AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.

Filing 124

MOTION to Strike #118 MOTION for Summary Judgment and Permanent Injunction MOTION for Permanent Injunction by PUBLIC.RESOURCE.ORG, INC. (Attachments: #1 Memorandum in Support [Redacted], #2 Declaration of Kathleen Lu, #3 Exhibit 1 to Lu Declaration, #4 Exhibit 2 to Lu Declaration, #5 Exhibit 3 to Lu Declaration, #6 Exhibit 4 [Redacted] to Lu Declaration, #7 Exhibit 5 to Lu Declaration, #8 Exhibit 6 [Redacted] to Lu Declaration, #9 Exhibit 7 to Lu Declaration, #10 Exhibit 8 [Redacted] to Lu Declaration, #11 Text of Proposed Order)(Bridges, Andrew)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a ASTM INTERNATIONAL;

Case No. 1:13-cv-01215-TSC

NATIONAL FIRE PROTECTION ASSOCIATION,
INC.; and

MEMORANDUM OF LAW IN
SUPPORT OF DEFENDANTCOUNTERCLAIMANT
PUBLIC.RESOURCE.ORG’S
MOTION TO STRIKE JAROSZ
REPORT

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR CONDITIONING
ENGINEERS,
Plaintiffs-Counterdefendants,
v.
PUBLIC.RESOURCE.ORG, INC.,

(EXHIBIT 1 TO DECLARATION OF
JORDANA S. RUBEL)
REDACTED VERSION

Defendant-Counterclaimant.
Action Filed: August 6, 2013

TABLE OF CONTENTS
Page
INTRODUCTION ...........................................................................................................................1
ARGUMENT ...................................................................................................................................2
I.

Expert testimony must Meet the Standards of Rule 702 and Daubert. ...................2

II.

MR. Jarosz IS NOT QUALIFIED TO Opine on the Motivations of
Standards Development Organizations or on the REGULATORY
PROCESS. ...............................................................................................................4

III.

Jarosz Improperly Acts as a Mouthpiece for Plaintiffs, Their Counsel,
and Their Outside Advocates. ..................................................................................6

IV.

Jarosz’s Opinions on the Law, Public Policy, AND PLAINTIFFS’
MOTIVATIONS Invade the Province of the Court. ...............................................8

V.

Jarosz’s Broad Conclusions Rest on Unsupported Assumptions. ...........................9
A.

Jarosz Made No Attempt To Quantify The Effects He
Predicted, Leaving His Conclusions of “Likely” Outcomes
Without Foundation. ..................................................................................10

B.

Jarosz Assumes, Without Support, That Plaintiffs Cannot Profit
From Sales of Publications Without A Monopoly On Selling
Standards Incorporated Into Law. ..............................................................11

C.

Jarosz Incorrectly Equates the Incorporated Standards at Issue
with All of Plaintiffs’ Publications. ...........................................................11

D.

Jarosz Blindly Relied on Unreliable and Misleading Statistics
from Plaintiffs. ...........................................................................................13

E.

Jarosz Relied on Unreliable Sales “Data” and Failed to
Consider All Relevant Information. ...........................................................14

F.

Jarosz’s Opinion Is Unreliable Because It Considers Visits to
Public Resource Equal to Lost Sales. ........................................................18

G.

Jarosz’s Methodology Is Not Reliable for the Conclusions He
Draws. ........................................................................................................18

CONCLUSION ..............................................................................................................................19
RULE 37(A)(2) CERTIFICATE ...................................................................................................20

i

TABLE OF AUTHORITIES
Page(s)
Cases
Aguilar v. Int'l Longshoremen's Union Local No. 10,
966 F.2d 443, 447 (9th Cir. 1992) .............................................................................................8
Aventis Envt’l Science USA LP v. Scotts Co.,
383 F. Supp. 2d 488 (S.D.N.Y. 2005)........................................................................................3
Baker v. Urban Outfitters, Inc.,
254 F. Supp. 2d 346 (S.D.N.Y. 2003)....................................................................................5, 6
Brighton Collectibles, Inc. v. RK Texas Leather Mfg.,
923 F. Supp. 2d 1245 (S.D. Cal. 2013) ..............................................................................18, 19
Contractors Ass’n of E. Penn., Inc. v. City of Philadelphia,
893 F. Supp. 419 (E.D. Pa. 1995), aff’d, 91 F.3d 586 (3d Cir. 1996)....................14, 15, 16, 19
Cooper v. Brown,
510 F.3d 870 (9th Cir. 2007) .....................................................................................................3
Daubert v. Merrell Dow Pharm., Inc.,
509 U.S. 579 (1993) .........................................................................................................2, 3, 10
Dura Auto. Sys. of Indiana, Inc. v. CTS Corp.,
285 F.3d 609 (7th Cir. 2002) ...........................................................................................7, 8, 14
Gen. Elec. Co. v. Joiner,
522 U.S. 136 (1997) .................................................................................................................10
Interplan Architects, Inc. v. C.L. Thomas, Inc.,
No. 4:08-CV-03181, 2010 WL 4065465 (S.D. Tex. Oct. 9, 2010) ...........................................5
Kumho Tire Co. v. Carmichael,
526 U.S. 137 (1999) ...............................................................................................................3, 4
LifeWise Master Funding v. Telebank,
374 F.3d 917 (10th Cir. 2004) ...................................................................................................7
Loeffel Steel Prods., Inc. v. Delta Brands, Inc.,
387 F. Supp. 2d 794 (N.D. Ill. 2005) .......................................................................................13
Malletier v. Dooney & Bourke, Inc.,
525 F. Supp. 2d 558 (S.D.N.Y. 2007)......................................................................................19

