I/P Engine, Inc. v. AOL, Inc. et al
Reply to Motion re 357 MOTION in Limine Plaintiff I/P Engines Daubert Motion, and Fourth Motion in Limine, to Exclude Lyle Ungars New Theory of Invalidity and Opinions Regarding Claim Construction filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1)(Sherwood, Jeffrey)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
I/P ENGINE, INC.,
Civ. Action No. 2:11-cv-512
AOL, INC. et al.,
PLAINTIFF I/P ENGINE, INC.’S REPLY IN FURTHER SUPPORT OF ITS
DAUBERT MOTION, AND FOURTH MOTION IN LIMINE,
TO EXCLUDE LYLE UNGAR’S NEW THEORY OF
INVALIDITY AND OPINIONS REGARDING CLAIM CONSTRUCTION
By unilaterally excusing itself from the requirements for Rule 26(a)(2)(B), Defendants
have set the stage the type of ambush the Rules seek to prevent. Indeed, while deposing Dr.
Carbonell (I/P Engine’s rebuttal witness) Defendants filled 30 pages of transcript with questions
about Dr. Ungar’s new opinions.1 But when these questions were asked, Dr. Ungar’s new
opinions had never been revealed to Dr. Carbonell (or anyone else). Dr. Carbonell was unfairly
Two days later, after more than ten hours of questioning had already occurred,
Defendants revealed the existence of Dr. Ungar’s new opinion for the first time. Defendants
suggest that I/P Engine’s counsel should have responded to this ambush by (1) learning the full
scope of the new opinion through deposition testimony, (2) evaluate that opinion on the fly, and
(3) asking questions about the new opinion, also on the fly. Because I/P Engine’s counsel failed
to perform these nearly-impossible tasks, Defendants allege that “Plaintiff has suffered no
prejudice.” D.I. 511 at 7-8.
Rule 26(a)(2) requires expert reports to avoid situations like these. Defendants do not
allege that they have complied with Rule 26(a)(2)(B). Indeed, Dr. Ungar has not supplemented
his report with his new opinion. Defendants argue that they are excused from complying with
Rule 26(a)(2)(B) because I/P Engine did not supplement its interrogatories to reflect Dr.
Carbonell’s rebuttal to Dr. Ungar’s initial opinions before the time when Dr. Ungar’s initial
opinions were first revealed. This excuse is astonishing for many reasons, the least of which is
Defendants’s admit deposing Dr. Carbonell about “why he believes that this section does not
invalidate the Asserted Patents” at page 7 of their opposition. They cite 30 pages (pages 82-111)
of the transcript in support of this statement.
that it fails to explain why Defendants – even today – have failed to provide the written report
Rule 26(a)(2)(B) requires.
Failing to strike Dr. Ungar’s new theory of invalidity would multiply the effects of
Defendants’ ambush: Dr. Ungar’s opinions would be fully revealed for the first time at trial; I/P
Engine would be force to proceed on-the-fly, without the benefit of any deposition testimony
about the new opinions; and Defendants may seek to take advantage of the deposition testimony
they obtained unfairly from Dr. Carbonell. Enforcing Rule 26(a)(2)(B) by excluding Dr. Ungar’s
new invalidity opinion is the only way to prevent this grossly unfair result. See Fed. R. Civ. P.
37(c)(1) (specifying exclusion as the remedy for failure to comply with Rule 26(a)).
Dr. Ungar’s opinions that contradict the Court’s Constructions should also be precluded.
It is well settled that such testimony is irrelevant and unduly prejudicial. See Liquid Dynamics
Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006).
Defendants Turn The Burden Of Proof On Its Head
Defendants’ Burden Of Proving Invalidity Does Not Depend On Any
Action Taken By The I/P Engine
The rules require that Dr. Ungar’s report contain “a complete statement of all opinions
[Dr. Ungar] will express and the basis and reasons for them.” Fed. R. Civ. Pro. 26(a)(2)(B)(i).
