Personalized User Model LLP v. Google Inc.

Filing 579

RESPONSE to Motion re 552 MOTION to Preclude Defendant Google, Inc.'s Daubert Motion to Exclude Certain Opinions of Dr. Michael Pazzani filed by Personalized User Model LLP, Konig Yochai. (Attachments: # 1 Exhibit 1)(Murphy, Regina)

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)

PUM’S RESPONSE TO GOOGLE’S DAUBERT MOTION
TO EXCLUDE CERTAIN OPINIONS OF DR. MICHAEL PAZZANI

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]

MORRIS, NICHOLS, ARSHT & TUNNELL LLP
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina 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]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
February 10, 2014

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ...................................................................................................... ii
SUMMARY OF ARGUMENT ................................................................................................... 1
ARGUMENT .............................................................................................................................. 2
I.

DR. PAZZANI DOES NOT OFFER LEGAL OPINIONS. .................................. 2
A.

Dr. Pazzani’s Opinions Are Technical And Do Not Turn
On California Law. ................................................................................... 3

B.

Dr. Pazzani Is Entitled To “Embrace An Ultimate Issue.” ......................... 4

C.

“Resulted From” And “Related To” Are Not Terms Of Art. ..................... 5

D.

Dr. Pazzani Does Not Conflate The Terms “Resulting
From” And “Related To.” ......................................................................... 7

II.

DR. KONIG’S WORK AT SRI IS NOT IN DISPUTE AND IS
BASED IN EVIDENCE REVIEWED BY DR. PAZZANI................................... 8

III.

GOOGLE’S REMAINING ISSUES ARE A BASIS, AT BEST,
FOR CROSS-EXAMINATION, NOT EXCLUSION......................................... 10

CONCLUSION ......................................................................................................................... 12

i

TABLE OF AUTHORITIES
Page(s)
CASES
Applera Corp.-Applied Biosys. Grp. v. Illumina, Inc.,
Civ. A. No. 07-2845, 2008 WL 170597 (N. D. Cal. Jan. 17, 2008) ........................................ 6
Berckeley Inv. Group, Ltd. v. Colkitt,
455 F.3d 195 (3d Cir. 2006) .................................................................................................. 4
Breidor v. Sears, Roebuck and Co.,
722 F.2d 1134 (3d Cir. 1983)............................................................................................. 2, 9
Carnegie Mellon University v. Marvell Technology Group, Ltd.,
No. 09-cv-290, 2012 WL 5409793 (W.D. Pa. Nov. 6, 2012)...................................... 1, 10, 11
Centricut, LLC v. Esab Group, Inc.,
390 F.3d 1361 (Fed. Cir. 2004).............................................................................................. 3
Daubert v. Merrell Dow Pharm., Inc.,
509 U.S. 579 (1993) ..................................................................................................... Passim
Dwyer ex rel. Dwyer v. Sec. of Health and Human Serv’s,
No. 03-cv-1212, 2010 WL 892250 (Fed. Cl. 2010) .............................................................. 11
Enreach Tech. Inc. v. Embedded Internet Solutions, Inc.,
403 F. Supp. 2d 968 (N.D. Cal. 2005).................................................................................... 6
FedEx Ground Package Sys., Inc. v. Applications Int’l,
695 F. Supp. 2d 216 (W.D. Pa. 2010) ................................................................................ 2, 3
Heller v. Shaw Indus., Inc.,
167 F.3d 146 (3d Cir. 1999) .................................................................................................. 8
ID v. Cumberland Valley School District,
No. 1:03-cv-1874, 2005 WL 6782653 (M.D. Pa. Oct. 5, 2005) .............................................. 4
In re Paoli R.R. Yard PCB Litig.,
35 F.3d 717 (3d Cir. 1994) .............................................................................................. 2, 10
In re TMI Litig.,
193 F.3d 613 (3d Cir. 1999) .............................................................................................. 2, 8
Kapche v. Holder,
677 F.3d 454 (D.C. Cir. 2012) ............................................................................................... 6

