Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1035

REPLY to Response to Motion re 902 SEALED PATENT MOTION to Exclude Portions of the Expert Testimony of David Martin and Roy Weinstein filed by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Text of Proposed Order)(Jones, Michael)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

EOLAS TECHNOLOGIES
INCORPORATED,
PLAINTIFF,
v.
ADOBE SYSTEMS INC., et al.,
DEFENDANTS.

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Civil Action No. 6:09-CV-446-LED

JURY TRIAL DEMANDED

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION TO EXCLUDE PORTIONS
OF THE EXPERT TESTIMONY OF DAVID MARTIN AND ROY WEINSTEIN

Eolas’ Opposition relies on the false premise that statements are not “opinions” if they
are “based upon the substance of the documents of the party or the party’s testimony.” (D.I.
1007 at 2). That is precisely the definition of “opinion.” For Eolas’ experts’ statements to be
“based upon” the substance of documents, the statements necessarily must draw conclusions not
specifically stated in the documents. And, because neither Dr. Martin nor Mr. Weinstein has
established qualifications to draw such conclusions, they have not shown themselves to have any
greater ability to do so than any member of the jury. Those statements, therefore, contain
improper, unhelpful opinion testimony regarding knowledge, intent, or state of mind, and should
be excluded.
Moreover, the case law string-cited by Eolas is irrelevant. None of them involves a
technical or damages expert in a patent case attempting to testify regarding intent, knowledge,
motivation, or state of mind. Instead, Eolas’ cited law shows only that expert testimony on intent
can be admissible where, unlike here, such testimony specifically draws on the specialized
knowledge or experience of the expert.
I.

NEITHER DR. MARTIN OR MR. WEINSTEIN HAVE ANY RELEVANT
EXPERTISE AS TO KNOWLEDGE, INTENT, OR STATE OF MIND OF ANY
ENTITY
A threshold question in whether to allow expert testimony is determining “whether the

expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to
understand or determine a fact in issue.” Daubert v. Merrell Dow Pharms., 509 U.S. 579, 592
(U.S. 1993). The Supreme Court has also set forth the boundaries on the types of expert
testimony that should be considered, finding that testimony based on “scientific, technical, or
other specialized knowledge” can be admissible. Kumho Tire Co. v. Carmichael, 526 U.S. 137,
147 (U.S. 1999).

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Without support, Eolas repeatedly asserts in its responsive brief that it is permissible for
Dr. Martin and Mr. Weinstein to opine about the Defendants’ and W3C’s state of mind, such as,
for example, Defendants’ alleged intent to induce infringement, Defendants’ alleged willful
infringement, or the W3C alleged conspiracy. (D.I. 1007 at 1-9). But neither Dr. Martin nor Mr.
Weinstein have any “scientific, technical, or other specialized knowledge” regarding a person’s
or party’s intent, motivation, knowledge, or state of mind. Absent such specialized knowledge,
this Court cannot possibly “ensure that [their] testimony … rests on a reliable foundation,” as
the Federal Rules of Evidence Require. Fed. R. Evid. 702; Kumho Tire, 526 U.S. at 141; see
also Rodriguez v. Riddell Sports, Inc., 242 F.3d 567, 580 (5th Cir. 2001). Dr. Martin and Mr.
Weinstein do not even claim to possess such expertise. Dr. Martin is a computer scientist who
received his Ph.D. in the area of Internet security and privacy. (Martin Main Rep. at ¶ 7). Mr.
Weinstein describes himself as an economist with particular experience in “the valuation of
intellectual property and the calculation of patent infringement damages.” (Weinstein Core Rep.
at ¶ 1). Fed. R. Evid. 702 simply does not permit such “expert” testimony from witnesses
testifying outside their area of expertise. And Dr. Martin and Mr. Weinstein, having no expertise
in determining state of mind, are no better situated to do so than any member of a jury.
II.