Dr. Ungar admits his report was not complete, and Defendants’ opposition makes no claim to the
contrary. Defendants attempt to excuse their non-compliance, but Defendants’ excuses are
Lacking any valid reason for failing to comply with Rule 26(a)(2), Defendants allege
misconduct by I/P Engine. This is nothing but a distraction from the issue at hand. Defendants
should have filed a motion if they wished to seek sanctions for I/P Engine’s alleged violation of
Rule 26(e). But none would have been available. I/P Engine provided the requested information
on August 30, 2012. This was timely, especially because the requested information required a
complete analysis of three newly-disclosed references and production of claim charts for each
Neither Rule 26(e) nor any other rule justifies Defendants’ non-compliance with Rule
26(a)(2). Indeed, Defendants failed to cite any rule or case law in support of their position. It is
Defendants, not I/P Engine, that are required to come forward with all of the evidence needed to
prove invalidity. Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir.
2008). Defendants’ burden is in no way contingent on the contents of I/P Engine’s rebuttal case,
so Defendants’ attempt to blame I/P Engine for its failure are unavailing. See, Id. Further,
Defendants’ opposition provides no excuse whatsoever for its continued failure to comply with
Rule 26(a)(2) even today – long after Dr. Carbonell’s rebuttal was revealed.
Defendants’ Violation of Rule 26(a)(2) Prejudiced I/P Engine
Even if Defendants’ initial failure to completely consider the “filtering” limitations were
excusable (it is not), Defendants delay is correcting Dr. Ungar’s flawed opinions cannot be
excused. Defendants provided no written notice of its new theories to I/P Engine even after it
received I/P Engine’s rebuttal. Instead, it waited to reveal the new theories until the very end of
Dr. Ungar’s deposition.
Twenty five (25) days passed between when Dr. Carbonnell rebutted Dr. Ungar’s flawed
analysis and when Dr. Ungar revealed his new invalidity theories. If I/P Engine was expected to
respond to three entire references in less than 23 days, as Defendants allege (at 3), then surely
Defendants should have provided their revised analysis of a single aspect of just one of those
references in the same timeframe. But Defendants failed to meet their own standard, opting
instead to ambush I/P Engine.
Contrary to Defendants’ claim that “Plaintiff has suffered no prejudice,” both Dr.
Carbonnell and I/P Engine’s counsel were ambushed by Defendants’ failure to disclose its new
invalidity theories. As Defendants admit (at 7), 30 pages of the transcript in Dr. Carbonell’s
deposition are directed to the section of Culliss that Dr. Ungar now believes is relevant. But
Defendants did not reveal Dr. Ungar’s new opinion until after Dr. Carbonell’s deposition. Thus,
Dr. Carbonell was forced to testify “at great length” in rebuttal to an invalidity case that had not
yet been revealed to him (or to anyone else). This is fundamentally unfair.
I/P Engine was also prejudiced during the deposition of Dr. Ungar. The existence of Dr.
Ungar’s new theory was first revealed only at the very end of Dr. Ungar’s deposition, after ten
hours of questioning had taken place, and, as Defendants admit, fewer than two hours remained.
The rules specifically forbid forcing a questioner to depose an expert without the benefit of a
written report. Fed. R. Civ. P. 26(b)(4)(a) (“If Rule 26(a)(2)(B) requires a report from the expert,
the deposition may be conducted only after the report is provided.”) Yet Defendants fault I/P
Engine for failing to do what the Rules say does not have to be done. D.I. 511 at 8.
Rule 26(b)(4)(a) seeks to prevent the very prejudice that Defendants inflicted upon I/P
Engine. Although Defendants argue that I/P Engine should have formulated questions on-thefly, actually doing so would have been extraordinarily difficult. Not only would I/P Engine’s
counsel have had to elicit the full scope of the new opinion, he would also have to
instantaneously analyze that opinion in order to ask follow-up questions. This would be no
substitute for the thorough analysis and careful planning for which the Rules allow.