ii

Lapsley v. Xtek, Inc.,
689 F.3d 802 (7th Cir. 2012) ............................................................................................. 7, 8
Main Street Mortgage, Inc. v. Main Street Bancorp., Inc.,
158 F. Supp. 2d 510 (E.D. Pa. 2001)...................................................................................... 8
Marcavage v. Bd. of Trs. of Temple Univ. of Commonwealth Sys. of Higher Educ.,
232 F. App’x 79 (3d Cir. 2007) ............................................................................................. 6
Microsoft Corp. v. Motorola,
No. C10–1823JLR, 2013 WL 4008822 (W.D. Wash. Aug. 5, 2013) .................................. 5, 6
Pineda v. Ford Motor Co.,
520 F.3d 237 (3d Cir. 2008) .................................................................................................. 2
Schieber v. City of Philadelphia,
No. 98-cv-5647, 2000 WL 1843246 (E.D. Pa. Dec. 13, 2000)............................................ 2, 4
Snellman v. Ricoh Co.,
862 F.2d 283 (Fed. Cir. 1988)................................................................................................ 4
Stecyk v. Bell Helicopter Textron, Inc.,
295 F.3d 408 (3d Cir. 2002) ............................................................................................ 9, 10
Symbol Tech., Inc. v. Opticon, Inc.,
935 F.2d 1569 (Fed. Cir. 1991).............................................................................................. 9
United States v. Jefferson,
623 F. Supp. 2d 683 (E.D. Va. 2009) ................................................................................. 7, 8
United States v. McIver,
470 F.3d 550 (4th Cir. 2006) ............................................................................................. 7, 8
Whelan Assocs. Inc. v. Jaslow Dental Labs., Inc.,
797 F.2d 1222 (3d Cir. 1986)................................................................................................. 3
Williams v. Illinois,
132 S.Ct. 2221 (2012) ........................................................................................................... 8
STATUTES
California Labor Code § 2870 ........................................................................................... Passim
OTHER AUTHORITIES
BLACK’S LAW DICTIONARY 1511 (8th ed. 2004) .......................................................................... 6
Federal Rule of Evidence 702...................................................................................................... 2

iii

Federal Rule of Evidence 703.................................................................................................... 10
Federal Rule of Evidence 704...................................................................................................... 4
Federal Rule of Evidence 705.................................................................................................... 10

iv

SUMMARY OF ARGUMENT
Google’s Daubert Motion to Exclude Certain Opinions of Dr. Michael Pazzani (D.I. 552)
should be denied.

None of Google’s arguments are accurate or valid reasons to exclude

Dr. Pazzani’s opinions comparing and contrasting the technology Dr. Konig worked on at SRI,
the technologies SRI was developing during the time of Dr. Konig’s employment, and the
technology underlying the patents-at-issue in this case.
First, Google argues Dr. Pazzani offers legal opinions. Not so. Dr. Pazzani does not
explain or even make reference to the applicability of California Labor Code § 2870. Instead,
Dr. Pazzani makes technical comparisons between the technology he understands Dr. Konig
worked on while at SRI, the technologies SRI was developing at that time, and the patented
technologies. Dr. Pazzani bases that opinion on his thirty years of experience studying, teaching,
and practicing computer science, including machine learning, and his study of the technologies at
issue here. Thus, Dr. Pazzani provides a technical, not legal, opinion.
Second, Google incorrectly asserts that Dr. Pazzani’s opinions as to Dr. Konig’s research
at SRI are without factual basis. But there has never been a dispute that Dr. Konig’s work at SRI
concerned speech recognition and speaker verification. Dr. Pazzani’s opinion is that, based on
his expertise, speech recognition and speaker verification technology are significantly different
from, and could not result in, the Internet personalization technology described in patents-atissue. That testimony will be helpful to the jury in sorting through the issues relating to Google’s
breach of contract claim in this case.
Finally, Google’s assertion that Dr. Pazzani did not consider all of the evidence Google
believes to be relevant, or made incorrect assumptions, is a matter for cross-examination, not
exclusion.