ii

Meister v. Med. Eng’g Corp.,
267 F.3d 1123 ............................................................................................................................2
Mukhtar v. Cal. State Univ.,
299 F.3d 1053 (9th Cir. 2002), as amended 319 F.3d 1073 (9th Cir. 2003),
overruled in irrelevant part by Estate of Barabin v. AstenJohnson, Inc., 740 F.3d
457 (9th Cir. 2014) (en banc) .....................................................................................................3
Network Protection Sciences, LLC v. Fortinet, Inc.,
No. 3:12-cv-01106, 2013 WL 5402089 (N.D. Cal. Sept. 26, 2013) ........................................12
R.F.M.A.S., Inc.,
748 F. Supp. 2d at 259 .......................................................................................................15, 17
In re TMI Litig.,
193 F.3d 613 (3d Cir. 1999), as amended, 199 F.3d 158 (3d Cir. 2000)......................... passim
In re TMI Litig.,
193 F.3d at 665–66 ..............................................................................................................9, 14
Wheeling Pittsburgh Steel Corp. v. Beelman River Terminals, Inc.,
254 F.3d 706 (8th Cir. 2001) .....................................................................................................4
Zaremba v. GMC,
360 F.3d 355 (2d Cir. 2004).......................................................................................................3
Other Authorities
Fed. R. Civ. P. Rule 26(a)(2) ...........................................................................................................7
Fed. R. Civ. P. Rule 26(b)(4)(a).......................................................................................................7
Fed. R. Civ. P. Rule 30(b)(6) ...........................................................................................................6
Fed. R. Civ. P. 56(c) ........................................................................................................................2
Fed R. Evid. 701 ..........................................................................................................................2, 7
Fed. R. Evid. 701(c) .........................................................................................................................2
Fed. R. Evid. 702 ................................................................................................................... passim
Fed. R. Evid. 703 .............................................................................................................................2
Fed. R. Evid. 802 .............................................................................................................................2

iii

INTRODUCTION
Public Resource moves to strike Exhibit 1 to the Rubel Declaration in support of
Plaintiffs’ motion for summary judgment (ECF No. 118.12, Exhibit 1), the expert report of John
C. Jarosz (Jarosz Report), and the opinions and facts within it upon which Plaintiffs rely for their
Motion for Summary Judgment and Permanent Injunction, or any other purpose in this action.1
Mr. Jarosz’s report is based almost entirely on “facts” and conclusions provided to him
by the Plaintiffs, rather than his own investigation and expertise. Mr. Jarosz’s role in this
litigation is to act as a mouthpiece for Plaintiffs, putting the gloss of expert testimony on
Plaintiffs’ own opinions. While Mr. Jarosz has experience valuing patent licenses and royalties,
he has no education, training, or experience with standards development or drafting, standards
development organizations (SDOs), or incorporation by reference (IBR) of standards into law.
Consequently, he is not qualified to opine on those topics.
The Jarosz Report also makes a variety of public policy or legal arguments. The legal
principles in this case concern the right of Public Resource and the public to publish and speak
the law, including the subset of standards that, thanks to deliberate government action on behalf
of the people and with Plaintiffs’ encouragement, have become law. That legal issue is the
province of the Court and not appropriate for expert testimony.
Further, Mr. Jarosz methodology is profoundly flawed. For example, the economic
conclusions in the Jarosz Report conflate a variety of revenue streams, most of which relate to
documents that are not at issue in this case. This case is concerned solely with the incorporated
standards, not the many other standards Plaintiffs develop, much less their annotations, guides,
1

Specifically: Plaintiffs’ Memorandum of Law in Support of Motion for Summary Judgment
(ECF No. 118-1) at pp. 31:2–15, 40:3–8, 53:3–54:2, 55:7–9; 56:3–7, 57:7–9, 59:1–5; 59:8–60:2,
and n.7; Plaintiffs’ Statement of Material Facts (ECF No. 118-2) ¶¶ 59–60, 105, 151–159, 238–
239, 245–246, 250–254, 257–260, 262–273, 276.
1

training and other ancillary products. Public Resource has no interest in the other standards and
documents Plaintiffs help develop, and has no quarrel with Plaintiffs’ claiming and enforcing
copyrights on the various supplemental materials they produce. Because the Jarosz Report does
not distinguish between revenue generated from those products and revenue generated from the
incorporated standards, it is impossible to examine the reliability of his conclusions with respect
to the incorporated standards in this case.
Mr. Jarosz’s report is not based on any expertise in the relevant fields. It is replete with
methodological flaws, improper lay opinions and hearsay. Its conclusions are not based on valid
data or reasonable assumptions, and constitute legal opinions that invade the province of the
Court. Accordingly, the Court should strike the report before considering Plaintiffs’ motion for
summary judgment.
ARGUMENT
I.

