Motorola Mobility, Inc. v. Microsoft Corporation

Filing 132

Defendant's MOTION to Exclude Expert Testimony of Michael Wagner Concerning Non-Infringing Alternatives and Memorandum of Law in Support by Microsoft Corporation. Responses due by 8/8/2011 (Miner, Curtis) Modified text on 7/22/2011 (asl).

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
CASE NO: 1:10-CIV-24063-MORENO

MOTOROLA MOBILITY, INC.,
Plaintiff,
vs.
MICROSOFT CORPORATION,
Defendant.

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MICROSOFT CORPORATION’S MOTION TO EXCLUDE TESTIMONY
OF MICHAEL WAGNER CONCERNING NON-INFRINGING
ALTERNATIVES AND MEMORANDUM OF LAW IN SUPPORT
PLEASE TAKE NOTICE that Defendant Microsoft Corporation (“Microsoft”) moves to
exclude the testimony of Plaintiff Motorola Mobility Inc‟s (“Motorola”) expert on damages,
Michael Wagner, as his testimony relates to non-infringing alternatives to the Microsoft Patentsin-Suit.
MEMORANDUM OF LAW
Michael Wagner is Motorola‟s expert who Motorola “retained to provide an opinion
regarding damages resulting from Motorola‟s alleged infringement of Microsoft‟s…U.S. patent
numbers 6,791,536, 6,897,853, 7,024,214, 7,493,130, 7,383,460, 6,897,904 and 6,785,901.” (See
Expert Report of Michael J. Wagner, July 7, 2011, Vol. 1 (the “Wagner Report” or “Report”), p.
1, attached hereto as Ex. 1). In particular, Mr. Wagner was asked to “review and comment upon

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the Expert Report of Matthew R. Lynde,” who is Microsoft‟s damages expert. According to his
C.V., Mr. Wagner is an expert in the “calculation of commercial damages,” and has testified on
the subject of alter ego. (See Wagner Report, Tab 4). In his Report, Mr. Wagner offers the
following three opinions: 1) Microsoft is not entitled to lost profits as a damage remedy; 2)
assuming Microsoft is entitled to lost profits, Dr. Lynde‟s calculation of lost profits is incorrect;
and 3) Dr. Lynde has not properly calculated Microsoft‟s reasonable royalty measure of damages.
(See generally, Wagner Report).
As part of his opinion that Microsoft is not entitled to lost profits as a damages remedy,
Mr. Wagner opines that Dr. Lynde “does not sufficiently consider the existence of acceptable,
non-infringing substitutes” pursuant to Panduit Factor No. 2. (Wagner Report, pp. 20-25). Mr.
Wagner then offers opinions on his “understanding of commercially acceptable non-infringing
alternatives for all of the Mobile Device Patents-in-Suit.” Id., p. 20-21. Mr. Wagner states that
his “understanding of Motorola‟s non-infringing alternatives is based on discussions with
Motorola technical experts including Mr. Jean Renard Ward („536 and „853 Patents), Mr. Frank
Koperda („460 Patent), and Dr. Tal Lavian („214 and „130 Patents).” Id. (emphasis added). Mr.
Ward, Mr. Koperda and Dr. Lavian are Motorola technical experts, none of whom offered
opinions on non-infringing alternatives in their expert reports. Mr. Wagner, Motorola‟s damages
expert, then proceeds to offer technical opinions on non-infringing alternatives for each of
Microsoft‟s Patents-in-Suit, which opinions are based on nothing more than his “discussions”
with these technical experts. Id. pp. 21-25.
Likewise, as part of his opinion that Dr. Lynde has not properly calculated Microsoft‟s
reasonable royalty measure of damages, Mr. Wagner opines that Dr. Lynde does not consider the
“availability of non-infringing alternatives” – one of the Georgia Pacific factors – in Dr. Lynde‟s

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analysis of Baseline Royalty Rates. (Wagner Report, pp. 34-37). Mr. Wagner proceeds to offer
opinions on non-infringing alternatives, as above, based on nothing more than “discussions” he
had with Motorola‟s technical expert, Michael Barr. Id.
Mr. Wagner, however, does not have the expertise to render opinions on non-infringing
alternatives to Microsoft‟s Patents-in-Suit, nor do his “discussions” with Motorola‟s technical
experts provide a sufficient foundation for these opinions. Mr. Wagner‟s opinions on noninfringing alternatives, therefore, should be excluded. McClain v. Metabolife Int’l, Inc. 401 F.3d
1233, 1255 (11th Cir. 2005) (excluding experts‟ opinions that “were not the product of reliable
methods”).
LEGAL STANDARD
Rule 702 permits expert testimony only where it is “based upon sufficient facts or data,” is
“the product of reliable principles and methods,” and where “the witness has applied the
principles and methods reliably to the facts of the case.” Fed. R. Evid. 702. In Daubert v. Merrell
Dow Pharms., Inc., 509 U.S. 579 (1993), the U.S. Supreme Court “made abundantly clear” that
Rule 702 “compels the district courts to perform the critical „gatekeeping‟ function concerning the
admissibility” of expert evidence.” U.S. v. Frazier, 387 F.3d 1244, 1260 (11th Cir. 2004). The
Eleventh Circuit has observed that “[t]he importance of Daubert’s gatekeeping requirement
cannot be overstated” in part because of the “talismanic significance” that experts can have “in
the eyes of lay jurors.” Id. at 1260, 1263. Trial courts are therefore required to “conduct an
exacting analysis of the foundations of expert opinions to ensure they meet the standards for
admissibility under Rule 702.” Id. at 1260. In undertaking this analysis, courts apply a “rigorous
three-part inquiry,” considering whether (1) the expert is qualified to testify competently
regarding the matters he intends to address; (2) the methodology by which the expert reaches his

