Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1036

REPLY to Response to Motion re 906 MOTION to Strike Defendant's Daubert Motion to Preclude Expert Testimony of Jonathan H. Bari 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. (Reines, Edward)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION

Eolas Technologies Incorporated,
Plaintiff,
vs.
Adobe Systems Inc.; Amazon.com, Inc.; Apple
Inc.; Argosy Publishing, Inc.; Blockbuster Inc.;
CDW Corp.; Citigroup Inc.; eBay Inc.; FritoLay, Inc.; The Go Daddy Group, Inc.; Google
Inc.; J.C. Penney Corporation, Inc.; JPMorgan
Chase & Co.; New Frontier Media, Inc.; Office
Depot, Inc.; Perot Systems Corp.; Playboy
Enterprises International, Inc.; Rent-A-Center,
Inc.; Staples, Inc.; Sun Microsystems, Inc.;
Texas Instruments Inc.; Yahoo! Inc.; and
YouTube, LLC,
Defendants.

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No. 6:09-cv-00446-LED (filed Oct. 6, 2009)

DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO
PRECLUDE EXPERT TESTIMONY OF JONATHAN H. BARI

TABLE OF CONTENTS
A.
B.

Eolas Misstates Rule 702: Even “Generalized Testimony” Must Fit The
Facts of The Case — And Mr. Bari Admits His Testimony Does Not ................. 1
Eolas Concedes Mr. Bari Does Not Disclose Any Methodology — Let
Alone A Reliable One — And Admits That His Sources Are Merely
“Anecdotal”............................................................................................................ 4

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TABLE OF AUTHORITIES
Cases
Daubert v. Merrell Dow Pharmaceuticals, Inc.
43 F.3d 1311 (9th Cir. 1995) ............................................................................................. 5
Fractus, S.A. v. Samsung et al.
No. 6:09-cv-203-LED-JDL, slip op. at 2-3 (E.D. Tex. Apr. 29, 2011) ............................. 3
Lucent Techs., Inc. v. Gateway, Inc.
580 F.3d 1301 (Fed. Cir. 2009).......................................................................................... 1
Perez v. City of Austin
No. A-07-CA-044, 2008 U.S. Dist. LEXIS 36776 (W.D. Tex. May 5, 2008) .................. 2
ResQNet.com, Inc. v. Lansa, Inc.
594 F.3d 860 (Fed. Cir. 2010)............................................................................................ 3
Uniloc, USA, Inc. v. Microsoft Corp.
632 F.3d 1292 (Fed. Cir. 2011)...................................................................................... 1, 3
Rules
Fed. R. Evid. 702 Advisory Committee Notes ¶ 13 (2000)........................................................... 5
Fed. R. Evid. 702 Advisory Committee Notes ¶ 9 (2000)......................................................... 1, 2

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Eolas’s brief concedes that Mr. Bari makes no attempt to address or relate his opinions to
the facts of this case — and in fact his report expressly disclaims doing so. See D.I. 1000, Ex. A
(“Bari Report”) at 3. Eolas instead resorts to asserting that he will “educate the jury” on
“background” and “historical context.” D.I. 1000 (“Resp.”) at 1. However, this justification is
contradicted by Mr. Bari’s own characterization of his opinions as providing “the qualitative and
quantitative drivers that Eolas’s Intellectual Property may provide.” Bari Report at 3. In any
event, expert testimony concerning the value of technology that is not sufficiently tied to the
patents-in-suit is inadmissible as it can serve only to mislead and confuse the jury. See, e.g.,
Uniloc, USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1316-17 (Fed. Cir. 2011); Lucent Techs.,
Inc. v. Gateway, Inc., 580 F.3d 1301, 1331-37 (Fed. Cir. 2009). The cases and commentary that
Eolas cites are not to the contrary, as they confirm that “generalized testimony” must “fit the
facts of the case.” Other than its ipse dixit, Eolas provides no support for its conclusory assertion
that the broad categories of “features” Mr. Bari discusses are relevant to the Defendants’ accused
products. Because Mr. Bari’s proposed testimony is not tied to the facts of the case and is
merely based on “anecdotal” evidence, it should be excluded under Daubert, Rule 702, and Rule
403.
A.

