Music Choice v. Stingray Digital Group Inc.

Filing 292

MEMORANDUM OPINION AND ORDER re 188 SEALED MOTION Music Choice's Daubert Motion to Strike Deposition Testimony of Defendants' Expert Dr. Michael Shamos, for Presenting Untimely and Undisclosed Opinions filed by Music Choice, 230 SEALED MOTION Alternative Motion for Leave to Serve the Supplemental Expert Report of Samuel Russ, Ph.D. filed by Music Choice.. Signed by Magistrate Judge Roy S. Payne on 11/5/2019. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
MUSIC CHOICE,
Plaintiff,
v.
STINGRAY DIGITAL GROUP INC.,
Defendant.

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Case No. 2:16-cv-00586-JRG-RSP

MEMORANDUM OPINION AND ORDER
Before the Court is (1) Plaintiff Music Choice’s Daubert Motion to Strike Deposition
Testimony of Defendants’ Expert Dr. Michael Shamos for Presenting Untimely and Undisclosed
Opinions (“Motion to Strike”) (Dkt. No. 188) and (2) Music Choice’s Alternative Motion for
Leave to Serve the Supplemental Expert Report of Samuel Russ, Ph.D (“Motion for Leave”) (Dkt.
No. 230).
Music Choice raises two separate arguments within its Motion to Strike. Music Choice first
seeks to exclude Dr. Shamos’ opinion that “the Audio Engine and StillPic Generator components
of the accused Ubiquicast machine purportedly send data between them via a shared RAM
memory, which according to Dr. Shamos, does not qualify as the ‘transmission’ of data as recited
in ’245 claims 10 and 15.” (Dkt. No. 188 at 5.) Music Choice also seeks to exclude Dr. Shamos’
“invalidity opinion that Rothman made MP4 technology obvious.” (Dkt. No. 188 at 6.) Music
Choice filed its Motion for Leave seeking to file a supplemental report to address these opinions
in the event that Music Choice’s Motion to Strike is denied. (Dkt. No. 230.)
The Court will first address Music Choice’s argument regarding the allegedly new
infringement theory and then address Music Choice’s argument regarding the allegedly new
invalidity theory. Finally, the Court will address whether the Motion for Leave should be granted
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to allow Music Choice to supplement its reports to address both the infringement and the invalidity
theory.
I.

INFRINGEMENT THEORY REGARDING COMMON MEMORY
Claim 10 is representative of claim 15 here, and claim 10 is dependent upon claim 1. Claim

1 requires:
1. A method for providing a visual complement to an audio stream, comprising:
transmitting, from a first transmission system to a second transmission system,
audio data corresponding to a selected song; and
transmitting a data packet that was generated using an identifier identifying
the selected song, wherein the data packet includes a media asset identifier
identifying a media asset and further includes song information associated
with the selected song, the song information comprising the title of the song
and the name of the artist who recorded the song, wherein
the step of transmitting the data packet comprises transmitting the data packet
to a receiving system that is configured such that, in response to receiving
the data packet, the receiving system automatically generates a video image
using the information included in the data packet and automatically outputs
the generated video image such that it is received by a display device that
is operable to display the video image to a user of the display device without
the user having to select a menu item, and
the generated video image includes the song information comprising the title
of the song and the name of the artist.
(emphasis added). Claim 10 adds the requirement that “the video image is encoded according to
a Moving Pictures Experts Group (MPEG) standard.”
Within an exhibit to Dr. Shamos’ expert report, Dr. Shamos stated that “[t]he StillPic
Generator and the Audio engine are the same piece of software. Thus one does not transmit to the
other and the StillPic Generator virtual machine cannot act as ‘receiving system’ for the Audio
Engine.” (Dkt. No. 188-5 at 12 (using ECF page number).) Elsewhere within the same report, Dr.
Shamos stated that “Mr. Lavigne testified that the StillPic Generator and the Audio engine are the
same piece of software. Thus one does not transmit to the other and the StillPic Generator virtual

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machine cannot act as ‘receiving system’ for the Audio Engine.” (Id. at 10 (using ECF page
numbers) (internal citations omitted).)
At Dr. Shamos’ deposition, Dr. Shamos stated that, “if the Galaxie StillPic generator
deposits data in RAM, and the Ubiquicast audio engine retrieves it from RAM, there is no
transmission.” (Dkt. No. 188-6 at 58:1–4.) He stated that “[s]oftware components running on the
same box can’t transmit to one another . . . because there is no transmission channel.” (Id. at 58:7–
10.) Dr. Shamos also opined that, “[i]f I put data in RAM and another module of the software takes
it out of RAM, there is no transmission.” (Id. at 58:15–17.)
Music Choice argues that the Dr. Shamos only opines in his expert report “that there was
no ‘transmission’ of data packets between the Audio Engine and StillPic Generator because the
two supposedly were ‘the same piece of software.’” (Dkt. No. 188 at 5.) Based on Dr. Shamos’
statements during his deposition, Music Choice argues that Dr. Shamos pivoted his noninfringement theory to now argue that there is no transmission “because data is purportedly sent
between the StillPic Generator and Audio Engine via shared RAM or common memory.” (Id. at
6.) Music Choice also argues that the terms “RAM” and “common memory” do not appear in the
non-infringement report. (Id.)
After consideration, the Court DENIES Music Choice’s Motion to Strike for allegedly new
infringement theory regarding common memory because the Court concludes that Dr. Shamos’
testimony falls within the scope of his expert report. While Dr. Shamos does not explicitly discuss
a common memory non-infringement theory within his report, Dr. Shamos does discuss a noninfringement theory that no transmission occurs as required by the claims because the Audio
Engine and StillPic Generator are part of the same software program. Dr. Shamos statements
regarding a common memory merely elaborate on the already existing opinions within the expert

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non-infringement report. Gay v. Stonebridge Life Ins. Co., 660 F.3d 58, 64 (1st Cir. 2011)
(“Although his testimony uses different words than the expert report, it was a reasonable
elaboration of the opinion disclosed in the report.”); Sec. & Exch. Comm’n v. Life Partners
Holdings, Inc., 2013 WL 12076934, at *3 (W.D. Tex. Nov. 8, 2013) (quoting Thompson v. Doane
Pet Care Co., 470 F.3d 1201, 1203 (6th Cir. 2006)).
II.

