ClearPlay v. Dish Network LLC et al

Filing 605

MEMORANDUM DECISION AND ORDER denying 426 Plaintiff's MOTION to Exclude in Part the Testimony of Clifford Reader on Invalidity (Daubert Motion No. 1); denying 430 Redacted MOTION to Exclude Clifford Reader' s Damages - Related Opinions (Daubert Motion No. 2); denying 439 MOTION to Exclude the Testimony of Stuart Lipoff and Robert Flavin (Daubert Motion No. 3); granting in part and denying in part 427 Redacted MOTION to Exclude Dam ages-Related Testimony of Benjamin Goldberg (Daubert Motion No. 4); granting in part and denying in part 440 Redacted MOTION to Exclude Testimony of Richard S. Hoffman (Daubert Motion No. 5); granting in part and denying in part 433 Redacted MOTION to Exclude Testimony of Sarah Butler (Daubert Motion No. 6). Signed by Judge David Nuffer on 1/6/23 (alt)

Case 2:14-cv-00191-DN-CMR Document 605 Filed 01/06/23 PageID.29916 Page 1 of 29

THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
MEMORANDUM DECISION
AND ORDER RE: CLEARPLAY’S
DAUBERT MOTIONS

CLEARPLAY, INC.,
Plaintiff,
v.
DISH NETWORK, LLC, and ECHOSTAR
TECHNOLOGIES, LLC,
Defendants.

Case No. 2:14-cv-00191-DN-CMR
District Judge David Nuffer
Magistrate Judge Cecilia M. Romero

Plaintiff ClearPlay, Inc. (“ClearPlay”) filed six motions seeking the exclusion of
Defendants Dish Network, LLC and EchoStar Technologies, LLC’s (collectively “Dish”)
experts’ opinions and testimony. 1
OVERVIEW
ClearPlay’s Daubert Motion No. 1 seeks to exclude portions of Dr. Clifford Reader’s
opinions and testimony regarding the invalidity of ClearPlay’s asserted patents. ClearPlay
misconstrues Dr. Reader’s opinions and testimony and the effect of a prior order denying
supplemental claim construction. Also, Dr. Reader’s opinions were timely and sufficiently
disclosed. Therefore, ClearPlay’s Daubert Motion No. 1 2 is DENIED.

Plaintiff’s Motion to Exclude in Part the Testimony of Clifford Reader on Invalidity (“ClearPlay’s Daubert Motion
No. 1”), docket no. 426, filed Aug. 1, 2022; Plaintiff’s Motion to Exclude Clifford Reader’s Damages-Related
Opinions (“ClearPlay’s Daubert Motion No. 2”), docket no. 430, filed Aug. 1, 2022; Plaintiff’s Motion to Exclude
the Testimony of Stuart Lipoff and Robert Flavin (“ClearPlay’s Daubert Motion No. 3”), docket no. 439, filed Aug.
1, 2022; Plaintiff’s Motion to Exclude the Testimony of Benjamin Goldberg (“ClearPlay’s Daubert Motion No. 4”),
docket no. 427, filed Aug. 1, 2022; Plaintiff’s Motion to Exclude in part the Testimony of Richard S. Hoffman
(“ClearPlay’s Daubert Motion No. 5”), docket no. 440, filed Aug. 1, 2022; Plaintiff’s Motion to Exclude the
Testimony of Sarah Butler (“ClearPlay’s Daubert Motion No. 6”), docket no. 433, filed Aug. 1, 2022.
1

2

Docket no. 426, filed Aug. 1, 2022.

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ClearPlay’s Daubert Motion No. 2 seeks exclusion of Dr. Reader’s damages-related
opinions and testimony. ClearPlay misconstrues Dr. Reader’s opinions and testimony and the
effect of the order denying supplemental claim construction. Dr. Reader’s damages-related
opinions and testimony are technical in nature; within the field of his expertise; and are
sufficiently reliable. Therefore, ClearPlay’s Daubert Motion No. 2 3 is DENIED.
ClearPlay’s Daubert Motion No. 3 seeks exclusion of Robert Flavin and Stuart Lipoff as
expert witnesses. There is no dispute regarding Flavin, and Dish does not intend to call Flavin as
an expert witness at trial. However, ClearPlay fails to sufficiently articulate a prejudice caused
by Dish’s failure to timely make Lipoff available for deposition. And ClearPlay misconstrues
Lipoff’s report and the effect of the order denying supplemental claim construction. Therefore,
ClearPlay’s Daubert Motion No. 3 4 is GRANTED as to Flavin and DENIED as to Lipoff.
ClearPlay’s Daubert Motion No. 4 seeks to exclude the opinions and testimony of Dr.
Benjamin Goldberg regarding the invalidity of ClearPlay’s asserted patents. ClearPlay
misconstrues Dr. Goldberg’s opinions and testimony and the effect of the order denying
supplemental claim construction. But while Dr. Goldberg may testify regarding the U.S. Patent
and Trademark Office (“USPTO”) proceedings and record to rebut ClearPlay’s expert witness
(Dr. Nicholas Feamster), he is precluded from offering opinions that ClearPlay’s conduct
constitutes prosecution disclaimer or prosecution history estoppel. Therefore, ClearPlay’s
Daubert Motion No. 4 5 is DENIED in part and GRANTED in part.
ClearPlay’s Daubert Motion No. 5 seeks to exclude potions of Richard Hoffman’s
opinions and testimony regarding damages. Hoffman’s reasonable royalty opinions that rely on
3

Docket no. 430, filed Aug. 1, 2022.

4

Docket no. 439, filed Aug. 1, 2022.

5

Docket no. 427, filed Aug. 1, 2022.

2

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Dish’s usage data are unreliable and inadmissible. But Hoffman’s opinions and testimony
regarding apportionment and non-infringing alternatives are sufficiently reliable and admissible.
Therefore, ClearPlay’s Daubert Motion No. 5 6 is GRANTED in part and DENIED in part.
ClearPlay’s Daubert Motion No. 6 seeks exclusion of Sarah Butler as an expert witness.
Butler is qualified to testify as an expert on surveys and market research, including survey and
market research methodologies and consumer decision making, choice, and behavior in the
context of surveys and market research. Butler’s opinions and testimony regarding survey and
market research methodologies and her criticism of underlying advertising materials and survey
data are within her field of expertise, and are admissible. But Butler is not an economist, and is
not qualified to offer expert opinions and testimony on valuation methodologies or value
calculations, including criticisms of Dr. Sullivan’s use of survey data in his valuation
methodologies and value calculations. And Butler is not qualified to rework Dr. Sullivan’s
calculations or create her own valuations. Therefore, ClearPlay’s Daubert Motion No. 6 7 is
DENIED in part and GRANTED in part.
Contents
OVERVIEW ................................................................................................................................... 1
STANDARD OF REVIEW ............................................................................................................ 4
DISCUSSION ................................................................................................................................. 7
ClearPlay’s Daubert Motion No. 1: Dr. Reader’s opinions and testimony regarding
invalidity are admissible ......................................................................................... 7
ClearPlay’s Daubert Motion No. 2: Dr. Reader’s damages-related opinions and testimony
are admissible........................................................................................................ 11
ClearPlay’s Daubert Motion No. 3: Flavin is excluded as an expert, but Lipoff may
testify as an expert and his opinions and testimony are admissible ...................... 13
ClearPlay’s Daubert Motion No. 4: Dr. Goldberg’s opinions and testimony are
admissible, but he may not opine that ClearPlay’s conduct constitutes prosecution
disclaimer or prosecution history estoppel ........................................................... 16

6

Docket no. 440, filed Aug. 1, 2022.

