Timebase Pty Ltd v. Thomson Corporation, The
Filing
255
RESPONSE re 237 Memorandum in Support of Motion, 243 MOTION to Exclude Expert Testimony corrected Timebase's Response to Defendants' Motion to Exclude Testimony of Dr. Ophir Frieder filed by Timebase Pty Ltd. (Hosteny, Joseph)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MINNESOTA
TIMEBASE PTY LTD.,
Plaintiff,
vs.
THE THOMSON CORPORATION,
WEST PUBLISHING CORPORATION,
and WEST SERVICES, INC.,
Defendants.
Civil Action Nos. 07‐cv‐1687 (JNE/JJG)
TIMEBASE’S RESPONSE TO
DEFENDANTS' MOTION TO EXCLUDE
TESTIMONY OF DR. OPHIR FRIEDER
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Michael R. Cunningham
Gray, Plant & Mooty
500 IDS Center
80 South Eighth Street
Minneapolis, MN 55402
Telephone: (612) 632‐3000
Fax: (612) 632‐4444
michael.cunningham@gpmlaw.com
Joseph N. Hosteny
Arthur A. Gasey
Robert A. Conley
Niro, Haller & Niro
181 West Madison, Suite 4600
Chicago, Illinois 60602
Telephone: (312) 236‐0733
Fax: (312) 236‐1138
hosteny@nshn.com
gasey@nshn.com
rconley@nshn.com
Attorneys for Plaintiff
TimeBase Pty Ltd.
I.
INTRODUCTION
As this Court has recognized, "a patentee may prove infringement by any
method of analysis that is probative of the fact of infringement, and circumstantial
evidence may be sufficient." Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F. Supp.
2d 885, 895 (D. Minn. 2010) (Ericksen, J.) (quoting Martek Biosciences Corp. v.
Nutrinova, Inc., 579 F.3d 1363, 1372 (Fed. Cir. 2009)). At trial, TimeBase intends to
rely upon the opinions of its technical expert, Dr. Ophir Frieder, as one means – but
not the only means – by which TimeBase will introduce evidence to the jury to
prove its claims of patent infringement. The defendants seek to have the entirety of
Dr. Frieder's opinions relating to infringement excluded on the basis that certain of
his opinions are purportedly flawed. Perhaps realizing the futility of this request,
the defendants alternatively ask the Court to exclude Dr. Frieder's opinions relating
to the word "each" as recited in the claims of the '592 patent, and to the word
"displaying" as recited in the claims of the '228 patent.
Dr. Frieder's opinions relating to the topic of infringement are reliable. In the
course of forming his opinions, Dr. Frieder spent several days examining the content
of Westlaw for purposes of comparing the content of that system to the claims of the
patents‐in‐suit. Dr. Frieder also spent dozens of hours examining the defendants'
documents which have been produced in this case, as well as testimony provided by
the defendants' own employee witnesses. While the parties fundamentally disagree
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over the scope of the claims of the patents‐in‐suit – even after the Court's
construction of the disputed claim terms – that disagreement does not provide a
basis by which to exclude any aspect of Dr. Frieder's opinions, much less the entirety
of his opinions. And given that the defendants will have every opportunity to
challenge the reliability of Dr. Frieder's opinions at trial by way of vigorous cross‐
examination, there is no basis for the Court to impose the draconian measure of
excluding Dr. Frieder's opinions outright. The defendants' motion to exclude should
be denied.
II.
APPLICABLE LEGAL STANDARD
Consistent with the "fundamental principle that Rule 702 is generally one of
inclusion rather than exclusion," expert testimony such as Dr. Frieder's should not be
easily barred. EZ Dock, Inc., v. Schafer Systems, Inc., 2003 WL 1610781, *2 (D. Minn.
Mar. 8, 2003). That is particularly so in view of the "liberal thrust" of the Federal Rules
of Evidence. Daubert v. Merrill Dow Pharm., 509 U.S. 579, 588 (1993). Pursuant to
Federal Rule of Civil Procedure 702, Dr. Frieder's expert testimony must meet three
prerequisites to be admissible. First, the evidence must be useful to the fact‐finder
in deciding the ultimate issue of fact. Lauzon v. Senco Prods., Inc., 270 F.3d 681, 686
(8th Cir. 2001). Second, the expert must be qualified. Id. Third, the evidence must
be reliable. Id.