EXPERT TESTIMONY AS TO KNOWLEDGE, INTENT, OR STATE OF MIND
IMPROPERLY USURPS THE FACTFINDING ROLE OF THE JURY
Dr. Martin’s and Mr. Weinstein’s testimony regarding the intent, knowledge, motivation,

or state of mind of the Defendants improperly usurps the jury’s role as factfinder and is not
properly the subject of expert testimony under Rule 702. See Tyco Healthcare Group, LP v.
Applied Med. Res. Corp., No. 9:06-cv-151, 2009 U.S. Dist. LEXIS 125377 at *14 (E.D. Tex.
Mar. 30, 2009).
Eolas’ attempt to distinguish Tyco fails. The form of evidence relied on is irrelevant.

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Allowing an expert witness to opine on actual knowledge of the patents in suit should not be
permitted, since “[t]here is no ‘scientific, technical, or other specialized knowledge’” required,
and “the jury is perfectly able to make such a determination on its own”—regardless of whether
the expert is “merely opining on underlying facts.” Id. Regardless of the nature, volume, or
public availability of underlying evidence, purported “opinions” on knowledge or intent are of no
benefit to the jury, and instead only usurp the jury’s role. It is the jury’s place, not Dr. Martin’s
or Mr. Weinstein’s, to evaluate that evidence.
III.

EOLAS’ CITED CASE LAW IS INAPPOSITE
Throughout its Opposition, Eolas relies on case law with little or no bearing on the facts

of this case, resting on misstated holdings and misapplied comparisons.
For example, Eolas claims that the Federal Circuit, in Lucent Techs., Inc. v. Gateway,
Inc., 580 F.3d 1301 (Fed. Cir. 2009), found that expert opinion on intent can support a finding of
induced infringement. (D.I. 1007 at 7). But no such finding was made. In Lucent, the
admissibility of expert testimony was not at issue. The Lucent Court therefore did not make any
finding relevant to this Motion.1 Eolas’ reliance on Spreadsheet Automation Corp. v. Microsoft
Corp., 587 F. Supp. 2d 794 (E.D. Tex. 2007), (D.I. 1007 at 7), is equally unavailing. In
Spreadsheet, expert testimony was permitted only because the Plaintiff represented that its expert
would not testify as to the Defendant’s intent. Thus, unlike here, the expert in Spreadsheet
stopped short of opining on the state of mind of the Defendant.
Eolas provides a laundry list of cases (D.I. 1007 at 9-12), but none of them deals with a
situation where, as here, a technical or damages expert in a patent case attempts to testify

1

Moreover, while the Court states that expert testimony was among the testimony presented related to indirect
infringement, it characterized the entire body of evidence as “not strong”, finding not that Lucent had proved
indirect infringement, but rather that Defendant Microsoft’s JMOL motion for non-infringement was properly
denied.

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regarding intent, knowledge, motivation, or state of mind. Instead, where expert testimony
regarding knowledge or intent was permitted, such testimony was directly related to the
specialized knowledge of the expert:


U.S. v. Moore, 997 F.2d 55 (5th Cir. 1993): tax evasion case in which an expert in tax
matters and criminal investigation of tax violations was permitted to testify only within
his area of expertise;2



U.S. v. Dotson, 817 F.2d 1127 (5th Cir. 1987): tax evasion case in which an expert in tax
matters and criminal investigation of tax violations was permitted to testify only within
his area of expertise; expert was not permitted to “directly embrace the ultimate question
of [intent].” 817 F.2d at 1132;



Bauman v. Centex Corp., 611 F.2d 1115 (5th Cir. 1980): contract case in which a
corporate finance expert was allowed to testify in a case involving “issues of corporate
management of sufficient complexity to call for expert clarification.” 611 F.2d at 1121;



Dunn v. HOVIC, 1 F.3d 1368 (3d Cir. 1993): a products liability case in which a medical
expert who assists companies in determining whether substances are harmful was
permitted to testify regarding a company’s knowledge of risks associated with asbestos
exposure;