EXPERT TESTIMONY MUST MEET THE STANDARDS OF RULE 702 AND
DAUBERT.
On summary judgment, the Court considers admissible evidence. Fed. R. Civ. P. 56(c).

Federal Rule of Evidence 701 precludes lay witnesses from expressing an opinion on “scientific,
technical, or other specialized knowledge.” Fed. R. Evid. 701(c). Rule 802 excludes hearsay,
although Rule 703 allows an expert to base his opinion on hearsay. Fed. R. Evid. 703 & 802.
Because the entirety of Mr. Jarosz’s report consists of his opinion testimony or hearsay from
others, it is not admissible unless: “(1) the testimony is based upon sufficient facts or data, (2)
the testimony is the product of reliable principles and methods, and (3) the witness has applied
the principles and methods reliably to the facts of the case.” Fed. R. Evid. 702. The party
offering the expert’s testimony must establish by a preponderance of the evidence that the expert
testimony is admissible and that the expert is qualified.” Meister v. Med. Eng’g Corp., 267 F.3d

2

1123, 1127 n. 9; Zaremba v. GMC, 360 F.3d 355, 358 (2d Cir. 2004); Aventis Envt’l Science
USA LP v. Scotts Co., 383 F. Supp. 2d 488, 513 (S.D.N.Y. 2005).
To be admissible, expert testimony must “rest[] on a reliable foundation.” Daubert v.
Merrell Dow Pharm., Inc., 509 U.S. 579, 580 (1993); see also Kumho Tire Co. v. Carmichael,
526 U.S. 137, 147 (1999) (applying the requirements of Daubert to all expert testimony). Among
the factors to consider are “(1) whether a scientific theory or technique can be (and has been)
tested; (2) whether the theory or technique has been subjected to peer review and publication; (3)
the known or potential rate of error and the existence and maintenance of standards controlling
the technique’s operation; and (4) whether the technique is generally accepted.” Cooper v.
Brown, 510 F.3d 870, 943 (9th Cir. 2007), citing Daubert, 509 U.S. at 593–94. “Maintaining
Daubert’s standards is particularly important considering the aura of authority experts often
exude[.]” Mukhtar v. Cal. State Univ., 299 F.3d 1053, 1063 (9th Cir. 2002), as amended 319
F.3d 1073 (9th Cir. 2003), overruled in irrelevant part by Estate of Barabin v. AstenJohnson,
Inc., 740 F.3d 457, 467 (9th Cir. 2014) (en banc)).
The expert’s testimony must also be helpful. “Whether the situation is a proper one for
the use of expert testimony is to be determined on the basis of assisting the trier.” Fed. R. Evid.
702, Adv. Comm. Notes. “The expert’s testimony must ‘fit,’ and admissibility depends, in part,
on a connection between the expert opinion offered and the particular disputed factual issues in
the case. Fit is not always obvious, and scientific validity for one purpose is not necessarily
validity for other unrelated purposes.” Id. (internal quotation marks and citations omitted). In re
TMI Litig., 193 F.3d 613, 670 (3d Cir. 1999), as amended, 199 F.3d 158 (3d Cir. 2000).

3

Mr. Jarosz’s report does not meet these standards because of his lack of expertise in the
relevant fields, the lack of reliable foundation for his financial conclusions, and because the
report is replete with improper opinions that invade the province of the Court.
II.

MR. JAROSZ IS NOT QUALIFIED TO OPINE ON THE MOTIVATIONS OF
STANDARDS DEVELOPMENT ORGANIZATIONS OR ON THE
REGULATORY PROCESS.
An important part of a district court’s “gatekeeping role” is “ensuring that the actual

testimony does not exceed the scope of the expert’s expertise, which if not done can render
expert testimony unreliable under Rule 702, Kumho Tire, and related precedents.” Wheeling
Pittsburgh Steel Corp. v. Beelman River Terminals, Inc., 254 F.3d 706, 715 (8th Cir. 2001).
(finding trial court abused its discretion is allowing expert to opine outside his area of expertise).
While Mr. Jarosz may have a great deal of experience with patent royalties, he has no
experience with standards development organizations; no independent familiarity with standards
development processes; no independent knowledge of the motivations of SDOs, of volunteer
members of standards drafting committees, or of public contributors to standards; and no
independent knowledge of the process of government incorporation of standards by reference
into law, government options and incentives, or SDOs’ efforts to encourage governments to
incorporate their standards into law. See Lu Declaration in Support of Public.Resource.Org,
Inc.’s Motion to Strike Jarosz Report (“Lu Decl.”) Ex. 1, at 25:10–29:1; 31:3–33:10; 110:12–
112:3.; 130:21–132:6; 138:10–142:18; 238:15–240:5; 249:13–250:11.
Jarosz’s deposition testimony shows that “his only knowledge of [the relevant fields] was
obtained from literature he reviewed in connection with his retention as an expert in this
litigation.” See In re TMI Litig., 193 F.3d at 680. Although he claims limited familiarity with
standard-setting organizations by virtue of having them as clients for patent licensing or breach
of contract issues, he also admitted that “SDO is probably not the right term to use” to describe
4