Eolas Misstates Rule 702: Even “Generalized Testimony” Must Fit The Facts
of The Case — And Mr. Bari Admits His Testimony Does Not

Eolas quotes the non-binding advisory committee notes to Rule 702 to suggest that,
because it is purportedly offering Mr. Bari’s testimony only “to educate the factfinder about
general principles,” Fed. R. Evid. 702 Advisory Committee Notes ¶ 9 (2000), it need not strictly
adhere to the requirements of Rule 702 or Daubert. This is false. Eolas omits from its quotation
the immediately following sentence, which confirms that “for this kind of generalized
testimony,” the rule still “requires that: (1) the expert be qualified; (2) the testimony address a

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subject matter on which the factfinder can be assisted by an expert; (3) the testimony be reliable;
and (4) the testimony ‘fit’ the facts of the case.” Id. (emphasis added). In particular, the fourth
element restates the Daubert and Rule 702 requirement that expert testimony, even that offered
for “background” or “context” as Eolas purports to offer here, must be relevant to a factual
matter at issue in the case.1
Mr. Bari offers opinions concerning the so-called “e-commerce industry” and broad,
generic categories of “functionalities,” but he does nothing to relate those opinions to the claims
of the patents-in-suit or Defendants’ websites — and expressly disclaims performing any such
analysis. See Bari Report at 3. Eolas therefore does not, and cannot, point to anything in
Mr. Bari’s report to suggest his opinions are in any way relevant to the patents or accused
products — or any other factual matter at issue in this case. Instead, Eolas conclusorily asserts,
with no support in Mr. Bari’s report or any other evidence, that the “background” he provides is
“directly relevant” to “the value of interactive content on [Defendants’] websites.” Resp. at 3.
But Eolas’s ipse dixit is not enough.
Because Mr. Bari expressly disclaims analyzing any of Defendants’ websites, by his own
words he does not address whether any of Defendants’ websites employ the “functionalities” he
describes, or whether the Defendants operate in the “industry” he generalizes. His opinions
therefore cannot assist the trier of fact in understanding any “background” concerning
Defendants’ websites. “[O]ne major determinant of whether an expert should be excluded under
1

Eolas cites an unpublished Western District of Texas case for the proposition that the expert’s
testimony “need not relate directly to the ultimate issue in a particular case,” but neither that nor
any of the Eighth Circuit cases Eolas cites suggests it may present expert testimony completely
unmoored to the facts of the case. Eolas again omits the following sentence which admonishes
that expert testimony “needs to be relevant to the evaluation of a factual matter at issue in the
case and helpful to the trier of fact.” Perez v. City of Austin, No. A-07-CA-044, 2008 U.S. Dist.
LEXIS 36776, at *12 (W.D. Tex. May 5, 2008); see id. at *13, 19 (allowing testimony only
where relevant to “one of the core issues” and excluding testimony without “tight connection”).

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Daubert is whether he has justified the application of a general theory to the facts of the case.”
Uniloc, 632 F.3d at 1316. “‘[T]here must be a basis in fact’ to apply the expert’s methodology
and facts to the particular facts at issue in the case, and ‘an abstract and largely theoretical
construct fails to satisfy this fundamental requirement.’” Id. at 1317. Contrary to Eolas’s
contention, Defendants do dispute Eolas’s unbacked assertion, contradicted by Mr. Bari’s own
express disclaimer, that his testimony relates to the “same functionalities that Defendants utilize”
or that their products provide “at least one of these specific forms of interactive online content
and functionality.” Resp. at 3, 6.2
Moreover, even assuming Mr. Bari’s testimony relates to the value of “interactive
content,” that is still not relevant to the patents-in-suit or their footprint in the marketplace. Both
Mr. Bari and Eolas concede that his testimony is not tied to the patents-in-suit. The generic
category of “interactive content” is undisputedly far broader than the “claimed invention’s
footprint in the marketplace.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir.
2010). The Federal Circuit has repeatedly found such testimony concerning “value” that is not
tied to the patents to be inadmissible, as it can only confuse the jury and mislead it into
impermissibly “punish[ing] beyond the reach of the statute.” Uniloc, 632 F.3d at 1316 (internal
citation omitted); see, e.g., Fractus, S.A. v. Samsung et al., No. 6:09-cv-203-LED-JDL, slip op.
at 2-3 (E.D. Tex. Apr. 29, 2011) (quoted in Mot. at 7, attached as Ex. B).
Eolas attacks a straw man: Defendants do not contend that Mr. Bari must “testify as to a