Here, the defendants do not allege that Dr. Frieder is unqualified to provide
opinions relating to infringement of the patents‐in‐suit, nor do the defendants allege
that Dr. Frieder's opinions in that regard would be of no assistance to the jury.
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Accordingly, the sole basis for the defendants' motion to exclude is the notion that
Dr. Frieder's opinions are unreliable. "As a general rule, the factual basis of an
expert opinion goes to the credibility of the testimony, not the admissibility, and it is
up to the opposing party to examine the factual basis for the opinion in cross‐
examination." Bonner v. ISP Techs., Inc., 259 F.3d 924, 929 (8th Cir. 2001). An
expert's opinion should be excluded as unreliable only if that "opinion is so
fundamentally unsupported that it can offer no assistance to the jury." Id. at 929‐30.
III.
THERE IS NO BASIS TO EXCLUDE THE ENTIRETY OF DR. FRIEDER'S
OPINIONS RELATING TO INFRINGEMENT
The defendants ask the Court to "exclude Dr. Frieder's testimony completely."
(Dkt. 237, Defendants' Memo, at 7). There is no basis to do so. Even if certain of Dr.
Frieder's opinions relating to specific elements of the asserted patent claims were
held to be inadmissible – which, as discussed below, clearly should not be the case –
those shortcomings still fail to provide a valid basis to exclude Dr. Frieder's opinions
relating to other elements of the claims. To the contrary, this Court has routinely
allowed expert's to testify as to facts underlying an ultimate conclusion even when
the expert has not been allowed to testify as to the ultimate conclusion itself. See
e.g., EZ Dock, 2003 WL 1610781 at *7 (suggesting that expert would not be
permitted to "testify about patent law," but allowing expert "to testify to facts
pertaining to the comparison of the patent‐in‐suit to the accused products or to
prior art references."); Roederer v. J. Garcia Carrion, S.A., 2010 WL 489529, *3 (D.
Minn. Feb. 4, 2010) (Ericksen, J.) (excluding expert from testifying on the ultimate
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factual issue of likelihood of confusion, but allowing that expert to testify on the
factual elements that go into that ultimate factual issue).
The same principle applies here to Dr. Frieder's opinions. Even if Dr. Frieder
is not permitted to offer an opinion at trial as to the ultimate issue of whether the
defendants infringe any claims of the patents‐in‐suit, Dr. Frieder should still be
permitted to testify to facts pertaining to the comparison of the claims of the
patents‐in‐suit to the content of the accused Westlaw system. In the event that this
Court finds one or more of Dr. Frieder's opinions in this regard to be inadmissible,
that narrow ruling should not automatically preclude all of Dr. Frieder's remaining
opinions as to other elements of the claims. The Izumi and Sprint cases cited by the
defendants do not suggest otherwise.
IV.
THERE IS NO BASIS TO EXCLUDE DR. FRIEDER'S OPINIONS
RELATING TO THE WORDS "EACH" AND "DISPLAYING"
A.
Dr. Frieder's Opinions In Relation To The Word
"Each" Are Reliable
The defendants contend that "Dr. Frieder should not be allowed to testify that
the accused Westlaw system meets the limitations [of the '592 patent claims]
requiring that each predefined portion of text‐based data be encoded with at least
one linking means." (Dkt. 237, Defendants' Memo, at 8). As the underlying basis for
this argument, the defendants contend that Dr. Frieder was required to examine
every single portion of text‐based data accessible via Westlaw and, based upon that
examination, to opine as to whether every such portion is encoded with a linking
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means. (Id. at 10). The defendants contend that absent such an analysis, Dr.
Frieder's opinions directed to these claim limitations are unreliable.
The defendants' argument in this regard is based upon their own improper
interpretation of the Court's order construing the disputed claims terms of the
patents‐in‐suit. Simply stated, there is absolutely no requirement that every single
portion of text‐based data which is accessible via Westlaw must be encoded with a
linking means. Rather, the claims of the '592 patent require that the accused
systems and methods comprise a plurality (i.e., at least two) of predefined portions
of text based data, and that each of the plurality of those portions be encoded with a
linking means. For example, claim 1 of the '592 patent recites:
1. A computer‐implemented system for publishing an electronic
publication using text‐based data, comprising:
a plurality of predefined portions of textbased data with each
predefined portion being stored;
at least one predefined portion being modified and stored;
a plurality of linking means of a markup language, each predefined
portion of said textbased data and said at least one modified
predefined portion of text‐based data being encoded with at least
one linking means; and
a plurality of attributes, each attribute being a point on an axis of a
multidimensional space for organising said plurality of predefined
portions and said at least one modified predefined portion of said text‐
based data.