his past clients and “SSO is perhaps a broader concept than an SDO,” and in any event he was
not sure of how such organizations are characterized. See Lu Decl. Ex. 1 at 31:3–33:10. Jarosz’s
uncertainty about the membership of the field upon which he purports to opine demonstrates his
lack of experience.
Furthermore, Mr. Jarosz did not review his work for his previous clients in connection
with preparing his report for this case, id. at 28:7–12. He had only “vague recollections” of a past
client’s practices in relation to copyright, id. at 140:7–13, and “didn’t undertake a separate
investigation of the practices of any other SDOs for purposes of [his] assignment here.” Id. at
138:18–21. Under these circumstances, “[h]e plainly does not meet Rule 702’s ‘Qualifications’
requirement and cannot, therefore, offer an expert opinion as to [these fields].” In re TMI Litig.,
193 F.3d at 680.
Because Mr. Jarosz attempts to opine on the scope and motivations of all SDOs based
only on his interviews with the three Plaintiffs, his limited past encounters in the patent licensing
context (which Jarosz did not refer to in his work on this case), and his brief perusal of a handful
of other organizations’ websites, his opinion is not reliable. See Interplan Architects, Inc. v. C.L.
Thomas, Inc., No. 4:08-CV-03181, 2010 WL 4065465, at *13 (S.D. Tex. Oct. 9, 2010)
(excluding opinion on industry custom based on experience with only two architects); Baker v.
Urban Outfitters, Inc., 254 F. Supp. 2d 346, 354 (S.D.N.Y. 2003) (excluding agent as expert on
licensing where agent’s experience was primarily in commissions and agent had experience with
only four licensing transactions).
Neither does Mr. Jarosz have expertise regarding the regulatory process (through
incorporation by reference or otherwise), on government funding for standards development, nor
on the lobbying and promotional efforts by Plaintiffs and other standards organizations to

5

encourage incorporation by reference. For example, Mr. Jarosz testified that he was unaware of
whether Plaintiffs received “grants, revenue, or stipends from governments that use, reference, or
adopt their standards.” Lu Decl. Ex. 1 at 192:22–193:6. Yet ASTM’s representative testified that
ASTM has received between $650,000 and $900,000 from the federal government in the last five
years. Lu Decl., Ex. 2 at 264:22–265:2. Mr. Jarosz was also unaware of any Plaintiff advertising
the status of a standard as law in order to sell an ancillary handbook, although the Plaintiffs do
so. Compare Lu Decl. Ex. 1 at 221:3–13 to Lu Decl., Ex. 3.
III.

JAROSZ IMPROPERLY ACTS AS A MOUTHPIECE FOR PLAINTIFFS, THEIR
COUNSEL, AND THEIR OUTSIDE ADVOCATES.
While Mr. Jarosz conceded at deposition that experts “should be objective” and that they

should not limit their investigation to the views of the parties, he failed that test in this case, as he
relied almost entirely on Plaintiffs’ officers and counsel for the facts he relied on and his
conclusions. Lu Decl. Ex. 1 at 161:24–162:10.
Mr. Jarosz relied almost entirely on Plaintiffs, their websites, and their counsel to supply
him with information on different types of standards organizations, adding to that only what he
read on a handful of other organizations’ websites and in a few articles. See id. at 114:1–122:4
(describing categories of information reviewed and whether they came from Plaintiffs); Jarosz
Report Tab 2 (listing documents reviewed). Regarding the motivations of various standards
organizations to develop standards, he relied solely on interviews with Plaintiffs’ executives and
two law review articles by Emily Bremer, a researcher2 on a first-name basis with ASTM
executives. See Lu Decl. Ex. 2 at 103:25–104:1 (ASTM Rule 30(b)(6) representative Jeffrey

2

See Jarosz Report at 38, describing Ms. Bremer as a “researcher analyzing ASTM publication
prices” and citing her conclusions. At the time, Ms. Bremer worked for the Administrative
Conference of the United States, but she noted the opinions in her articles were her personal
views and not those of any entity. See Lu Decl. 1 at 117:22–118:5.
6

Grove identifying exhibit as “an interview with Emily that appeared in our magazine”). See Lu
Decl. Ex. 1 at 92:19–93:4; 95:10–97:21.
Mr. Jarosz opined on the motivations of the persons who drafted and voted on the
standards at issue, namely SDO volunteer members and the public. He conceded that those
persons and their employers (not Plaintiffs) devoted an enormous amount of time and resources
(tens of thousands of hours of time and expenditure for thousands of flights and hotel rooms) to
the drafting process. See Lu Decl. Ex. 1 at 90:15–92:13. Yet he did not interview a single
member of any of the Plaintiffs, any other standards organizations, or any member of the public.
Id. at 110:12–112:3. The only bases for these opinions Mr. Jarosz identified were the opinions of
Plaintiffs’ executives and Ms. Bremer, not any standards participant or Mr. Jarosz’s own
knowledge. Id. at 112:4–114:11.
It appears that, lacking any training or expertise in the relevant fields of standard–setting,
standards development and drafting, and incorporation by reference of standards into law, Mr.
Jarosz simply relied instead on the conclusions of others, most of whom had an obvious interest
in this case. But Mr. Jarosz “is not permitted to be the mouthpiece of [an expert] in a different
specialty.” Dura Auto. Sys. of Indiana, Inc. v. CTS Corp., 285 F.3d 609, 615 (7th Cir. 2002); see
also LifeWise Master Funding v. Telebank, 374 F.3d 917, 928 (10th Cir. 2004) (affirming
exclusion of damages analysis by plaintiff’s CEO under Rules 701 and 702 due to lack of
expertise). Plaintiffs did not disclose their executives as putative expert witnesses during expert
discovery and cannot now use Mr. Jarosz to transform their views into expert testimony. See id.;
see also Rule 26(a)(2), Fed. R. Civ. P. (requiring disclosure of expert witnesses). Plaintiffs also
did not name Ms. Bremer in their expert disclosures, which would have allowed Public Resource
to depose her and explore the bases for her assumptions and conclusions. See Rule 26(b)(4)(a).