7

Docket no. 433, filed Aug. 1, 2022.

3

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ClearPlay’s Daubert Motion No. 5: Hoffman’s reasonable royalty opinions that rely on
Dish’s usage data are inadmissible, but his opinions on apportionment and noninfringing alternatives are admissible ................................................................... 17
ClearPlay’s Daubert Motion No. 6: Butler’s opinions regarding Dish’s advertisements,
surveys, and market data are admissible, but she is not qualified to opine
regarding valuation methodology or value calculations ....................................... 24
ORDER ......................................................................................................................................... 28
STANDARD OF REVIEW
District courts serve as the gatekeepers of expert evidence and must decide which experts
may testify before the jury and the permissible scope of that testimony. 8 In making these
determinations, the district court is given “broad latitude.” 9 But the district court must be mindful
that the Federal Rules of Evidence generally favor the admissibility of expert testimony. 10
Excluding expert testimony is the exception rather than the rule. 11 “Vigorous cross-examination,
the presentation of contrary evidence, and careful instruction on the burden of proof are the
traditional and appropriate means of attacking . . . admissible evidence.” 12 “[T]he [district]
court’s role as gatekeeper is not intended to serve as a replacement for the adversary system.” 13
FED. R. EVID. 702 governs the admissibility of expert testimony. The Rule requires,
among other things, that “the evidence or testimony [of an expert] ‘[help] the trier of fact to
understand the evidence or to determine a fact in issue.’” 14 “This condition goes primarily to
relevance.” 15 Relevant evidence has any tendency to make a fact of consequence in determining

8

Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993).

9

Kuhmo Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 142 (1999).

10

Daubert, 509 U.S. at 588.

11

FED. R. EVID. 702 Advisory Notes.

12

Daubert, 509 U.S. at 596.

United States v. 14.38 Acres of Land, More or Less Situated in Leflore Cty., State of Miss., 80 F.3d 1074, 1078
(5th Cir. 1996) (citing Daubert, 509 U.S. at 596).

13

14

Daubert, 509 U.S. at 591 (quoting FED. R. EVID. 702).

15

Id.

4

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a case more or less probable than it would be without the evidence. 16 Thus, “an expert’s
testimony must provide insight and understanding about the facts and issues of the case.” 17
But the helpfulness of an expert’s testimony is not without constraint. A two-step analysis
is implemented to determine whether an expert’s opinions are admissible under Rule 702. 18 First
is a determination whether the expert is qualified by “knowledge, skill, experience, training, or
education” to render the opinion. 19 And second is a determination whether the expert’s opinions
are “reliable.” 20 Opinions for which an expert is not qualified to offer, or which are not reliable,
must be excluded.
The district court “must also consider. . . whether the expert[’s opinions] encroach[] upon
the trial court’s authority to instruct the jury on the applicable law, for it is axiomatic that the
judge is the sole arbiter of the law and its applicability.” 21 The Tenth Circuit Court of Appeals
has recognized that:
A witness cannot be allowed to give an opinion on a question of law. . . . In order
to justify having courts resolve disputes between litigant, it must be posited as an
a priori assumption that there is one, but only one, legal answer for every
cognizable dispute. There being only one applicable legal rule for each dispute or
issue, it requires only one spokesman of the law, who of course is the judge. . . .
To allow anyone other than the judge to state the law would violate the basic
concept. Reducing the proposition to a more practical level, it would be a waste of
time if witnesses or counsel should duplicate the judge’s statement of the law, and
it would intolerably confound the jury to have it stated differently. 22

16

FED. R. EVID. 401.

17

Whatcott v. City of Provo, No. 2:01-cv-00490-DB, 2003 WL 26101357, *2 (D. Utah June 2, 2003).

18

Ralston v. Smith & Nephew Richards, Inc., 275 F.3d 965, 969 (10th Cir. 2001).

19

Id. (quoting FED. R. EVID. 702).

20

Id.

21

Specht v. Jensen, 853 F.2d 805, 807 (10th Cir. 1988).

22
Id. (quoting Stoebuck, Opinions on Ultimate Facts: Status, Trends, and a Note of Caution, 41 Den. L. Cent. J.
226, 237 (1964)).

5

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Some confusion may arise under “FED. R. EVID. 704, which allows witnesses to give their
opinions on ultimate issues.” 23 “While testimony on ultimate facts is authorized under Rule
704, . . . testimony on ultimate questions of law is not favored.” 24 “The basis for this distinction
is that testimony on the ultimate factual questions aids the jury in reaching a verdict; testimony
which articulates and applies the relevant law, however, circumvents the jury’s decision-making
function by telling it how to decide the case.” 25
But not all testimony regarding legal issues is inadmissible. “[A] witness may refer to the
law in expressing an opinion without that reference rendering the testimony inadmissible.” 26
“[A] witness may [also] properly be called upon to aid the jury in understanding the facts in
evidence even though reference to those facts is couched in legal terms.” 27 Thus, “an expert’s
testimony is proper under [FED. R. EVID. 702] if the expert does not attempt to define the legal
parameters within which the jury must exercise its fact-finding function.” 28 But “when the
purpose of testimony is to direct the jury’s understanding of the legal standards upon which their
verdict must be based, the testimony cannot be allowed.” 29 “In no instance can a witness be
permitted to define the law of the case.” 30 Nor may a witness be “allowed to instruct the jury on
how it should decide the case.” 31 “[A]n expert is not to opine on the weight of the facts or take a

23

Id.

24

Id. at 808.

25

Id.

26

Id. at 809.

27

Id.

28

Id. at 809-810.

29

Id. at 810.

30

Id.

31

Id. at 808.

6

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principal role in sifting, weighing and reciting them for the jury.” 32 Such impermissible
testimony is not helpful under FED. R. EVID. 702.
DISCUSSION
ClearPlay’s Daubert Motion No. 1: Dr. Reader’s opinions
and testimony regarding invalidity are admissible
ClearPlay’s Daubert Motion No. 1 seeks to exclude portions of Dr. Clifford Reader’s
opinions and testimony regarding the invalidity of ClearPlay’s asserted patents. Specifically,
ClearPlay seeks exclusion of Dr. Reader’s anticipation opinions, arguing that Dr. Reader has
conceded that prior art does not anticipate ClearPlay’s asserted patents. 33 ClearPlay also seeks
exclusion of Dr. Reader’s opinions and testimony and opinions regarding the USPTO
proceedings and record, arguing that his opinions and testimony are inconsistent with the court’s
claim construction. 34 And ClearPlay seeks exclusion of Dr. Reader’s opinions regarding
single-reference obviousness and obviousness based on the combination of certain prior art
(Flavin and Iggulden), arguing that the issues were untimely and insufficiently disclosed through
Dr. Reader’s supplemental report. 35
ClearPlay’s first two arguments (regarding anticipation and the USPTO proceedings and
record) suffer from related flaws arising from ClearPlay’s characterization of Dr. Reader’s
opinions and testimony and ClearPlay’s misunderstanding of an order denying supplemental
claim construction. These issues stem from what is characterized as the “single-object” and
“multi-object” approaches the claim term “navigation object.” 36 Under the single-object

32

Rowe v. DPI Specialty Foods, Inc., No. 2:13-cv-00708-DN-EJF, 2015 WL 4949097, *5 (D. Utah Aug. 19, 2015).

33

ClearPlay’s Daubert Motion No. 1 at 6.

34

Id. at 10-11.

