Personalized User Model LLP v. Google Inc.

Filing 562

REDACTED VERSION of 556 Opening Brief in Support, of MOTION TO EXCLUDE PORTIONS OF DR. EDWARD FOX'S NON-INFRINGEMENT REPORT FOR FAILURE TO APPLY THE COURT'S CLAIM CONSTRUCTION by Personalized User Model LLP, Konig Yochai. (Tigan, Jeremy)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PERSONALIZED USER MODEL, L.L.P.,

)
)
)
Plaintiff,
)
v.
)
)
GOOGLE, INC.,
)
)
Defendant.
)
)
)
GOOGLE, INC.
)
)
Counterclaimant,
)
v.
)
PERSONALIZED USER MODEL, L.L.P. and )
)
YOCHAI KONIG,
)
Counterclaim-Defendants. )

C.A. No. 09-525 (LPS)
REDACTED - PUBLIC VERSION

PUM’S OPENING BRIEF IN SUPPORT OF ITS MOTION TO EXCLUDE
PORTIONS OF DR. EDWARD FOX’S NON-INFRINGEMENT REPORT
FOR FAILURE TO APPLY THE COURT’S CLAIM CONSTRUCTION

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina S.E. Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P.
and Yochai Konig

Original Filing Date: January 21, 2014
Redacted Filing Date: January 28, 2014

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .......................................................................................................... ii
I.

NATURE AND STATE OF THE PROCEEDINGS ...............................................1

II.

SUMMARY ARGUMENT .....................................................................................1

III.

ARGUMENT ...........................................................................................................3
A.

Applicable Legal Principles .........................................................................3

B.

The Court Should Exclude Dr. Fox’s Opinions That
Disregard The Court’s Claim Construction. ................................................5
1.

Dr. Fox’s Opinions Regarding “User Model
Specific To The User” And “User-Specific
Learning Machine” Should Be Excluded. .......................................5

2.

Dr. Fox’s Opinions Regarding “Estimating” Should
Be Excluded. ....................................................................................7

3.

Dr. Fox’s Opinions Regarding “Probability” Must
Be A Number Between 0 And 1 Should Be
Excluded. .........................................................................................9

CONCLUSION ..............................................................................................................................10

-i-

TABLE OF AUTHORITIES
Page(s)
CASES
Callpod, Inc. v. GN Netcom, Inc.,
703 F. Supp. 2d 815 (N.D. Ill. 2010) .........................................................................................3
Cook Inc. v. Endologix, Inc.,
No. 1:09-cv-01248-TWP-DKL, 2012 WL 3886204 (S.D. Ind. Sept. 6, 2012) .........................4
Cytologix Corp. v. Ventana Med. Sys., Inc.,
424 F.3d 1168 (Fed. Cir. 2005)..................................................................................................3
Daubert v. Merrell Dow Pharms., Inc.,
509 U.S. 579 (1993) ...............................................................................................................3, 4
Elcock v. Kmart Corp.,
233 F.3d 734 (3d Cir. 2000).......................................................................................................3
Exergen Corp. v. Wal-Mart Stores, Inc.,
575 F.3d 1312 (Fed. Cir. 2009)..................................................................................................4
Insight Technology, Inc. v. SureFire, LLC,
2009 WL 3242557 (D.N.H. 2009) ................................................................................... Passim
Liquid Dynamics Corp. v. Vaughan Co.,
449 F.3d 1209 (Fed. Cir. 2006)..................................................................................................3
MarcTec, LLC v. Johnson & Johnson,
638 F. Supp. 2d 987 (S.D. Ill. 2009) ..........................................................................................4
MarcTec, LLC v. Johnson & Johnson,
No. 07-CV-825, 2010 WL 680490 (S.D. Ill. Feb. 23, 2010) .................................................3, 4
Saffran v. Johnson & Johnson,
Civil Action No. 2:07-CV-451, 2011 WL 197871 (E.D. Tex. Jan. 20, 2011) ...........................4
Schneider ex rel. Estate of Schneider v. Fried,
320 F.3d 396 (3d Cir. 2003).......................................................................................................3
RULES AND STATUTES
Fed. R. Evid. 702 .........................................................................................................................3, 4

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Plaintiff Personalized User Model L.L.P. (“PUM” or “Plaintiff”) respectfully moves to
exclude certain opinions of Defendant Google’s (“Google” or “Defendant”) technical expert
(Dr. Edward A. Fox) and to preclude introduction of those opinions and theories at trial.
I.

