Gonzalez v. InfoStream Group Inc.
Filing
163
ORDER granting in part and denying in part 118 Motion to Strike. Signed by Magistrate Judge Roy S. Payne on 2/7/2016. (rsp3, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
EMMANUEL C. GONZALEZ,
Plaintiff,
v.
INFOSTREAM GROUP, INC.,
Defendant.
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Case No. 2:14-cv-906-JRG-RSP
MEMORANDUM ORDER
Pending before the Court is Plaintiff Emmanuel C. Gonzalez’s Motion to Exclude and/or
Strike the Expert Report and Opinions of Daniel Manheim. (Dkt. No. 118.) Gonzalez asks the
Court to exclude Mr. Manheim’s testimony relating to (1) the eBay references; (2) anticipation
and obviousness; (3) subject matter eligibility; and (4) Dr. Garlick’s testimony. Gonzalez also
asks the Court to strike Mr. Manheim’s testimony relating to (1) the level of ordinary skill in the
art and (2) Mr. Gonzalez’s level of skill in the art.
MOTION TO EXCLUDE
I.
APPLICABLE LAW
Rule 702 provides that an expert witness may offer opinion testimony if (a) the expert’s
scientific, technical, or other specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c)
the testimony is the product of reliable principles and methods; and (d) the expert has reliably
applied the principles and methods to the facts of the case. Fed. R. Evid. 702.
“The inquiry envisioned by Rule 702 is . . . a flexible one,” but, in Daubert, the Supreme
Court held that the Rules also “assign to the trial judge the task of ensuring that an expert’s
testimony both rests on a reliable foundation and is relevant to the task at hand.” Daubert v.
Merrell Dow Pharms. Inc., 509 U.S. 579, 594, 597 (1993); see also Apple Inc. v. Motorola, Inc.,
757 F.3d 1286, 1321 (Fed. Cir. 2014) (“Experts routinely rely upon other experts hired by the
party they represent for expertise outside of their field.”); TQP Dev. LLC v. 1-800-Flowers.com,
Inc., Case No. 2:11-cv-248-JRG, 2015 WL 6694116, at *4 (E.D. Tex. Nov. 3, 2015) (“Dr.
Becker was entitled to rely upon Dr. Jager’s technical analysis when constructing his damages
model and presenting it to the jury.”).
“The relevance prong [of Daubert] requires the proponent [of the expert testimony] to
demonstrate that the expert’s ‘reasoning or methodology can be properly applied to the facts in
issue.’” Johnson v. Arkema, Inc., 685 F.3d 452, 459 (5th Cir. 2012) (quoting Curtis v. M & S
Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999)). “The reliability prong [of Daubert]
mandates that expert opinion ‘be grounded in the methods and procedures of science and . . . be
more than unsupported speculation or subjective belief.’” Johnson, 685 F.3d at 459 (quoting
Curtis, 174 F.3d at 668).
In assessing the “reliability” of an expert’s opinion, the trial court may consider a list of
factors including: “whether a theory or technique . . . can be (and has been) tested,” “whether the
theory or technique has been subjected to peer review and publication,” “the known or potential
rate of error,” “the existence and maintenance of standards,” and “general acceptance” of a
theory in the “relevant scientific community.” Daubert, 509 U.S. at 593–94; see also Kumho Tire
Co., Ltd. v. Carmichael, 526 U.S. 137, 150 (1999) (“Daubert makes clear that the factors it
mentions do not constitute a ‘definitive checklist or test.’”); U.S. v. Valencia, 600 F.3d 389, 424
(5th Cir. 2010).
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“The proponent need not prove to the judge that the expert’s testimony is correct, but she
must prove by a preponderance of the evidence that the testimony is reliable.” Johnson, 685 F.3d
at 459 (quoting Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc)). At
base, “the question of whether the expert is credible or the opinion is correct is generally a
question for the fact finder, not the court.” Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d
1283, 1296 (Fed. Cir. 2015).
II.
ANALYSIS
A.
eBay References, Database, and Source Code
Gonzalez asserts that the parts of Mr. Manheim’s report relating to the eBay reference
should be excluded under Daubert because he did not use any reliable methodology to reach his
conclusions. Gonzalez notes that “Mr. Manheim looked solely at various screenshots of the eBay
website—purported to predate the Gonzalez Patents—and conclusorily states that ‘digital labels’
and a ‘relational database’ were utilized by the early eBay website.” (Dkt. No. 118 at 8.)