35

Id. at 7-9.

36

Id. at 4-6, 10-11.

7

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approach, the elements that comprise a navigation object are contained within the same object,
file, or data structure (that being the “navigation object”). 37 Under the multi-object approach, the
elements are not necessarily within the same object, file, or data structure. Rather, they may be
located or contained in multiple files or data structures having an association with or a linked to
the “navigation object.” 38
Dish argues that ClearPlay improperly shifts its approach to “navigation object” when it
seeks to avoid invalidity (by arguing the single-object approach) and then seeks a finding of
infringement (by arguing the multi-object approach). 39 Dr. Reader’s opinions and testimony
address invalidity and the USPTO proceedings and record under both approaches. Dr. Reader
concedes that none of the prior art references cited in his original report alone anticipate the
asserted patents under the single-object approach. 40 However, Dr. Reader opines that the asserted
patents are anticipated by prior art under the multi-object approach, an approach that Reader
opines is inconsistent with the court’s claim construction. 41
Based on the parties’ stipulation, “navigation object” was construed as: “Plain and
ordinary meaning (as defined by the terms of the claims themselves).” 42 However, Dish sought
supplemental claim construction of “navigation object” (and other construed terms) based on its

37
Id.; Defendants Dish Network L.L.C. and EchoStar Technologies L.L.C.’s Response in Opposition to Plaintiff’s
Motion to Exclude Clifford Reader’s Anticipation and Obviousness Opinions (“Response to ClearPlay’s Daubert
Motion No. 1”) at 2-6, docket no. 470, filed Aug. 31, 2022. The single-object approach has also been characterized
as the “narrow,” “strict,” and “correct” interpretation. Id; ClearPlay’s Daubert Motion No. 1 at 4-6, 10-11.
38
Response to ClearPlay’s Daubert Motion No. 1 at 2-6; ClearPlay’s Daubert Motion No. 1 at 4-6, 10-11. The
multi-object approach has also been characterized as the “broad,” “incorrect,” and “ClearPlay’s” interpretation.
Response to ClearPlay’s Daubert Motion No. 1 at 2-6; ClearPlay’s Daubert Motion No. 1 at 4-6, 10-11.
39

Response to ClearPlay’s Daubert Motion No. 1 at 2-6; ClearPlay’s Daubert Motion No. 1 at 4-6, 10-11.

Response to ClearPlay’s Daubert Motion No. 1 at 6; Supplementary Expert Report of Dr. Clifford Reader ¶ 3 at
1-2, docket no. 459-17, filed Aug. 25, 2022.

40

Response to ClearPlay’s Daubert Motion No. 1 at 6; Supplementary Expert Report of Dr. Clifford Reader ¶ 3 n.1
at 1.

41

42

Memorandum Decision and Order Regarding Claim Construction at 5, 18, docket no. 309, filed Aug. 26, 2019.

8

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perception of ClearPlay’s shifting approaches to the term. 43 Supplemental claim construction
was denied based on Dish’s failure to establish an actual dispute regarding navigation object’s
stipulated construction. 44
ClearPlay misunderstands the order denying supplemental claim construction as a
rejection of the single-object approach to navigation object. No such rejection occurred or was
intended. Dish proposed a supplemental construction of “navigation object” which incorporated
language regarding the single-object approach. 45 But this was then unnecessary because there
was no dispute that the proper construction of “navigation object” was the term’s plain and
ordinary meaning (as defined by the claims themselves). 46 The order denying supplemental
claim construction affirmed this as the proper construction. 47 And to be clear, the single-object
approach to navigation object is the proper and consistent approach under this court’s claim
construction. Therefore, there is not a sufficient basis for excluding Dr. Reader’s opinions and
testimony regarding anticipation and the USPTO proceedings and record.
ClearPlay’s third argument (regarding untimely and insufficiently disclosed obviousness
theories) is a closer issue. Utah’s Local Patent Rules require early disclosure of and particulars
behind theories for invalidating asserted patents through obviousness. 48 Dish’s final invalidity
contentions do disclose single-reference obviousness and obviousness based on the combination

43

Motion Re: Supplemental Claim Construction Pursuant to O2 Micro, docket no. 355, filed July 14, 2021.

Memorandum Decision and Order Denying Motion Regarding Supplemental Claim Construction at 3-5, docket
no. 367, filed Mar. 1, 2022.
44

45

Id.

46

Id.

47

Id.

48

UT LPR Preamble, 2.4(b).

9

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of prior art references (including the Flavin and Iggulgen combination). 49 Dr. Reader also
discussed and opined on these issues in his original report. 50 ClearPlay’s arguments to the
contrary rely on semantics that are not persuasive. Thus, the issue is not one of the disclosures’
timeliness. It is one of the disclosures’ sufficiency.
Dish’s disclosures identify and chart the references of prior art relevant to Dr. Reader’s
challenged obviousness opinions. 51 But they do not contain a detailed discussion of how a single
prior art reference could be modified to render the asserted patents obvious. Nor is there a
detailed discussion or charting of how the specific combination of Flavin and Iggulden render the
asserted patents obvious. An important purpose of the disclosure requirements in Utah’s Local
Patent Rules is to allow the parties to pin down theories of liability and defense. 52 Dish’s
disclosures in this case are not a model of specificity. But the disclosures sufficiently provided
ClearPlay with notice and charting of the prior art references on which Dr. Reader relies for his
opinions that the asserted patents are invalid through single-reference and combined-reference
obviousness. The purpose of the Local Patent Rules was fulfilled. There is not a sufficient basis
for excluding Dr. Reader’s opinions regarding single-reference obviousness and obviousness
based on the combination of Flavin and Iggulden.
Therefore, ClearPlay’s Daubert Motion No. 1 53 is DENIED.

Defendants’ Final Invalidity Contentions With Respect to the Asserted Claims of U.S. Patent 7,577,970, U.S.
Patent 7,543,318, U.S. Patent 7,526,784, and U.S. Patent 6,898.799 (“Final Invalidity Contentions”) at 6-7, 9-10,
Ex. B-E, docket no. 459-18, filed Aug. 25, 2022.
49

Expert Report of Dr. Clifford Reader (“Reader Report”) ¶ 124 at 35, ¶ 318 at 96, Ex. B3, Ex. C2, Ex. D2, docket
no. 459-23, filed Aug. 25, 2022.

50

Final Invalidity Contentions at 6-7, 9-10, Ex. B-E; Reader Report ¶ 124 at 35, ¶ 318 at 96, Ex. B3, Ex. C2,
Ex. D2.
51

Vivint, Inc. v. Alarm.com, Inc., No. 2:15-cv-00392-CW, 2020 WL 3871346, *6 (D. Utah July 9, 2020); see also
O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1365 (Fed. Cir. 2006) (discussing purposes for
local patent rules).
52

53

Docket no. 426, filed Aug. 1, 2022.