Further, Defendants counsel explicitly suggested that Dr. Ungar only summarize his new
opinions during the deposition. Despite the requirements of Rule 26(a)(2)(B), a complete
statement of Dr. Ungar’s new opinions has never been provided. The eight questions asked by
Defendants counsel included no less than three suggestions to avoid providing complete detail:
“Well, let me ask you … since we want [I/P Engine’s counsel] to get home to his football
“Are you able to find any others quickly?” (526:19-20)
“Well, if there’s one that’s easy at your fingertips, that’s fine. We don’t have to go
through the whole reference right now.” (527:11-13) (Ex. 1)
If I/P Engine’s Motion is not granted, Dr. Ungar will present his new theories at trial.
Having been ambushed at his deposition, I/P Engine’s counsel will have no deposition testimony
to rely on when cross-examining him. Further, I/P Engine’s counsel will have to develop crossexamination questions on the fly, because, as explained above, trial would be the first time Dr.
Ungar’s theories are fully revealed. Similarly, Dr. Carbonell would be forced to develop rebuttal
opinions on the fly. Moreover, Dr. Carbonell would be subject to cross-examination based on
questions that he answered in deposition before he was aware of the opinion he is rebutting.
The situation the Defendants have created is the very definition of trial by ambush, which
is precisely what the Federal Rules are supposed to prevent. See Slaughter v. Barton, 2003 WL
24100297 (E.D. Va.) (“allowing such an untimely disclosure would be disruptive to the trial in
this matter because it would condone the strategy of last-minute disclosures, behavior that flies
in the face of the Federal Rules of Civil Procedure”). Contrary to Defendants’ allegations, I/P
Engine would be severely prejudiced if the Court allows Defendants’ tactics. The only remedy is
limiting Dr. Ungar’s testimony to the opinions he revealed in his expert report.
Arguments Regarding Claim Construction Should Be Precluded
Defendants claim that Dr. Ungar has no intention of contradicting the Court’s claim
construction. But in the next breath Defendants say that I/P Engine’s motion to preclude
arguments regarding claim constructions rejected by the Court should be denied. If Defendants
do not plan to contradict the Court’s claim construction, then there should be no reason to oppose
I/P Engine’s motion.
I/P Engine is concerned because, despite the Court rejecting Defendants’ contention that
“scanning a network” requires a spider (D.I. 171 at 12-15), Dr. Ungar still seems to think using a
spider is the only way to meet the claim:
Q: So it's true that you did not form an opinion, when performing your
noninfringement analysis, as to whether there's an alternate
implementation of scanning a network that would not require a
A: That's correct.
(Ungar Dep. at 232: 15-20). (Ex. 1)
Although Defendants’ opposition discusses Dr. Ungar’s other opinions, it does not
explain the one quoted above. Defendants’ opposition (at 9) says Dr. Ungar admits “that one can
scan a network without spidering,” but the cited testimony does not support this claim:
There's nothing intrinsic to the definition that says spidering has to be the
way to do it. That's somehow the obvious way that comes to mind of how
I would do it. I would need to take -- I would need to think much more
carefully about an alternate implementation of that.
(Id. at 231:16-22.) (Ex. 1) Dr. Ungar does not admit that the Court’s claim construction is
correct. Instead, he says he would need to think much more carefully about it.
I/P Engine does not and cannot know precisely what Defendants will contend at trial, but
Dr. Ungar’s deposition suggests that he had not considered that “scanning a network” does not
require spidering at the time he formed his non-infringement opinions. Especially in light of
Defendant’s opposition to this motion, I/P Engine believes an affirmative order is needed to
ensure that irrelevant and prejudicial testimony contradicting the Court’s claim construction is
not introduced at trial.
Dated: October 3, 2012
By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Counsel for Plaintiff I/P Engine, Inc.
CERTIFICATE OF SERVICE
I hereby certify that on this 3rd day of October, 2012, the foregoing, PLAINTIFF I/P
ENGINE, INC.’S REPLY IN FURTHER SUPPORT OF ITS DAUBERT MOTION, AND
FOURTH MOTION IN LIMINE, TO EXCLUDE LYLE UNGAR’S NEW THEORY OF
INVALIDITY AND OPINIONS REGARDING CLAIM CONSTRUCTION, was served via
the Court’s CM/ECF system on the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Norfolk, VA 23510
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
/s/ Jeffrey K. Sherwood
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