1

ARGUMENT
Rejection of expert testimony is the exception rather than the rule. See Pineda v. Ford
Motor Co., 520 F.3d 237, 243 (3d Cir. 2008) (“The Rules of Evidence embody a strong
preference for admitting any evidence that may assist the trier of fact.”). Federal Rule of
Evidence 702, which governs the admissibility of expert testimony, is a rule of flexibility that
“has a liberal policy of admissibility.” Id. This is because “[v]igorous cross-examination,
presentation of contrary evidence, and careful instruction on the burden of proof are the
traditional and appropriate means of attacking shaky but admissible evidence.” Daubert v.
Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993). “Where there is a logical basis for an
expert’s opinion testimony, the credibility and weight of that testimony is to be determined by
the jury, not the trial judge.” Breidor v. Sears, Roebuck and Co., 722 F.2d 1134, 1138 (3d Cir.
1983).
“An expert’s testimony is admissible so long as the process or technique the expert used
in formulating the opinion is reliable.” Pineda, 520 F.3d at 244. A party does not have to prove
that its expert’s proposed opinion is correct. In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 742
(3d Cir. 1994) (“The evidentiary requirement of reliability is lower than the merits standard of
correctness.”); see also In re TMI Litig., 193 F.3d 613, 665 (3d Cir. 1999) (“[T]he standard for
determining reliability is not that high.”).
I.

DR. PAZZANI DOES NOT OFFER LEGAL OPINIONS.
Contrary to Google’s argument, Dr. Pazzani does not offer legal opinions.

Courts in the

Third Circuit define a legal opinion as: explaining the law for the jury or how it should apply, see
FedEx Ground Package Sys., Inc. v. Applications Int’l, 695 F. Supp. 2d 216, 221-222 (W.D. Pa.
2010); stating what is required under the law, id.; or opining whether a law has been violated,
Schieber v. City of Philadelphia, No. 98-cv-5647, 2000 WL 1843246, at *8 (E.D. Pa. Dec. 13,
2

2000). Dr. Pazzani does not provide such legal opinions, but instead offers technical opinions
based on his review of the technologies at issue in this case.
A.

Dr. Pazzani’s Opinions Are Technical And Do Not Turn On
California Law.

Although Google complains that Dr. Pazzani’s report references California Labor Code
§ 2870, Google cannot and does not point to any opinion in Dr. Pazzani’s report stating how or if
California Labor Code § 2870 applies. Dr. Pazzani does not explain, interpret, or apply that
statute and therefore could not usurp this Court’s role in explaining it. This is not a case where a
significant portion of Dr. Pazzani’s report references and applies case law and statutes. See, e.g.,
FedEx Ground Package Sys., Inc., 695 F. Supp. 2d at 221-222 (court found expert usurped its
role by opining on improper legal conclusions when expert repeatedly opined on what was
required under law).
Rather than opine on law, Dr. Pazzani opines on technology. He compares and contrasts
the technologies on which Dr. Konig worked while employed by SRI, other technologies being
developed by SRI during Dr. Konig’s time of employment, and the technologies that underlie the
patents-at-issue in this case. Despite moving to exclude Dr. Pazzani’s testimony, Google does
not claim these complex technologies will be “easily understandable without the need for expert
explanatory testimony.” Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir.
2004) (“[I]n this case the technology involved was complex.”); see also Whelan Assocs. Inc. v.
Jaslow Dental Labs., Inc., 797 F.2d 1222, 1232–33 (3d Cir. 1986) (“[E]xpert testimony is
essential to even the most fundamental understanding of” computer programs at issue in
infringement case.).
Dr. Pazzani’s opinions exist independent of whatever the legal standard may be. Rather
than base his opinions on an interpretation of the California statute, Dr. Pazzani bases his

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opinions on his experience, technical expertise, and review of these complex technologies.
Pazzani Report ¶¶ 573-79. Whether research in speech recognition and speaker verification
technology could give rise to, lead to, or otherwise result in Internet search personalization
technology covered by the asserted patents is a technical issue; as is whether the other
technologies that SRI actively developed during the time of Dr. Konig’s employment are related
to Internet search personalization technology. For these purely technical matters, Dr. Pazzani’s
opinions will assist the jury which would otherwise have no meaningful way to compare the
complex technologies at issue.
B.

Dr. Pazzani Is Entitled To “Embrace An Ultimate Issue.”