NATURE AND STATE OF THE PROCEEDINGS
PUM filed this patent infringement case in July 2009 against Google. Plaintiff asserts

that Google infringes two patents―U.S. Patent No. 6,981,040 (the “’040 patent”) and U.S.
Patent No. 7,685,276 (“the ’276 patent”). This Court issued its claim construction Opinion and
Order on January 25, 2012. (D.I. 347 and 348). Expert discovery closed on November 27, 2012.
Trial is scheduled to begin on March 10, 2014.
II.

SUMMARY ARGUMENT
Proper expert testimony, for example, testimony where a qualified expert compares an

accused product to the claim language as construed by the Court, can assist a jury in resolving a
patent dispute. Improper expert testimony, however, such as when an expert offers opinions that
are contrary to the Court’s claim constructions, is unreliable, unhelpful, and should be excluded
from the trial.
Here, several of Dr. Fox’s non-infringement opinions disregard the Court’s claim
construction and/or are based on an interpretation of the Court’s claim construction that was
previously rejected by the Court. More specifically, Dr. Fox opines:

1

The cited portions of Dr. Fox’s report are attached as Exhibit 1 to the Declaration of Jennifer
Bennett (“Bennett Decl.”). All emphasis is added unless otherwise noted.

-1-

But the Court
rejected this construction and argument when it rejected Google’s attempt to define
“User Model specific to the user” as a “model unique to the user, …” (D.I. at 24–27)2
and instead defined “User Model specific to the user” as “an implementation of a
learning machine updated in part by data specific to the user.” (Id. at 28). The Court
similarly rejected this argument for “user-specific” learning machine, defining the
phrase as “a learning machine [as construed] specific to the user.” (Id.) Because Dr.
Fox’s opinions fail to apply the Court’s constructions (and rely on arguments
previously and explicitly rejected by the Court), they should be stricken and this
theory should be excluded from trial.

But the Court never made such a
finding (D.I. 347 at 32–33).3 Because Dr. Fox’s opinions of non-infringement based
on the “estimating” term fail to apply the Court’s construction that explicitly
encompasses calculations, they should be stricken and this theory should be excluded
from trial.

But the Court rejected Google’s “percentage chance” construction of
“probability,” construing the term to mean “numerical degree of belief or likelihood”
(D.I. 347 at 33–34), a construction that even Dr. Fox recognized during his deposition
as not being limited to between 0 and 1. See Fox Depo. at 129:22–130:3; 126:21–
127:14. Here again because Dr. Fox failed to follow the Court’s construction and
instead read in a previously rejected argument, his opinions should be stricken and
this theory should be excluded from trial.

2

The Court also rejected Google’s attempted compromise definition that a User Model
specific to the user meant a “model restricted to the user, ….” Id. at 25 n.18.
3

Deposition of Dr. Fox
(“Fox Depo.”) at 136:25–138:19; 139:13–15; 140:4–20. The cited portions of Dr. Fox’s
deposition testimony are collected at Exhibit 2 of the Bennett Decl.

-2-

III.

ARGUMENT
A.

Applicable Legal Principles

The Court acts as the gatekeeper to ensure that expert testimony is relevant and reliable.
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993). The party offering the expert
testimony bears the burden of proving its admissibility. Elcock v. Kmart Corp., 233 F.3d 734,
741 (3d Cir. 2000). For Dr. Fox’s testimony to be admitted, Google must demonstrate by a
preponderance of the evidence that: (a) Dr. Fox is qualified; (b) his testimony is reliable; and
(c) his testimony is relevant to an issue in the case. Daubert, 509 U.S. at 590–91. The Third
Circuit recognizes Rule 702 “embodies a trilogy of restrictions on expert testimony:
qualification, reliability and fit.” Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396,
404 (3d Cir. 2003). Fit requires that “the expert’s testimony must be relevant for the purposes of
the case and must assist the trier of fact.” Schneider, 320 F.3d at 404.
Expert testimony that conflicts with the Court’s constructions is neither relevant nor
helpful to the jury. See, e.g., Callpod, Inc. v. GN Netcom, Inc., 703 F. Supp. 2d 815, 821–22
(N.D. Ill. 2010) (“Expert opinions that conflict with a court’s established claim construction tend
only to create confusion and are thus unhelpful to the jury.”). Thus, the Federal Circuit has
approved the exclusion of expert testimony where an accused infringer tried to circumvent a
claim construction order by re-advancing a rejected claim construction theory under the guise of
arguing the factual question of infringement. Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d
1209, 1224 & n.2 (Fed. Cir. 2006) (district court did not err in excluding expert testimony
inconsistent with claim construction); see also Cytologix Corp. v. Ventana Med. Sys., Inc., 424
F.3d 1168, 1172 (Fed. Cir. 2005) (noting the impropriety of allowing expert opinions premised
on an incorrect claim construction); MarcTec, LLC v. Johnson & Johnson, No. 07-CV-825, 2010
-3-

