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)

Exhibit 2 

1
1

UNITED STATES DISTRICT COURT

2

EASTERN DISTRICT OF VIRGINIA

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NORFOLK DIVISION

4

------------------------x

5

I/P ENGINE, INC.,
Plaintiff,

6
7
8
9
10

v.

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

AOL, INC., et al.,
Defendants.

:
:

------------------------x

11
12

CONFIDENTIAL - OUTSIDE ATTORNEYS' EYES ONLY

13

Videotaped Deposition of LYLE UNGAR, Ph.D.

14

Philadelphia, Pennsylvania

15

Saturday, September 22, 2012

16

1:03 p.m.

17
18
19
20

Job No.: 26365

21

Pages: 1 - 266

22

Reported by: Debra A. Whitehead

CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D.

CONDUCTED ON SATURDAY, SEPTEMBER 22, 2012
232
Q

1

You haven't formed any opinions as to

18:37:49

2

whether there's an alternate implementation of

18:37:51

3

scanning a network that would not require a spider?

18:37:54

4

A

I have not.

I didn't feel any need to.

5

Q

You didn't form -- you didn't consider

18:37:57
18:37:59

6

forming such an opinion in connection with your

18:38:04

7

noninfringement report?

18:38:07

A

8
9

Did I consider forming such?

I'm sorry,

I'm trying to distinguish two questions.

18:38:13
18:38:20

Did I form such an opinion, no.

10

18:38:22

11

Q

Let me ask it --

18:38:24

12

A

Did I consider it and then reject it, the

18:38:25

13

idea of forming it?

14

again.

15

I'm sorry.

Try your question

18:38:27
18:38:30

Q

So it's true that you did not form an

18:38:30

16

opinion, when performing your noninfringement

18:38:32

17

analysis, as to whether there's an alternate

18:38:35

18

implementation of scanning a network that would not

18:38:38

19

require a spider.

18:38:40

20

A

That's correct.

18:38:41

21

Q

Are there -- is it possible to use a spider

18:38:42

22

in an office LAN?

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18:39:02

267
1

UNITED STATES DISTRICT COURT

2

EASTERN DISTRICT OF VIRGINIA

3

NORFOLK DIVISION

4

------------------------x

5

I/P ENGINE, INC.,
Plaintiff,

6
7
8
9
10

v.

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

AOL, INC., et al.,
Defendants.

:
:

------------------------x
VOLUME 2

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12

CONFIDENTIAL - OUTSIDE ATTORNEYS' EYES ONLY

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CONTAINS SOURCE-CODE PROTECTED PORTION,

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PURSUANT TO PROTECTIVE ORDER

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Videotaped Deposition of LYLE UNGAR, Ph.D.

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Philadelphia, Pennsylvania

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Sunday, September 23, 2012

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8:44 a.m.

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20

Job No.: 26363

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Pages: 267 - 532

22

Reported by: Debra A. Whitehead

CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
442
1

A

Yes.

I recognize it.

Is that --

2

Q

That's your report?

14:17:51

3

A

It is my report.

14:17:53

4

Q

Does your report contain a complete and

14:17:54

14:17:50

5

accurate statement of your opinions concerning

14:18:00

6

invalidity?

14:18:02

7
8
9
10

A

It's accurate.

I'm not sure it's fully

complete.
Q

14:18:03
14:18:06

Are you referring to your supplemental

invalidity report?

14:18:09
14:18:11

11

A

No; even beyond that.

14:18:13

12

Q

Oh.

14:18:14

13

A

Well, in looking at Carbonell's report,

Why do you believe it's not complete?

14:18:18

14

which I saw after I sent the supplemental, it struck

14:18:24

15

me that there was maybe some argument over filtering,

14:18:30

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whether Culliss, one of the prior art references, did

14:18:39

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filtering.

14:18:42

18

And when I looked back at Culliss I

14:18:42

19

discovered that -- or discovered, found there was

14:18:45

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something I might want to present, which is that

14:18:47

21

Culliss actually has a very explicit section which

14:18:53

22

does filtering which I had not described in either --

14:18:57

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CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
443
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either this -- by "this" I mean the origin validity

14:18:59

2

report or the supplemental.

14:19:05

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finding of mine.

14:19:08

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Q

14:19:09

5

counsel?

6

A

It came from discussions with counsel.

14:19:19

7

Q

So no?