Gonzalez contends that based on Mr. Manheim’s review, he cannot testify “on the eBay backend
technologies.” (Dkt. No. 118 at 11–12.)
The Court finds that Mr. Manheim’s testimony passes Daubert. The crux of Gonzalez’
contention is: “At a bare minimum, Mr. Manheim could have cited source code or testimony as
to the actual database systems used by eBay during the relevant period.” (Dkt. No. 118 at 9.) The
Court agrees with Gonzalez that this may have been the ideal way for Mr. Manheim to examine
the eBay reference because in many cases source code is the best and most direct evidence of
how a software or an internet feature functions.
However, Daubert does not require an expert to rely on only direct evidence to reach her
conclusions. Sometimes, an expert can rely on circumstantial evidence. For example, an expert
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can find that a Wi-Fi chip in a phone complies with the Wi-Fi standard if the phone can connect
to the internet while only connected to a router. Daubert does not require the expert to then
gather direct evidence by examining the code associated with the chip. Gonzalez, thus, has not
shown that it is inherently unreliable for Mr. Manheim to use screenshots as indirect evidence for
the conclusions in his report.1
Gonzalez also asserts the Mr. Manheim cannot testify, at all, on either the eBay “database
or source code” because he never reviewed information on those topics. (Dkt. No. 118 at 11.)
The Court resolves this without Daubert. Rule 26 prevents Mr. Manheim from testifying outside
the scope of his report. Fed. R. Civ. P. 26(a) (2). Thus, if Mr. Manheim did not disclose that he
reviewed the eBay source code in his report, Mr. Manheim may not state that at trial. (See Dkt.
No. 119-1 ¶12.) However, neither Rule 26 nor Daubert bars Mr. Manheim from responding to
testimony about the eBay source code presented by Gonzalez’s witnesses at trial.
Finally, NLV has now provided a declaration from Mr. Manheim’s which states among
other things that he has “personal experience and knowledge of the eBay website that was
publically used in the United States prior to July 1, 2000” (Dkt. No. 122-1 ¶3) and that he “had
direct professional interaction with engineers who personally worked on developing the ‘back1
Gonzalez makes two additional arguments that the Court will not address in a Daubert motion.
First, Gonzalez suggests that the eBay reference is inadmissible because it is not authenticated.
This issue should have been raised at the pretrial conference. Second, Gonzalez claims that Mr.
Manheim’s testimony on obviousness should be excluded because it does not address the
secondary considerations of non-obviousness. To the extent that this request is not a motion for
summary judgment of non-obviousness, the Court notes as follows: a defense of obviousness is a
question of law with underlying facts to be resolved by the Jury. The underlying facts include the
scope and content of the prior art, the differences between the prior art and the claims, and the
level of ordinary skill in the art. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966).
The facts also include secondary considerations of non-obviousness. See Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010). Mr.
Manheim can attempt to establish a prima facie case of obviousness based the factual contents of
the eBay reference. Gonzalez may rebut that prima facie case with its own facts such as those on
the secondary considerations. Transocean, 617 F.3d at 1305.
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end’ of the eBay website, and this corroborated my knowledge that the eBay website stored and
searched the data for auction listings using a relational database” (Dkt. No. 122-1 ¶5). The Court
finds that this declaration is an untimely attempt to supplement Mr. Manheim’s report. The
declaration is stricken. To the extent the substance of the declaration is not in Mr. Manheim’s
existing reports he many not testify to those facts under Rule 26.
B.
Anticipation and Obviousness
Gonzalez asserts that “Mr. Manheim’s opinions with regard to the Meta-Tags and their
anticipatory or obviousness impact on the Gonzalez Patents should be stricken” because “they
are unsupported by evidence and are merely conclusory statements passed off as facts.” (Dkt.
No. 118 at 16.) Gonzalez argues that Mr. Manheim has not cited evidence in support of several
points of testimony.
The Court finds that Mr. Manheim’s testimony clears Daubert. An example of unreliable
testimony that Gonzalez points to is Mr. Manheim’s statement that “Meta-tags are also gathered
and ‘domiciled’ on the computers of a search-engine such as Altavista, Excite, and
Infoseek/Go.com, when the search engine indexes/crawls the webpage.” (Dkt. No. 118 at 16.)
The Court finds that there is sufficient support for this conclusion. In Mr. Manheim’s report, he
says that “Excite and Altavista allow searches that filter on meta-tag values, specifically the
‘lang’ meta-tag, as shown by the following screenshots.” (Dkt. No. 119-1 ¶173.) This
observation and the screenshots provide at least some indirect evidence that Excite and Altavista
are run on computers which “domicile” meta-tags.