WL 680490, at *4 (S.D. Ill. Feb. 23, 2010) (“This Court excluded expert testimony premised on
this mischaracterization of the claim construction as inadmissible under [Daubert] and [Fed. R.
Evid. 702] because it ‘d[id] not address the requirements of the Court’s claim construction and is
irrelevant to the question of infringement.”’ (third alteration in original) (quoting MarcTec, LLC
v. Johnson & Johnson, 638 F. Supp. 2d 987, 1006 (S.D. Ill. 2009)).
The Federal Circuit has warned that “[o]nce a district court has construed the relevant
claim terms, and unless altered by the district court, then that legal determination governs for
purposes of trial. No party may contradict the court’s construction to a jury.” Exergen Corp. v.
Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009). Thus, an expert’s testimony can be
properly excluded for failure to apply the Court’s claim construction. See, e.g., Cook Inc. v.
Endologix, Inc., No. 1:09-cv-01248-TWP-DKL, 2012 WL 3886204, at *3 (S.D. Ind. Sept. 6,
2012) (excluding expert’s testimony concerning infringement explaining that the defendant “did
not succeed with its argument at claim construction and cannot seek to reargue its point at trial
through expert testimony.”); see also Marctec, 2010 WL 680490, at *4 (noting that the Court
excluded expert testimony that was “premised on this mischaracterization of the claim
construction”); Saffran v. Johnson & Johnson, Civil Action No. 2:07-CV-451, 2011 WL 197871,
at *3–4 (E.D. Tex. Jan. 20, 2011) (excluding expert testimony under Daubert that was contrary
to the court’s claim construction); Insight Technology, Inc. v. SureFire, LLC, 2009 WL 3242557,
*1–2 (D.N.H. 2009) (excluding non-infringement theory that was contrary to claim
construction).

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B.

The Court Should Exclude Dr. Fox’s Opinions That Disregard The Court’s
Claim Construction.
1.

Dr. Fox’s Opinions Regarding “User Model Specific To The User”
And “User-Specific Learning Machine” Should Be Excluded.

During the claim construction process, the Court rejected Google’s argument that each
user must have his/her own personal User Model and learning machine. (D.I. 347 at 18, 24–27).
Characterizing the crux of the parties’ dispute to be what the patent means when it says
“specific” or “specific to the user,” the Court rejected Google’s attempt to define “User Model
specific to the user” and “user-specific learning machine” as “unique” to the user or “restricted”
to the user based on the specification’s teaching.

Id. at 24–27. Undeterred, Google now

improperly attempts to advance the same theory through expert testimony. These opinions
should be excluded.
Dr. Fox, in his non-infringement opinion regarding the “User Model specific to the user”
and “user-specific learning machine” elements, repeatedly advances the opinion that the Court’s
construction requires that for a User Model or learning machine to be “specific to the user,” each
user must have his/her own User Model or learning machine:

*

*

*

*

*

*

-5-

The

Court

has

already

heard

and

rejected

these

arguments. 5

Google’s

construction―”model unique to the user, that is created and updated by the learning machine
and stored in a data structure”6― would mean “that each user have his or her own personal
learning machine/user model potentially resulting in millions and millions of learning
machines/models with tens of millions of variables.” (D.I. 347 at 25 (the Court describing
Google’s argument)). “Resolution of this dispute turns on whether a User Model is specific
because it has completely different variables than other User Models, or if, instead, a User
Model is specific because it has completely different numerical values than other User Models.”
Id. at 25–26. (emphasis original). “[T]he Court agrees with PUM that the fundamental issue is
the construction of parameters, which the Court addressed earlier.” Id. at 26. With respect to
“parameters,” the Court noted that “[u]nder Google’s construction, as PUM points out, ‘each
user would have a separate model made up of hundreds of thousands of words and all these other
things’” and thus “[t]he Court will adopt PUM’s proposal.” Id. at 18.