2

Eolas also suggests by way of footnote that “Mr. Bari specifically addresses” certain
Defendants’ “use of infringing functionalities.” Resp. at 8 n.6. Not only is this belied by
Mr. Bari’s express disclaimer to the contrary, nothing in Mr. Bari’s report, including in his
general descriptions of certain alleged “functionalities,” addresses the precise accused products
at issue in this case, or more importantly, whether and how they allegedly use the patents-in-suit.
Eolas’s collateral attack on Defendants’ discovery, while inappropriate and untrue, is completely
inapposite and provides no basis for admission of this testimony.

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specific quantum of damages” or “advance a reasonable royalty formulation,” and Eolas’s
distinction of the Federal Circuit cases as limited to those purposes is unavailing. Resp. at 6, 7.
Rather, admissible testimony must be relevant and assist the jury; the Federal Circuit cases make
clear that, in the context of a patent case, testimony concerning the value of patents (as Mr. Bari
offers here3) must be properly tied to the patents to be relevant and helpful. Unlike in those
cases, Mr. Bari fails to show how the evidence he relies upon is “comparable” to the patents-insuit.
B.

Eolas Concedes Mr. Bari Does Not Disclose Any Methodology — Let Alone
A Reliable One — And Admits That His Sources Are Merely “Anecdotal”

Mr. Bari’s testimony also fails to satisfy the other requirements of Rule 702 and Daubert:
namely, he does not disclose any methodology, let alone a reliable one, and he bases his opinion
on admittedly anecdotal information rather than reliable data. More than an insufficient method,
Mr. Bari’s testimony is inadmissible because it fails to disclose any method whatsoever. Eolas’s
brief argues only that Mr. Bari’s so-called “method” was to review a number of secondary
sources “in light of his own extensive experience.” Resp. at 5. But the very same advisory
committee notes Eolas cites earlier in its brief confirms that conclusory assertions based on
“experience” are not admissible: “If the witness is relying solely or primarily on experience, then
the witness must explain how that experience leads to the conclusion reached, why that
experience is a sufficient basis for the opinion, and how that experience is reliably applied to the
facts. The trial court’s gatekeeping function requires more than simply ‘taking the expert’s word
3

Eolas argues that “concerns for precision” do not apply because Mr. Bari’s testimony is offered
only to educate the jury on background issues. Resp. at 6. But this is contradicted by Mr. Bari’s
own statements. See Bari Report at 3 (summarizing opinion as concerning the “qualitative and
quantitative drivers that Eolas’s Intellectual Property may provide”). As discussed in
Defendants’ opening brief, Mr. Bari offers precise statements concerning “benefits” and “value,”
but because they are irrelevant to this case they can only confuse the jury. See Mot. at 6 (quoting
examples from Bari Report, such as “Design Within Reach increased online sales by 45%”).

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for it.’” Fed. R. Evid. 702 Advisory Committee Notes ¶ 13 (2000) (quoting Daubert v. Merrell
Dow Pharmaceuticals, Inc., 43 F.3d 1311, 1319 (9th Cir. 1995) (“We’ve been presented with
only the experts’ qualifications, their conclusions and their assurances of reliability. Under
Daubert, that’s not enough.”)).
Moreover, even should Mr. Bari’s recitation of a limited number of secondary sources be
cognizable as a “methodology,” his opinions are nevertheless inadmissible because they are not
based on sufficient facts or data. Indeed, Eolas does not dispute that Mr. Bari admits that his
selection is “for anecdotal purposes” only. Bari Report at 51 n.177. Mr. Bari makes no attempt
to show that his selective assembling and quotation is representative of the “e-commerce
industry” or otherwise has any other indicia of reliability beyond Eolas’s conclusory assertion.
Mr. Bari cites evidence concerning other websites, but fails to provide any explanation or
evidence that those websites are representative of the so-called “e-commerce industry.” More
importantly, he provides no indication that the experience of those websites is in any way
applicable to Defendants. Even if offered for purposes of “background” or “historical context,”
such unreliable testimony could serve no purpose other than unfair prejudice.
Notably, Eolas does not dispute that the purported “survey” that Mr. Bari relies upon is
unreliable as it is not tied to the patent claims. As noted in the cases cited above, such evidence
not tied to the patents cannot provide any basis for Mr. Bari’s opinions concerning the “value” or
“benefits” that “Eolas’s Intellectual Property may provide,” and his opinions based on this
survey should be excluded for this independent reason. See Bari Report at 3 (defining “Eolas’s
Intellectual Property” as the two patents-in-suit).
For the foregoing reasons, Defendants respectfully request that the Motion to Preclude
the Expert Testimony of Jonathan H. Bari be GRANTED.