At most, Dr. Pazzani’s determinations could be characterized as embracing ultimate
issues. But Federal Rule of Evidence 704 allows Dr. Pazzani to do so. See Fed. R. Evid. 704
(“[A]n opinion is not objectionable just because it embraces an ultimate issue.”); see also
Berckeley Inv. Group, Ltd. v. Colkitt, 455 F.3d 195, 217-18 n.23 (3d Cir. 2006) (citation and
quotations omitted) (discussing advisory note to Rule 704); Snellman v. Ricoh Co., 862 F.2d 283,
287 (Fed. Cir. 1988) (“[E]xpert testimony is admissible . . . to give an opinion on the ultimate
question of infringement”).
Other courts in the Third Circuit have also allowed experts to testify as to “ultimate
issues” so long as they do not cross the line to opine whether a legal test has been satisfied. See,
e.g., ID v. Cumberland Valley School District, No. 1:03-cv-1874, 2005 WL 6782653, at *4-5
(M.D. Pa. Oct. 5, 2005) (allowing expert to opine what steps a school district should have taken
in providing child with free and appropriate public education and that services offered to student
were not appropriate, but not allowing expert to opine whether school district violated law by not
providing free and appropriate public education); Schieber, 2000 WL 1843246, at *8 (allowing
expert to opine that police officers were not adequately trained to enter homes in exigent
4

circumstances, that City’s approach was inferior to other cities, and that department promoted
systemic practices of downgrading rapes, which had an effect on police responding to rescue
calls, but not allowing expert to take final step to testify that police officers’ actions were
constitutional violations).
More recently, in Microsoft Corp. v. Motorola, No. C10–1823JLR, 2013 WL 4008822, at
*19 (W.D. Wash. Aug. 5, 2013), the district court allowed an expert witness to testify “as to the
ultimate issue—breach of the good faith obligation,” because it was a “complicated case” and the
expert’s “opinion, which pieces together the evidence heard by the jury into an opinion on the
issue of good faith” would “assist the trier of fact in reaching its own decision on the issue of
good faith.” Id. The district court did not allow the expert to opine, however, that by not
breaching that obligation Motorola had met its statutory obligations because doing so “goes too
far in that it intertwines a legal conclusion” with the expert opinion on good faith. Id. at *20.
Under this test, Dr. Pazzani offers admissible opinions that (1) speech recognition or
speaker verification research could not result in the patented Internet search personalization
technology and that (2) SRI’s research during that time did not relate to the patented technology.
These opinions are directed to the complex technology and not Section 2870 and thus are
admissible.

PUM agrees that Dr. Pazzani cannot testify that the respective provisions of

California Labor Code § 2870 do not apply. That would “go too far.” Instead, having heard
Dr. Pazzani’s testimony, it will be for the jury to decide whether those provisions are met
consistent with whatever instruction the jury receives from the Court.
C.

“Resulted From” And “Related To” Are Not Terms Of Art.

Dr. Pazzani’s use of the same terms (“resulted from” and “related to”) found in the
California statute, also does not render his opinions inadmissible. The Third Circuit has made
clear that an expert can testify as to the ultimate issue even when doing so includes the use of
5

terminology that tracks the language found in the law. For example, in Marcavage v. Bd. of Trs.
of Temple Univ. of Commonwealth Sys. of Higher Educ., the Third Circuit held that a district
court properly admitted a psychologist’s expert opinion that a university official acted
“reasonably”—one of the ultimate issues at trial—because the expert had vast experience in the
subject matter and the opinion would assist the trier of fact. 232 F. App’x 79, 85 (3d Cir. 2007).
This disputed opinion was admissible to assist the jury in deciding the reasonableness of the
university official’s actions, including, specifically, whether the official’s conduct was grossly
negligent or willful. Id.; see also Motorola, 2013 WL 4008822, at *19 (allowing testimony as to
whether party acted in “good faith”); Lapsley v. Xtek, Inc., 689 F.3d 802, 816 (7th Cir. 2012)
(upholding admission of expert opinion about “reasonable care in design,” which included an
element of foreseeability under Indiana law); United States v. McIver, 470 F.3d 550, 562 (4th
Cir. 2006) (upholding admission of expert medical testimony that particular doctor’s conduct
was “illegitimate,” “inappropriate,” and “way outside the course of legitimate medical treatment”
because those words fell into “limited vernacular that is available” to express medical
malpractice); United States v. Jefferson, 623 F. Supp. 2d 683, 687-688 (E.D. Va. 2009) (allowing
expert opinion that used words that tracked language in applicable bribery statue, like “routinely
performed,” “decision,” “official act,” and “settled practice,” because they are words within
limited vernacular available to express issues in case).
Although the terms “resulting from” and “related to” are used in the statute, they are not
terms of art.