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(Exhibit A, U.S. Patent No. 6,233,592 B1, at column 155, lines 2‐14; emphasis
added).1 The "each" language that is the subject of the defendants' motion is a
requirement applicable to the plurality of portions recited in the claims, and nothing
further. Accordingly, not all portions of text‐based data that are accessible via
Westlaw must necessarily participate in the claimed systems recited in the '592
patent. To put it another way, infringement is not negated by the presence of one or
more portions of text‐based data within Westlaw that fail to satisfy other limitations
of the patent claims, including the requirement that each of the claimed plurality of
portions of text‐based data be encoded with at least one linking means.2 To the
extent that the defendants contend otherwise, they are mistaken as to the proper
application of law in this case.
Dr. Frieder is not qualified to offer legal opinions, and TimeBase certainly has
no plans to introduce legal opinions by way of Dr. Frieder's testimony at trial. Issues
of law, of course, are not properly the subject of expert testimony in the first
instance. EZ Dock, 2003 WL 1610781 at *7. Dr. Frieder has been instructed by
TimeBase's counsel as to how the law should be applied to the claims of the patents‐
in‐suit. Based upon those instructions, Dr. Frieder has provided sound expert
opinions as to the presence of a plurality of predefined portions of text‐based data
1 The exhibits referenced herein are attached to the concurrently filed Declaration of Jenna Bayer
in Support of TimeBase's Response to Defendants' Motion to Exclude Testimony of Dr. Ophir
Frieder.
2 In the interest of brevity, TimeBase respectfully directs the Court to Sections II and III of
TimeBase's concurrently filed Response to Defendants' Motion for Summary Judgment, which
includes a more detailed analysis as to why the defendants' arguments directed to the word "each"
are incorrect. TimeBase incorporates that analysis herein by reference.
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within Westlaw. (See e.g., Exhibit B, Expert Report of Ophir Frieder dated February
28, 2011, at 8‐10). Dr. Frieder has likewise provided sound expert opinions as to
the manner in which those portions of text‐based data are encoded with a linking
means. (See e.g., Id. at 12‐15).
While the defendants may object to the factual foundation for Dr. Frieder's
opinions on these issues, those objections do not provide a basis for barring Dr.
Frieder's testimony. Rather, as this Court has recognized on numerous occasions,
the defendants are free to challenge the foundation and sufficiency of Dr. Frieder's
opinions at trial:
Rockwood may challenge the foundation for Simac's opinions at trial. If
that foundation is laid, Rockwood may test the credibility of Simac's
testimony on cross examination, rebut the testimony with its own
witnesses, and submit its own contrary expert evidence, and the jury
can determine the weight and credibility to given Simac's testimony.
Therefore, Rockwood's Daubert motion is denied.
Rockwood Retaining Walls, Inc. v. Patterson, Thuente, Skaar & Christensen, P.A., 2011
WL 2845529, *5 (D. Minn. July 18, 2011);
To the extent Dr. Rasty's testimony may include inaccuracies,
discrepancies or conclusions lacking support, these would be proper
subjects for cross‐examination. See Daubert, 509 U.S. at 596.
Accordingly, Octane's motion to strike the portions of Dr. Rasty's
testimony on equivalence is denied.
Icon Health & Fitness, Inc., v. Octane Fitness, LLC, 2011 WL 2457914, *8 (D. Minn.
June 17, 2011); see also, Roederer, 2010 WL 489529 at *4 (Ericksen, J.) (denying
motion to exclude in part and holding that "Roederer may attack Simonson's
testimony with vigorous cross‐examination and the presentation of contrary
evidence."); In re: St. Jude Medical Inc. Silzone Heart Valves Products Liability
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Litigation, 493 F. Supp. 2d 1082, 1088 (D. Minn. 2007) (denying motion to exclude
expert testimony and holding that "defendant's objections to the factual support for
[the challenged expert's] opinion more appropriately go to the weight of the opinion
than the admissibility."); Edina Realty, Inc. v. TheMLSonline.com, 2006 WL 737064,
*3 (D. Minn. Mar. 20, 2006) (denying motion to exclude expert testimony and
holding that "vigorous 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.").