Bouyges Telecom, S.A. v. Tekelec, 472 F. Supp. 2d 722 (E.D.N.C. 2007): tort case in
which telecommunications expert was permitted to testify regarding the level of
“common knowledge within the telecommunications field.” 472 F. Supp. 2d at 726;



Hartzler v. Wiley, 277 F. Supp. 2d 1114 (D. Kan. 2003): a contract case in which a
construction and engineering expert was permitted to testify regarding the meaning of a
contract “in light of construction industry custom and practice.” 277 F. Supp. 2d at 1118;



Top of Iowa Coop v. Schewe, 149 F. Supp. 2d 709 (N.D. Iowa 2001): contract case in
which expert was permitted to testify regarding natural result of Defendants “superior
knowledge about and experience in the grain industry.” 149 F. Supp. 714;



Media Sport & Arts v. Kinney Show Corp., No. 95 Civ. 3901, 1999 U.S. Dist. LEXIS
16035 (S.D.N.Y. Oct. 18, 1999): a contract case in which a sports marketing and
licensing expert was permitted to testify only with regard to “industry customs and
practices.” 1999 U.S. Dist LEXIS 16035 at *12;



Steinhilber v. McCarthy, 26 F. Supp. 2d 265 (D. Mass. 1998): medical negligence case in
which medical expert was permitted to testify regarding customs and practices of
reasonable medical professionals and specialists;

2

In Moore, the expert “never testified explicitly as to the defendants' intent or state of mind. Instead, he testified to
facts that were either well within his area of expertise or were personally experienced by him.” 997 F.2d at 59.
Moore, therefore, shows only that testimony on intent or state of mind, if outside the special expertise of the expert,
would be impermissible.

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

Hopson v. Cheltenham Township, 1990 U.S. Dist. LEXIS 8905 (E.D. Pa. July 17, 1990):
Fourteenth Amendment case in which expert was permitted to testify with regard to
customary knowledge and awareness to be attributed to a police officer.
Eolas further attempts to relate the above cases to this case on the basis that this case

involves complex technical issues, the comprehension of which require the assistive testimony of
a qualified expert. (D.I. 1007 at 11-12). But unlike several of the cases described above, the
intent, knowledge, motivation, and state of mind of the various actors in this case is not a
technically complex issue, nor do they have anything to do with computer science (Dr. Martin’s
expertise) or economics (Mr. Weinstein’s expertise). Therefore, unlike the experts in the above
cases whose testimony on issues related to their expertise was permitted, Dr. Martin and Mr.
Weinstein have no specialized knowledge on which to base the testimony Defendants now seek
to exclude, nor will that testimony assist the jury.
IV.

EOLAS AGREES THAT DR. MARTIN WILL NOT ATTEMPT TO PROVIDE
OPINIONS ABOUT THE DOCTRINE OF EQUIVALENTS
Eolas confirms, in its Opposition, that Dr. Martin will not attempt to offer any opinions

regarding Defendants’ alleged infringement under the doctrine of equivalents. (D.I. 1007 at 1).
This representation should be enforced without qualification. Defendants have no intention of
mischaracterizing, or limiting the Court’s claim construction, nor should Eolas be permitted to
expand it.
V.

CONCLUSION
For the above reasons, Defendants respectfully request that their Motion be granted, and

that improper opinions or testimony from Dr. Martin or Mr. Weinstein regarding the knowledge,
intent, motivation, or state of mind be excluded. Defendants further request that this Court grant
the relief requested concerning Dr. Martin’s proffered testimony on the doctrine of equivalents,
barring such testimony in light of Eolas’ concessions.

