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

Filing 464

Opposition to 327 MOTION to Exclude (Preclude) Dr. Ophir Frieder From Testifying Regarding Untimely Opinions that were Not Disclosed in his Original Expert Report and Opinions that he Now Concedes are Incorrect MOTION to Exclude (Preclude) Dr. Ophir Frieder From Testifying Regarding Untimely Opinions that were Not Disclosed in his Original Expert Report and Opinions that he Now Concedes are Incorrect filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5)(Sherwood, Jeffrey)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
REDACTED VERSION
)
Defendants.
)
__________________________________________)

PLAINTIFF I/P ENGINE, INC.’S OPPOSITION
TO DEFENDANTS’ MOTION TO PRECLUDE DR. FRIEDER FROM TESTIFYING
REGARDING “UNTIMELY” OPINIONS

I.

INTRODUCTION
Dr. Frieder is I/P Engine’s expert on infringement. He is a Professor of Computer

Science at Georgetown University, and is so well-regarded in the field that Defendants attempted
to retain him as an expert in this litigation. Dr. Frieder submitted his expert report on July 25,
2012, describing in detail his opinions and conclusions, and citing voluminous evidence in
support. See Ex. 1. Dr. Frieder was aware that fact discovery was ongoing, and was not
scheduled to end until September 4, 2012. He expressly reserved the right to supplement his
report with new evidence not available at the time of his report. Id. at ¶ 6.
After Dr. Frieder provided his report, but before the end of fact discovery, Google
produced three additional witnesses for deposition. In addition, the Court issued an amended
claim construction. None of this evidence was available to Dr. Frieder prior to the service of his
report. With respect to the deposition testimony of the Google employees, Dr. Frieder already
had described the technology referenced during those depositions, and had explained how it

1

infringed the patents in suit. Twelve days after the last of those depositions, and less than three
weeks after the Court amended its claim construction, and before Dr. Frieder’s deposition, I/P
Engine served Dr. Frieder’s Updated Expert Report. The updated report incorporated citations to
the deposition testimony and related source code, and applied the Court’s new claim
construction.1 Importantly, Dr. Frieder did not alter, expand, or otherwise change any aspect of
his previously stated analysis, opinions, or conclusions. All Dr. Frieder did is cite the newly
produced evidence in his report and exhibits. See Ex. 2 at Exhibit 2 (red-lined claim charts).
With regard to the new claim construction, he explained that it did not alter his conclusion that
all asserted claims are infringed because the evidence he previously relied upon satisfies the
Court’s construction. Ex. 2 at ¶¶ 3-4. Defendants examined Dr. Frieder on his Updated Report
at his deposition. These facts show that there is no basis for Defendants’ assertion that Dr.
Frieder’s Updated Report was “untimely” or “unjustified.”

II.

DR. FRIDER APPROPRIATELY UPDATED HIS REPORT

1

I/P Engine simultaneously served “clean” and a “redlined” versions of Dr. Frieder’s Updated
Expert Report, so Defendants could quickly identify what had changed. See Ex. 2 at ¶ 7 (noting
the provision of red-lined claim charts as Exhibit 2).

2

During these depositions, the Google employees described their understanding of the
operation of the Accused Systems, including the source code that was cited in Dr. Frieder’s
original report. Dr. Frieder noted that the last of these depositions, Mr. Holt’s deposition on
August 23, was particularly relevant to the topics he would opine on at trial because Mr. Holt
prepared the templates demonstrating key functionality of Google’s products. Ex. 3 at 215:9-18.

3

On September 6, 2012, Defendants conducted their deposition of Dr. Frieder.
Defendants asked Dr. Frieder about both his original and updated expert reports, including the
referenced to the testimony of Furrow, Cook, and Holt. See, e.g., Ex. 3 at 214:13-18.
Defendants have not asserted that they were precluded from examining Dr. Frieder on any issues
relating to his updated report.
III.

THERE IS NO BASIS TO STRIKE DR. FRIEDER’S UPDATED REPORT
A.

Dr. Frieder Timely Supplemented His Expert Report
Dr. Frieder’s September 4 Updated Expert Report was not untimely. Under Rule

26(e) of the Federal Rules of Civil Procedure, I/P Engine had a duty to supplement Dr. Frieder’s
report “in a timely manner” or as otherwise set by the Court, and no later than the due date for
Rule 26(a)(3) disclosures. Fed. R. Civ. P. 26(e)(1)-(2); see Fisher v. Pelstring, 817 F. Supp. 2d
791, 816 (D.S.C. 2011) (expert report supplementations “must be disclosed by the time the
parties' pretrial disclosures under Rule 26(a)(3) are due”). This Court’s Scheduling Order states
that expert rebuttal disclosures “shall be made on September 4, 2012,” and that Rule 26(a)(3)
disclosures are due on or before September 19, 2012. D.I. 90. Defendants cite (Br. at 4) Lindner
v. Meadow Gold Dairies, Inc., 249 F.R.D. 625 (D. Haw. 2008), as supposedly showing that Dr.
Frieder’s supplementation of his report is, to use Defendants’ term, “unsupportable.” To the
4

contrary, the Lindner court found that a supplemental expert report that “does not drastically
alter [the expert’s] original disclosure” was a proper supplement, and denied a motion to strike
the supplemental report. Lindner, 249 F.R.D. at 640. Indeed, the Federal Rules and this Court’s
Scheduling Order specifically provide for supplementation of expert reports, even with “the
overall schedule in this case with short deadlines,” as noted by the Defendants. (Br. at 7).
B.