In fact, as the Federal Circuit has recognized, the inspection of the accused
device is not a prerequisite to being able to offer testimony on infringement. See
Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196, 1200 (Fed. Cir. 1987). In
Data Line, the Federal Circuit affirmed the trial court's decision to permit expert
testimony over the infringer’s objections, even though the expert failed to physically
inspect the accused device or read its source code. Id. Specifically, the Federal
Circuit rejected the attacks on the patentee's expert, noting that "[t]he jury was
presented with evidence that physical inspection of the [accused device] would be a
useless undertaking."
This case, like Data Line, involves an attack on an expert for failing to engage
in such a "useless undertaking." Westlaw involves literally millions of portions of
text‐based data. The fact that Westlaw might contain additional portions beyond
"the plurality" required by the claims of the '592 patent is irrelevant – the addition
of further elements (in this case, portions of text‐based data) does not negate
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infringement. See, e.g., Data Line, 813 F.2d at 1202 (noting that "a reasonable jury
could have concluded that [] additional features do not produce a 'radically
different' system and therefore are not inconsistent with the determination of
infringement").
Even if this Court rewrote its claim construction to exclude any possibility of
other, additional portions of text‐based data lacking any linking means, Dr. Frieder's
testimony would still be admissible to support TimeBase's infringement claim. Dr.
Frieder's testimony shows that he spent several days examining the content of
Westlaw for purposes of comparing the content of that system to the claims of the
patents‐in‐suit. (Exhibit C, Deposition of Ophir Frieder, at 19‐20). He also he spent
dozens of hours examining the defendants' documents which have been produced in
this case, as well as testimony provided by the defendants' own employee witnesses.
(Id. at 19‐20 and 255‐56). At trial, the evidence will show that: (1) Dr. Frieder
located a multitude of portions of text‐based data within Westlaw that were
encoded with at least one linking means as required by the claims of the '592 patent;
and (2) it would not have been feasible for him to review each and every portion of
text‐based data accessible via Westlaw. Logic – let alone the technical expertise
from a person of skill – would dictate that it would be reasonable under these
circumstances for Dr. Frieder to deduce what the portions of text‐based data in the
Westlaw system include. In short, the defendants attack Dr. Frieder for relying upon
deductive as opposed to inductive reasoning. Dr. Frieder, however, did inspect the
accused Westlaw system extensively. He did far more than the technical experts
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whose opinions were upheld by the Federal Circuit in Data Line. Thus, the
defendants' attack on Dr. Frieder's opinions should be rejected.
B.
Dr. Frieder's Opinions In Relation To The Word
"Displaying" Are Reliable
The defendants also contend that "Dr. Frieder should not be allowed to testify
that defendants perform or control the 'displaying' steps of the '228 patent." (Dkt.
237, Defendants' Memo, at 12). As the underlying basis for this argument, the
defendants contend that Dr. Frieder was required to opine as to how the defendants
specifically control or direct the act of "displaying" as that term has been construed
by the Court. (Id. at 13). The defendants contend that absent such an analysis, Dr.
Frieder's opinions directed to any limitations in the claims of the '228 patent which
recite the step of "displaying" are unreliable.
Here, again, the defendants' argument is based upon their own improper
interpretation of the Court's order construing the disputed claims terms of the
patents‐in‐suit. The Court's construction of the term "displaying" requires the act of
"showing [text‐based data, search results, or links] on an electronic video device
capable of changing in real time in response to inputs, such as a CRT monitor, an
LCD monitor, or a projector and screen." (Dkt. 219, Order on Claim Construction, at
25). The key language in that construction is the word "showing." That is the act
which TimeBase must ultimately demonstrate is directed or controlled by the
defendants. It is not necessary for Dr. Frieder to opine – or for TimeBase to
demonstrate at trial – that the defendants "provide the computer equipment
necessary to complete the act of 'displaying.'" (Dkt. 237, Defendants' Memo, at 2).
