Sound View Innovations, LLC v. Hulu, LLC

MEMORANDUM in Opposition to NOTICE OF MOTION AND MOTION to Exclude Testimony

C.D. Cal.March 18, 2019

REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 1 Case No. LACV17-04146 JAK (PLAx) RUSS AUGUST & KABAT Marc A. Fenster (SBN 181067) mfenster@raklaw.com Benjamin T. Wang (SBN 228712) bwang@raklaw.com Kent N. Shum (SBN 259189) kshum@raklaw.com 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (310) 826-7474 Fax: (310) 826-6991 DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) Jennifer M. Pryzbylski (admitted pro hac vice) 230 Park Avenue New York, New York 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 Peter C. Magic (SBN 278917) 101 California Street, Suite 3070 San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 Attorneys for Plaintiff Sound View Innovations, LLC UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION SOUND VIEW INNOVATIONS, LLC, Plaintiff, v. HULU, LLC, Defendant. Case No. LACV17-04146 JAK (PLAx) PLAINTIFF SOUND VIEW INNOVATIONS, LLC’S MEMORANDUM IN OPPOSITION TO DEFENDANT HULU, LLC’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY SOUND VIEW’S EXPERT DR. IAIN RICHARDSON Date: April 15, 2019 Time: 8:30 a.m. Hon. Judge John A. Kronstadt Courtroom: 10B Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 1 of 15 Page ID #:17552 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON i Case No. LACV17-04146 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 TABLE OF CONTENTS Pages I. INTRODUCTION ........................................................................................... 1 II. BACKGROUND ............................................................................................. 2 A. Sound View’s Willful Infringement Contentions ................................. 2 B. Dr. Richardson’s Opinions Regarding Willful Infringement ............... 3 III. LEGAL STANDARD ..................................................................................... 3 IV. ARGUMENT................................................................................................... 3 A. The Test for Willful Infringement Is Whether the Infringer Knew or Should Have Known He Was Infringing a Valid Patent. ................. 4 B. Dr. Richardson’s Testimony Will Help the Jury to Determine Whether Hulu Knew or Should Have Known It Was Infringing Sound View’s Patents. .......................................................................... 7 V. CONCLUSION ............................................................................................. 10 Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 2 of 15 Page ID #:17553 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON ii Case No. LACV17-04146 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 Table of Authorities Pages Cases Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350 (Fed. Cir. 2017) ....................................................................... 6 Bombardier Recreational Prod. Inc. v. Arctic Cat Inc., Case No. 12-CV-2706 (JRT/LIB), 2017 WL 758335 (D. Minn. Feb. 24, 2017) ................................................................................................................ 9 Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993) ....................................................................................... 3 Gen-Probe Inc. v. Becton Dickinson & Co., Case No. 09-CV-2319-BEN-NLS, 2012 WL 9335913 (S.D. Cal. Nov. 26, 2012) ................................................................................................................ 8 Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229 (Fed. Cir. 2017) ....................................................................... 7 Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016) ........................................................................ 1, 4, 5, 6 Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., Case No. 4:14-CV-371, 2016 WL 3746523 (E.D. Tex. Jan. 28, 2016) ........ 10 LoggerHead Tools, LLC v. Sears Holdings Corp., Case No. 12-CV-9033, 2016 WL 5112062 (N.D. Ill. Sept. 20, 2016) ........... 8 Oxford Gene Tech. Ltd. v. Mergen Ltd. 345 F. Supp. 2d 431 (D. Del. 2004) ................................................................ 8 RSI Corp. v. Int’l Bus. Machines Corp., Case No. 08-CV-3414, 2013 WL 10874684 (N.D. Cal. Mar. 13, 2013) ........ 9 Sonos, Inc. v. D & M Holdings Inc., 297 F. Supp. 3d 501 (D. Del. 2017) ................................................................ 9 Spreadsheet Automation Corp. v. Microsoft Corp., 587 F. Supp. 2d 794 (E.D. Tex. 2007) ............................................................ 