Prism Technologies v. Sprint Spectrum L.P.

Filing 424

ORDER denying 271 motion to strike; denying 274 motion to exclude. Ordered by Senior Judge Lyle E. Strom. (JDR)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P., D/B/A
)
SPRINT PCS,
)
)
Defendant.
)
______________________________)

8:12CV123

MEMORANDUM AND ORDER

This matter comes before the Court on two related
motions.

First, Sprint filed a motion (Filing No. 271) to

strike, or exclude, Mr. Minor’s “new” opinion.

Second, plaintiff

Prism Technologies, L.L.C. (“Prism”) filed a Daubert motion
(Filing No. 274) to exclude certain opinions and testimony of Dr.
Melvin Ray Mercer, the retained expert of defendant Sprint
Spectrum L.P., doing business as Sprint PCS. (“Sprint”).

Second,

The relation between these two motions is the perceived dispute
between the parties as to what the word “use” means.

After

review of the motions, briefs, indices of evidence, and relevant
case law, the Court finds as follows.
I.

ISSUE
In its Markman order, the Court construed “Internet

Protocol network” terms (“an Internet Protocol network,” “network
utilizing at least one Internet Protocol,” and “a network

utilizing at least one Internet Protocol”) to mean “an untrusted
network using any protocol of the Internet Protocol Suite
including at least one of IP, TCP/IP, UDP/IP, HTTP, and HTTP/IP.
. . .”

Filing No. 133, at 67 (emphasis added).

In Prism’s

motion to exclude the opinions of Dr. Mercer, Prism alleges that
Dr. Mercer impermissibly construed “using” to mean “routing.”
Filing No. 275, at 1, Filing No. 290.

In Sprint’s motion to

strike or exclude the “new” opinion of Mr. Minor, Sprint alleges
that Mr. Minor impermissibly construed “using” to mean
“carrying.”

Filing No. 275 at 2-4; Filing No. 303 at 2.

In the

current motion to exclude conflicting expert testimony, the issue
before the Court is whether these constructions are consistent
with the Court’s construction of “Internet Protocol Network.”
II.

STANDARD OF REVIEW
The Court must determine whether these experts’

specialized knowledge will assist the trier of fact to understand
evidence or to determine a fact in issue.

Fed. R. Evid. 702.

Under Rule 702, the Court considers whether (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.

The Court’s role is to act as a gatekeeper, excluding

evidence if it is based upon unreliable principles or methods, or
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legally insufficient facts and data and must be sufficiently tied
to the facts of the case that it will aid the jury in resolving a
factual dispute.

See, e.g., Daubert, 509 U.S. at 595 (“The

focus, of course, must be solely on principles and methodology,
not on the conclusions that they generate.”).

The Court is

mindful not to overstep its gatekeeping role and weigh facts,
evaluate the correctness of conclusions, impose its own preferred
methodology, or judge credibility, including the credibility of
one expert over another.

Apple, Inc. v. Motorola, Inc., 757 F.3d

1286, 1314 (Fed. Cir. 2014) (citing Smith v. Ford Motor Co., 215
F.3d 713, 718 (7th Cir. 2000).
for the fact finder.

These tasks are solely reserved

Id. (citing Smith, 215 F.3d at 718).

The

proponent of the expert testimony must prove its admissibility by
a preponderance of the evidence.
n.10.

Daubert, 509 U.S. at 592-93,

“[T]estimony is inadmissible if it is speculative,

unsupported by sufficient facts, or contrary to the facts of the
case.”
In Transamerica Life Insurance Co. v. Lincoln National
Life Insurance Co., the United States District Court for the
Northern District of Iowa offered detailed insight into
conflicting interpretations of patent constructions.
Transamerica Life Ins. Co. v. Lincoln Nat'l Life Ins. Co., 597 F.
Supp. 2d 897, 910-15 (N.D. Iowa 2009) (citing Kemin Foods, L.C.
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v. Pigmentos Vegetales Del Centro S.A. de C.V., 4:02CV40327, 2004
WL 5508752, *4 (S.D. Iowa Sept. 9, 2004)).

“[I]t should be the

responsibility of the parties, in the first instance, to make a
timely objection that an opposing party is offering a
construction that is or may be contrary to the court's
construction or that the court has already rejected.

When

presented with such an objection that the court finds to be
well-founded, the court will exclude or strike the offending
testimony.”

Id. at 913.

In the “exceedingly rare” circumstance

where opposing parties demonstrate a “difference between an
offering party's construction and the court's construction, that
difference goes to the weight to be given to the offering party's
arguments or constructions.”

Id. at 914.

“[C]ross-examination

and impeachment of an offering party's expert concerning the
expert's interpretation and application of the court's claim
constructions may reasonably and properly include the
plausibility of the expert's interpretation and application of
the court's claim construction in light of the court's claim
construction itself. . . .”

Id.

III. DISCUSSION
The parties each hold the burden for substantiating the
admissibility of their experts’ opinions.

Though each side

argues vigorously that their expert’s opinion is the sole
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interpretation of the word “using,” the Court does not agree.
Both interpretations are reasonable on their face.

When the

conflicting opinions are offered, opposing counsel can crossexamine that expert and let the jury decide who holds the better
interpretation.

The Court further finds that the purportedly new

opinion is not new because it falls within the scope of Mr.
Minor’s expert report.
IT IS ORDERED:
1) Plaintiff’s motion (Filing No. 271) to exclude
certain opinions and testimony of Dr. Mercer is denied.
2) Defendant’s motion (Filing No. 274) to strike, or
exclude, Mr. Minor’s “new” opinion is denied.
DATED this 9th day of June, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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