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Dated: October 17, 2011

Respectfully submitted,
By: /s/ Sasha G. Rao, with permission by
Michael E. Jones
James R. Batchelder (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Lauren N Robinson (pro hac vice)
[e-mail]
Rebecca R. Hermes (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284
Telephone: [phone]
Facsimile: [phone]
Michael E. Jones (Bar No. 10929400)
[e-mail]
Allen F. Gardner (Bar No. 24043679)
[e-mail]
POTTER MINTON
A Professional Corporation
110 N. College, Suite 500
Tyler, TX 75702
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANTS
GOOGLE, INC. AND YOUTUBE, LLC

/s/ David J. Healey, with permission by
Michael E. Jones
David J. Healey
[e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
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Telephone: [phone]
Facsimile: [phone]
OF COUNSEL:
Frank E. Scherkenbach
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Jason W. Wolff
[e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
ADOBE SYSTEMS INCORPORATED
/s/ Edward R. Reines, with permission by
Michael E. Jones
Edward R. Reines
[e-mail]
Jared Bobrow
[e-mail]
Sonal N. Mehta
[e-mail]
Aaron Y. Huang
[e-mail]
Andrew L. Perito
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone:
[phone]
Facsimile:
[phone]
Doug W. McClellan
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
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Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan
[e-mail]
Joshua R. Thane
[e-mail]
HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Otis W. Carroll, Jr. (Bar No. 03895700)
[e-mail]
Deborah J. Race (Bar No. 16448700)
[e-mail]
IRELAND CARROLL & KELLEY
6101 S. Broadway, Suite 500
Tyler, TX 75703
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Defendants
AMAZON.COM and YAHOO! INC. 
/s/ Thomas L. Duston, with permission by
Michael E. Jones
Thomas L. Duston
Julianne Hartzell
Scott A. Sanderson
Anthony S. Gabrielson
Marshall Gerstein & Borun
233 S. Wacker Drive
6300 Willis Tower
Chicago, IL 60606
312.474.6300
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric Hugh Findlay
Brian Craft
Findlay Craft
6760 Old Jacksonville Highway
Suite 101
8

Tyler, TX 75703
903.534.1100
[e-mail]
[e-mail]
Attorneys for Defendant
CDW LLC
/s/ Edwin R. DeYoung, with permission by
Michael E. Jones
Edwin R. DeYoung
Roger Brian Cowie
Galyn Dwight Gafford
Michael Scott Fuller
Roy William Hardin
Jason E. Mueller
Locke Lord LLP
2200 Ross Ave.
Suite 2200
Dallas, TX 75201
214.740.8500
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric L. Sophir
SNR Denton
1301 K Street, N.W.
Suite 600, East Tower
Washington, DC 20005-3364
202.408.6470
[e-mail]
Attorneys for Defendant
CITIGROUP INC.
/s/ Proshanto Mukherji, with permission
by Michael E. Jones
Thomas M. Melsheimer
Neil J. McNabnay
Carl Bruce
Fish & Richardson
1717 Main Street
Suite 5000
Dallas, TX 75201
214.474.5070
[e-mail]
[e-mail]
[e-mail]
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Proshanto Mukherji
Fish & Richardson
One Marina Park Drive
Boston, MA 02210
617.542.5070
[e-mail]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Christopher M. Joe, with permission by
Michael E. Jones
Christopher M. Joe
Brian Carpenter
Eric W. Buether
Buether Joe & Carpenter
1700 Pacific, Suite 2390
Dallas, TX 75201
214-466-1270
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
J.C. PENNEY CORPORATION, INC.
/s/ Michael Ernest Richardson, with
permission by Michael E. Jones
Michael Ernest Richardson
Beck Redden & Secrest
1221 McKinney
Suite 4500
Houston, TX 77010
713.951.6284
[e-mail]
Kate Hutchins
Wilmer Cutler Pickering Hale and Dorr,
LLP
399 Park Avenue
New York, NY 10022
212.230.8800
[e-mail]
Donald R. Steinberg
Mark Matuschak
Wilmer Cutler Pickering Hale and Dorr,
LLP
60 State Street
Boston, MA 02109
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617.526.5000
[e-mail]
[e-mail]
Daniel V. Williams
Jonathan Hardt
Wilmer Cutler Pickering Hale and Dorr,
LLP
1875 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
202.663.6012
[e-mail]
[e-mail]
Attorneys for Defendant
STAPLES, INC.

CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3) on October 17, 2011.

/s/ Michael E. Jones

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