9 WCM Indus., Inc. v. IPS Corp., 721 Fed. Appx. 959 (Fed. Cir. 2018) .......................................................... 6, 7 WesternGeco LLC v. ION Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016) ....................................................................... 6 Statutes 35 U.S.C. § 284 ...................................................................................................... 4, 5 Rules Fed. R. Evid. 702 ......................................................................................... 3, 6, 8, 10 Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 3 of 15 Page ID #:17554 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 1 Case No. LACV17-04146 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 Hulu seeks to exclude Dr. Iain Richardson’s expert opinion that Hulu willfully infringed Sound View’s patents. Dr. Richardson’s report explains that Hulu’s infringement was willful because Hulu knew or should have known it was infringing Sound View’s patents. Hulu argues that his opinion is irrelevant because, since the Supreme Court’s 2016 decision in Halo Elecs., Inc. v. Pulse Elecs., Inc.,1 the legal standard for willfulness requires a finding of “egregious” behavior. Hulu claims Dr. Richardson’s opinion is “irrelevant” because it “fails” to apply that standard, and further argues that his testimony will not be helpful to the jury because Dr. Richardson has no special qualification to evaluate whether an infringer’s behavior is “egregious.” Like its companion motion for summary judgment of no willfulness (Dkt. No. 254), Hulu’s motion to partially exclude the testimony of Sound View’s expert, Dr. Iain Richardson (Dkt. No. 251 (“Motion”)) misstates the legal standard for willful infringement. Since Halo, the Federal Circuit has repeatedly held that the test for willfulness is whether the accused infringer knew or should have known that its actions posed an unjustifiably high risk of infringing of a valid and enforceable patent. (See infra at 3-6.) Hulu’s Motion does not cite-let alone attempt to reconcile-its interpretation of Halo with those cases. Under the prevailing Federal Circuit standard, Dr. Richardson’s testimony is relevant to determining whether Hulu willfully infringed the patents-in-suit. Dr. Richardson’s report concludes that Hulu’s infringement was willful because, based on his analysis of the patents and technical information about the accused products available to Hulu, Hulu knew or should have known it was infringing Sound View’s patents. Because Dr. Richardson is an expert in the relevant technology, he is well- qualified to offer that opinion. Accordingly, his testimony will help the jury to evaluate 1 136 S. Ct. 1923 (2016) Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 4 of 15 Page ID #:17555 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 2 Case No. LACV17-04146 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 whether Hulu’s conduct was willful, and is admissible under Federal Rule of Evidence 702. II. BACKGROUND A. Sound View’s Willful Infringement Contentions Hulu’s Motion relates to the opinion of Sound View’s expert, Dr. Iain Richardson, that Hulu willfully infringes U.S. Patent Nos. 6,708,213 (the “’213 patent”), 6,757,796 (the “’796 patent”), and 9,462,074 (the “’074 patent) (collectively, the “streaming patents”). The streaming patents relate to technology for streaming media over the Internet. Specifically, the claimed methods involve streaming media, such as video, from a content provider (e.g., the source of a video) to a content consumer (who watches the video) using a content distribution network (or “CDN”). See, e.g., ’213 Patent Claim 16 (describing use of helper server to stream media from a content server to a client); ’796 Patent 27 (same); ’074 Patent Claim 9 (same). Hulu infringes the streaming patents by contracting with third party CDNs (including Akamai Technologies, Inc. and Level 3 Communications, Inc.) to facilitate the transmission of video over the Internet. Sound View contends that Hulu’s infringement is willful. As Sound View explains in its Opposition to Hulu’s Motion for Summary Judgment of No Willful Infringement (Dkt. No. 254), Hulu’s infringement is willful because, among other things: (1) Sound View notified Hulu that it infringed the streaming patents, identifying representative claims and infringing products; (2) based on the information available to it, including information about how the accused products work, Hulu knew or should have known its products infringed the identified claims; and (3) Hulu continued its infringing activities. Hulu contends that its infringement is not willful because, among other things, “Hulu lacked visibility into the details of the [method claim] steps performed by its CDNs which form the basis of Sound View’s infringement contentions.” (See Dkt. No. 254 at 22.) Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 5 of 15 Page ID #:17556 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 3 Case No. LACV17-04146 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 B. Dr. Richardson’s Opinions Regarding Willful Infringement Dr. Richardson’s expert report concludes that Hulu willfully infringed each of the streaming patents because “Hulu knew or should have known that its actions constituted an unjustifiably high risk of infringement of a valid patent.” (Dkt. No. 272- 17 ¶¶ 427, 583, 832.) Dr. Richardson’s report explains his opinion. Specifically, Dr. Richardson explains that his opinion is based on the fact that: III. LEGAL STANDARD Federal Rule of Evidence 702 provides for the admission of expert testimony that assists the trier of fact in understanding the evidence or determining a fact in issue. Fed. R. Evid. 702. The party offering the expert’s testimony has the burden to prove by a preponderance of the evidence that the evidence is relevant and reliable. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 590-92 (1993). IV. ARGUMENT Dr. Richardson’s testimony is admissible under Federal Rule of Evidence 702. The test for willful infringement is whether the infringer know or should have known of the risk it was infringing-not whether the infringer’s conduct was “egregious.” Dr. Richardson’s report explains why, based on the technical information Hulu possessed at the time it received Sound View’s notice letters, Hulu should have known that it was in infringing Sound View’s patents. As an expert in the field of computer networking Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 6 of 15 Page ID #:17557 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 4 Case No. LACV17-04146 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 architecture, distributed system design, and multimedia streaming systems, Dr. Richardson is qualified to provide that analysis. A. The Test for Willful Infringement Is Whether the Infringer Knew or Should Have Known He Was Infringing a Valid Patent. Dr. Richardson’s analysis of willful infringement is based on the legal standard provided to him by counsel, namely, that: “to prove willful infringement, a patentee must show that the defendant knew or should have known that its actions constituted an unjustifiably high risk of infringement of a valid patent.” (Dkt. No. 272-17 ¶ 39.) Hulu contends that this legal standard is “both inadequate and incorrect.” (Motion at 4.) Without actually articulating its own standard, Hulu claims that the Supreme Court’s 2016 decision in Halo “shifted the focus of an enhanced damages analysis to the egregiousness of the accused’s conduct.” (Id. at 5.) Hulu argues that Dr. Richardson’s analysis of willfulness is inadequate because it does not consider this supposed “egregious behavior” requirement. (Id.) Hulu’s analysis deliberately mischaracterizes the law, conflating the legal test for willfulness with the standard for awarding enhanced damages under 35 U.S.C. § 284 for culpable activity other than willful infringement. As Sound View explains in its Opposition to Hulu’s motion for summary judgment of no willfulness, willful infringement is just one type of behavior that can warrant enhanced damages under § 284. The Supreme Court’s decision in Halo did not change the test for finding that infringement is willful, but instead extended the ambit of § 284 to encompass not only willful infringement, to also similarly “egregious” behavior. See Halo 136 S. Ct. at 1932 (“egregious” behavior includes behavior that is “willful, wanton, malicious, bad- faith, deliberate, consciously wrongful, flagrant, or-indeed-characteristic of a pirate”); id. at 1934 (willful infringement “typifie[s]” the type of “egregious” behavior that merits enhanced damages under § 284). That is, after Halo, “egregiousness” is the Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 7 of 15 Page ID #:17558 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 5 Case No. LACV17-04146 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 standard for awarding enhanced damages under § 284-and willfulness is an example of behavior that is egregious. Hulu is well aware that willfulness infringement is, by definition, egregious under § 284. Indeed, Hulu’s counsel in