C.
Subject Matter Eligibility
Gonzalez assets Mr. Manheim’s testimony on subject matter eligibility should be stricken
because “[v]alidity under section 101 is a threshold question of law.” (Dkt. No. 118 at 17.) The
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Court does not exclude these parts of Mr. Manheim’s report because NLV said that it would not
present subject matter eligibility at trial. NLV said that subject matter eligibility was in the report
as support for NLV’s motion for summary judgment. See Accenture Glob. Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“This legal conclusion may
contain underlying factual issues.”).
D.
Rebuttal of Dr. Garlick’s Testimony
Two instructions arise from this issue. First, NLV may offer testimony which shows that
Dr. Garlick applied different constructions for validity and infringement. Second, Mr. Manheim
may not apply Dr. Garlick’s constructions if Mr. Manheim disagrees with them. Rule 702
permits an expert to rely on the word of another expert only if it is reasonable to do so. See Apple
Inc. v. Motorola, Inc., 757 F.3d 1286, 1321 (Fed. Cir. 2014). The Court notes that it is seldom, if
ever, reasonable for an expert to draw an ultimate conclusion based on the disputed opinion of a
rival expert. See Better Mouse Company, LLC v. SteelSeries ApS, 2:14-cv-198-RSP, Dkt. No.
308, at *6 n.2 (E.D. Tex. Jan. 5, 2016) (“The issue of improper expert reliance arises when two
experts disagree on the same issue and one expert draws an ultimate conclusion based on the
testimony of the expert that she disagrees with. For example, when an alleged infringer’s expert
relies on the patentee’s expert’s testimony on the contested plain and ordinary meaning of a term
to show that an asserted patent is invalid.”).
MOTION TO STRIKE
A.
Level of Ordinary Skill in the Art
Gonzalez asserts that Mr. Manheim cannot testify on the level of ordinary skill in the art
because NLV did not oppose Gonzalez’s definition during claim construction. (See Dkt. No. 109
at 9 (“Defendants do not oppose . . . and have not submitted a competing definition of the person
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of ordinary skill in the art.”).) The Court finds that NLV may argue the level of ordinary skill in
the art at trial. NLV served Mr. Manheim’s report disclosing his testimony on the level of
ordinary skill in November 2015. (Dkt. No. 119-1 at 87.) Gonzalez has had sufficient time to
challenge Mr. Manheim’s testimony through a rebuttal report and a deposition. Thus, Gonzalez
has not been prejudiced by Mr. Manheim’s testimony despite NLV having not raised it at claim
construction.
Furthermore, Mr. Manheim’s testimony is important, and the Court would benefit from
the Jury’s factfinding. The Federal Circuit has consistently held that “[o]bviousness is a question
of law based on underlying questions of fact.” See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501
F.3d 1254, 1256 (Fed. Cir. 2007). “The underlying factual inquiries in an obviousness analysis
include: ‘(1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4) objective evidence of
nonobviousness.’” Daiichi, 501 F.3d 1256 (quoting In re Dembiczak, 175 F.3d 994, 998 (Fed.
Cir. 1999)).
B.
Mr. Gonzalez’s Technical Abilities
The Court excludes under Rule 403 the statement that Mr. Gonzalez “deliberately misled
the patent office.” (Dkt. No. 119-1 ¶303.) NLV has not asserted inequitable conduct as defense,
and the probative value of this type of testimony is substantially outweighed by the risk of unfair
prejudice. The testimony relating to Mr. Gonzalez’s statements on “meta-tags,” however, is not
excluded because whether the Patent Office was able to accurately consider the prior art is a fact
question that affects the weight of the evidence on invalidity. The remainder of this argument
relates to Mr. Manheim’s testimony that appears in the subject matter eligibility section of his
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report. NLV has agreed that it would not raise subject matter eligibility before the Jury,
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therefore, the Court will not strike this testimony.
CONCLUSION
NLV has shown that the bulk of Mr. Manheim’s testimony is admissible. The Motion to
Strike (Dkt. No. 118) thus is GRANTED-IN-PART and DENIED-IN-PART consistent with
the Court’s reasoning. The Motion is GRANTED as to allegations that Gonzalez “deliberately
misled the patent office,” any attempt by an expert to apply a claim construction that the expert
disagrees with, and any testimony that is prohibited by Rule 26. The Motion is DENIED as to all
remaining issues.
SIGNED this 3rd day of January, 2012.
SIGNED this 7th day of February, 2016.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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