It is entirely proper for Hulu’s expert to provide a limitation-by-limitation 10 Sound View also cites (without supporting argument) Schumer v. Lab. Comput. Sys., Inc., 308 F.3d 1304 (Fed. Cir. 2002), in which the Federal Circuit overturned a decision granting summary judgment of anticipation. Id. at 1315-16. A court finding that the evidence is insufficient to find anticipation as a matter of law is manifestly different from Sound View’s request in the present motion. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 26 of 30 Page ID #:17498 - 22 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 analysis of the Footprint CDN and conclude that, although it does not anticipate under a proper understanding of the Court’s constructions, it would anticipate if the claims are broadened as proposed by Sound View’s expert. Sound View ignores clear Federal Circuit precedent in a closely analogous situation, and instead focuses on tangentially related cases (and primarily on a single district court case, decided by an Eastern District of Texas magistrate judge). This Court should apply the controlling precedent and deny Sound View’s motion. Sound View parrots the maxim that there is no “practicing the prior art defense,” but utterly fails to appreciate the differences between that concept and the way in which Hulu’s expert Dr. Chase applied the Footprint CDN to the prior art. In fact, Hulu’s infringement defense, as embodied in Dr. Chase’s report, is firmly rooted in a limitation-by-limitation comparison between the asserted claims as construed by the Court and the Accused Products. Dr. Chase contends that under the Court’s constructions, Hulu does not infringe the CDN Patents, and the CDN Patents are not invalidated by the Footprint CDN. Westin Decl., Ex. 12 (Chase Opening Rpt.), ¶ 435 and n.12; Ex. 13 (Chase Dep. Tr.), 186:16-218:14. However, Dr. Chase also opines that if Sound View attempts to expand the scope of the claims, as its expert Dr. Richardson suggests, for example to read a ring buffer on an entire cache, or to read adjusting a data transfer rate on selecting different representations of a video, then the claims would be invalid in light of the Footprint CDN. Id. There is “nothing improper about this argument.” 01 Communique Lab., 889 F.3d at 741-42. This situation is entirely analogous to that faced by the Federal Circuit in its recent 01 Communique Lab decision. There, the plaintiff argued that it was entitled to a new trial because the defendant “resorted to a well-known defendant’s trick, known as practicing the prior art defense.” Id. at 740-741. The plaintiff contended that the defendant focused on the similarities between its accused product and its prior art product and that this comparison misled the jury. Id. at 741. The Federal Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 27 of 30 Page ID #:17499 - 23 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Circuit found “this argument unpersuasive.” It first pointed out that the defendant had properly performed a limitation-by-limitation analysis, applying the construed claims to the Accused Product. Id. Importantly, defendant “never argued that its accused product did not infringe the asserted claims merely because [its accused product] shared the same architecture as the prior art [] product.” The Court noted that defendant “also presented an alternative invalidity defense that focused on its prior art [] product.” Specifically, the defendant in 01 Communique Lab argued that if the plaintiff “attempted to expand the scope of its claims… then the claims would be invalid in light of the prior art” product. Id. at 741-742. See also Rembrandt Diagnostics, LP v. Innovacon, Inc., No. 16-CV-00698-CAB-NLS, 2018 WL 3707023, at *16 (S.D. Cal. Aug. 3, 2018) (finding Plaintiff’s argument of “practicing the prior art” a “straw man” where defendant compared the accused product to the prior art to illustrate correctly “that claim terms must be construed the same way for both invalidity and infringement”). As described above, Hulu and Dr. Chase have done the exact same thing in this case. As the Federal Circuit explained, this is not a “practicing the prior art defense to literal infringement” because it does not “forsake[] any comparison between the asserted claims and the accused product, relying instead upon purported similarities between the accused product and the prior art.” 01 Communique Lab., 889 F.3d at 742. The Federal Circuit went on to distinguish this situation from other cases it had decided (including some relied on by Sound View). In general, these cases attempted to apply the prior art to non-infringement by arguing that the accused products could not infringe because they were simply practicing the prior art. Id. Even when applied to invalidity, the defendants in these cases did not attempt to perform a limitation-by-limitation analysis and thereby failed to carry the burden of clear and convincing evidence to demonstrate invalidity. Id. For example, in Zenith Elecs. Corp. v. PDI Commc’n Sys., Inc., the defendant “provided no evidence whatsoever” that a prior art system met two of the limitations of the claim Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 28 of 30 Page ID #:17500 - 24 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 at issue. 522 F.3d 1348, 1363-64 (Fed. Cir. 2008). Instead, the accused infringer “merely argued that ‘to the extent the [allegedly infringing product] is considered to practice [the two claim limitations], then so did the [prior art product].’” Id. Neither of the other cases cited by Sound View are nearly as on-point to the present case as 01 Communique Lab. In one, Realtime Data LLC v. EchoStar Corp., No. 6:17-CV-00084-JDL, 2018 WL 6271807 at *4 (E.D. Tex. Nov. 29, 2018), the district court distinguished 01 Communique Lab because the expert had failed to apply the prior art to the construed claims. The other case, TiVo Inc. v. EchoStar Commc’ns Corp. 516 F.3d. 1290, 1311 (Fed. Cir. 2008), presented a completely different scenario where a district court judge had prevented the expert from proving invalidity by criticizing the other expert’s report or previous testimony, and instead required the expert to map the prior art to the construed claims. The Federal Circuit found that the district court judge did not abuse his discretion in coming to this decision. Id. Here, as in 01 Communique Lab, Dr. Chase compares the Footprint CDN to the asserted claims using specific evidence and thus is not the “practicing the prior art defense” criticized by Zenith and others. Indeed, in 01 Communique Lab, the Federal Circuit noted that cases like Zenith “make clear” that although “an accused infringer cannot defeat a claim of literal infringement or establish invalidity merely by pointing to similarities between an accused product and the prior art,” This does not “preclude a litigant from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art.” 01 Communique Lab 889 F.3d at 742 (citations omitted, emphasis added). Rather, “when an accused product and the prior art are closely aligned, it takes exceptional linguistic dexterity to simultaneously establish infringement and evade invalidity.” Id. at 742-43 (citations omitted, emphasis added). The Court should not allow Sound View to shirk its obligation to walk this narrow line with respect to the Hulu accused products and the Footprint CDN. Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 29 of 30 Page ID #:17501 - 25 - OPPOSITION TO MOTION TO EXCLUDE CHASE TESTIMONY CASE NO. LA CV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 III. CONCLUSION The Court should deny Sound View’s motion to exclude Dr. Chase’s opinions. Dated: March 18, 2019 O’MELVENY & MYERS LLP BRETT J. WILLIAMSON JOHN C. KAPPOS CAMERON W. WESTIN BO K. MOON BRADLEY M. BERG By: /s/ Brett J. Williamson Brett J. Williamson Attorneys for Defendant and Counterclaim-Plaintiff HULU, LLC Case 2:17-cv-04146-JAK-PLA Document 306 Filed 03/18/19 Page 30 of 30 Page ID #:17502