this case published an article shortly after the Halo decision, explaining as much: In Halo Electronics Inc. v. Pulse Electronics Inc., the U.S. Supreme Court unanimously overturned the Seagate test for enhanced damages in patent infringement cases under 35 U.S.C. Section 284. . . . The Seagate test required proof by clear and convincing evidence that (1) the “infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the risk of infringement was “either known or so obvious that it should have been known to the accused infringer.” . . . [The court] noted that the objective prong [of Seagate] is at odds with the idea throughout other areas of law that “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.” . . . [T]he [Halo] court concluded that subjective willfulness alone may be sufficient for a finding of enhanced damages. . . . The Court concluded the section of its opinion rejecting the two- prong Seagate test by stating that enhanced damages should “generally be reserved for egregious cases typified by willful misconduct.” In other words, “willfulness” is apparently no longer a necessary predicate to enhancement, but rather only an example of the type of conduct that would allow for enhanced damages . . . By broadening the definition of an “egregious case,” it appears the Court adopted the petitioners’ Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 8 of 15 Page ID #:17559 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 6 Case No. LACV17-04146 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 argument that enhanced damages should be allowed for “bad faith or culpable activity” independent of willful infringement. (Exh. 12 (Enhanced infringement damages in a post-Seagate world, Los Angeles Daily Journal (June 17, 2016)) (emphasis added)). Since Halo, the Federal Circuit has repeatedly confirmed that proof of willful infringement does not require a separate showing of egregiousness. Instead, the test for willfulness is simply whether the infringer “knew or should have known that its actions constituted an unjustifiably high risk of infringement of a valid and enforceable patent[.]” Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1371 (Fed. Cir. 2017), cert. denied, 139 S. Ct. 143 (2018) (emphasis removed); WesternGeco LLC v. ION Geophysical Corp., 837 F.3d 1358, 1363 (Fed. Cir. 2016), rev’d sub nom. WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018), and opinion reinstated in part, 913 F.3d 1067 (Fed. Cir. 2019) (affirming district court jury instruction that willfulness test is whether infringer “actually knew, or it was so obvious that [infringer] should have known, that its actions constituted infringement of a valid patent claim”); WCM Indus., Inc. v. IPS Corp., 721 Fed. Appx. 959, 970 (Fed. Cir. 2018) (holding that, after Halo, the test for willful infringement is whether the infringer “acted despite a risk of infringement that was either known or so obvious that it should have been known”). Hulu’s motion does not cite-let alone attempt to distinguish- any of the Federal Circuit’s post-Halo rulings on the legal standard for willfulness. Indeed, Hulu’s motion does not cite any authority at all for its novel interpretation of Halo. Because Dr. Richardson’s report applies the Federal Circuit’s standard for proving willful infringement, the Court should not exclude his expert testimony under Federal Rule of Evidence 702. 2 Unless otherwise indicated, all citations to exhibits refer to exhibits to the declaration of C. Austin Ginnings in Support of Sound View’s Memorandum in Opposition to Hulu’s Motion to Partially Exclude Testimony by Sound View’s Expert Dr. Iain Richardson. Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 9 of 15 Page ID #:17560 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 7 Case No. LACV17-04146 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 B. Dr. Richardson’s Testimony Will Help the Jury to Determine Whether Hulu Knew or Should Have Known It Was Infringing Sound View’s Patents. Dr. Richardson’s testimony will help the jury to determine whether Hulu knew or should have known its conduct infringed the asserted patents. As the Federal Circuit explained after Halo, willfulness “is by definition a question of the actor’s intent, the answer to which must be inferred from all the circumstances.” WCM, 721 Fed. Appx. at 970 (internal quotation marks omitted); see also Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1245 (Fed. Cir. 2017). Among those circumstances is whether, based on the nature of the technology and the information available to him, the infringer would have had