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

Filing 569

Reply to Motion re 340 MOTION to Exclude Opinions and Testimony of Keith R. Ugone filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4)(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 REPLY IN FURTHER SUPPORT OF ITS
MOTION TO EXCLUDE OPINIONS AND TESTIMONY OF KEITH R. UGONE
Dated: October 2, 2012

By: /s/ Jeffrey K. Sherwood
Jeffrey K. Sherwood
(Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone:
[phone]
Facsimile:
[phone]

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]

Dawn Rudenko Albert
DICKSTEIN SHAPIRO LLP
1633 Broadway
New York, NY 10019
Telephone:
[phone]
Facsimile:
[phone]

Counsel for Plaintiff I/P Engine, Inc.

TABLE OF CONTENTS
I.

INTRODUCTION..............................................................................................................1

II.

ARGUMENT ......................................................................................................................3
A. ........Dr. Ugone Does Not Apply the Georgia-Pacific Factors.....................................3
1..........Dr. Ugone’s Inproperly Relies on Non-Comparable Agreements
in His Damages Analysis ...........................................................................4
2..........The Lycos Settlement Agreements are Not Informative as to the
Royalty Structure in this Case. .................................................................6
3..........A Patent Damages Expert Must Account for the Relative Value of
the Patented Technology and its Footprint in the Marketplace. ...........8
4..........The
Agreement is Inapposite and Cannot Properly be
Relied Upon for Setting an Upper Limit to the Reasonable
Royalty. .....................................................................................................11
5..........Dr. Ugone Does Not Have a Sufficient Factual Basis to Use the
Agreement as a Value Indicator of the Patents in Suit. ...........13
6..........Dr. Ugone Improperly Relied Upon the 2011 Patent Purchase
Between Lycos and I/P Engine as an Indicator of Value. ....................16
B. ........Dr. Ugone’s Technical Testimony on the Accused Systems is Improper........18

i

I.

INTRODUCTION
Dr. Ugone’s awkward attempt to fit various points from his report into a Georgia-Pacific

chart, appended to his report, does not mean that he followed or even applied Georgia Pacific.
Notably, given another attempt to provide any authority permitting Dr. Ugone’s “proxy”
approach, Defendants again fail to cite to a single case that support the use of this methodology.
Dr. Ugone’s neighborhood house analogy shows the infirmity of his methodology. He
claims to compare houses in a neighborhood, but then ignores that the houses on which he is
relying are not comparable. Dr. Ugone has picked the houses in the hypothetical neighborhood
with the smallest square footage, no insulation, leaky roofs and some being in foreclosure. He
then asserts that these houses are comparable and of the same value to the house with five
bedrooms, recently remodeled, with lake views. This is not proper under Georgia Pacific or any
other methodology. This is the “fundamental disagreements” that I/P Engine has with Dr.
Ugone’s inclusion of the lump-sum agreements, not that Dr. Ugone says that a lump sum, rather
than a running royalty, is the proper structure. [See Dkt. No. 459 at 5.]
Contrary to Defendants assertion, Dr. Ugone is placing a value of

on

the patents-in-suit by relying upon these admittedly non-comparable agreements. Not only does
he include the amounts of these lump-sum agreements in his report, he states that those
“[a]greements provide guidance to the royalty payment structure and amount Google would
have negotiated with Lycos for a license to the Patents-in-Suit.” [Exh. 1 (Excerpt of Aug. 29,
2012 Rebuttal Expert Report of Keith R. Ugone, Ph.D, ¶ 125).] There is no application of the
Georgia-Pacific factors where this is proper.
Georgia Pacific requires that the licenses that an expert relies upon be comparable—not
just any licenses that happen to exist with absolutely no connection to the technology, terms or
1

events of the hypothetical negotiation. This is something that the Federal Circuit has made
repeatedly clear—licenses that a damages expert relies upon must be of like technology and like
circumstances—arms length transactions, around the hypothetical negotiation date (which is
2004, not 2010 as newly asserted by Defendants in their pretrial motions). See, e.g., Wordtech
Sys. v. Integrated Networks Solutions, Inc., 609 F.3d 1308, 1320 (Fed. Cir. 2010); ResQNet.com,
Inc. v. Lansa, Inc., 594 F.3d 860, 870 (Fed. Cir. 2010). Defendants are attempting to pull a
reverse-LaserDynamics—cherry picking non-comparable licenses to decrease the reasonable
royalty rate below rates more clearly linked to the economic demand for the claimed technology.
LaserDynamics, Inc. v. Quanta Comp., Inc., ___ F. 3d ___, 2012 U.S. App. LEXIS 18441, at
*24 (Fed. Cir. Aug. 30, 2012). Dr. Ugone admits that the “lump-sum agreements” are not
comparable and that his damages analysis would not be affected if the Court determined that he
could not use them. [Exh. 2 (Excerpts of Sept. 14, 2012 Deposition Transcript of Keith R.
Ugone, Ph.D., at 49-50.] Accordingly, they should be excluded from evidence in this case.
The
argue that the