7

They cannot sneak her unvetted opinions in through the back door by having Mr. Jarosz repeat
them. Dura Auto., 285 F.3d at 614.
IV.

JAROSZ’S OPINIONS ON THE LAW, PUBLIC POLICY, AND PLAINTIFFS’
MOTIVATIONS INVADE THE PROVINCE OF THE COURT.
“[M]atters of law for the court’s determination . . . [a]re inappropriate subjects for expert

testimony.” Aguilar v. Int'l Longshoremen's Union Local No. 10, 966 F.2d 443, 447 (9th Cir.
1992). Whether a permanent injunction is appropriate, whether irreparable harm exists, whether
an injunction would harm Public Resource, and whether an injunction would harm the public
interest, are all matters of law for the Court’s determination.
Mr. Jarosz’s opinions are essentially Plaintiffs’ own policy arguments on a matter of law.
Mr. Jarosz summarized his “assignment” as follows: “I've, in essence, looked at the topic of the
impact of copyright and trademark infringement here, and asked myself the question whether a
permanent injunction would be appropriate from an economic perspective.” See Lu Decl. Ex. 1
at 142:19–144:1. He viewed his policy arguments as relevant because “[e]conomists have a view
and perspective at looking at issues that some courts have found to be useful” and “that,
generally, economists like me are quite helpful in determining questions of harm, particularly
harm as it relates to infringement of IP rights.” Id. at 144:2–145:14. He claimed he was
addressing “the issue of whether there should be a permanent injunction or not.” Id. at 74:1–12.
But when questioned on whether “harms to plaintiffs would be different depending on the
particular basis of the Court’s ruling,” he could not answer. Id. at 67:11–68:4. And when asked
to “distinguish between harms that are caused by an infringement by the defendant versus harms
that might be caused by a court decision that plaintiffs lack copyrights,” he did not know how to
do so. Id. at. 145:16–24; 149:11–152:17. Mr. Jarosz disclaimed any legal expertise. Id at. 80:11–
12. But he summarized his opinion as: “If there’s no permanent injunction, there will, in essence,
8

be a message sent to the marketplace that the standards that have already been disseminated are
out there and can be used by others. . . . That is if there’s no permanent injunction.” Id. at 76:2–
23.
Mr. Jarosz purported not to know (1) whether his testimony and opinions “have any
bearing on whether plaintiffs’ standards are copyrightable,” (2) whether his testimony and
opinions “are relevant to whether plaintiffs deserve copyright protection in this case,” and (3)
whether his analysis and opinions “suggest in any way that plaintiffs deserve copyright
protection for these standards.” See Lu Decl. Ex. 1 at 78:24–80:6. He stated that, to his
knowledge, he had not “done any work in this case to quantify what harms plaintiffs would
suffer if a court were to rule that they lacked copyright rights in the standards at issue in this
case.” Id. at 81:2–16.
Based on Mr. Jarosz’s concessions, the Court should disregard all of his opinions
concerning whether Plaintiffs deserve copyright protection for standards incorporated into law
and whether irreparable harm would flow from not according Plaintiffs monopolies over
incorporated standards.
V.

JAROSZ’S BROAD CONCLUSIONS REST ON UNSUPPORTED
ASSUMPTIONS.
One of Mr. Jarosz’s central conclusions is that, if Plaintiffs cannot have a monopoly over

the law, they would lose their ability to fund standards developments. This conclusion is
speculation without foundation. To reach it, Mr. Jarosz makes assumption after assumption. But
without factual bases for his assumptions, some of which are completely illogical, his
methodology lacks the necessary reliability for an admissible expert opinion.
Reliable conclusions by an expert are those that “could reliably flow from the facts
known to the expert and the methodology used.” In re TMI Litig., 193 F.3d at 665–66 (quotation
9

marks omitted). And an expert’s assumption “must be sufficiently grounded in sound
methodology, and reasoning to allow the conclusion it supports[,] to clear the reliability hurdle.”
Id. at 677 (affirming exclusion of testimony based on assumption with insufficient support).
“[N]othing in either Daubert or the Federal Rules of Evidence requires a district court to admit
opinion evidence [which] is connected to existing data only by the ipse dixit of the expert. A
court may conclude that there is simply too great an analytical gap between the data and the
opinion proffered.” Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997).
A.