reason to understand that he infringed the asserted patents. See, e.g., Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., Case No. 4:14- CV-371, 2016 WL 3746523, at *1-2 (E.D. Tex. Jan. 28, 2016). Dr. Richardson’s testimony will explain why, from a technical perspective, Hulu knew or should have known it infringed the patents-in-suit. Dr. Richardson’s testimony is particularly useful in this case, where Hulu claims that it could not have known it was infringing the asserted patents because relevant “details of the methods used by [its] CDNs . . . were protected by the CDNs as confidential business information and not shared with customers.” (Dkt. No. 254 at 22.) As an expert in the relevant technology, Dr. Richardson’s specialized technical knowledge will help the jury to understand why the evidence shows Hulu in fact did know it was infringing the patents-in-suit-including limitations performed by its CDNs. For example, Dr. Richardson explains that Hulu: Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 10 of 15 Page ID #:17561 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 8 Case No. LACV17-04146 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 Because software, network architecture, and CDN parameters and property configurations are not matters within the understanding of the average person, Dr. Richardson’s testimony will assist the jury in determining whether Hulu should have known it infringed the streaming patents. Dr. Richardson’s testimony is thus distinct from that contemplated in the cases Hulu cites in support of its motion, in which the expert planned to opine on the defendant’s intent or state of mind. In Oxford Gene Tech. Ltd. v. Mergen Ltd., the district court excluded expert testimony “which could be interpreted as referring to or inferring [the defendant’s] state of mind,” such as testimony about what the defendant “recognize[d],” how the defendant “feel[s],” what the defendant “concluded,” and whether the defendant was “concern[ed].” See 345 F. Supp. 2d 431, 443 n. 9 (D. Del. 2004); see also LoggerHead Tools, LLC v. Sears Holdings Corp., Case No. 12-CV- 9033, 2016 WL 5112062, at *2 (N.D. Ill. Sept. 20, 2016) (excluding expert testimony regarding state of mind). Here, by contrast, Dr. Richardson’s testimony will not speculate regarding Hulu’s state of mind, but instead will explain why the Hulu should have known of the obvious risk it was infringing Sound View’s patents. Willfulness opinions that do not seek to divine the defendant’s state of mind but rather provide technical assistance to the trier of fact are admissible under Rule 702. In Gen-Probe Inc. v. Becton Dickinson & Co., for example, the district court cautioned that the expert could not testify as to “motives, intent and state of mind,” but allowed testimony regarding willfulness issues within his expertise, such as how the defendant’s investigation of the asserted patents compared to typical industry practice. See Case No. 09-CV-2319-BEN-NLS, 2012 WL 9335913, at *4 (S.D. Cal. Nov. 26, 2012). Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 11 of 15 Page ID #:17562 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 9 Case No. LACV17-04146 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 Likewise, in Spreadsheet Automation Corp. v. Microsoft Corp., the district court allowed a motion to exclude expert testimony regarding “how, when, and why” the defendant would have been on notice of its infringement. See 587 F. Supp. 2d 794, 799, 803 (E.D. Tex. 2007). Dr. Richardson’s opinions, which are based on his industry experience and technical knowledge, is likewise admissible. Dr. Richardson’s testimony is also distinguishable from the testimony at issue in the cases Hulu cites because Dr. Richardson will not offer opinions regarding topics that a lay jury could readily analyze without guidance. In Sonos, Inc. v. D & M Holdings Inc., for example, the court excluded expert testimony that the defendant copied the plaintiff’s product because the expert’s “qualifications as an expert in this action . . . [were] not pertinent to his conclusions about copying.” 