10

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ClearPlay’s Daubert Motion No. 2: Dr. Reader’s
damages-related opinions and testimony are admissible
ClearPlay’s Daubert Motion No. 2 seeks exclusion of Dr. Reader’s damages-related
opinions and testimony. ClearPlay first argues that Dr. Reader’s opinions improperly rely on
limitations that are not in the asserted patents’ language, and on an alternative claim construction
that is inconsistent with the court’s claim construction. 54 This argument fails for similar reasons
to those discussed in ClearPlay’s Daubert Motion No. 1. 55 ClearPlay misconstrues Dr. Reader’s
opinions and testimony and the effect of the order denying supplemental claim construction. Dr.
Reader discussed his understanding of how the asserted patents and Dish’s technology work
using terminology that does not appear in the asserted patents. 56 This use of terminology to
characterize the technologies (and how they work) is not improper reliance on limitations that are
not in the asserted patents’ language. Rather, it is properly supported by Dr. Reader’s discussion
of the asserted patents and the parties’ technologies. 57
Dr. Reader’s opinions also assume infringement based on his understanding of the claim
interpretation that ClearPlay’s expert (Dr. Feamster) applied to opine that Dish’s accused
products infringe the asserted patents. 58 Dr. Reader opines that this interpretation is inconsistent
with the court’s claim construction, but that he must use it to assume infringement. 59 This is not
an impermissible use of a claim construction that is inconsistent with the court’s claim

54

ClearPlay’s Daubert Motion No. 2 at 8-9.

55

Supra Discussion at 7-9.

Expert Report of Dr. Clifford Reader (“Reader NOI Report”) ¶ 4 at 1-2, ¶ 32 at 12, ¶ 41 at 14, ¶ 43 at 15, ¶¶ 72-73
at 24, docket no. 443-8, filed under seal Aug. 1, 2022.

56

57

Id. ¶¶ 9-38 at 4-13.

Id. ¶¶ 40-41 at 14; Deposition Transcript of Clifford Reader, Ph.D. dated June 1, 2022 (“Reader Depo.”) at
25:11-18, docket no. 475-1, filed under seal Aug. 31, 2022.
58

59

Reader NOI Report ¶¶ 40-41 at 14; Reader Depo. at 25:11-18.

11

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construction. It is necessary rebuttal to the opinions offers by Dr. Feamster. Dr. Reader’s
opinions and testimony are sufficiently supported; are, where applicable, consistent with the
court’s claim construction; and are admissible.
ClearPlay next argues that Dr. Reader’s opinions regarding non-infringing alternatives
lack evidentiary support. 60 However, Dr. Reader sufficiently discusses the basis for the creation
and implementation of non-infringing alternatives through the combination of a Dish patent and
three prior art references. 61 ClearPlay’s arguments go to the weight of Dr. Reader’s opinions, not
the opinions’ admissibility.
ClearPlay also argues that Dr. Reader’s is unqualified to offer economic opinions
regarding apportionment and that his opinions lack evidentiary support. 62 There is no dispute that
Dr. Reader is not an economist. However, Dr. Reader’s apportionment opinions are not
economic in nature. Dr. Reader offers a technical analysis based on his understanding of the
parties’ technologies; distribution of television content in US television markets; and Dish’s
infrastructure for implementing its technology. 63 His opinions have economic implications and
are relevant to apportioning value. But the opinions remain technical in nature and are within his
field of expertise. His apportionment opinions are also sufficiently supported and reliable, and
are admissible.
Therefore, ClearPlay’s Daubert Motion No. 2 64 is DENIED.

60

ClearPlay’s Daubert Motion No. 2 at 9-11.

61

Reader NOI Report ¶¶ 42-70 at 14-23; Reader Depo. at 26:5-43:20, 45:16-48:23, 49:12-52:24, 53:12-56:19.

62

ClearPlay’s Daubert Motion No. 2 at 11.

63

Reader NOI Report ¶¶ 9-41 at 2-14, ¶¶ 71-73 at 23-24.

64

Docket no. 430, filed Aug. 1, 2022.

12

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ClearPlay’s Daubert Motion No. 3: Flavin is excluded as an expert, but
Lipoff may testify as an expert and his opinions and testimony are admissible
ClearPlay’s Daubert Motion No. 3 seeks exclusion of Robert Flavin and Stuart Lipoff as
expert witnesses based on Dish’s failure to timely make them available for deposition. 65
ClearPlay also argues Lipoff’s opinions and testimony should be excluded because Lipoff relies
on an alternative claim construction that is inconsistent with the court’s claim construction. 66
There is no dispute regarding Flavin. 67 During expert discovery, Dish represented to
ClearPlay that it did not intend to call Flavin as an expert witness at trial. 68 Dish’s position has
not changed. 69 To avoid any prejudice caused by additional briefing and potential delays to the
scheduled trial date should Dish decide to reconsider its position, it is appropriate that Dish be
precluded from calling Flavin as an expert witness at trial.
Regarding Lipoff, there is no dispute that Dish failed to timely make Lipoff available for
deposition during expert discovery. When ClearPlay inquired about Lipoff’s availability for
deposition, Dish indicated that it was unsure whether it would call Lipoff as an expert witness at
trial and that it would follow up with ClearPlay. 70 Dish did not follow up with its intent to call
Lipoff as an expert witness at trial until July 6, 2022, 71 three weeks after the close of expert

65

ClearPlay’s Daubert Motion No. 3 at 7.

66

Id. at 8-9.

Defendants’ Dish Network L.L.C. and EchoStar Technologies L.L.C.’s Response in Opposition to Plaintiff’s
Motion to Exclude the Testimony of Stuart Lipoff and Robert Flavin at 1, docket no. 476, filed Aug. 31, 2022.
67

68

Id.

69

Id.

Declaration of Richard Williams in Support of Plaintiff’s Motion to Exclude the Testimony of Stuart Lipoff and
Robert Flavin ¶ 7 at 2, docket no. 442, filed Aug. 1, 2022.
70

71
Email from Brent Hatch to Richard Williams and Samuel C. Straight dated July 6, 2022 (“Hatch Email re:
Lipoff”), docket no. 442-3, filed Aug. 1, 2022.

13

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discovery. 72 But this failure does not necessarily require Lipoff’s exclusion as an expert witness
at trial.
Dish originally disclosed Lipoff as a fact witness (with personal knowledge of the
Iggulden prior art reference) in its amended initial disclosures on July 17, 2017. 73 Dish later
identified Lipoff as an expert witness and timely served ClearPlay with Lipoff’s report on
November 25, 2019. 74 The contents of Lipoff’s report relate to his knowledge of prior art and the
effect of prior art on the validity of ClearPlay’s asserted patents. 75
Through Dish’s disclosures, ClearPlay was not surprised or unable to respond to Lipoff’s
opinions and testimony. There is no question that ClearPlay has been aware of the contents of
Lipoff’s report for over three years. And ClearPlay’s expert (Dr. Henry H. Houh) prepared a
report that includes a section expressly rebutting Lipoff’s invalidity opinions. 76
ClearPlay also cannot genuinely assert an inability to depose Lipoff after the close of
expert discovery. When indicating its intent to call Lipoff as an expert witness at trial, Dish
inquired whether ClearPlay desired to depose Lipoff. 77 ClearPlay’s response was not to request
available deposition date, but rather, was to file ClearPlay’s Daubert Motion No. 3. Dish relied
on Lipoff’s opinions to oppose ClearPlay’s motion for summary judgment. 78 Supplemental
expert discovery, including depositions, involving other expert witnesses has also occurred

72

Amended Scheduling Order at 1, docket no. 370, filed Mar. 21, 2022.

Amended Initial Disclosures of Dish Network L.L.C. at 3, docket no. 476-1, filed Aug. 31, 2022; Amended Initial
Disclosures of EchoStar Technologies L.L.C. at 3, docket no. 476-2, filed Aug. 31, 2022.
73

Order Granting Stipulated Motion to Amend Schedule at 1, docket no. 311, filed Sept. 13, 2019; Expert Report of
Stuart J. Lipoff (“Lipoff Report”), docket no. 439-1, filed Aug. 1, 2022.
74

75

Lipoff Report ¶¶ 23-69 at 6-29.