Jarosz Made No Attempt To Quantify The Effects He Predicted, Leaving His
Conclusions of “Likely” Outcomes Without Foundation.

At deposition, Mr. Jarosz admitted that he could not quantify the effects he predicted.
When asked to estimate the probability of his prediction that

he said: “I don’t have a basis for that estimate.” See Lu Decl. Ex. 1 at
234:11–238:11 (referring to Jarosz Rep. ¶ 119). Mr. Jarosz admitted that when he characterized
an outcome as “likely,” he did not mean “more than 50 percent likely,” and he could not give an
estimate. Id. at 235:8–236:12; 238:12–14. He could not even say whether his prediction that
Plaintiffs might shut down was more or less than 5 percent likely. Id. at 237:22–238:4. In other
words, his conclusion as to what outcomes were “likely” had no basis. Asked about his core
conclusion that “freely-distributed, unrestricted versions of Plaintiffs’ standards that are or could
be incorporated by reference can be expected to adversely impact the market for Plaintiffs’
standards that are incorporated by reference and to displace sales of these standards by the
Plaintiffs – which can be expected to have a material adverse effect on Plaintiffs’ revenues,” he
could not assign more than a 5 percent chance of likelihood to this conclusion. Id. at 236:14–
241:17. This is sheer speculation.
10

B.

Jarosz Assumes, Without Support, That Plaintiffs Cannot Profit From Sales
of Publications Without A Monopoly On Selling Standards Incorporated
Into Law.

Mr. Jarosz’s report does not account for sales revenue that Plaintiffs would receive
without a copyright monopoly on the subset of standards that are incorporated by reference into
law. This omission defies common sense. Book publishers still sell the works of Shakespeare,
Dickens, and Twain, with and without additions such as annotations, commentary, or lesson
plans, even though the underlying works are in the public domain. Attorneys and courts still
purchase professionally published paper copies of the United States Code and the Federal Rules
of Evidence as well as annotated versions with commentary or analysis, even though free online
versions abound. See, e.g., https://www.law.cornell.edu/rules/fre. Plaintiffs themselves make
some of their publications available for free online, a fact Mr. Jarosz did not investigate or
consider. See Lu Decl. Ex. 1 at 135:14–137:24. Conclusions that “fly in the face of reality”
“must be rejected.” See In re TMI Litig.,193 F.3d at 683.
C.

Jarosz Incorrectly Equates the Incorporated Standards at Issue with All of
Plaintiffs’ Publications.

Mr. Jarosz’s conclusions as to Plaintiffs’ revenues also do not flow logically from the
facts he purported to use. The financial records he reviewed and the analyses he performed
pertained to “copyrighted publications” generally. See Lu Decl. Ex. 1 at 186:21–188:6. His
analysis was not directed to the incorporated standards that Public Resource posted, incorporated
standards generally, or even to standards. In his report, Mr. Jarosz stated that ASTM has
published 12,000 standards, NFPA has published over 300 codes and standards, and ASHRAE
currently publishes over 50 standards. See Jarosz Report at p. 5–7 (citing Plaintiffs’ websites).
And he noted that Plaintiffs also publish commentaries, training materials, and other nonstandards documents. See Jarosz Report at ¶ 107. Yet this litigation concerns only the 257

11

incorporated standards that Public Resource posted. See Amended Complaint, Exs. A–C. Mr.
Jarosz did not explain how he could reliably draw conclusions about the financial impact of
Public Resource’s posting of a relatively small number of standards incorporated into law based
on an analysis relating to all of Plaintiffs’ publications. See Network Protection Sciences, LLC v.
Fortinet, Inc., No. 3:12-cv-01106, 2013 WL 5402089, at *5 (N.D. Cal. Sept. 26, 2013) (striking
expert report from Mr. Jarosz because he based his calculation on the entire value of the accused
products instead of just the value attributable to allegedly infringing features).
The standards at issue in this litigation are not typical examples of Plaintiffs’
“copyrighted publications.” All but one are out of date from the perspective of many industry
participants, having been superseded by later versions as private standards, while remaining
binding law. See Declaration of M. Becker in support of Public Resource’s Motion for Summary
Judgment ¶¶ 95–97, Ex. 97–99. Some, such as the ASHRAE 1993 Handbook, are out of print
and no longer sold by Plaintiffs. See Lu Decl. Ex. 4 at ASHRAE0029540. Mr. Jarosz did not
account for this special case. He admitted that he had not researched what market existed for
standards that are not the latest version. The only harm he could identify from postings of older
versions and out of print standards was possible confusion between older versions and new, but
he admitted that this conclusion was not based on any evidence or analysis. Lu Decl. Ex. 1 at
254:14–257:9.
Attempting to conflate standards incorporated into law with all of Plaintiffs’
“copyrighted publications,” Mr. Jarosz overestimated the number of standards actually
incorporated into law, further undermining his conclusions.

12

Jarosz Report ¶ 58. But at deposition, he conceded that he had counted the
total number of references to standards in federal law, not the number of standards incorporated
by reference. See Lu Decl. Ex. 1 at 199:23–202:6. As the same standard can be referenced
multiple times in regulations, and because not every mention of a standard is an incorporation by
reference, this methodology is unreliable. See id. at 199:23–202:16; Lu Decl. Ex. 5 at
JAROSZ03736–03764 (Jarosz production partially documenting his searches and the database,
showing at least one duplicate entry at bottom of page JAROSZ03750).
D.