4

Fox Report at ¶¶ 317–319. Dr. Fox repeats these arguments in numerous other paragraphs
for numerous accused products. See, e.g., Fox at ¶¶ 67, 313, 324, 326–27, 330, 336, 384–85,
406, 437, 465, 489, 522, 548, 562, 579, 657, 706, 783, and 791.
5

The parties devoted a significant portion of the claim construction argument on this issue.
See, e.g., Transcript, D.I. 170 at 10:2–12:6, 26:1–28:22, 29;20–30:11, 116:23–119:23, 123:2–
125:19 (Plaintiff’s argument) and 59:18–73:11, 130:10–132:11 (Defendant’s argument). The
cited portions of the claim construction hearing transcript are collected at Exhibit 3 of the
Bennett Decl. Dr. Fox admits that he did not consider the transcript of the claim construction
argument in formulating his opinions. Fox Depo. at 21:11–22:12.
6

Google’s proposed a similar construction for “user-specific learning machine” (i.e., “learning
machine unique to the user”). (D.I. 116 at 12).

-6-

Based on these principles, the Court construed “User Model specific to the user” to mean
“an implementation of a learning machine updated in part by data specific to the user” and “userspecific learning machine” to mean “a learning machine [as construed] specific to the user” thus
rejecting Google’s “unique to the user” and “restricted to the user” arguments in favor of PUM’s
position. (D.I. 347 at 28).7 Google’s attempt to reargue this lost claim construction position
through expert testimony should be rejected. Dr. Fox’s opinions for “User Model specific to the
user” and “user-specific learning machine,” in at least paragraphs 67, 313, 317–19, 324, 326–27,
330, 336, 384–85, 406, 437, 465, 489, 522, 548, 562, 579, 657, 706, 783, and 791, should be
stricken and excluded from trial.
2.

Dr. Fox’s Opinions Regarding “Estimating” Should Be Excluded.

In both the ’040 and ’276 patents, claim 1 recites “estimating parameters of a [userspecific] learning” and “estimat[ing] a probability.” During claim construction, Google argued
“estimating” should be construed as “calculating.” (D.I. 116 at 16.) PUM argued “estimating”
should be construed as “approximating or roughly calculating.” The Court agreed. (D.I. 347 at
31–32.) The Court explained that “estimating was generally understood by one of ordinary skill
in the art at the relevant time as a measurement that is not entirely precise.” (Id. at 32–33). In
his report, Dr. Fox mischaracterizes this explanation,

7

Dr. Fox’s deposition testimony further confirms that he is relying on a rejected claim
construction.

-7-

Fox at ¶ 290. The Court never found that “estimating” excluded calculations. (D.I. 347 at 32–
33).8
Dr. Fox attempts to read “roughly calculating” out of the Court’s construction to avoid
infringement.

Dr. Fox’s opinions do not follow the Court’s construction of “estimating.” In fact, they
ignore that the Court’s construction of “estimating” includes “approximating or roughly
8

Indeed,

137:23–138:19; 139:13–15; 140:4–20.

-8-

Fox at ¶ 304.
During his deposition,

-9-

The Court, therefore, should exclude Dr. Fox’s opinions in his report, including at least
the opinions in paragraphs 303–305, that a “probability” must be a number between 0 and 1.
CONCLUSION
For the foregoing reasons, PUM respectfully requests that the above-referenced portions
of Dr. Fox’s non-infringement opinions be excluded.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
OF COUNSEL:
Marc S. Friedman
DENTONS US LLP
1221 Avenue of the Americas
New York, NY 10020-1089
[phone]
Mark C. Nelson
Steven M. Geiszler
Richard D. Salgado
DENTONS US LLP
2000 McKinney Avenue, Suite 1900
Dallas, TX 75201
[phone]

/s/ Jeremy A. Tigan
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina S.E. Murphy (#5648)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347
[phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Personalized User Model, L.L.P.
and Yochai Konig

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Matthew P. Larson
DENTONS US LLP
1301 K Street, NW
Suite 600, East Tower
Washington, DC 20005-3364
[phone]
January 21, 2014
7941932

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