297 F. Supp. 3d 501, 521 (D. Del. 2017). The court reasoned that the expert’s testimony would not be helpful to the jury because laypeople could evaluate the relevant evidence-such as the similarity between the names and branding of the parties’ products-without expert guidance. Id. at 521-22; cf. RSI Corp. v. Int’l Bus. Machines Corp., Case No. 08-CV- 3414, 2013 WL 1087468, at *4 (N.D. Cal. Mar. 13, 2013) (excluding expert evidence where expert’s qualifications did not place him in a better position to evaluate the willfulness evidence than a lay jury). Dr. Richardson’s opinion, on the other hand, is based on his analysis of technology that is unfamiliar to most jurors. Willfulness opinions centered on such technical analysis are admissible under Rule 702. In Bombardier Recreational Prod. Inc. v. Arctic Cat Inc., for example, the district court denied a motion to exclude the testimony of a technical expert who opined that the infringer copied the patentee’s invention. See Case No. 12-CV-2706 (JRT/LIB), 2017 WL 758335, at *4-*5 (D. Minn. Feb. 24, 2017). The court rejected the notion that a technical expert’s testimony regarding willfulness is inappropriate after Halo, reasoning that the key inquiry was whether the expert’s testimony was being used for a “permissible purpose.” Id. at *5. Because the technical expert’s opinion was Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 12 of 15 Page ID #:17563 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 10 Case No. LACV17-04146 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 offered to “interpret[] technical data and provid[e] context for the jury’s decision regarding willfulness,” the court ruled it admissible. Id. at *4-*5. Likewise, in Imperium IP Holdings, the district court denied a defendant’s motion to exclude the willfulness opinion of an expert who provided a technical analysis of why the accused infringer “at least should have known of the high risk of infringement.” See 2016 WL 3746523, at *1-2. There, as here, the defendant argued that the patentee’s expert lacked the experience necessary to assess willfulness under the then-operative legal standard. Id at *1. The court rejected that argument and admitted the expert’s testimony because it drew, “at least in part, on his technical conclusions.” Id. at *2. Dr. Richardson’s opinion is similarly unobjectionable. The only disputed portion of Dr. Richardson’s opinion is that, based on the nature of the technology and the information in Hulu’s possession, Hulu should have known it infringed Sound View’s patents. Because Dr. Richardson’s testimony on that issue is based on his technical analysis and involves no speculation regarding Hulu’s intentions, it is admissible under Rule 702. V. CONCLUSION Dr. Richardson’s opinion on willfulness is admissible under Federal Rule of Evidence 702 because it applies the correct legal standard, is based on his expert technical analysis of matters unfamiliar to the average person, and draws no inferences as to Hulu’s intentions. Accordingly, Sound View respectfully requests that the court DENY Hulu’s motion to partially exclude Dr. Richardson’s expert testimony. Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 13 of 15 Page ID #:17564 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 11 Case No. LACV17-04146 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 Dated: March 18, 2019 By: /s/ Kent N. Shum RUSS AUGUST & KABAT Marc A. Fenster Benjamin T. Wang Kent N. Shum 12424 Wilshire Boulevard, 12th Floor Los Angeles, California 90025 Tel: (310) 826-7474 Fax: (310) 826-6991 mfenster@raklaw.com bwang@raklaw.com kshum@raklaw.com Of Counsel: DESMARAIS LLP Alan S. Kellman (admitted pro hac vice) Richard M. Cowell (admitted pro hac vice) C. Austin Ginnings (admitted pro hac vice) Jennifer M. Przybylski (admitted pro hac vice) 230 Park Avenue New York, NY 10169 Tel: (212) 351-3400 Fax: (212) 351-3401 akellman@desmaraisllp.com rcowell@desmaraisllp.com aginnings@desmaraisllp.com jprzybylski@desmaraisllp.com Peter C. Magic (SBN 278917) 101 California Street, Suite 3070 San Francisco, CA 94111 Tel: (415) 573-1900 Fax: (415) 573-1901 pmagic@desmaraisllp.com Attorneys for Plaintiff Sound View Innovations, LLC Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 14 of 15 Page ID #:17565 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEAL SOUND VIEW’S OPPOSITION TO HULU’S MOTION TO PARTIALLY EXCLUDE TESTIMONY BY DR. IAIN RICHARDSON 12 Case No. LACV17-04146 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 Certificate of Service I hereby certify that a copy of the foregoing document was filed electronically in compliance with Local Rule 5-3.2. Therefore, this document was served on all counsel who are deemed to have consented to electronic service. Pursuant to Federal Rule of Civil Procedure 5(d) and Local Rule 5-3.2, all other counsel of record not deemed to have consented to electronic service were served with a true and correct copy of the foregoing by email on March 18, 2019. ____/s/ Kent N. Shum Case 2:17-cv-04146-JAK-PLA Document 309 Filed 03/18/19 Page 15 of 15 Page ID #:17566