Jarosz Blindly Relied on Unreliable and Misleading Statistics from Plaintiffs.

An expert “retained strictly for litigation purposes” who relies on “a plaintiff’s selfreport” instead of personally examining records “d[oes] not have good grounds to rely on them
to arrive at her conclusion.” In re TMI Litig., 193 F.3d at 698. That is precisely what has
occurred here. Mr. Jarosz frequently took statements from Plaintiffs’ executives at face value
without independent investigation and then repeats them. In other words, Mr. Jarosz “in effect
bec[a]me the mouthpiece of the witnesses on whose statements or opinions [he] purports to base
his opinion.” Loeffel Steel Prods., Inc. v. Delta Brands, Inc., 387 F. Supp. 2d 794, 808 (N.D. Ill.
2005).
For example, Mr. Jarosz also opines that “sales of a limited number of specific standards
drive the bulk of the revenues, as many other standards actually generate very limited revenues,”
citing conversations with executives from each of the three Plaintiffs. In deposition, however,
Mr. Jarosz admitted he had never seen any financial breakdown of revenues by standard and he
did not believe Plaintiffs even possessed that information. See Lu Decl. Ex. 1 at 181:12–183:15.
“[U]nhesitating acceptance of” one party’s data “violates the principles of the scientific method.”

13

Contractors Ass’n of E. Penn., Inc. v. City of Philadelphia, 893 F. Supp. 419, 437 (E.D. Pa.
1995), aff’d, 91 F.3d 586 (3d Cir. 1996) (rejecting an expert’s conclusions as a matter of law
because he “never attempted to validate the City’s availability figure” or “even examine the
underlying document from which this figure was allegedly obtained.”).
Similarly, Mr. Jarosz took ASHRAE executives at their word for the motivations of
ASHRAE members in signing up for membership. Mr. Jarosz did not conduct any surveys,
interview any ASHRAE members, review any membership records, or otherwise discern any
factual foundation for his “understanding [] that ASHRAE people are of the belief that many
people buy membership rather than individual publications.” Lu Decl. Ex. 1 at 184:9–186:12.
Because the “factual underpinning” to his conclusions regarding ASHRAE’s revenue model was
nothing more than a plaintiff’s belief (or at best, hearsay within unidentified hearsay), it “rested
on air” and is inadmissible. See Dura Auto., 285 F.3d at 615; In re TMI Litig., 193 F.3d at 673–4
(district court properly excluded opinion based on anecdotal and unconfirmed hearsay as
unreliable).
E.

Jarosz Relied on Unreliable Sales “Data” and Failed to Consider All
Relevant Information.

Mr. Jarosz repeatedly offers second-hand information from the parties for the truth of
what others told him, and he asserts it as true. Where the data comes from representatives of a
party and were made for purposes of litigation, “[c]ommon sense alone suggests that such
evidence is based on an unreliable source of information.” In re TMI Litig., 193 F.3d at 698
(internal quotation marks omitted) (excluding opinion based on plaintiffs’ counsel’s summaries
of interviews with plaintiffs instead of review of records or personal examination). An expert
who “simply never bothered to test the figures that were furnished to him” and performed

14

“calculations based on these figures result[s] in opinions that lack[] the necessary ‘fit’ deemed
essential to the issue before the court.” Contractors Ass’n, 893 F. Supp. at 436.
Regarding sales in particular, Jarosz conceded that he did not analyze “differences in
sales trends between standards that are at issue in this case and plaintiffs’ other standards,” or
“any differences in sales trends between those of plaintiffs’ standards that have been
incorporated into law and those of plaintiffs’ standards that have not been incorporated into law,”
Lu Decl. Ex. 1 at 155:17–156:18. He conceded he did not have data at hand to conduct such an
analysis, and that he did not recall asking for such data. Id., see also 176:8–177:24.
Further, Mr. Jarosz used Plaintiffs’ numbers for their expenditures on “standards
development” both as a proxy for the role Plaintiffs play in standards development and as an
indication of how much revenue Plaintiffs need to continue standards development work. But as
ASTM’s financial documents show,

See Lu Decl. Ex. 6 at ASTM103230
). Thus, this data
does not support the conclusions Jarosz attaches to them. See R.F.M.A.S., Inc., 748 F. Supp. 2d at
259 (criticizing and excluding expert in part because “the table that [he] offered to support this
assertion does not demonstrate what [he] claims it does”).
Using Plaintiffs’ numbers, Mr. Jarosz also lumps together the contributions of Plaintiffs’
volunteer members, whom Plaintiffs claim have no IP rights to the standards, with those of
Plaintiffs’ employees. At deposition, however, he conceded that the volunteer members and their
employers (not Plaintiffs) were “primarily” responsible for contributing the time and resources
(tens of thousands of hours of time and expenditures for thousands of flights and hotel rooms) to

15

See Lu Decl. Ex. 8 at NFPAPR0038555.