See Kapche v. Holder, 677 F.3d 454, 464 (D.C. Cir. 2012) (finding expert

testimony did not constitute impermissible legal conclusion because expert “did not use terms
that have a separate, distinct and specialized meaning in the law different from that present in the
vernacular”); BLACK’S LAW DICTIONARY 1511 (8th ed. 2004) (defining “term of art” as “a word

6

or phrase having a specific, precise meaning in a given specialty, apart from its general meaning
in ordinary contexts”).1 Those terms are readily understood by the jury and properly used by
Dr. Pazzani to express comparisons and relationships between the different technologies.
Indeed, “related to” and “resulting from” are terms within the “limited vernacular” available to
compare the technologies. See Lapsley, 689 F.3d at 816; McIver, 470 F.3d at 562; Jefferson, 623
F. Supp. 2d at 687-688. At most, Dr. Pazzani “simply [gives] his opinion as to facts that, if
found, would [not] support a conclusion that the legal standard at issue was satisfied.” Kapche,
677 F.3d at 464.
Google argues the term “related to” is subject to particular interpretations set forth in
California case law.

Opening Br. (D.I. 553) at 7. Google does not assert, however, that

Dr. Pazzani’s testimony is inconsistent with those interpretations. Nor does Google offer any
“particular interpretation” of that term other than asserting that it is interpreted “broadly.”
Contrary to Google’s assertions, Dr. Pazzani is not seeking to testify about “interpretive
principles,” but rather opines—using commonly understood terms—about the relationships
between certain technologies.

To the extent Google believes Dr. Pazzani’s opinions are

inconsistent with California law, however, that is a matter for cross-examination, not exclusion.
D.

Dr. Pazzani Does Not Conflate The Terms “Resulting From”
And “Related To.”

Google also incorrectly argues that Dr. Pazzani conflates the “resulting from” and
“relating to” language in the California statute. See D.I. 553 at 7, 10-12. To the contrary,

1

See also Applera Corp.-Applied Biosys. Grp. v. Illumina, Inc., Civ. A. No. 07-2845, 2008
WL 170597, at *4 (N.D. Cal. Jan. 17, 2008) (noting jury could find invention did not
related to employer’s business); Enreach Tech. Inc. v. Embedded Internet Solutions, Inc.,
403 F. Supp. 2d 968, 975 (N.D. Cal. 2005) (finding “material fact dispute” whether
invention falls within § 2870).

7

Dr. Pazzani makes separate opinions in his conclusion about whether the patented technology
resulted from Dr. Konig’s work at SRI or related to SRI existing or anticipated business. Pazzani
Report ¶ 586 (“the inventions in the patents-in-suit did not result from Dr. Konig’s work at SRI
nor were they related to any other work SRI was doing or then contemplated.”). To the extent
Google still perceives error in such semantics, however, Google will have the opportunity to
cross-examine Dr. Pazzani on whether there can be a “resulting from” relationship between
unrelated technologies and can present any purported flaws at trial for the jury to weigh.
II.

DR. KONIG’S WORK AT SRI IS NOT IN DISPUTE AND IS
BASED IN EVIDENCE REVIEWED BY DR. PAZZANI.
Google argues that Dr. Pazzani’s testimony should be excluded because he made

supposedly unsupported assumptions that Dr. Konig worked on speech recognition and speaker
verification research at SRI and used common machine learning tools. D.I. 553 at 8. The Third
Circuit has instructed that a district court should exclude evidence only if the flaws are
significant enough that the expert lacks “good grounds” for his conclusion. In re TMI Litigation,
193 F.3d at 677; Main Street Mortgage, Inc. v. Main Street Bancorp., Inc., 158 F. Supp. 2d 510,
513-14 (E.D. Pa. 2001). To determine whether “good grounds” are present, courts examine the
expert’s conclusions to see “whether they could reliably flow from the facts known to the expert
and methodology used.”

Heller v. Shaw Indus., Inc., 167 F.3d 146, 153 (3d Cir. 1999).