The Mere Twelve Day Delay Between Completion of The Technical
Depositions and Service of Dr. Frieder’s Updated Expert Report Was
Substantially Justified and Harmless
Even if Dr. Frieder’s Updated Expert Report could be considered untimely (and it is

not), the Federal Rules state that even an untimely supplementation should not be excluded if the
late disclosure is either “substantial[ly] justify[ed]” or “harmless.” Fed. R. Civ. P. 37(c)(1). The
Fourth Circuit has held that, in exercising its broad discretion to determine whether a
nondisclosure of evidence is substantially justified or harmless for purposes of a Rule 37(c)(1)
exclusion analysis, a district court should consider:
(1) the surprise to the party against whom the evidence would be offered;
(2) the ability of that party to cure the surprise;
(3) the extent to which allowing the evidence would disrupt the trial;
(4) the importance of the evidence; and
(5) the nondisclosing party's explanation for its failure to disclose the
evidence.
Southern States Rack And Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir.
2003). All of these factors favor admitting Dr. Frieder’s Updated Expert Report.
1.

Defendants Cannot Feign Surprise At Dr. Frieder’s Updated Expert Report

The Updated Expert Report could not have come as a surprise to Defendants.
Defendants’ counsel were present at the Furrow, Holt, and Cook technical depositions, and, as

5

they noted in their own brief (Br. at 6), they observed that Dr. Frieder was present at the Furrow
deposition. Defendants acknowledge (Br. at 6) that the subject matter of Furrow, Holt, and
Cook’s depositions was of interest to Dr. Frieder, and Dr. Frieder had already discussed the
subject matter of those depositions in his expert report.
Defendants also knew, after they persuaded the Court to partially reconsider its claim
construction, that Dr. Frieder would supplement his expert report to reflect the updated claim
construction. Given Defendants’ stated anticipation that these events would cause Dr. Frieder to
update his original expert report, Defendants cannot now feign surprise. See, e.g., Davis v. U.S.,
Case No. 5:10-cv-00384, 2011 WL 7053630, *1 (S.D.W.Va. Oct. 14, 2011) (refusing to exclude
testimony from supplemental expert reports because “such testimony, given the overall nature of
the allegations, would not come as a surprise to Defendant, and that Defendant is not prejudiced
thereby”).
2.

Defendants Had the Opportunity To, And Did, Cure Any “Prejudice” By
Deposing Dr. Frieder About His Updated Expert Report

Defendants’ claim of prejudice rings hollow. They knew of the depositions
scheduled after the date of Dr. Frieder’s original report and they knew of the new claim
construction. Dr. Frieder did not change his opinions or conclusions, and Defendants fully
examined Dr. Frieder on his updated report. Defendants assert (Br. at 8) two examples of
supposed “prejudice” that resulted from the Updated Expert Report: (1) that its counsel “did not
have enough time to perform an in depth investigation” into Dr. Frieder’s “new citations” in his
Updated Expert Report prior to his deposition; and (2) that Dr. Ungar’s rebuttal report “was not
able to address these new infringement contentions.” Neither stands up to scrutiny, and
Defendants had a full opportunity to cure this supposed “prejudice.”

6

Defendants apparently ask this Court to believe its counsel did not have an
opportunity to conduct an “in depth investigation” of the deposition testimony of its own
employees. This assertion contradicts the premise of the motion: if defendants did not have
enough time to look into the testimony of its own employees, how could Dr. Frieder have time to
do so? Defendants of course participated in each of these depositions, and they have admitted
(Br. at 6) that they expected Dr. Frieder to supplement his expert report based on this testimony.
In fact, Dr. Frieder performed an admirable job of quickly reviewing the new deposition
testimony and preparing an updated report, while simultaneously preparing for the start of a new
school year.
To the extent Defendants are referring to the limited testimony from these witnesses
that Dr. Frieder cited in his updated report, Defendants’ counsel would have this Court believe
that they could not review the citations to the Furrow, Holt, and Cook deposition transcripts that
Dr. Frieder added to his claim charts in redline. In fact, Defendants did ask Dr. Frieder multiple
questions about the new citations at his deposition, eliminating any supposed prejudice. See,
e.g., Ex. 3 at 212:12-220:12. When a defendant had an opportunity to question an expert about a
supplementation, the defendant is not prejudiced. See, e.g., Fisher v. Pelstring, 817 F. Supp. 2d
at 816.
3.