76

Expert Report of Dr. Henry H. Houh ¶¶ 213-218 at 66-68, docket no. 418-51, filed under seal July 21, 2022.

77

Hatch Email re: Lipoff.

78

Defendants’ Response to Plaintiff’s Motion for Summary Judgment at 43-44, docket no. 456, filed Aug. 25, 2022.

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nearly six months after the close of expert discovery. 79 But despite this, ClearPlay has not sought
to depose Lipoff through request to Dish or by motion. Nor has ClearPlay identified any
substantive matters within Lipoff’s report that will cause prejudice without Lipoff’s deposition.
Indeed, ClearPlay has not adequately articulated any prejudice it suffered by not deposing
Lipoff. Therefore, Dish’s failure to timely make Lipoff available for deposition is not a sufficient
basis to preclude Dish from calling Lipoff as an expert witness at trial.
Additionally, there is not a sufficient basis for excluding Lipoff’s expert opinions and
testimony. ClearPlay argues that Lipoff improperly relies on an alternative claim construction
that is inconsistent with the court’s claim construction. 80 But, just as with Dr. Reader’s opinions
and testimony, 81 ClearPlay misconstrues Lipoff’s report and the effect of the order denying
supplemental claim construction. Lipoff’s opinion that the asserted patents are invalidated by
prior art is responding to what Lipoff refers to as “ClearPlay’s construction” or “ClearPlay’s
reading” of the term “filtering action.” 82 This is another resurgence of the “single-object” versus
“multi-object” approach to “navigation object.” Lipoff’s opinions and testimony are sufficiently
supported; are, where applicable, consistent with the court’s claim construction; and are
admissible.
Therefore, ClearPlay’s Daubert Motion No. 3 83 is GRANTED as to Flavin and DENIED
as to Lipoff. Dish is precluded from calling Flavin as an expert witness at trial.

Minute Entry for Proceedings Held Before Magistrate Judge Cecilia M. Romero, docket no. 546, filed Nov. 10,
2022; Minute Entry for Proceedings Held Before Magistrate Judge Cecilia M. Romero, docket no. 549, filed Nov.
16, 2022; Order Granting Expert Disclosures, docket no. 554, filed Nov. 29, 2022.
79

80

ClearPlay’s Daubert Motion No. 3 at 8-9.

81

Supra Discussion at 7-9, 11.

82

Lipoff Report ¶¶ 57-69 at 23-29.

83

Docket no. 439, filed Aug. 1, 2022.

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ClearPlay’s Daubert Motion No. 4: Dr. Goldberg’s opinions and
testimony are admissible, but he may not opine that ClearPlay’s conduct
constitutes prosecution disclaimer or prosecution history estoppel
ClearPlay’s Daubert Motion No. 4 seeks to exclude the expert opinions and testimony of
Dr. Benjamin Goldberg regarding the invalidity of ClearPlay’s asserted patents. Specifically,
ClearPlay argues that Dr. Goldberg’s opinions regarding video mapping, navigation object,
filtering action, and the USPTO proceedings and record should be excluded because they are
inconsistent with the asserted patents’ language, the court’s claim construction, and Dish’s
technology. 84 ClearPlay also argues that Dr. Goldberg’s opinions regarding prosecution
disclaimer and prosecution history estoppel should be excluded because these issues are
questions of law. 85
ClearPlay first arguments misconstrues Dr. Goldberg’s opinions and testimony and the
effect of the order denying supplemental claim construction. ClearPlay’s arguments again go to
the “single-object” versus “multi-object” approach to “navigation object.” 86 For the same reasons
discussed regarding Dr. Reader and Lipoff’s opinions and testimony, ClearPlay’s arguments
fail. 87 Dr. Goldberg’s opinions and testimony are sufficiently supported; are, where applicable,
consistent with the court’s claim construction; and are admissible. And whether Dr. Goldberg’s
video mapping opinions and testimony are consistent with Dish’s technology is an issue that
goes to weight, not admissibility. Therefore, there is not a sufficient basis for excluding Dr.
Goldberg’s opinions regarding video mapping, navigation object, filtering action, and the
USPTO proceedings and record.

84

ClearPlay’s Daubert Motion No. 4 at 14-18.

85

Id. at 17-18.

86

Id. at 14-18.

87

Supra Discussion at 7-9, 11, 15.

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However, while Dr. Goldberg may refer to and testify regarding the USPTO proceedings
and record to rebut ClearPlay’s expert witness (Dr. Feamster) and to point out inconsistencies, he
may not opine that ClearPlay’s conduct constitutes prosecution disclaimer or prosecution history
estoppel. Such opinions are not helpful under FED. R. EVID. 702 because they improperly
encroach on the judge’s role as the sole arbiter of the law and its applicability and circumvent the
jury’s decision-making function. 88
Therefore, ClearPlay’s Daubert Motion No. 4 89 is DENIED in part and GRANTED in
part. Dr. Goldberg is precluded from opining that ClearPlay’s conduct constitutes prosecution
disclaimer or prosecution history estoppel.
ClearPlay’s Daubert Motion No. 5: Hoffman’s reasonable royalty
opinions that rely on Dish’s usage data are inadmissible, but his opinions
on apportionment and non-infringing alternatives are admissible
ClearPlay’s Daubert Motion No. 5 seeks to exclude potions of Richard Hoffman’s expert
opinions and testimony regarding damages. ClearPlay argues that Hoffman’s reasonably royalty
opinions should be excluded because they are based on unreliable data and methods. 90 ClearPlay
also argues that Hoffman’s opinions regarding apportionment and non-infringing alternatives
should be excluded because Hoffman relies on Dr. Reader’s expert opinions, which are the
subject of ClearPlay’s Daubert Motion No. 2. 91
The thrust of ClearPlay’s arguments regarding the reliability of Hoffman’s reasonable
royalty opinions is Hoffman’s reliance on Dish’s usage data. 92 Dish’s usage data is a

88

Specht v. Jensen, 853 F.2d at 807-810.

89

Docket no. 427, filed Aug. 1, 2022.

90

ClearPlay’s Daubert Motion No. 5 at 3-7.

91

Id. at 7-11.

Id. at 3-7; Rebuttal Expert Witness Report of Richard S. Hoffman (“Hoffman Report”) 42-43, 45-46, 55-56,
58-111, docket no. 443-2, filed under seal Aug. 1, 2022; Dish Usage Data, docket no. 443-4, filed under seal Aug. 1,
2022; Dish Supplemental Usage Data, docket no. 488-3, filed under seal Sept. 2, 2022; Supplement to Rebuttal
92

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foundational component of Hoffman’s reasonable royalty calculation—he relies on the data to
calculate a royalty base. 93 Hoffman also asserts the lack of reliance on usage data as a component
for his criticisms of ClearPlay’s expert (Dr. Sullivan). 94
“Reliability [under FED. R. EVID. 702] ‘is primarily a question of the validity of the
methodology employed by an expert, not the quality of the data used in applying the
methodology or the conclusions produced.’” 95 ClearPlay argues that Dish’s usage data fails to
account for the frequency of customer use of the AutoHop feature and for use of the accused
Joey product. These issues that go to the weight of Hoffman’s opinions, not the reliability of his
methodology or his opinions’ admissibility. However, ClearPlay’s argument that Dish’s usage
data is unverifiable and unreliable implicates the admissibility of Hoffman’s opinions under FED.
R. EVID. 702. This is because an expert’s opinions must be “based on sufficient facts or data[.]” 96
And “any step that renders [an expert’s] analysis unreliable . . . renders the expert’s testimony
inadmissible.” 97
The original usage data on which Hoffman relied for his reasonable royalty opinions was
a single-page, three-column spreadsheet. 98 The spreadsheet was, purportedly, created by running
a report off a database Dish uses to collect, store, and retrieve customer data. 99 Hoffman had a

Expert Witness Report of Richard S. Hoffman (“Hoffman Supplemental Report”) at 1-3, docket no. 504-1, filed
under seal Sept. 22, 2022.
93

Hoffman Report at 58-111.

