IpLearn LLC v. Blackboard Inc.

Filing 262

MEMORANDUM ORDER Deferring in Part and Denying in Part 159 MOTION to Exclude (see Memorandum Order for further details). Signed by Judge Richard G. Andrews on 10/2/2014. (nms)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

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IPLEARN, LLC,
Plaintiff,
C.A. No. 11-876 (RGA)

v.

BLACKBOARD INC.,
Defendant.

MEMORANDUM ORDER

Before the Court is Plaintiffs Daubert Motion to Exclude Portions of the Expert
Testimony of Dr. Kris Jamsa and Dr. Douglas Clark. (D.I. 159). It is fully briefed. (D.I. 159,
218, 243). For the reasons stated below, it will be DEFERRED IN PART and DENIED IN
PART.

This motion is a Daubert motion. Federal Rule of Evidence 702 states:
A witness who is qualified as an expert by knowledge, skill, experience, training, or
education may testify in the form of an opinion or otherwise if: (a) the expert's scientific,
technical, or other specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or
data; (c) the testimony is the product of reliable principles and methods; and (d) the
expert has reliably applied the principles and methods to the facts of the case.
The Court of Appeals has explained:
Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability
and fit. Qualification refers to the requirement that the witness possess specialized
expertise. We have interpreted this requirement liberally, holding that "a broad range of
knowledge, skills, and training qualify an expert." Secondly, the testimony must be
reliable; it "must be based on the 'methods and procedures of science' rather than on
'subjective belief or unsupported speculation'; the expert must have 'good grounds' for
his on her belief. In sum, Daubert holds that an inquiry into the reliability of scientific
evidence under Rule 702 requires a determination as to its scientific validity." Finally,

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Rule 702 requires that the expert testimony must fit the issues in the case. In other
words, the expert's testimony must be relevant for the purposes of the case and must
assist the trier of fact. The Supreme Court explained in Daubert that "Rule 702's
'helpfulness' standard requires a valid scientific connection to the pertinent inquiry as a
precondition to admissibility."

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By means of a so-called "Daubert hearing," the district court acts as a gatekeeper,
preventing opinion testimony that does not meet the requirements of qualification,
reliability and fit from reaching the jury. See Daubert ("Faced with a proffer of expert
scientific testimony, then, the trial judge must determine at the outset, pursuant to Rule
104(a) [of the Federal Rules of Evidence] whether the expert is proposing to testify to (1)
scientific knowledge that (2) will assist the trier of fact to understand or determine a fact
in issue.").

Schneider ex rel. Estate ofSchneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003). 1
Plaintiffs Motion seeks to exclude testimony from Defendant's invalidity expert, Dr.
Kris Jamsa, because he did not know that 35 U.S.C. § 282 presumed patents are valid and that
invalidity is proven by clear and convincing evidence, and because portions of his expert report
were prepared in collaboration with others. (D.I. 159 at pp.1-2). Plaintiffs Motion also seeks to
exclude testimony from Defendant's non-infringement expert, Dr. Douglas Clark, because he
used his own constructions of the asserted method claims that are inconsistent with the Court's
constructions. (D.I. 159 at p.2).

1. Dr. Jamsa
Plaintiff contends that Defendant's invalidity expert Dr. Jamsa should be precluded from
testifying because he did not use the clear and convincing standard or the presumption of
validity. (D.I. 159 at pp.3-5). Defendant counters that Dr Jamsa's failure to offer opinions on
legal standards has no legal relevance because that is not the role of the expert. (D.I. 218 at 1112). This Court agrees with Defendant.

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The Court of Appeals wrote under an earlier version of Rule 702, but the recent amendments to
it were not intended to make any substantive changes.
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Plaintiff has provided no legal support for the proposition that expert testimony on patent
invalidity must be based on clear and convincing evidence that presumes the validity of the
patent. (See D.I. 159 at p.3). 2 Instead, clear and convincing evidence is used to overcome a
patent's presumption of validity to persuade a factfinder, normally a jury, that the patent is
invalid. See generally Microsoft Corp. v. i4i Ltd Partnership, 131 S. Ct. 2238 (2011). The
Federal Circuit has explained: "The challenged patent enjoys a presumption of validity, and the
challenger must convince a third-party decision maker of the patent's invalidity by clear and
convincing evidence. And, in litigation, all relevant evidence is presented to the fact finder in a
single proceeding." In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litigation, 676 F.3d 1063, 1080 n.7 (Fed. Cir. 2012) (citations omitted). Such evidence might
include expert opinion.
The cases cited on page 5 of Plaintiffs brief and pages 4-5 of Plaintiffs reply brief
broadly support the proposition that an expert cannot base a decision on incorrect legal
standards, not that an expert must use the clear and convincing standard for his or her opinions
on patent invalidity. (See D.I. 159 at p.5; D.I. 243 at pp.4-5). 3 It appears that Plaintiff is

