Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 906

MOTION to Strike Defendant's Daubert Motion to Preclude Expert Testimony of Jonathan H. Bari by Adobe Systems Incorporated, Amazon.com Inc., Citigroup Inc., Google Inc., J.C. Penney Company, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Affidavit of Aaron Huang, # 2 Exhibit A to Huang Decl, # 3 Exhibit B to Huang Decl, # 4 Text of Proposed Order)(Reines, Edward)

EXHIBIT B

Case 6:09-cv-00203-LED -JDL Document 896 Filed 04/29/11 Page 1 of 4 PageID #:
26487

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
FRACTUS, S.A.,
Plaintiff,
v.
SAMSUNG ET AL.,
Defendants.

§
§
§
§
§
§
§
§
§

Civil No. 6:09-cv-203-LED-JDL
JURY TRIAL DEMANDED

ORDER
Before the Court is Defendants’ Motion to Exclude Certain Testimony of Fractus’ Survey
Expert Witnesses Paul Talmey and Robert A. Peterson (Doc. No. 775, “MOTION”). The parties have
fully briefed the matter (Doc. Nos. 817, “OPP.;” 845, “REPLY;” 875, “SURREPLY”). The Court
hereby GRANTS Defendants’ motion.
District courts are charged with ensuring that expert testimony be based on “firm scientific
or technical grounding.” Uniloc USA, Inc. v. Microsoft Corp., Nos. 2010-1035, 1055, 2011 WL
9738 at *19 (Fed. Cir. Jan. 4. 2011). Relevant evidence must be excluded if its relevance is
“substantially outweighed by the danger of unfair prejudice.” FED. R. EVID. 403; see also Daubert
v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993).
Plaintiff commissioned two surveys, conducted by Paul Talmey and Dr. Robert Peterson,
respectively. OPP. at 2. Mr. Talmey’s survey was intended to determine the value to consumers of
“incorporating internal antennas in cell phones in place of external antennas.” MOTION, EX. A at
1 (“TALMEY SURVEY”). Among other things, Mr. Talmey determined that an internal antenna
contributes between $16.02 and $29.96 to the value of a cell phone. OPP. at 5. Dr. Peterson’s survey
1

Case 6:09-cv-00203-LED -JDL Document 896 Filed 04/29/11 Page 2 of 4 PageID #:
26488

was intended to determine the relative importance of internal antennas in cell phones to consumers.
MOTION, EX. G at 2 (“PETERSON SURVEY”). Dr. Peterson determined that over 90% of respondents
prefer an internal cell phone antenna versus an external antenna. OPP. at 7. Further, Dr. Peterson
determined that internal antennas are 109% as important as keyboards to consumers. Id. The parties
disagree as to the reliability of Plaintiff’s damages expert’s conclusions based on these surveys. Id.
at 3; MOTION at 4. Both of the surveys concluded that consumers prefer cell phones with internal
antennas versus external antennas. OPP. at 5-7.
The Talmey and Peterson surveys attempt to quantify the estimated value of consumer
preference for internal antennas in cell phones. Plaintiff concedes that it did not invent, and the
patents-in-suit do not cover, all internal cell phone antenna designs. OPP. at 6. Indeed, Plaintiff’s
“patented invention” is one type of internal antenna that purportedly provides advantages such as
multiband functionality and reduced size. See e.g. U.S. PATENT NO. 7,015,868 AT ABSTRACT.
While Plaintiff claims that its experts contend that the patents-in-suit are “fundamental” to
internal antennas, the surveys are not tied to the alleged advantageous technical characteristics of
the patents-in-suit. SURREPLY at 1. Put another way, the surveys do not measure how consumers
value the purported advantages provided by Plaintiff’s technology. See e.g. U.S. PATENT NO.
7,015,868 AT ABSTRACT (stating that “two important advantages” are multiband functionality and/or
small size). Therefore, the surveys do not measure the value of Plaintiff’s technology, but merely
measure the perceived consumer value of cell phones with any internal antennas. Survey evidence
purportedly demonstrating the value of internal antennas not tied directly to Plaintiff’s technology
confuses the issues and must be excluded. Allowing the jury to hear such evidence not tied to the
claimed invention risks “compensation for infringement [that] punishes beyond the reach of the

2

Case 6:09-cv-00203-LED -JDL Document 896 Filed 04/29/11 Page 3 of 4 PageID #:
26489

statute.” ResQNet.com, Inc. v. Lansa, 594 F.3d 860, 869 (Fed. Cir. 2010). Indeed, admissible expert
testimony must “carefully tie proof of damages to the claimed invention’s footprint in the market
place.” Id.; see also Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1337 (Fed. Cir.
2009) (the court’s objective is “determining the correct (or at least approximately correct) value of
.
the patented invention, when it is but one feature among many” ) (emphasis added).1
As such, the Court hereby GRANTS Defendants’ motion.

So ORDERED and SIGNED this 29th day of April, 2011.

___________________________________
JOHN D. LOVE
UNITED STATES MAGISTRATE JUDGE

1

Absent specific valuations, survey evidence demonstrating that consumers generally prefer cell phones
with internal versus external antennas may be relevant if Defendants open the door to such a comparison. For
example, if Defendants contend that a particular external antenna is an acceptable noninfringing alternative,
evidence of broad consumer demand for internal antennas may rebut the acceptability of external antenna as an
alternative. While the Court does not anticipate such evidence, in the event that Defendants take such a position,
Plaintiff may approach and request admission of the general survey evidence demonstrating consumer demand for
internal antenna – without the specific dollar and percentage valuations.

3

Case 6:09-cv-00203-LED -JDL Document 896 Filed 04/29/11 Page 4 of 4 PageID #:
26490