Salazar v. HTC Corporation
Filing
247
MEMORANDUM OPINION AND ORDER re 157 MOTION Daubert Motion to Exclude Portions of the Expert Report and Testimony of Plaintiff's Validity Expert Oded Gottesman filed by HTC Corporation.. Signed by Magistrate Judge Roy S. Payne on 4/27/2018. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
JOE ANDREW SALAZAR,
Plaintiff,
v.
HTC CORPORATION,
Defendants.
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No. 2:16-CV-01096-JRG-RSP
MEMORANDUM OPINION AND ORDER
Defendant HTC Corporation moves to exclude certain testimony of Oded
Gottesman, Plaintiff’s invalidity expert, based on his purportedly incorrect application of
law. HTC’s Motion to Exclude [Dkt. # 157]. Specifically, HTC contends Gottesman’s
opinions concerning three claim terms should be excluded based on his improper analysis.
The Court will GRANT the motion IN PART.
1.
Telephone Device / Normal Portable Telephone
Gottesman repeatedly opines, in reference to the preambles 1 of the asserted claims,
that “Goldstein does not disclose a ‘communications’ system in the form of a telephonic
device as disclosed and claimed [by] the ’467 Patent or any form of ‘normal portable
1
The parties agree the phrase “communications, command, control and sensing system” in
the preambles are substantive limitations. See Salazar’s Proposed Constructions of
Disputed Terms [Dkt. # 73-2] at PageID # 686; HTC’s Proposed Constructions &
Identification of Evidence [Dkt. # 73-3] at 1.
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telephone’ as opined by Wolfe.” See, e.g., Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶¶ 16,
53, 71. HTC contends this improperly imports limitations into the claims. Def.’s Motion
[Dkt. # 157] at 2–3. Salazar responds that HTC’s expert, Dr. Andrew Wolfe, characterizes
Goldstein as teaching a “normal portable phone” and Gottesman simply rebuts that
characterization. Pl.’s Opp’n [Dkt. # 175] at 3–4.
The question is whether Gottesman’s report (1) concerns his opinion based on his
expertise about the meaning of “communications system,” which is permissible, or (2)
construes the term to have a different meaning based on the ’467 Patent’s intrinsic record,
which is not permissible (since it would be claim construction reserved for the Court).
Here, Gottesman did the latter by, for example, opining on the meaning of the term based
on the specification:
I believe the telephonic device is a term that is explained in the
specifications. So when I read the claim and try to understand
what -- what it means and I read a prior art and try to understand
whether that is disclosing the claim, I have to understand what
the person of ordinary skill in the art would understand the
claim to mean and to look at the specification, understand that.
And based on the specification that referred to telephonic
device, my understanding is that the communications, command
and control in the sensing device in Claim 1 refers to a type of
telephonic device, and my understanding was that a normal
portable telephone does not have that capability.
Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 19:8–21 (emphasis added).
It is my understanding [that “communications system” requires
this claim to have a telephonic device]. It’s not merely reading
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it. It is my understanding based on reading the claim and
reading the specifications that the preamble referred to a
telephonic device or a form of telephonic device. The term
“telephony” or “telephonic device” appears in the specification
when it describe embodiments that are consistent with that
claim.
Id. at 20:5–12 (emphasis added). In other words, Gottesman has interpreted
“communications system”—based on his review of the specification, and not on its plain
meaning within the art—to require a telephonic device. Such an interpretation is
impermissible claim construction, and the Court will therefore grant this part of
Defendant’s motion.
2.
Sensing System
With reference to Claim 1’s preamble, Gottesman opines “[t]he touchscreen,
keypad, microphone, and/or opto-detector disclosed in Goldstein is not a disclosure or
teaching of a sensor coupled to a microprocessor for detecting and measuring physical
phenomena, physical indications, physical phenomena corresponding to a user, or a
physical phenomena measure in response to a user’s skin contact as claimed in claims 23,
29–32.” See, e.g., Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶¶ 36, 53, 71. He makes similar
contentions regarding two other references, Thompson and Simon. Id. ¶¶ 158–59, 176–77,
198–99, 221–22, 241–42. HTC argues this imports these limitations from dependent claims
into Claim 1. Def.’s Motion [Dkt. # 157] at 3. Salazar contends Gottesman simply rebuts
Wolfe’s characterization of the “sensing system.” Pl.’s Opp’n [Dkt. # 175] at 5–7.
The Court will grant this part of the motion because Gottesman construes the claim
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language, which is evident from his deposition. For example, when questioned about why
he thought Claim 1 required a microprocessor, Gottesman testified:
I looked at the claim. I looked at other claims, and I looked at
the specification to understand, and I looked at Goldstein.
Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 33:23–34:5. When asked whether Claim
1 requires “detecting and measuring physical phenomena,” he testified
although they do not appear in the claim, when you read the
patent, the specification, and understand what this phrase is
about, a person of ordinary skill in the art would understand
that sensing system would relate to that.
Id. at 35:12–22. When asked whether a person of ordinary skill would understand “sensing
system” to relate to detecting and measuring physical phenomena, he testified
I believe that that’s some of what -- that’s an embodiment that
can be understood from the specification that in the context of
the patent and the claim that that’s what sensing system would
be about.
Id. at 36:4–8 (emphasis added). These excerpts show Gottesman was not relying on his
own expertise in explaining the plain and ordinary meaning of the term, but rather relying
on the patent’s intrinsic record to narrow the plain meaning.
3.
Parameters / Command Code Sets
Last, HTC complains about Gottesman’s opinion that “Goldstein does not teach any
compression of command code sets or compressed parameter storage.” Def.’s Motion [Dkt.
# 157] at 3–4. HTC objects to use of “compression,” and contends the claim language
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simply requires that the memory space required to store the parameters be smaller than that
required to store the command code sets, regardless of whether the command code sets are
compressed. Id. at 4. Salazar responds that Gottesman describes how a person of ordinary
skill would understand the ’467 Patent, and that Gottesman’s use of the term “compression”
is simply shorthand for the broad category of what the limitation requires. Pl.’s Opp’n [Dkt.
# 175] at 7–9.
Defendant’s motion specifically concerns Claim 1 and Claim 34. Claim 1 recites
[1b] a memory device coupled to said microprocessor configured to store a
plurality of parameter sets retrieved by said microprocessor so as to recreate
a desired command code set such that the memory space required to store
said parameters is smaller than the memory space required to store said
command code sets[.]
’467 Patent at 26:1–6. Claim 34 recites
[34b] a memory device coupled to said microprocessor configured to store a
plurality of parameter sets retrieved by said microprocessor so as to recreate
based on said parameter sets a desired set of pulse signals corresponding to
logical “l’s” and “0’s” as specified by a command code set[.]
Id. at 30:15–20. The Court construed part of these limitations, but did not address whether
they require “compression.” See generally Cl. Constr. Op. & Order [Dkt. # 108] at 22–30.
With respect to Claim 1, precluding Gottesman from referencing “compression”
would go too far. The word appears twice in the patent, bookending a lengthy discussion
of the only specifically described encoding technique. See ’467 Patent at 8:16, 17:32. Thus,
“compression” is not so foreign to the patent to warrant exclusion from a conversation
about the technology. Moreover, Gottesman’s report ties his use of “compression” to Claim
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1’s “memory space” language. Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶ 15. He also
acknowledges the claim language does not require “compression.” See Gottesman Dep.
(Feb. 19, 2018) [Dkt. # 175-3] at 53:22–23 (testifying “the language of the claim itself is
not requiring compression”). Given Gottesman’s clear statements on the term, HTC can
address Gottesman’s use of the term during cross-examination.
Claim 34 does not include the “memory space” limitation of Claim 1, but when
rebutting Wolfe’s opinions concerning Claim 34, Gottesman incorporates his “memory
space” arguments. See, e.g., Gottesman Rep. [Dkt. # 157-2] ¶¶ 52 (referring to ¶¶ 39–40),
70 (referring to ¶¶ 56–57), 92 (referring to ¶¶ 75–76). Wolfe’s invalidity charts, however,
do the same. See, e.g., Wolfe Rep., Ex. A at 62 (“[o]pinions and evidence to support this
claim element are identified with respect to Claim element 1[b] above.”); id. at 8
(discussing, with respect to limitation [1b], why Goldstein teaches the memory space
limitation). Given that, it would be unfair to exclude Gottesman’s imprecision with respect
to this limitation when he is rebutting an equally imprecise position. The Court will
therefore deny this part of HTC’s motion.
***
The Court GRANTS HTC’s Motion to Exclude [Dkt. # 157] IN PART.
Specifically, the Court ORDERS that Salazar may not elicit testimony from Gottesman
that meeting the “communications, command, control and sensing system” limitation (1)
requires the asserted prior art to disclose a “telephonic device,” or (2) requires “a sensor
coupled to the said microprocessor for detecting and measuring physical phenomena.”
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Otherwise, the Court DENIES the motion.
SIGNED this 3rd day of January, 2012.
SIGNED this 27th day of April, 2018.
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ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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