14:19:21

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A

Jointly, not independently.

14:19:24

MR. CIMINO:

14:19:31

9

So that was a recent

Did you make that finding independently of

14:19:13

Let me mark for completeness,

10

Dr. Ungar, your supplemental report of defendants'

14:19:34

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expert Lyle Ungar concerning invalidity of the '420

14:19:36

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and '664 patents.

14:19:39

(Plaintiff's Ungar Exhibit 10 marked for

13

14:19:41

14

identification, to be attached to the transcript.)

14:19:52

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(Discussion off the record.)

14:19:53

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BY MR. CIMINO:

17

Q

Okay.

14:19:53
But for the argument that you would

14:19:54

18

like to make about filtering in Culliss, do Ungar

14:20:05

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Exhibit 9 and Ungar Exhibit 10 contain a complete and

14:20:10

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accurate statement of your opinions with respect to

14:20:15

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invalidity?

14:20:17

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A

Yes.

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14:20:19

CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
490
So in your initial report and your

15:36:03

2

supplemental report, you did not identify any

15:37:03

3

disclosure of filtering in Culliss.

15:37:08

4

MR. BILSKER:

1

5

Q

Is that correct?

Objection.

15:37:13

Mischaracterization.

15:37:14

6

A

I don't remember.

15:37:21

7

Q

Well, feel free to take a look.

15:37:22

8

A

Oh.

9

Actually, I now remember.

Because, in

fact, that was precisely the point I raised earlier.

10

Q

Yes.

That's why I was asking.

11

A

That I hadn't -- well, filtering at least

15:37:42
15:37:47
15:37:49
15:37:53

12

in the way that we seem to be settled on using it now,

15:37:55

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was not identified before.

15:37:59

14

Carbonell, I then went back to look to see, given how

15:38:03

15

filtering was being defined there, how Culliss was

15:38:09

16

using it.

15:38:17

And in light of -- of

17

Q

Okay.

18

A

So I guess -- yeah.

19
20

15:38:18
Let me stop there.

I

think that answers the question.
Q

Okay.

So filtering, at least in the way,

15:38:19
15:38:21
15:38:22

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as you said, we seem to be settling on it now, your

15:38:25

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initial report and your supplemental report did not

15:38:28

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CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
491
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disclose any portion of Culliss that had filtering.
Is that right?

2
3

15:38:31

A

15:38:36

Filtering in the sense of comparing, say,

15:38:37

4

some value to a threshold, and keeping only those

15:38:41

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items who was -- whose value was bigger than that

15:38:44

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threshold.

15:38:48

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Q

Okay.

15:38:49

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A

Filtering in that precise sense was not

15:38:49

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addressed in my initial report.

So that was the one

15:38:53

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piece which I decided, after Carbonell, was something

15:38:55

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that actually was relevant to the case.

15:39:00

12

Q

Can you take a look at Paragraph 129?

15:39:03

13

A

Yes.

15:39:24

14

Q

I was wondering if you could explain how

15:39:49

15

Culliss -- how Culliss discloses content-based

15:39:52

16

analysis.

15:40:00

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quote in Footnote 19?

So the part of the paragraph up to the

15:40:06

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A

Yes.

15:40:12

19

Q

Isn't that just initialization?

15:40:13

MR. BILSKER:

15:40:19

20
21
22

Objection.

Vague and

ambiguous.
A

15:40:20
No.

So that is initialization, but it's

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15:40:29

CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
522
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left on the tape.

16:26:35

2

THE WITNESS:

Ah.

Sorry.

3

MR. BILSKER:

We might as well go off, and

16:26:35
16:26:45

4

you might as well switch the tape since they have to

16:26:46

5

go get it.

16:26:48
VIDEO SPECIALIST:

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7

Off record.

The time is

4:26 p.m.

16:26:49
16:26:50

8

(Short recess.)

9

VIDEO SPECIALIST:

10

of Tape Number 6.

11

16:28:36
Here marks the beginning

Back on record.

The time is 4:30

p.m.

16:30:32
16:30:47
16:30:51

12

EXAMINATION BY COUNSEL FOR DEFENDANTS AND

16:30:51

13

THE WITNESS

16:30:51

14

BY MR. BILSKER:

16:30:51

15

Q

Hello, Dr. Ungar.

