I/P Engine, Inc. v. AOL, Inc. et al

Filing 358

Memorandum in Support re 357 MOTION in Limine Plaintiff I/P Engines Daubert Motion, and Fourth Motion in Limine, to Exclude Lyle Ungars New Theory of Invalidity and Opinions Regarding Claim Construction filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1 (Redacted), # 2 Exhibit 2, # 3 Proposed Order)(Sherwood, Jeffrey)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
)
)
Plaintiff,
)
v.
)
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)
I/P ENGINE, INC.,

Civ. Action No. 2:11-cv-512

MEMORANDUM IN SUPPORT OF PLAINTIFF I/P ENGINE, INC.’S DAUBERT
MOTION, AND FOURTH MOTION IN LIMINE, TO EXCLUDE LYLE UNGAR’S NEW
THEORY OF INVALIDITY AND OPINIONS REGARDING CLAIM CONSTRUCTION

I.

INTRODUCTION
Pursuant to Federal Rules of Evidence 401 through 403, and 702, Plaintiff I/P Engine,

Inc. (“I/P Engine”) requests that this Court preclude any evidence of, reference to, or suggestion
of Dr. Ungar’s late disclosed new invalidity theory based on Culliss, as it was not rightfully or
timely disclosed in his expert report. I/P Engine additionally requests that this Court preclude
any arguments, opinions or evidence at trial by Dr. Ungar (or any other witness) regarding any
claim constructions proposed during the Markman process that were rejected by this Court.
II.

DISCUSSION
A.

Dr. Ungar Should Be Limited to His Expert Report

The Federal Rules of Civil Procedure require an expert to provide in their written report
“a complete statement of all opinions the witness will express and the basis and reasons for
them.” Fed. Rule. Civ. Pro. 26(a)(2)(B)(i). Accordingly, direct testimony by an expert witness
at trial should be limited to the contents of his expert report, and nothing more. See, e.g., ePlus,
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Inc. v. Lawson Software, Inc., 2011 WL 3584313, at *5-6 (E.D. Va. Aug. 12, 2011) (precluding
expert testimony about a theory that was not supported or disclosed in the expert report and
stating that “[t]he exclusion of the theory was a result of [defendant’s] own making”); Voda v.
Cordis Corp., 506 F. Supp. 2d 868, 881 (W.D. Okla. 2007) (limiting expert witness testimony to
the opinions disclosed in his expert report is not error); Dow Chem. Co. v. Mee Indus., 341 F.3d
1370, 1379 (Fed. Cir. 2003) (limiting the scope of the presentation at trial to what was provided
in the expert reports).
During re-direct examination by Defendants’ counsel at the end of his deposition, Dr.
Ungar disclosed a new invalidity theory with respect to Culliss that was not in his expert reports.
In his expert reports, Dr. Ungar had already provided specific theories of anticipation and
obviousness in light of Culliss’ disclosure. Ex. 1 at 46-53. In response, Dr. Carbonell, I/P
Engine’s validity expert, analyzed Dr. Ungar’s invalidity theories, and identified specific
deficiencies in Dr. Ungar’s Culliss analysis that disputed and defeated Dr. Ungar’s theories.
During his deposition, Dr. Ungar acknowledged those deficiencies identified by Dr. Carbonell.
Ex. 2 at 490:1-491:11 (“filtering at least in the way that we seem to be settled on using it now,
was not identified before.”).
Having had its anticipation positions based on Culliss substantially gutted, Defendants
attempted to move to “plan B” and to introduce a new theory of invalidity based on the Culliss
reference through re-direct examination of Dr. Ungar during his deposition. Ex. 2 at 522:14525:1. The need for re-direct examination makes clear that even Defendants view this theory as
outside the scope of Dr. Ungar’s expert reports. Counsel for Defendants conducted the re-direct
to ensure that this new and never previously disclosed theory would be “on the record.” Dr.
Ungar has admitted it was outside the scope of his expert reports because, when asked if his