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To the extent that the defendants contend otherwise, they are once again mistaken
as to the proper application of law in this case.
As discussed in greater detail in TimeBase's concurrently filed Response to
Defendants' Motion for Summary Judgment, the defendants most certainly do
control the act of "displaying" as recited in the claims of the '228 patent – that much
is abundantly clear.3 Putting aside any disputes that the parties may have over how
the law should be applied to this issue (an issue which is not properly the subject of
expert testimony in the first instance, EZ Dock, 2003 WL 1610781 at *7), Dr. Frieder
has provided sound expert opinions as to the "displaying" steps recited in the
claimed methods of the '228 patent. More specifically, Dr. Frieder provided
opinions on the application of this claim language to the defendants' acts in relation
to operating Westlaw. (See e.g., Exhibit B, Expert Report of Ophir Frieder dated
February 28, 2011, at 85‐93).
The defendants acknowledge Dr. Frieder's opinions in this regard, but then
proceed to complain that those opinions were provided in a "passive" context and
were based upon Dr. Frieder's purported misunderstanding of the sworn testimony
of the defendants' own employee witness. (Dkt. 237, Defendants' Memo, at 14‐15).
These objections do not form a basis for excluding Dr. Frieder's testimony,
particularly when that testimony will be the subject of cross‐examination, rebuttal
testimony, contrary expert testimony, and other forms of attack when this case
In the interest of brevity, TimeBase respectfully directs the Court to Section IV of TimeBase's
concurrently filed Response to Defendants' Motion for Summary Judgment, which includes a more
detailed analysis as to why the defendants' arguments directed to the word "displaying" are
incorrect. TimeBase incorporates that analysis herein by reference.
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proceeds to trial. See Rockwood Retaining, 2011 WL 2845529 at *5; Icon Health,
2011 WL 2457914 at *8; Roederer, 2010 WL 489529 at *4; In re: St. Jude Medical,
493 F. Supp. 2d at 1088; Edina Realty, 2006 WL 737064 at *3.
V.
THERE IS NO BASIS TO EXCLUDE ANY OF DR. FRIEDER'S
"OTHER" OPINIONS RELATING TO INFRINGEMENT
In the final paragraph of their motion, the defendants suggest that there are
other limitations in the asserted claims of the patents‐in‐suit (in addition to "each"
and "displaying") which Dr. Frieder purportedly failed to address in his expert
report. (Dkt. 237, Defendants' Memo, at 16‐17). The defendants allege that the
chart provided at pages 16‐17 of their motion "makes clear that Dr. Frieder did not
do the analysis required of an infringement expert in a patent case." (Id. at 17).
TimeBase disagrees. The chart provided by the defendants is anything but clear.
The defendants' chart is largely redundant of the issues already addressed by
TimeBase above. Most, if not all, of the issues identified in the defendants' chart
involve disputes over the proper application of law. Other aspects of the chart (such
as the reference to what is or is not present in "blue underlined text within
Westlaw") are certainly not "claim requirements" as mistakenly suggested by the
defendants. In any event, even a cursory review of Dr. Frieder's expert report
demonstrates that he opined on each term of the asserted claims of the patents‐in‐
suit. The defendants' conclusory allegations to the contrary are without merit.
VI.
CONCLUSION
The defendants have provided no valid basis to exclude any one of Dr.
Frieder's opinions relating to the topic of infringement from being presented at trial,
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much less the entirety of his opinions in this regard. The defendants will have the
opportunity to test Dr. Frieder's testimony before the jury. For all of the foregoing
reasons, the defendants' motion to exclude should be denied.
Dated: July 21, 2011
/s/ Joseph N. Hosteny
Joseph N. Hosteny
Arthur A. Gasey
Robert A. Conley
Niro, Haller & Niro
181 West Madison Street, Suite 4600
Chicago, IL 60602
Telephone: 312‐236‐0733
Fax: 312‐236‐3137
Email: hosteny@nshn.com
Email: gasey@nshn.com
Email: rconley@nshn.com
Michael R. Cunningham
Attorney No. 20424
Gray, Plant, Mooty,
500 IDS Center
80 South Eighth Street
Minneapolis, Minnesota 55402
Telephone: (612) 632‐3000
Fax: (612) 632‐4444
Email: michael.cunningham@gmplaw.com
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