16:30:52

You in your questioning earlier today

16:30:54

16
17

mentioned that you wanted to fill out your opinion

16:30:55

18

with respect to the Culliss reference and filtering in

16:30:59

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response to Dr. Carbonell's report or testimony.

16:31:02

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What is it that you wanted to add?

16:31:08

21

MR. CIMINO:

16:31:11

22

I object as beyond the scope

of my direct and outside the scope of his reports.

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16:31:13

CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
523
1

BY MR. BILSKER:

16:31:17

2

Q

Go ahead.

16:31:17

3

A

So I wanted to note that there's an

16:31:19

4

extensive discussion in Culliss of filtering in

5

precisely the form that Carbonell talks about it.

6

I will flip through so I can point you to that.

7

in Columns 11 and 12, under the heading of Ratings.

16:31:36

8

And in this the Culliss patent describes

16:31:44

16:31:24
And

16:31:28

It is

16:31:34

9

filtering in the sense we're talking about, where one

16:31:50

10

has some number associated with each, say, web page,

16:31:54

11

compares each number to a threshold.

16:31:59

12

below that threshold, filters it, removes it.

And if it's

16:32:02

And the way that Culliss does that, in the

13

16:32:06

14

context, is looking at X-rated versus G-rated

16:32:10

15

articles.

16:32:17

16

people don't want to see X-rated articles.

17

people do, so you can't always eliminate them.

18

one wants to be able to filter them.

19

There's a widespread concern that many
Some
But

And so Culliss describes in detail -- and I

16:32:20
16:32:23
16:32:26
16:32:28

20

won't take time to walk through the whole of it -- a

16:32:31

21

process for developing rating scores, numbers

16:32:37

22

associated, based on labels G-rated or X-rated, a --

16:32:43

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CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
524
1

he develops a score for each rating term, for each

16:32:53

2

article, as he says, As described above for the key

16:32:55

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terms.

16:33:00
And then perhaps jumping ahead to the very

4

16:33:01

5

end of that section, he says that the system screens

16:33:04

6

out those articles which have an X-rated key term

16:33:12

7

score above a predetermined threshold.

16:33:15

I think this is important because it shows

8

16:33:19

9

that Culliss is precisely teaching how to do filtering

16:33:20

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in the sense I think both parties agree is some score

16:33:25

11

above some predetermined threshold.

16:33:28

Q

12

What about the Culliss reference in light

16:33:33

13

of Bowman under Dr. Carbonell's definition of

16:33:35

14

filtering; do you have any opinion with respect to

16:33:38

15

that?

16:33:41
MR. CIMINO:

16
17

A

Same objections.

16:33:42

So it's also the case that in addition to

16:33:45

18

this explicit description of thresholding, that I

16:33:48

19

think it would have been obvious to one of skill in

16:33:54

20

the art at the time that filtering by using a

16:33:57

21

threshold based on a score, using, for example Bowman,

16:34:02

22

as described in Bowman, it's a very obvious extension

16:34:06

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CONFIDENTIAL VIDEOTAPED DEPOSITION OF LYLE UNGAR, Ph.D., VOLUME 2

CONDUCTED ON SUNDAY, SEPTEMBER 23, 2012
525
1

to -- to the Culliss system.
MR. BILSKER:

2

16:34:11

Let me ask you to pass to the

16:34:15

3

court reporter the Bowman reference for the court

16:34:17

4

reporter to mark as the next in line.

16:34:19

5

(Plaintiff's Ungar Exhibits 12 and 13

16:34:21

6

marked for identification, to be attached to the

16:34:21

7

transcript.)

16:34:21

8

BY MR. BILSKER:

16:34:33

9

Q

16:34:33

10

Dr. Ungar, you have in front of you Exhibit

Number 13, the '558 patent to Bowman.

16:34:35

Do you recognize that document?

11

16:34:39

12

A

I do.

16:34:41

13

Q

And when you were being asked questions

16:34:41

14

earlier today regarding matching of the query to the

16:34:44

15

item, you had mentioned that there were occurrences of

16:34:49

16

that same terminology in the specification.

16:34:52

17

just wanted to ask you where in the specification you

16:34:56

18

might have been referring to.

16:34:59

19

A

And I

So there are a number of mentions.

I was

16:35:01

20

in particular thinking -- and here give me a second

16:35:04

21

while I flip through to find them.

16:35:06

22

memorized Bowman either.

I haven't

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16:35:10