94

Id. at 42-43, 45-46, 55-56.

In re Urethane Antitrust Litig., 768 F.3d 1245, 1263 (10th Cir. 2014) (quoting Manpower, Inc. v. Ins. Co. of
Penn., 732 F.3d 796, 806 (7th Cir. 2013)).

95

96

FED. R. EVID. 702(b).

97

Geobel v. Denver & Rio Grande W. R.R. Co., 346 F.3d 987, 992 (10th Cir. 2003) (internal quotations omitted).

98

Dish Usage Data.

Deposition Transcript of Richard S. Hoffman dated June 21, 2022 (“Hoffman Depo.”) at 39:20-40:7, 61:5-62:22,
docket no. 443-3, filed under seal Aug. 1, 2022.

99

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general understanding of the database and requested the usage data. 100 But he did not
independently audit or verify the data within the spreadsheet. 101 He merely relied on it.
Dish did not disclose any other documentation regarding the usage data, the metrics used
to run the report in Dish’s database, or the spreadsheet’s creation. 102 Dish also did not disclose
any witness capable of providing this information. The deposition of Dish’s fact witnesses
revealed only generalities of how the usage data was collected, stored, and could be retrieved. 103
Indeed, Dish’s Rule 30(b)(6) witness (Vivek Khemka) testified that he did not have specific
knowledge of usage data because Dish has “never processed [the data]” and has “never had a
need internally to process it.” 104
Dish’s usage data became the subject of a motion to strike. 105 In direct response to the
filing of ClearPlay’s Daubert Motion No. 5, Dish attempted to amend its disclosures with
supplemental usage data, which consisted of a two-page, six-column spreadsheet. 106 Hoffman
relied on this supplemental usage data to supplement his reasonably royalty calculations. 107 Dish
also attempted to disclose a new fact witness that could testify regarding the supplemental usage

100

Id. at 39:20-24, 40:6-22, 60:11-61:4.

101

Id. at 39:25-40:5, 61:5-62:22.

102

Id. at 37:17-38:2.

See e.g. Id. at 39:20-40:22. 60:11-62:22; Deposition Transcript of Vivek Khemka (“Khemka Depo.”) at 75:11-23,
214:15-215:12, docket no. 443-7, filed under seal Aug. 1, 2022; Deposition Transcript of Danny J. Minnick at
214:11-24, 215:18-217:6, docket no. 416-7, filed under seal July 21, 2022.
103

104

Khemka Depo. at 214:15-215:12.

105

ClearPlay’s Motion to Strike, docket no. 492, filed Sept. 15, 2022.

Defendants’ Response in Opposition to Plaintiff’s Motion to Exclude in part the Testimony of Richard S.
Hoffman (“Response to ClearPlay’s Daubert Motion No. 5”) at 4 n.11; Dish Supplemental Usage Data.
106

107

Hoffman Supplemental Report at 1-3.

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data and its creation. 108 ClearPlay sought to strike the supplemental usage data and new fact
witness for being untimely disclosed. 109
Dish conceded in its response to ClearPlay’s Daubert Motion No. 5(, 110 and in its
response to the motion to strike and during oral argument on the motion to strike, 111 that the
original usage data it disclosed and which Hoffman relied on was inaccurate. And Dish asserted
that the supplemental usage data updated the original usage data and revised the original data
using a different metric to correct the inaccuracy. 112
Magistrate Judge Cecilia M. Romero granted the motion to strike Dish’s supplemental
usage data and newly disclosed fact witness. 113 Judge Romero found “undue prejudice and
surprise to ClearPlay because Dish produced the [supplemental] usage data nearly two years
after the [original] usage data was produced, . . . four and a half years after the close of fact
discovery deadlines, . . . and over five years after the usage data was initially requested [by
ClearPlay].” 114 Judge Romero also found “[t]he late disclosure [was] highly disruptive with [sic]
trial which is merely months away and with Daubert and summary judgment motions fully
briefed.” 115 And although not finding bad faith or willfulness on the part of Dish, Judge Romero

Second Amended Initial Disclosures of Defendants Dish Network L.L.C. and EchoStar Technologies L.L.C. at 5,
docket no. 492-8, filed Sept. 15, 2022.
108

109

ClearPlay’s Motion to Strike at 5-9.

110

Response to ClearPlay’s Daubert Motion No. 5 at 3-4, n.11, n.12.

Defendants’ Response in Opposition to ClearPlay’s Motion to Strike (“Response to Motion to Strike”) at 2, 4-5,
docket no. 529, filed Sept. 29, 2022; Transcript of Nov. 8, 2022 Motion Hearing at 55:12-57:7, docket no. 552-1,
filed under seal Nov. 28, 2022.
111

Response to ClearPlay’s Daubert Motion No. 5 at 3-4, n.11, n.12; Response to Motion to Strike at 4-5; Transcript
of Nov. 8, 2022 Motion Hearing at 55:12-57:7.

112

113

Transcript of Nov. 10, 2022 Oral Ruling at 11:13-17:7, docket no. 552-2, filed under seal Nov. 28, 2022.

114

Id. at 14:5-11.

115

Id. at 14:12-14.

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concluded that “Dish’s failure to conduct a proper search and produce accurate usage data before
the close of fact discovery [wa]s not substantially justified or harmless.” 116
Judge Romero also found “disingenuous” Dish’s argument that the newly disclosed fact
witness was “merely a standby witness” for Dish’s Rule 30(b)(6) witness (Khemka) that would
“only address the topics of Khemka.” 117 This was because Dish “clearly identifie[d] that [the
new witness wa]s expected to address specific topics, including usage,” and Dish had “not
previously disclosed a witness to testify about usage.” 118 Judge Romero also found that “Dish
had ample time to [timely] submit an amendment [of its witness disclosures], but failed to do
so.” 119 And Judge Romero found that the new witness’s “disclosure causes surprise and
prejudice to ClearPlay and disruption to the upcoming trial and pending motions . . . [and] was
therefore not substantially justified or harmless.” 120
Therefore, as it stands, the original usage data that Hoffman’s reasonable royalty opinions
rely on is concededly inaccurate; Dish has no evidence regarding the creation of its supplemental
usage data or the data’s accuracy; and the supplemental usage data Hoffman relied on to
supplement his reasonable royalty opinions is inadmissible. On this record, Hoffman’s
reasonably royalty opinions that rely on Dish’s usage data are based on sufficient facts and data.
Therefore, these opinions are unreliable and inadmissible under FED. R. EVID. 702.
Additionally, FED. R. EVID. 703 permits an expert to base opinions on facts or data that
are inadmissible. 121 But the Rule allows an expert to rely on facts and data that “experts in the

116

Id. at 14:15-19.

117

Id. at 15:18-22.

118

Id. at 15:23-16:11.

119

Id. at 16:13-14.

120

Id. at 16:19-20.

121

FED. R. EVID. 703.