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expert report was complete, Dr. Ungar stated that he was “not sure it’s fully complete,” because
he had “discovered” something additional in the Culliss reference that he “might want to
present.” Ex. 2 at 442:4-443:3. Dr. Ungar admitted that whatever he might want to add “came
from discussions with [Defendants’] counsel.” Ex. 2 at 443:4-6.
Defendants have the burden of proving invalidity. This means they have the affirmative
burden of going forward with the evidence and proving their case by clear and convincing
evidence. Their burden of going forward with the evidence is not conditioned upon or in rebuttal
to any evidence I/P Engine might offer. Here, Defendants have known about the Culliss
reference since the day this case was filed because that patent appears on the face of both
patents-in-suit. Moreover, in response to I/P Engine’s First Motion for Discovery Sanctions to
preclude the untimely disclosure of this reference, Defendants never denied knowing about
Culliss from the beginning of the case. These facts all demonstrate a complete lack of diligence
by the Defendants in identifying the bases for any contention that Culliss invalidates the patentsin-suit and timely disclosing them.
During oral argument of I/P Engine’s First Motion for Discovery Sanctions, Defendants
argued that disclosure of the Culliss reference 60 days before the close of fact discovery was
sufficient time to cure any alleged prejudice to I/P Engine from the lack of disclosure. In doing
so, Defendants distinguished Woods v. DeAngelo Marine Exhaust, Inc. (No. 2010-1478, 2012
WL 3683536 (Fed. Cir. Aug. 28, 2012)), where the disclosure occurred the day before discovery
ended. Here, Defendants did not disclose their new theory of invalidity until September 21, 2012
during the deposition of I/P Engine’s validity expert, almost three weeks after the close of fact
discovery (and the deadline for invalidity contentions) – when they attempted to ambush the
expert with their new, undisclosed theory. When the ambush failed, they then sought to create a

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record of disclosure two days later, September 23, 2012, during the deposition of their own
expert, who honestly admitted he had not previously disclosed this opinion. Ex. 2 at 522:14525:1. This Court’s ruling on the first sanctions motion and Defendants’ arguments on that
motion compel only one conclusion – Dr. Ungar’s new theory must be excluded when the
reference has been known to Defendants for more than one year and there is no good cause for
such late disclosure.
Consistent with Rule 26, Dr. Ungar should be precluded from offering any testimony or
opinions related to this new theory of Culliss because it was not disclosed in his report. As this
Court has held, direct testimony by an expert witness at trial should be limited to the contents of
his expert report, and nothing more. See, e.g., ePlus, 2011 WL 3584313, at *5-6, at *24-26
(precluding expert testimony about a theory that was not supported or disclosed in the expert
report and stating that “[t]he exclusion of the theory was a result of [defendant’s] own making”).
Dr. Ungar should be held to the same standard here; his testimony at trial should be limited to the
contents of his expert reports.
B.

Dr. Ungar’s Arguments Regarding Claim Construction Terms That Were
Rejected By This Court During Claim Construction Should be Precluded

Dr. Ungar should also be precluded from offering any arguments, opinions or evidence at
trial regarding any claim constructions (e.g., the claim term “scanning”) proposed during the
Markman process that were rejected by this Court and are inconsistent with this Court’s
constructions. For example, Dr. Ungar maintains that his non-infringement analysis is based on
the fact that Defendants’ systems do not spider or crawl for items. See, e.g., Ex. 2 at 232:1-4 and
232:15-20. This Court has already rejected this position during claim construction.
This Court has excluded such evidence in other cases, reasoning that “[t]he parties’
proposed claim constructions which were not adopted by the Court are not relevant and would

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certainly increase the risk of jury confusion.” DNT, LLC v. Sprint Spectrum, LP, 2010 WL
582164 at *2 (excluding evidence or argument relating to claim construction positions not
adopted by the court). The same holds true in this case. Here, this Court has already issued its
claim construction order and the jury’s task is now limited to applying the claims as construed to
the accused systems and making a factual determination as to whether the claims cover, or “read
on”, the products. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004)
(it is “the jury’s obligation to adopt and apply the court’s determined meanings of disputed claim
terms to the jury’s deliberation of the facts”). This Court’s claim constructions are now the law
of the case, and claim construction positions rejected by this Court have no evidentiary weight.
See id.
Dr. Ungar’s arguments and evidence relating to every claim construction issue that was
rejected by this Court are irrelevant to the trial of this matter and should be precluded. See
Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006) (testimony
properly excluded as irrelevant when based on an impermissible claim construction).

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III.

CONCLUSION
For the reasons above, I/P Engine’s Daubert Motion, and Fourth Motion In Limine, to

Exclude Lyle Ungar’s New Theory of Invalidity and Opinions Regarding Claim Construction
should be granted.
Dated: September 24, 2012

By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone:
[phone]
Facsimile:
[phone]
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone:
[phone]
Facsimile:
[phone]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE

I hereby certify that on this 24th day of September, 2012, the foregoing
MEMORANDUM IN SUPPORT OF PLAINTIFF I/P ENGINE, INC.’S DAUBERT
MOTION, AND FOURTH MOTION IN LIMINE, TO EXCLUDE LYLE UNGAR’S NEW
THEORY OF INVALIDITY AND OPINIONS REGARDING CLAIM CONSTRUCTION
was served via the Court’s CM/ECF system, on the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Suite 2100
Norfolk, VA 23510
[e-mail]
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[e-mail]
[e-mail]
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
[e-mail]
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
[e-mail]
/s/ Jeffrey K. Sherwood

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