INVALIDITY THEORY REGARDING STREAMING VIDEO USING MP4
The Court notes that Dr. Shamos included within his invalidity charts the following

statement “Rothman expressly discloses MPEG (MP3) . . . . MP3 is an audio codec. However,
Rothman discloses that the materials provided can also be streamed video. Rothman was filed on
April 27, 2001, at which time it was conventional to stream videos using MPEG.” (Dkt. No. 2136 at 13.) Thus, the critical issue here is whether this statement and other statements within the Dr.
Shamos’ report and invalidity charts are sufficient to provide notice of a theory that Rothman made
use of MP4 technology obvious. The Court concludes that Dr. Shamos sufficiently disclosed this
theory, so the Court denies this portion of Music Choice’s Motion to Strike.
At his deposition, Dr. Shamos stated that, “wanting to know about MP3, when MP4 came
along it would be completely obvious to use that as one of the streaming — one of the formats that
could be used with the streaming application.” (Dkt. No. 188-6 at 164:4–7.) Dr. Shamos later stated
that “[t]here is not an express reference to MP4 in my Rothman portion of my report.” (Dkt. No.
188-6 at 165:3–4.) Music Choice contends that Dr. Shamos’ report fails to explicitly or implicitly
discuss MP4 in relation to the Rothman reference. (Dkt. No. 188 at 3 (citing Dkt. No. 188-1 at ¶
4).)
Stingray responded by arguing (1) that “Dr. Shamos’ testimony regarding MP4 technology
is merely an elaboration on the opinions in his report” and (2) that the testimony “was given in

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response to opposing counsel’s deposition questioning.” (Dkt. No. 213 at 9.) Stingray argues that
Dr. Shamos report states that “[i]t is apparent from the development of the prior art that the
following elements/limitations were conventional at the time of the earliest filing date of the
Asserted Patents: . . . MPEG encoding.” (Dkt. No. 213-4 at ¶ 257.) Stingray also points to the
report’s discussion of several other references showing that MPEG-4 video codecs were disclosed
by other prior-art references. (Dkt. No. 213 at 3 n.2 (citing Dkt. No. 213-4 at ¶¶ 133, 169–71, 182–
85, 206, 217–18, 230, 244, 250).)
After reviewing the relevant portions of Dr. Shamos’ report and the relevant portions of
the invalidity charts, the Court concludes that Dr. Shamos sufficiently disclosed the theory that
MP4 technology was rendered obvious by Rothman. Providing notice to opposing counsel of the
expert’s proposed testimony is one of the primary purposes of Rule 26(a)(2)(B). Effective Expl.,
LLC v. BlueStone Nat. Res. II, LLC, No. 216-CV-00607-JRG-RSP, 2017 WL 5895164, at *3 (E.D.
Tex. Nov. 13, 2017), report and recommendation adopted, No. 2:16-CV-00607-JRG-RSP, 2017
WL 5890082 (E.D. Tex. Nov. 29, 2017), appeal dismissed, No. 2018-1365, 2018 WL 3244574
(Fed. Cir. Apr. 26, 2018) (citing Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 642 (7th Cir. 2008)).
The Court concludes that providing notice is the primary concern in this case. The relevant portions
of the report and invalidity charts sufficiently provide notice of this theory. The invalidity charts
state
Rothman expressly discloses MPEG (MP3) . . . . MP3 is an audio
codec. However, Rothman discloses that the materials provided can
also be streamed video. Rothman was filed on April 27, 2001, at
which time it was conventional to stream videos using MPEG.
(Dkt. No. 213-6 at 13.) Dr. Shamos’ discussion of other references makes clear that he considered
MP4 or MPEG-4 to be one form of MPEG that was used to stream videos alongside MPEG-2 and

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MPEG-7. (See, e.g., Dkt. No. 213-4 at ¶ 170 (discussing Mackintosh reference and the use of a
“MPEG-4 video codec”); see also id. at ¶¶ 133, 169, 171, 182–85, 206, 217–18, 230, 244, 250.)
III.

SUPPLEMENTAL EXPERT REPORT
Because the Court considers the foregoing issues sufficiently close, and in order to mitigate

any prejudice to Plaintiff, the Court will GRANT Music Choice’s Motion for Leave to supplement
its expert report with respect to Dr. Shamos’ specific non-infringement theory that no transmission
.occurs because “the Audio Engine and StillPic Generator components of the accused Ubiquicast
machine purportedly send data between them via a shared RAM memory,” and the allegedly new
invalidity theory regarding MP4 technology. The supplemental report of Dr. Russ will be strictly
limited to that scope and must be served by no later than noon on Monday, November 11, 2019.
Any issues regarding the scope of this report may be raised at the November 12 pretrial conference.
IV.

CONCLUSION
For the reasons stated above, the Court DENIES Music Choice’s Motion to Strike and

GRANTS Music Choice’s Motion for Leave.
SIGNED this 3rd day of January, 2012.
SIGNED this 5th day of November, 2019.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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