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particular field would reasonably rely on” that do not otherwise meet the evidentiary standards
for admissibility. 122 The Rule cannot be used to avoid a court order excluding evidence based on
a party’s unjustified failure to disclose evidence in violation of rules of procedure. Additionally,
even if Rule 703 applied to Dish’s supplemental usage data, the data could be disclosed to the
jury “only if their probative value in helping the jury evaluate the [expert’s] opinion substantially
outweighs their prejudicial effect.” 123
The concept of relying on usage data to determine value and a reasonable royalty is
highly probative to understanding Hoffman’s reasonable royalty opinions and calculations.
Dish’s usage data is a foundational component of Hoffman’s reasonable royalty calculation, 124
and Hoffman asserts the lack of reliance on usage data as a component for his criticisms of
ClearPlay’s expert (Dr. Sullivan). 125 But the prejudice in allowing Hoffman to disclose Dish’s
usage data and his reasonably royalty opinions that rely on that data to the jury is also high.
As found by Judge Romero, ClearPlay was severely prejudiced by the supplemental
usage data’s untimely disclosure. 126 ClearPlay does not have contrary usage data evidence and
has not had opportunity to depose Hoffman regarding his reliance on the supplemental usage
data. And there is potential for misleading the jury regarding the usage Data’s veracity despite
vigorous cross-examination because it will be presented by an expert, and neither ClearPlay nor
Dish have other witnesses with any knowledge of the usage data.

122

Id.

123

Id.

124

Hoffman Report at 58-111.

125

Id. at 42-43, 45-46, 55-56.

126

Transcript of Nov. 10, 2022 Oral Ruling at 14:5-16:20.

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On this record, the probative value of allowing Hoffman to disclose Dish’s usage data
and his reasonable royalty opinions that rely on the data does not substantially outweigh the
prejudicial effect. The prejudice runs to ClearPlay and also to the justice system. Therefore, the
portions of Hoffman’s reasonably royalty opinions that rely on Dish’s original and supplemental
usage data are inadmissible.
ClearPlay’s remaining arguments regarding Hoffman’s apportionment and non-infringing
alternatives opinions are premised on its incorrect characterization and assessment of Dr.
Reader’s expert opinions. 127 Dr. Reader’s apportionment and non-infringing alternatives
opinions are within his field of expertise, and are sufficiently supported and reliable. 128 Hoffman
relied on Dr. Reader’s technical analysis, as well as his own understanding of Dish’s technology
and infrastructure (through the language of a Dish-owned patent and conversation with Dish’s
Senior Principal Engineer) to inform the economic analysis he implemented in forming his
apportionment and non-infringing alternatives opinions. 129 The facts and data Hoffman relied on
are the kind that an expert in his field would rely on to form these opinions. And through his
discussion of the facts and data, 130 Hoffman demonstrated sufficient investigation, familiarity,
and verification to of the facts and data to support his reliance on them in forming his opinions.
Hoffman’s opinions relating to apportionment and non-infringing alternatives are sufficiently
supported and reliable, and are admissible.

127

ClearPlay’s Daubert Motion No. 5 at 7-11; ClearPlay’s Daubert Motion No. 2 at 9-11.

128

Supra Discussion at 12.

129

Hoffman Report at 36-41, 61-64, 104, 111.

130

Id.

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Therefore, ClearPlay’s Daubert Motion No. 5 131 is GRANTED in part and DENIED in
part. Hoffman’s reasonably royalty opinions that rely on Dish’s original and supplemental usage
data are excluded, and he is precluded from offering such opinions at trial.
ClearPlay’s Daubert Motion No. 6: Butler’s opinions regarding Dish’s
advertisements, surveys, and market data are admissible, but she is not
qualified to opine regarding valuation methodology or value calculations
ClearPlay’s Daubert Motion No. 6 seeks to exclusion of Sarah Butler as an expert
witness. ClearPlay argues that Butler’s testimony relating to Dish’s advertising materials should
be excluded because jurors can understand the advertising without expert testimony. 132 ClearPlay
also argues that Butler is not qualified to offer economic opinions regarding valuation
methodology or value calculations. 133
There is no dispute that Butler is an expert in surveys and market research. 134 Butler may
offer expert opinions and testimony regarding survey and market research methodologies, and
analyzing consumer decision making, choice, and behavior from the results of surveys and
market research. But there is no dispute that Butler is not an economist, 135 and she is not
qualified to offer expert opinions and testimony regarding economic matters.
In her report, Butler criticizes the use of and reliance on Dish’s advertising materials and
internal survey results by ClearPlay’s expert witness (Dr. Sullivan). 136 Some of Butler’s opinions
and testimony fall within her field of expertise, and are admissible. But many of Butler’s

131

Docket no. 440, filed Aug. 1, 2022.

132

ClearPlay’s Daubert Motion No. 6 at 4-5.

133

Id. at 5-8.

Id. at 2; Rebuttal Expert Report of Sarah Butler (“Butler Report”) at 3-4, docket no. 437-1, filed under seal Aug.
1, 2022.
134

Defendants Dish Network L.L.C. and EchoStar Technologies L.L.C.’s Response in Opposition to Plaintiff’s
Motion to Exclude the Testimony of Sarah Butler at 4, docket no. 480, filed Aug. 31, 2022.
135

136

Butler Report ¶ 9 at 6-8, ¶¶ 19-66 at 13-33, Ex. C.

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opinions and criticisms of Dr. Sullivan cross the line of permissible testimony into economic
matters for which she is not qualified to offer expert opinions and testimony. Butler’s
permissible opinions and testimony cover her discussion of survey and market research
methodologies and her criticism of the underlying materials and survey data. But Butler is not
qualified to offer expert opinions and testimony on valuation methodologies or value
calculations, including criticisms of Dr. Sullivan’s use of survey data in his valuation
methodologies and value calculations. These opinions and testimony must be excluded under
FED. R. EVID. 702. Most importantly, Butler is not qualified to rework Dr. Sullivan’s calculations
or create her own valuations.
Regarding ClearPlay’s first argument (which focuses on Dish’s advertising materials),
Butler’s opinions and testimony are within her field of expertise, 137 and are admissible. Butler
provides a summary describing Dish’s advertising materials on which Dr. Sullivan relies. 138
Butler also analyzes and criticizes Dr. Sullivan’s selective use of the information within the
advertising materials. 139 Butler’s summaries, analysis, and criticisms are given through the lens
of her expertise in the implications of consumer decision making, choice, and behavior from
surveys and market research. Butler is not, as ClearPlay characterizes, simply reviewing the
advertising materials in the same manner as a layperson. Butler’s opinions and testimony go
beyond the knowledge of a lay juror, and are helpful and admissible under FED. R. EVID. 702.
Butler next offers opinions and testimony regarding Dr. Sullivan’s apportionment. 140
Many of Butler’s opinions and much of her testimony in this section of her report is economic in

137

Butler Report ¶ 9 at 7, ¶¶ 63-64 at 32-33, Ex. C.

138

Id. at Ex. C.

139

Id. ¶ 9 at 7, ¶¶ 63-64 at 32-33.

140

Id. ¶¶ 8-9 at 5-7, ¶¶ 19-62 at 14-32, 65-66 at 33.