Applying that test here, there is no basis to exclude Dr. Pazzani’s testimony.
First, Google has never disputed the fact that Dr. Konig’s work at SRI involved speech
recognition and speaker verification. That fact makes Google’s challenge of Dr. Pazzani’s
“understanding” curious at best.
Second, contrary to Google’s assertion, Dr. Pazzani had a sufficient basis in facts and
evidence for his understanding that Dr. Konig worked on speech recognition and speaker

8

verification. In particular, as Dr. Pazzani indicates in his report, he spoke with Dr. Konig. He
also reviewed publications relating to Dr. Konig's speech recognition research, Dr. Konig’s SRI
files including, Dr. Konig's email, and reviewed the deposition transcripts of SRI corporate
designees and employees, including, the deposition transcripts of Raymond Perrault, Kemal
Sonmez, Douglas Bercow, Horacio Franco, and Andreas Stolcke. See Pazzani Report, Ex. B
(attached hereto as Ex. 1). Moreover, the testimony Dr. Konig provides at trial will support Dr.
Pazzani’s understanding.
Dr. Pazzani’s testimony is consistent with “a long tradition” in American courts
permit[ting] an expert to testify in the form of a “hypothetical question,” where the expert
assumes the truth of factual predicates and then offers testimony based on those assumptions.
Williams v. Illinois, 132 S.Ct. 2221, 2234 (2012). “Modern rules of evidence continue to permit
experts to express opinions based on facts about which they lack personal knowledge,” allowing
an expert to “base an opinion on facts that are ‘made known to the expert at or before the
hearing.’” Id.
But in any event, challenges to Dr. Pazzani’s understanding of what Dr. Konig worked on
at SRI have no effect on Dr. Pazzani’s opinion that speech recognition and speaker verification
research did not result in the patented technologies in this case. See Pazzani Report ¶ 580
(“Personalized user search is no more related to speech recognition and speaker verification than
are medical diagnosis or computational science that may use machine learning techniques.”).
Google’s argument ignores that “the full burden of exploration of the facts and
assumptions underlying the testimony of an expert witness [is] squarely on the shoulders of
opposing counsel’s cross-examination.” Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569,
1575 (Fed. Cir. 1991) (quoting Smith v. Ford Motor Co., 626 F.2d 784, 793 (10th Cir. 1980)). If

9

Google wants to challenge the “facts and assumptions underlying” Dr. Pazzani’s testimony,
notwithstanding the fact that Google itself does not dispute those assumptions, the Third Circuit
has made clear that “[a] party confronted with an adverse expert witness who has sufficient,
though perhaps not overwhelming, facts and assumptions as the basis for his opinion can
highlight those weaknesses through effective cross-examination.” Stecyk v. Bell Helicopter
Textron, Inc., 295 F.3d 408, 414 (3d Cir. 2002).
III.

GOOGLE’S REMAINING ISSUES ARE A BASIS, AT BEST, FOR
CROSS-EXAMINATION, NOT EXCLUSION.
Google also argues that Dr. Pazzani failed to consider certain evidence that Google

considers to be relevant.

D.I. 553 at 8-10, 12-14.

But under Daubert, 509 U.S. at 596,

determinations regarding the weight to be afforded an expert’s conclusions, and the sufficiency
of the evidence relied upon by the proffered expert, are within the sole province of the jury. See
Breidor v. Sears, Roebuck & Co., 722 F.2d 1134, 1138–39 (3d Cir. 1983) (“Where there is a
logical basis for an expert’s opinion testimony, the credibility and weight of that testimony is to
be determined by the jury, not the trial judge.”). What Dr. Pazzani did and did not rely on in
making his determinations goes to the weight that the jury should afford his testimony. See
Stecyk v. Bell Helicopter Textron, Inc., 295 F.3d 408, 414 (3d Cir. 2002) (“Rule 705, together
with Rule 703, places the burden of exploring the facts and assumptions underlying the
testimony of an expert witness on opposing counsel during cross-examination.”). Google’s
remaining contentions can be raised on cross-examination, and, to the extent Dr. Pazzani did not
consider certain evidence, that evidence can also be presented at trial.
For example, Google asserts that Dr. Pazzani did not consider or discuss “Bayesian
statistics” and “Markov models” allegedly appearing in the Asserted Patents; certain power
points purportedly showing the patented inventions did result from Dr. Konig’s speech research