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conclusions is sufficiently reliable as determined by the sort of inquiry mandated in Daubert; and
(3) the testimony assists the trier of fact, through the application of scientific, technical, or
specialized expertise, to understand the evidence or to determine a fact in issue.” Id. The Eleventh
Circuit has opined that “the requirement of reliability found in Rule 702 [is] the centerpiece of
any determination of admissibility.” Rider v. Sandoz Pharms Corp., 295 F.3d 1194, 1197 (11th
Cir. 2002).
In order to satisfy the requirements of Rule 702, an “expert must carry out some
independent analysis” of the issues upon which he is offering an opinion. Barrueto v. Fernandez
Larios, No. 99-0528-CIV, 2003 WL 25782075, at *7 (S.D. Fla. Sept. 18, 2003) (excluding expert
testimony where plaintiffs could not show the expert applied any methodology where the expert
“indicated that he has not investigated” the specific issues); see also U.S. v. Masferrer, 367
F.Supp.2d 1365, 1379-80 (S.D. Fla. 2005) (excluding expert testimony where the expert “did not
conduct an independent analysis” of the subject matter of his testimony such that the testimony
was “merely conclusory and fail[ed] to specifically identify the methodology or reasoning” the
expert used).
ARGUMENT
In his Report, Michael Wagner offers a number of opinions on acceptable, non-infringing
alternatives to Microsoft‟s Patents-in-Suit. (See Wagner Report, pp. 20-25, 34-37). There is,
however, no foundation for these opinions sufficient to meet the standards for admissibility under
Rule 702. As an initial matter, Mr. Wagner does not have the technical expertise to render these
opinions. He is Motorola‟s expert on “damages resulting from Motorola‟s alleged infringement
of Microsoft‟s” patents, and is qualified to testify to the “calculation of commercial damages.” Id.

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CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER
p, 1, Tab 4. Nothing in Mr. Wagner‟s Report or in his C.V. suggests that he is competent to
testify to non-infringing alternatives to the Microsoft Patents-in-Suit.
Moreover, Mr. Wagner has failed to show that he has applied any methodology
whatsoever (much less a reliable one) in rendering his opinion on non-infringing alternatives. He
has undertaken no “independent analysis” to determine whether in fact there are acceptable, noninfringing alternatives to Microsoft‟s Patents-in-Suit. Mr. Wagner merely refers to “discussions”
he alleges he had with Motorola‟s technical experts Tal Lavian, Jean Renard Ward, Frank
Koperda, and Michael Barr as the basis for these opinions. Id. Motorola‟s technical experts did
not offer opinions on non-infringing alternatives to Microsoft‟s Patents-in-Suit in their expert
reports. Mr. Wagner, therefore, does not even have the expert reports of technical experts upon
which to base his opinion on non-infringing alternatives, but only these alleged “discussions.”
Because he does not possess the expertise necessary to render an opinion on non-infringing
alternatives, and because he fails to make any showing whatsoever that these opinions are based
on a reliable methodology, Mr. Wagner‟s testimony on non-infringing alternatives should be
excluded. McClain v. Metabolife Int’l, Inc. 401 F.3d 1233, 1255 (11th Cir. 2005).
CONCLUSION
For the foregoing reasons, the Court should exclude the testimony of Michael Wagner as it
relates to non-infringing alternatives to Microsoft‟s Patents-in-Suit.

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CERTIFICATE OF GOOD FAITH COMPLIANCE
As required by this Court‟s Local Rule 7.1(A)(3)(a), counsel for Defendant hereby
certifies that on July 21, 2011, counsel for Defendant made reasonable efforts to confer in good
faith with counsel for all parties who may be affected by the relief sought in the motion, and has
been advised that Plaintiff will contest this motion.
DATED this 21st day of July 2011.
Respectfully submitted,
COLSON HICKS EIDSON
Roberto Martinez, Esq.
Curtis Miner, Esq.
255 Alhambra Circle, Penthouse
Coral Gables, Florida 33134
Tel. [phone]
Fax. [phone]
By: _s/ Curtis Miner__________
Curtis B. Miner
(Fla. Bar No. 885681)
E-mail: [e-mail]
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel. [phone]
Brian R. Nester
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel. [phone]

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on the 21st day of July 2011, I filed the foregoing document
by CM/ECF, which will cause it to be served on all counsel of record on the below Service List.
____s/ Curtis Miner___________
Curtis B. Miner
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-Moreno
Edward M. Mullins, Esq.
ASTIGARRAGA DAVIS
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Steven Pepe
Jesse J. Jenner
Leslie M. Spencer
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036-8704
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Kevin J. Post
Megan F. Raymond
ROPES & GRAY LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005-3948
Counsel for Plaintiff Motorola Mobility, Inc.

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