The comparison to NEC 2008 is also full of errors. First, NFPA’s records omitted sales
information for 2007–2008, the first year of that’s standard’s release, which would be the most
appropriate comparison to NEC 2011’s debut year of 2010–2011. See id. Second, while Public
Resource posted NEC 2011 in 2012, it posted NEC 2008 in 2008 when it was incorporated into
state regulations. See Lu Decl. Ex. 7 at 129:25–130:21. Thus, the presence of Public Resource
cannot explain the difference in the numbers the Jarosz Report cites.

See Lu Decl. Ex. 8 at NFPA-PR0038555; see R.F.M.A.S., Inc., 748 F. Supp. 2d at 259
(criticizing and excluding expert in part because “the table that [he] offered to support this
assertion does not demonstrate what [he] claims it does”).
At deposition, Mr. Jarosz could not identify when Public Resource posted NEC 2008 and
NEC 2011. While he admitted he “would be curious about that information,” he did not
reconsider his conclusions, thus undermining their reliability. See Lu Decl. Ex. 1 at 164:13–
167:13; In re TMI Litig., 193 F.3d at 676 (expert’s “failure to properly revise their attribution” of
source observed phenomenon “is the antithesis of good science and dramatically undermines
their proffered opinions”).

17

F.

Jarosz’s Opinion Is Unreliable Because It Considers Visits to Public
Resource Equal to Lost Sales.

Mr. Jarosz’s attempt to use Public Resource’s hit count as a barometer for lost sales is
equally suspect. (The “hit count” is the number of times the Public Resource’s Web servers
detected an attempt to access the standards at issue, whether by a person or by an automated
program). There is no evidence that anyone used Public Resource’s website instead of
purchasing a copy from Plaintiffs. Mr. Jarosz conceded that he has no knowledge of why people
visited Public Resource’s website. See Lu Decl. Ex. 1 at 213:23–214:18. There is no evidence of
how many hits were the result of human visitors as opposed to an automated program, or “bot,”
such as those that search engines use to index the Web. Nor is there evidence of how many hits
each human visitor was responsible for. Mr. Jarosz also conceded that there was no evidence as
to how many visitors to Public Resource would have purchased a copy of an incorporated
standard from Plaintiffs instead of merely visiting Plaintiffs’ online “reading rooms” or
abandoning their search. Id. at 214:19–216:22. His report makes no attempt to estimate these
factors. Without a reliable basis for equating visits with lost sales, Mr. Jarosz’s “speculation
would not help the [factfinder] but could mislead them.” See Brighton Collectibles, Inc. v. RK
Texas Leather Mfg., 923 F. Supp. 2d 1245, 1255 (S.D. Cal. 2013) (excluding expert report due to
lack of reliable method to determine whether purchasers of defendant’s inexpensive product
would have purchased plaintiff’s much more expensive product).
G.

Jarosz’s Methodology Is Not Reliable for the Conclusions He Draws.

Mr. Jarosz has no sound methodology to back up his conclusions. The sole economic
theory Mr. Jarosz could specifically identify as a basis for concluding that Plaintiffs had suffered
harm was “revealed preference.” In other words, the mere fact that Plaintiffs have brought this
litigation “reveals” their preference to maintain a copyright monopoly over standards

18

incorporated by reference into the law. Lu Decl. Ex. 1 at 163:6–16. While he could name other
economic concepts in which he had training, he could not specify how they applied to the facts
of this case. Id. at 171:10–175:1.
“Revealed preference” here reveals only that Plaintiffs believe they can earn more
revenues by asserting a monopoly over legal texts. He applied no other economic concepts in
reaching his conclusions.
CONCLUSION
Even if, “standing alone,” each logical flaw, unreliable data set, or foundationless
assumption did not warrant excluding the Jarosz Report, “taken cumulatively, the
methodological flaws . . . and the ‘fundamentally flawed reasoning’ . . . warrant its exclusion.”
Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 574–75 (S.D.N.Y. 2007) (excluding
expert’s report and testimony in their entirety). If “[t]he shortcomings in [the expert’s] approach,
including the development of the grounds for his opinions and his failure to include pivotal facts
in arriving at his conclusions, causes the finder of fact to have no confidence in the scientific
nature of [the expert’s] opinions or in the validity of the factors as he crafted them to purportedly
support his opinions on the questions to be decided,” that is reason enough to reject an expert’s
conclusions. Contractors Ass’n, 893 F. Supp. at 437.
Because Mr. Jarosz acts as a mouthpiece for Plaintiffs and a third-party advocate not
disclosed in expert discovery and because Mr. Jarosz’s testimony lacks all reliability and
helpfulness, the Court should strike the Jarosz Report and all citations to it in Plaintiffs’ briefs.

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Dated: December 21, 2015

Respectfully submitted,
/s/ Kathleen Lu
Andrew P. Bridges (admitted)
[e-mail]
Kathleen Lu (admitted)
[e-mail]
Matthew Becker (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

RULE 37(A)(2) CERTIFICATE
I hereby certify, pursuant to Fed. R. Civ. P. 37(a)(2), that Public Resource made a good
faith effort to confer with Plaintiffs in an attempt to resolve this dispute. Plaintiffs stated they
would oppose this motion.
/s/ Kathleen Lu
Kathleen Lu
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