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DATED: October 17, 2011
By: /s/ Jason W. Wolff (w/ permission)
David J. Healey
[e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
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 and
Counterclaimant Adobe Systems Inc.

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By: /s/ Edward R. Reines
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
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, Inc., and Yahoo! Inc.

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By: /s/ Thomas L. Duston (w/ permission)
Thomas L. Duston
[e-mail]
Anthony S. Gabrielson
[e-mail]
Scott A. Sanderson (pro hac vice)
[e-mail]
MARSHALL, GERSTEIN & BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, IL 60606-6357
Telephone: [phone]
Facsimile: [phone]
Eric H. Findlay (Bar No. 00789886)
[e-mail]
Brian Craft (Bar No. 04972020)
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway
Suite 101
Tyler, TX 75703
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant CDW LLC

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By: /s/ Edwin R. DeYoung (w/ permission)
Edwin R. DeYoung (Bar No. 05673000)
[e-mail]
Roy W. Hardin (Bar No. 08968300)
[e-mail]
Roger Brian Cowie (Bar No. 00783886)
[e-mail]
M. Scott Fuller (Bar No. 24036607)
[e-mail]
Galyn Gafford (Bar No. 24040938)
[e-mail]
Jason E. Mueller
[e-mail]
LOCKE LORD BISSELL & LIDDELL LLP
2200 Ross Avenue, Suite 2200
Dallas, TX 75201-6776
Telephone: [phone]
Facsimile: [phone]
Eric L. Sophir (pro hac vice)
[e-mail]
KING & SPALDING LLP
1301 K. Street. NW, Suite 600
Washington, D.C. 20005-3364
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant Citigroup Inc.

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By: /s/ Sasha G. Rao (w/ permission)
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]
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]
Fascimile: [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

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By: /s/ Brian Carpenter (w/ permission)
Christopher M. Joe
[e-mail]
Brian Carpenter
[e-mail]
Eric W. Buether
[e-mail]
Buether Joe & Carpenter
1700 Pacific, Suite 2390
Dallas, TX 95201
Telephone: [phone]
Attorneys for Defendant
J.C. Penny Corporation, Inc.

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By: /s/ Neil J. McNabnay (w/ permission)
Thomas M. Melsheimer (Bar No.
13922550)
[e-mail]
Neil J. McNabnay (Bar No. 24002583)
[e-mail]
Carl E. Bruce (Bar No. 24036278)
[e-mail]
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
Proshanto Mukherji (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
The Go Daddy Group, Inc.

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By: /s/ Kate Hutchins(w/ permission)
Mark G. Matuschak (pro hac vice)
[e-mail]
Donald R. Steinberg (pro hac vice)
[e-mail]
Wilmer Cutler Pickering Hale and Dorr
LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
Kate Hutchins (pro hac vice)
[e-mail]
Wilmer Cutler Pickering Hale and Dorr
LLP
399 Park Avenue
New York, NY 10011
Telephone: [phone]
Facsimile: [phone]
Daniel V. Williams, (pro hac vice)
[e-mail]
Wilmer Cutler Pickering Hale and Dorr
LLP
1875 Pennsylvania Avenue NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Michael E. Richardson (Bar No. 24002838)
[e-mail]
Beck Redden & Secrest
1221 McKinney, Suite 4500
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant Staples, Inc.

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SIGNATURE ATTESTATION
I hereby certify that concurrence in the service of this document has been obtained from
each of the other signatories shown above.
/s/ Aaron Y. Huang
Attorney for Amazon.com, Inc. and Yahoo!, Inc.

CERTIFICATE OF SERVICE
I hereby certify 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/ Danielle Delorio

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