Permitting Dr. Frieder To Address The Testimony Of Google’s Witnesses
Would Not Disrupt Trial

Mr. Furrow, Mr. Cook, and Mr. Holt, have already been deposed, and Defendants
have already deposed Dr. Frieder based on his Updated Expert Report. Accordingly, the
Updated Expert Report does not present any disruption to the upcoming trial. Indeed, in the
pretrial disclosures submitted last week, Google identifies Mr. Furrow, Mr. Cook, and Mr. Holt
as witnesses Google intends to call at trial. Ex. 4 at Exhibit A. Accordingly, Google cannot

7

seriously object that the updated portions of Dr. Frieder’s expert report that address their
testimony would disrupt trial in this case.
4.

The Updated Expert Report Addresses Google’s Own Characterization of
How Its Products Operate, And Is Important To This Case

Dr. Frieder is I/P Engine’s infringement expert witness in this case. The Updated
Expert Report presents Dr. Frieder’s best analysis of the subject matter that was disclosed after
the initial submission of his report. This evidence comes from the witnesses that Google
identified as having the best understanding of the technology in question. Google intends to call
these witnesses at trial. The Updated Expert Report also addresses this Court’s revised claim
construction, and testimony based on the Updated Expert Report is necessary for that reason
alone.
5.

The Mere Twelve Day Delay Between The Completion of Technical
Depositions and Service of Dr. Frieder’s Updated Expert Report Is
Substantially Justified

In an attempt to paint the Updated Expert Report as untimely, Defendants
characterize Dr. Frieder’s timeline as starting on the date that Dr. Frieder reviewed Google’s
source code, on July 13, 2012. Defendants ignore the three technical depositions where the
features were first identified by Google’s witnesses and the revised claim construction order that
this Court issued at Defendants’ request. Google’s own expert witness noted that he needed to
have phone calls with one of these witnesses, Bartholomew Furrow, to fully understand the
Google source code. Ex. 5 at 156:5-19.

8

C.

Dr. Frieder Did Not Disavow Infringement Based On Click-Through Rate
In their motion for summary judgment (D.I. 237), their motion to exclude their own

harmful documents (D.I. 303), and now this motion,

9

Dr. Frieder’s testimony does not constitute the “express disavowal” that Defendants
allege. By way of contrast, in Devito v. Smithkline Beecham Corp., No. 02-cv-00745 (NPM),
2004 WL 3691343 (N.D.N.Y. Nov. 29, 2004), which Defendants cite as supporting their
argument, the plaintiff’s expert witness provided “unequivocal deposition testimony disavowing
that he made the opinions which plaintiff claims he did.” Id. at *4. There, the plaintiff provided
an expert disclosure stating what it understood Dr. George would testify to at trial. Id. In his
deposition, however, “Dr. George was asked point blank whether he had formed any of the three
opinions quoted above, and whether he was prepared to testify to same. Each time he answered
no.” Id.

Dr. Frieder, on the other hand, made no such “unequivocal deposition testimony
disavowing” his opinions here and repeatedly reaffirmed that he stood by his positions.
Defendants’ attempts to construe the facts otherwise only reflect poorly on their credibility.
D.

Dr. Frieder’s Trial Testimony Will Be Fully Supported by and Consistent
with His Expert Report

Defendants cite Sharpe v. U.S., 230 F.R.D. 452 (E.D. Va. 2005), and Wright v.
Commonwealth Primary Care, Inc., 3:10-cv-0034, 2010 WL 4623998 (E.D. Va. Nov. 2, 2010),
as supposedly demonstrating that “the Federal Rules are designed to prevent situations like
this . . . .” Br. at 10. They are not. The Federal Rules are designed to prevent situations like in
Sharpe, where an expert provides only a “sketchy and vague” report where it is “completely
unclear . . . what the reasons are for [the] opinion,” 230 F.R.D. at 458, or like in Wright, where

11

the expert does not provide a report at all, 2010 WL 4623998 at *3. That Dr. Frieder defended
the opinions in his expert report in his deposition by further explaining Defendants’ own
documents to Defendants’ counsel does not substantiate Google’s accusation of “hiding-theball.” Br. at 10.
IV.

CONCLUSION
For the reasons discussed above, Defendants’ Motion To Preclude Dr. Ophir Frieder from

Testifying Regarding “Untimely” Opinions That Were Not Disclosed In His Original Expert
Report and Opinions That He Now Concedes Are Incorrect should be DENIED.
Dated: September 27, 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.

12

CERTIFICATE OF SERVICE
I hereby certify that on this 27th day of September, 2012, the foregoing PLAINTIFF I/P
ENGINE, INC.’S OPPOSITION TO DEFENDANTS’ MOTION TO PRECLUDE DR.
FRIEDER FROM TESTIFYING REGARDING “UNTIMELY” OPINIONS, was served
via the Court’s CM/ECF system and via Hand Delivery, 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

13