Timebase Pty Ltd v. Thomson Corporation, The

Filing 271

REPLY re 243 MOTION to Exclude Expert Testimony corrected filed by Thomson Corporation, The, West Publishing Corporation, West Services. (Attachments: # 1 LR7.1 Word Count Compliance Certificate)(Wagner, Kevin)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

TIMEBASE PTY LTD.,

Civil No. 07-1687 (JNE/JJG)
Plaintiff,

vs.

DEFENDANTS’ REPLY
MEMORANDUM IN SUPPORT OF
DEFENDANTS’ MOTION TO
EXCLUDE TESTIMONY OF DR.
OPHIR FRIEDER

THE THOMSON CORPORATION,
WEST PUBLISHING CORPORATION,
and WEST SERVICES, INC.,
Defendants.

Dr. Frieder did not perform the analysis required of an infringement expert—he
did not compare the accused device to each claim limitation as construed by the Court.
TimeBase admits that Dr. Frieder did not analyze the “each predefined portion”
limitation of the ‘592 patent because “it would not have been feasible for him to review
each and every portion of text-based data accessible via Westlaw.” (TimeBase Br. at 9.)
TimeBase also admits that Dr. Frieder’s opinion on the ‘228 patent’s limitation of
“displaying” was “provided in a ‘passive’ context” and therefore did not address who
performed the act of “showing on an electronic video device.” (Id. at 11.) In addition to
these failings, TimeBase offers no substantive explanation for Dr. Frieder’s failure to
address other claim limitations, including the requirement in each of the claims of a
“multidimensional space” as defined by the Court. (Id. at 12.) Despite all of these
failures, TimeBase nonetheless requests that Dr. Frieder be permitted to testify about

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other limitations in the claims, presumably so that TimeBase can create the impression
for the jury of having an infringement expert. TimeBase’s request should be rejected.
A. TIMEBASE ADMITS THAT DR. FRIEDER’S INFRINGEMENT
ANALYSIS HAS GAPING HOLES.
TimeBase attempts to excuse the gaping holes in Dr. Frieder’s infringement
analysis by suggesting that they result from “the parties fundamentally disagree[ing] over
the scope of the claims of the patents in suit.” (Id. at 1-2.) But the claim language, as
construed by the Court, is perfectly clear. As TimeBase admits, Dr. Frieder simply did
not apply this language to the accused Westlaw system.
TimeBase Admits Dr. Frieder Did Not Analyze Each of the Millions of
Predefined Portions to Determine Whether They Are Encoded with Linking Means.
TimeBase acknowledges that Westlaw “involves literally millions of portions of textbased data” (id. at 8) and argues that asking Dr. Frieder to examine each portion to
determine whether it has linking means would be a “useless undertaking” (id. at 8
(quoting Data Line Corp. v. Micro Techs., Inc., 813 F.2d 1196, 1200-01(Fed. Cir. 1987)).
But the Data Line court excused an expert’s failure to examine the accused product only
because there was other—better—evidence concerning operation of the accused system.
Id. In contrast, neither TimeBase nor Dr. Frieder can point to any evidence or analysis
performed by Dr. Frieder regarding the “each predefined portion” limitation of the ‘592
patent.

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TimeBase seeks to justify its failure to perform an analysis of every predefined
portion of text by contending that it can show at trial that “it would not have been feasible
for [Dr. Frieder] to review each and every portion of text-based data accessible via
Westlaw.” (TimeBase Br. at 9.) Whether or not that is true, it does not excuse Dr. Frieder
from having to perform a reliable analysis of each claim limitation. As Dr. Frieder
himself noted in his expert report, “a claim is infringed when all the elements of that
claim are present in the accused system or practiced by the accused method.” (Dkt. 2381at 6 (emphasis added).) Yet, as Dr. Frieder has admitted, he did not even attempt to
determine whether each predefined portion of text within Westlaw is encoded with
linking means. (Dkt. 238-2 at 158, 161.)
TimeBase now tries to backpedal from this admission with the confusing assertion
that “Dr. Frieder [relied] upon deductive as opposed to inductive reasoning” in analyzing
the “each” limitations. But nowhere has Dr. Frieder described how he performed any sort
of analysis of the “each” limitation, whether inductive, deductive, or otherwise. Dr.
Frieder’s expert report is completely silent on this point.1 Dr. Frieder’s entire analysis of
the “each predefined portion” limitation consists of the following passage:

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To the extent that Dr. Frieder might otherwise testify at trial that he performed some
sort of deductive analysis to determine that the “each” limitations are found in the
accused system, he has not disclosed this analysis as required by the Federal Rules. See
Fed. R. Civ. P. 26(a)(2)(B)(i) (requiring “a complete statement of all opinions the
[expert] witness will express and the basis and reasons for them”) (emphasis added).
Under these circumstances, Dr. Frieder cannot provide testimony based on any such
undisclosed analysis. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d
1355, 1368-69 (Fed. Cir. 2006); Air Turbine Tech., Inc. v. Atlas Copco AB, 410 F.3d 701,
713 (Fed. Cir. 2005); Am. Med. Sys., Inc. v. Laser Peripherals, LLC, 712 F. Supp. 2d
885, 901 (D. Minn. 2010) (Ericksen, J.).
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For example, Figure 592-1-6 shows a stored predefined portion (26 U.S.C.A. 213
as it existed from January 1, 1997 to December 31, 2004) with a linking means,
while Figure 592-1-7 shows a predefined portion stored in a modified form (26
U.S.C.A. 213 as effective since January 1, 2005) also having linking means. In
both figures, the added red box (around “Prior”) highlights an example of the
linking means.
(Dkt. 238-1 at 12-13.) The captions under Figure 592-1-6 and Figure 592-1-7 add that
these figures are “representative” and that “[a]dditional exemplary linking means are also
shown (e.g., ‘Previous Section’ and ‘Next Section’).” (Id. at 13-14.) That is it. Dr.
Frieder makes some other comments about the structure and function of “linking means,”
but he provides no further analysis of the “each” requirement. TimeBase cannot now be
excused from Dr. Frieder’s choice not to apply the limitation requiring “each predefined
portion” to be encoded with linking means to the accused Westlaw system.
TimeBase Admits Dr. Frieder Failed to Analyze Who Performs “Displaying.”
TimeBase admits that Dr. Frieder’s opinion on displaying was “provided in a ‘passive’
context,” and thereby concedes that he provided no reasoned opinion on who performs
the act of “showing on an electronic video device.” (TimeBase Br. at 11.) Dr. Frieder
similarly failed to provide any analysis of whether defendants control the step of
“displaying” as it is performed by end-users. Instead, TimeBase seeks to overcome this
failure by ignoring the Court’s claim construction and arguing that “displaying means
providing.” (Dkt. 258, TimeBase Opposition to Summary Judgment at 36.) But the
Court has already construed “displaying” to mean “showing on an electronic video
device.” (Dkt. 219 at 25.) Dr. Frieder has not provided any analysis of how defendants
perform, control, or direct the step of “showing on an electronic video device.”
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TimeBase Does Not Address the Other Limitations Dr. Frieder Ignored. In their
initial brief, defendants pointed to several additional examples of claim limitations that
Dr. Frieder failed to analyze. (Dkt. 237 at 16-17.) These limitations included the
requirement that each claim have a “multidimensional space,” which under the Court’s
claim construction is “an area not having boundaries” and requires “point-to-point
movement.” Rather than attempting to explain these further deficiencies, TimeBase
responds by criticizing defendants’ chart as “anything but clear” and “redundant.”
(TimeBase Br. at 12). TimeBase asserts that “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.” (Id.) TimeBase does not even attempt to identify in his expert report
Dr. Frieder’s analysis of the specific limitations challenged by defendants, because no
such analysis exists. Accordingly, TimeBase has no answer to any of the gaping holes in
Dr. Frieder’s opinions.
B. ANY TESTIMONY DR. FRIEDER MIGHT OFFER DESPITE HIS
FAILURE TO ANALYZE INFRINGEMENT WOULD BE UNRELIABLE,
CONFUSING, AND UNFAIRLY PREJUDICIAL.
TimeBase has effectively conceded that unless the Court accepts TimeBase’s
rewriting of the claims, Dr. Frieder’s opinions on infringement are fundamentally
unsupported and therefore unreliable. Yet TimeBase then suggests that “[e]ven if Dr.
Frieder is not permitted to offer an opinion at trial as to the ultimate issue of whether
defendants infringe any claims of the patents-in-suit, Dr. Freider should still be permitted
to testify to facts pertaining to the comparison of claims of the patents-in-suit to the
content of the accused Westlaw system.” (TimeBase Br. at 4.) The Court should reject
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TimeBase’s request. As Dr. Frieder himself has noted, “[his] role in this case is to
provide expert opinions on infringement.” (Dkt. 238-1 at 3.) Having failed to conduct an
infringement analysis, Dr. Frieder has no relevant opinion on infringement.
Given the undisputed deficiencies in Dr. Frieder’s proffered testimony, the Court
should recognize the true nature of TimeBase’s request. TimeBase seeks to confuse and
mislead the jury and unfairly prejudice defendants’ case by putting forth an expert to
create the impression that TimeBase has an expert witness on infringement when, in fact,
it does not. TimeBase cannot secure the benefit of presenting expert testimony when the
expert has not performed the analysis required of him under the governing legal
standards. See Liquid Dynamics Corp. v. Vaughan Co., No. 01C6934, 2004 WL
2260626, at *4-5 (N.D. Ill. Oct. 1, 2004) (excluding an expert’s testimony in its entirety
as irrelevant, unfairly prejudicial, and confusing where the expert’s opinion was based on
an incorrect construction of a single key claim limitation), aff’d , 449 F.3d 1209, 1224 n.2
(Fed. Cir. 2006); see also PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342,
1348-49, 1354-55 (Fed. Cir. 2007) (affirming that the testimony of patentee’s
infringement expert should have been excluded because the expert performed no
infringement analysis of a key claim limitation beyond drawing unreasonable inferences
from defendants’ marketing materials). Accordingly, the Court should exclude Dr.
Frieder’s testimony in its entirety.

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Respectfully submitted,

Dated: July 28, 2011

s/Calvin L. Litsey
David J.F. Gross (# 208772)
Calvin L. Litsey (# 153746)
Mary V. Sooter (pro hac vice)
Kevin P. Wagner (# 34008X)
Katherine S. Razavi (#388958)
Faegre & Benson LLP
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, Minnesota 55402
[e-mail];
[e-mail];
[e-mail];
[e-mail];
[e-mail]
Attorneys for Defendants The Thomson
Corporation, West Publishing Corporation,
and West Services, Inc.

fb.us.7068751.05

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