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nature, relating to valuation methodologies and calculations and criticizing Dr. Sullivan’s
valuation methodologies and calculations. These opinions and testimony are beyond Butler’s
field of expertise. Therefore, the following portions of Butler’s report are inadmissible, and
Butler is precluded from testifying to these matters at trial: 141
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•

the phrase “on Dr. Sullivan’s misuse and misinterpretation of” in the third sentence of
¶ 8 at 5;
the last two sentences in the first bullet point of ¶ 9 at 5;
the first sentence and the phrase “and do not demonstrate that any feature is of such
importance that a consumer would place monetary value on it” in the last sentence in
the second bullet point of ¶ 9 at 5-6;
the first sentence and the phrases “Given that” and “suggest that ‘use’ and
‘importance’ results should have somehow been scaled to accurately reflect the
feature’s scope” in the last sentence in the third bullet point of ¶ 9 at 6;
the phrases “selected by Dr. Sullivan” and “and increase the value attributable to
AutoHop” in the first sentence, the entire fourth sentence, and the entire last sentence
in the fourth bullet point of ¶ 9 at 6;
the phrase “IS UNRELIABLE” in heading VI at 13
the last sentence of ¶ 19 at 14;
the last sentence of ¶ 20 at 14;
the last sentence of ¶ 22 at 15, including footnote 41;
the phrase “has an effect on the apportionment calculation” in the first sentence and
the entire last sentence of ¶ 23 at 15;
the last two sentences of ¶ 24 at 15, including the phrase “thereby assuming
multi-view has no value or no usage” in footnote 45 and the entire last sentence of
footnote 47;
the last three sentences of ¶ 25 at 15-16;
the entirety of ¶ 26 at 16;
the phrase “is Not Meaningful” in heading B at 16;
the last sentence and Table 2 of ¶ 27 at 16-17, including footnote 50;
the entirety of ¶ 28 at 17;
the entirety of ¶ 29 at 17-18, including Table 3;
the entirety of ¶ 30 at 18;
the phrase “are not Measuring Value” in heading C at 19;

ClearPlay’s Daubert Motion No. 6 seeks exclusion of only paragraphs 24, 27-38, 60-64, and Exhibit C of
Butler’s report. ClearPlay’s Daubert Motion No. 6 at 2-9. However, several other portions of Butler’s report include
opinions and testimony which Butler is unqualified to offer under FED. R. EVID. 702. Butler often merges and blends
permissible and impermissible opinions and testimony. This is exemplified in the summary of Butler’s conclusions,
Butler Report ¶ 9 at 5-7, which is not identified in ClearPlay’s Daubert Motion No. 6 but includes the opinions and
testimony ClearPlay expressly challenges. A more thorough review of Butler’s report and parsing of her opinions
and testimony was necessary to excise inadmissible content.
141

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•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•

•

the phrase “and that the calculation performed does not have any intrinsic tie to
‘value,’ the survey questions Dr. Sullivan relies on are also not appropriate measures
of consumer value” in the first sentence and the entire second sentence of ¶ 31 at 19;
the phrase “is not Equivalent to Value” of heading 1 at 19;
the last three sentences of ¶ 32 at 19;
the entirety of ¶ 33 at 19;
the first and last sentences of ¶ 34 at 19, with the exception of footnote 54;
the phrase “and such restrictions are likely to be strongly correlated with the value a
consumer would actually place on this feature” in the last sentence of ¶ 35 at 20;
the phrase “to the extent that consumer usage has any connection to the value of each
feature, a reliable apportionment would need to take into account that” in the last
sentence of ¶ 36 at 20;
the last two sentences of ¶ 37 at 20-21;
the phrase “and Dr. Sullivan’s reliance on these data” and the entire last sentence of
¶ 38 at 21, with the exception of footnote 61;
the phrase “is not Equivalent to Value” of heading 2 at 22;
the word “while” and the phrase “they cannot establish a consumer’s willingness to
pay for a particular feature” in the last sentence of ¶ 39 at 22;
the phrase “further undermining Dr. Sullivan’s reliance on this survey” in the last
sentence of ¶ 41 at 22-23.
the last sentence of ¶ 42 at 23;
the last two sentences of ¶ 44 at 23;
the phrase “Dr. Sullivan Relies on” in heading D at 24;
the last sentence of ¶ 47 at 24-25;
the last sentence of ¶ 48 at 25, including the last sentence of footnote 74;
the second sentence of ¶ 53 at 28;
the phrase “Relative to Mr. [sic] Sullivan’s current method” in the first sentence and
the entire last sentence of ¶ 57 at 29-30, and footnote 88 at 29 and footnote 89 at 30;
the phrase “which is another unsubstantiated idea that Mr. [sic] Sullivan relies upon
in his use of surveys to assess damages” in the last sentence of ¶ 58 at 30;
the last sentence of ¶ 59 at 30;
the phrase “Value Not Simply Transferrable to” of heading G at 30;
the first sentence of ¶ 60 at 30-31;
the entirety of ¶ 61 at 31-32;
the first sentence and the last two sentences of ¶ 62 at 32;
the first two sentences, the phrase “and as such the value for AutoHop is likely
inflated” in the third sentence, the entire fourth sentence, the phrase “in the numbers
Dr. Sullivan relies on for apportionment, which need to be adjusted to account for the
limitations on use” in the fifth sentence, the words “either” and “or irrelevant” in the
sixth sentence, and the phrase “In contrast to the unreliable and imprecise data Dr.
Sullivan uses for apportionment” in the seventh sentence of ¶ 65 at 33; and
the entirety of ¶ 66 at 33.

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The court will file separately under seal a redlined version of Butler’s report identifying the
portions of the report that are inadmissible.
Therefore, ClearPlay’s Daubert Motion No. 6 142 is DENIED in part and GRANTED in
part. Butler is precluded from offering expert opinions and testimony on valuation
methodologies and value calculations, including criticisms of Dr. Sullivan’s valuation
methodologies and value calculations. And Butler is precluded from reworking Dr. Sullivan’s
calculations or creating her own valuations.
ORDER
IT IS HEREBY ORDERED that:
•

ClearPlay’s Daubert Motion No. 1 143 is DENIED.

•

ClearPlay’s Daubert Motion No. 2 144 is DENIED.

•

ClearPlay’s Daubert Motion No. 3 145 is GRANTED as to Flavin and DENIED as

to Lipoff. Dish is precluded from calling Flavin as an expert witness at trial.
•

ClearPlay’s Daubert Motion No. 4 146 is DENIED in part and GRANTED in part.

Dr. Goldberg is precluded from opining that ClearPlay’s conduct constitutes prosecution
disclaimer or prosecution history estoppel.
•

ClearPlay’s Daubert Motion No. 5 147 is GRANTED in part and DENIED in part.

Hoffman’s reasonably royalty opinions that rely on Dish’s original and supplemental usage data
are excluded, and he is precluded from offering such opinions at trial.
142

Docket no. 433, filed Aug. 1, 2022.

143

Docket no. 426, filed Aug. 1, 2022.

144

Docket no. 430, filed Aug. 1, 2022.

145

Docket no. 439, filed Aug. 1, 2022.

146

Docket no. 427, filed Aug. 1, 2022.

147

Docket no. 440, filed Aug. 1, 2022.

28

Case 2:14-cv-00191-DN-CMR Document 605 Filed 01/06/23 PageID.29944 Page 29 of 29

•

ClearPlay’s Daubert Motion No. 6 148 is DENIED in part and GRANTED in part.

Butler is precluded from offering expert opinions and testimony on valuation methodologies and
value calculations, including criticisms of Dr. Sullivan’s valuation methodologies and value
calculations. And Butler is precluded from reworking Dr. Sullivan’s calculations or creating her
own valuations.
Signed January 6, 2023.
BY THE COURT
________________________________________
David Nuffer
United States District Judge

148

Docket no. 433, filed Aug. 1, 2022.

29