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In the legal standard section of its brief, Plaintiff cites Intellectual Ventures I LLC v. Xilinx,
Inc., 2014 WL 1814384, at *2 (D. Del. Apr. 14, 2014), which explains that a party bears the
burden of proving that its expert testimony is reliable. Reliability does not depend on whether
the burden of proof is "preponderance of the evidence," "clear and convincing," or "beyond a
reasonable doubt."
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Plaintiffs attorneys, whose candor is to be commended, cite in the reply brief a recent decision
from the Eastern District of Wisconsin that undercuts Plaintiffs argument. See Formax, Inc. v.
Alkar-Rapidpak-MP Equip., Inc., 2014 WL 3057116, at *2-3 (E.D. Wis. July 7, 2014) ("At trial,
the question will be whether the jury is convinced by clear and convincing evidence-not
whether [the expert] is. Presumably many experts are convinced by clear and convincing
evidence--or even beyond a reasonable doubt--of their own opinions. . .. Thus, to the extent
[the expert] attempts to reach legal conclusions, those conclusions will be irrelevant in any event.
What's important is his expertise and whether he can demonstrate to the jury, which will be
instructed in the substantive law as well as the burden of proof."). I think the Formax court is
exactly right.
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implying that if an expert does not use the clear and convincing standard and the presumption of
validity, she has based her testimony on incorrect legal standards. Clear and convincing
evidence and the presumption of validity are not standards required of expert opinion on
invalidity, but standards used by a factfinder. These are legal concepts that are for jury
determinations, not for expert witnesses. This Court agrees with Defendant that Plaintiff has not
provided legal support for the argument that Dr. Jamsa did not apply the correct legal standards.
Plaintiff argues that because Dr. Jamsa deferred to counsel for his opinions on invalidity
pursuant to 35 U.S.C. § 112, and because portions of his report were written by counsel, his
opinions should be excluded. (D.I. 159 at pp.5-7). Plaintiff cites to deposition testimony where
Dr. Jamsa agreed that he deferred to counsel on§ 112 determinations. (D.I. 159 at pp.6-7; see
D.I. 159-2 at 33-35). Defendant responds that while Dr. Jamsa worked on his report as a
collaboration, he found many of the prior art references and spent "over 250 hours" on the case.
(D.I. 218 at 7; see D.I. 220 at 20). I am not convinced that these are Dr. Jamsa's opinions on the

§ 112 issues. I am quite sure that the legal citations (e.g., D.I. 159-3 at iii! 169, 170 and 175) are
not only not his, but to cases that he has not read. Therefore, I expect that I will exclude the
opinions in paragraphs 146-76 and 1568-71 of the report. I will, however, give Defendant an
opportunity before trial to show that the§ 112 opinions are indeed Dr. Jamsa's opinions. Upon
request of the Defendant made no later than October 7, 2014, the Court will schedule a hearing
where Dr. Jamsa can explain, and be cross-examined on, what he would testify about with
respect to § 112. Thus, I will defer final decision on the § 112 opinions.

2. Dr. Clark
Plaintiff argues that Defendant's non-infringement expert, Dr. Clark, "repeatedly reconstrued" the Court's construction of the terms "computer-aided" or "computer implemented."
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(D.I. 159 at pp.7-10). This Court construed "computer-aided/computer implemented" to mean
"each step of the method is performed by a computer." (D.I. 112 at 5). This Court explained
that construction:
The Court finds that the patents require that a computer performs the method. The
patents clearly explain that the invention is "applicable to any subject that can be taught
by a computer." (Col. 1 lines 66-67 of '208). However, while the recited method steps
must be performed by a computer, there may be some human involvement. Indeed,
certain steps specifically describe human involvement, for instance where "the method
allows the person to search." (Claim 9 of' 888). Furthermore, as the claims use the term
"comprising," additional steps may be performed without the use of a computer.
(D.I. 112 at 5).
Essentially, Plaintiff argues that Defendant focuses on the role of computers, all but
ignoring that human involvement is not prohibited by the claims. (D.I. 159 at pp.7-10).
Consistent with my construction, however, Dr. Clark does consider human involvement
elsewhere in his testimony. (D.I. 218 at 14; D.I. 220 at 131-32). The evidence cited by Plaintiff
about Defendant's re-construing the claims comes from his deposition testimony (D.I. 159 at
pp.8-9), not his expert report. The absence of any citation to Dr. Clark's expert report suggests
that at most, in the give and take of deposition, Dr. Clark may not have adhered perfectly to the
Court's construction. If that is so, and I am not convinced that it is, I do not think the remedy is
to exclude some portion of his testimony. Rather, counsel needs to make an appropriate
objection at the appropriate time during his testimony.
3. Conclusion
In sum, for the above reasons, the Plaintiffs motion is DEFERRED IN PART and
DENIED IN PART.

l)Jday of October, 2014.
Entered this st_
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United States District Judge

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