10

at SRI;2 SRI’s purported activities in the field of internet search; and the deposition of Doug
Bercow. See D.I. 553 at 405, 8-9. Google also argues Dr. Pazzani uses the wrong date when
Dr. Konig’s work ended.3 See id. at 13-14. These purported omissions, however, do not change
that fact that Dr. Pazzani had reliable bases and reasons to make his determination. PUM need
not demonstrate by a preponderance of the evidence that Dr. Pazzani’s opinions are correct, but
only that they are reliable. In re Paoli R.R. Yard PCB Litig. 35 F.3d 717, 744 (3d Cir. 1994).
Google can raise allegedly non-considered evidence that Google maintains weakens
Dr. Pazzani’s opinion on cross-examination. Daubert, 509 U.S at 596.
Other courts in this Circuit have held that whether an expert failed to consider additional
or contradictory evidence is a basis for cross examination, not exclusion. For example, in
Carnegie Mellon University v. Marvell Technology Group, Ltd., No. 09-cv-290, 2012 WL
5409793, at *2 (W.D. Pa. Nov. 6, 2012), plaintiff argued that defendant’s expert did not consider
alternatives with supporting evidence and that the court found both parties “pointed to evidence
that contradicts or supports [the expert’s] opinions.” The court there, however, determined that
such disputes regarding the “weaknesses in the testimony . . . are properly resolved at the trial
itself on the basis of evidence and cross-examination.” Id. (citations omitted) (citing Daubert).
The court, then, did not preclude the expert’s testimony, despite perceived weaknesses in her
opinion. Id.
Google points to Dwyer ex rel. Dwyer v. Sec. of Health and Human Serv’s, No. 03-cv1212, 2010 WL 892250, at *148 (Fed. Cl. 2010), for the proposition that Dr. Pazzani’s opinion is
2

Contrary to Google’s argument, Dr. Pazzani did address an “early UTOPY white paper”
in paragraph 580 of his report.

3

Notably, Google fails to explain how Dr. Pazzani’s inadvertent reference to a December,
1999 versus August 1999 date affects the reliability of Dr. Pazzani’s opinions in any way.

11

unreliable because he did not consider “contrary data.” In Dwyer, however, the court not only
found a pattern of ignoring “prominent data,” but also found that the expert “misstate[d] the
findings of others, ma[de] sweeping statements without support, and cite[d] papers that do not
provide the support asserted.” Id. Here, there are no such allegations to render unreliable the
entirety of Dr. Pazzani’s opinion on how Dr. Konig’s work at SRI related to or resulted from the
patents at issue. Nor does Google point to contrary data to support the opposite conclusion that
Dr. Konig’s work at SRI did relate to or result in the patented technology. Accordingly, if
Google believes Dr. Pazzani’s opinions are made in error, then Google has the opportunity to
scrutinize Dr. Pazzani’s testimony at trial.
CONCLUSION
For the foregoing reasons, the Court should deny Google’s Daubert Motion to Exclude
Certain Opinions of Dr. Pazzani.
MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Regina Murphy

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]

_________________________________________
Karen Jacobs (#2881)
Jeremy A. Tigan (#5239)
Regina 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

12

Jennifer D. Bennett
DENTONS US LLP
1530 Page Mill Road, Suite 200
Palo Alto, CA 94304-1125
[phone]
Andrew M. Grodin
DENTONS US LLP
101 JFK Parkway
Short Hills, NJ 07078
[phone]
February 10, 2014

13

CERTIFICATE OF SERVICE
I hereby certify that on February 10, 2014, I caused the foregoing to be
electronically filed with the Clerk of the Court using CM/ECF which will send electronic
notification of such filing to all registered participants.
Additionally, I hereby certify that true and correct copies of the foregoing were
caused to be served on February 10, 2014, upon the following individuals in the manner
indicated:
BY E-MAIL

BY E-MAIL

Richard L. Horwitz
David E. Moore
POTTER ANDERSON & CORROON LLP
1313 N. Market St., 6th Floor
Wilmington, DE 19801

Brian C. Cannon
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, CA 94065
Charles K. Verhoeven
David A. Perlson
Antonio R. Sistos
Andrea Pallios Roberts
Joshua Lee Sohn
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111

/s/ Regina Murphy
___________________________
Regina Murphy (#5648)