and

agreements fare no better. Indeed, Defendants (for the first time)

agreement relates to comparable technology. [Dkt. No. 459 at 14.] But

Defendants’ experts do not make this claim. To the contrary, Dr. Ugone testified that the
technology was not comparable, and that he did not rely upon

as a comparable license.

[Exh. 2 at 181-82.] Neither does the Summary Judgment Declaration of Howard Chen, an
attorney at Quinn Emanuel, cited by Defendants in their opposition, stand for this premise.1
[Dkt. No. 240.]
Regardless of whether a lump-sum or running-royalty structure is used to establish a
reasonable royalty under § 284, there has to be a connection to the case. Google does not

1

Dr. Ugone does not claim to have relied upon the Chen Declaration.

2

address or even argue that any of the licenses Dr. Ugone relies upon are connected to the accused
products, have the same benefits as the patented technology, that the same terms and
circumstances existed or even that eight of the nine are technologically similar. The only
connection Google’s lump-sum agreements have to this case is that Google entered into them
sometime (often many years) after the hypothetical negotiation, and they relate to patents.
The issue relating to the admissibility of technical statements made by Dr. Ugone is much
simpler than posited by Defendants. [Dkt. No. 459 at 17-20] To the extent that Dr. Ugone relied
upon either a Google engineer/employee or Dr. Ungar (Google’s technical expert), I/P Engine
has no issue. But this is not what Dr. Ugone is doing in several parts of his report. He is relying
on his own interpretation of technical materials to provide his technical opinion as to what
those materials mean. He is not qualified to do this under FRE 702. Neither is Dr. Ugone (as
intimated by Defendants) permitted to rely on any evidence under FRE 703 that he sees fit. Any
such evidence must be capable of verification and cross-examination.
These fundamental flaws in Dr. Ugone’s methodology, which Defendants fail to
adequately address, are several and too significant to be cured by cross-examination during trial.
Accordingly, and as also set forth below and in I/P Engine’s moving papers, Dr. Ugone’s report
should be struck or substantially limited.
II.

ARGUMENT
A.

Dr. Ugone Does Not Apply the Georgia-Pacific Factors.

Defendants devote considerable attention to arguing that lump-sum royalty structures
have been accepted by courts and touting various benefits of a lump-sum structure. [Dkt. No.
459 at 6-7, 11.] I/P Engine does not argue to the contrary. I/P Engine takes issue with Dr.
Ugone’s analysis using his proxy/yardstick methodology, instead of applying the GeorgiaPacific factors. Specifically, I/P Engine challenges his analysis because he (1) relies upon
3

inapposite agreements, and (2) fails to perform any meaningful analysis to account for the value
of the patented technology or the extent of Defendants’ infringing use of that technology.
Instead, he relies on nine licenses, eight of which are admittedly not comparable. Dr. Ugone
completely ignores the requirements under 35 U.S.C. § 284 requiring that damages adequately
compensate I/P Engine for the infringement, “[b]ut in no event less than a reasonable royalty for
the use made of the invention by the infringer” as well as the Georgia-Pacific factors. Instead,
Defendants argue that because Google paid between

for the licenses that it

“produced in this litigation” (at 2), the patents-in-suit are also worth

. This is not a

proper analysis under any of the 15-Georgia Pacific factors.
Georgia Pacific requires an expert to consider such factors as “[t]he royalty rates paid by
the licensee for the use of other patents comparable to the patents in suit” (factor 2); “the utility
and advantages of the patented technology over other modes or devices” (factor 9); “the extent to
which the infringer has made use of the invention and evidence of the value of that use” (factor
11); and “the portion of the realizable profit credited to the invention as distinguished from nonpatented elements” (factor 13). Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp.
1116, 1120 (S.D.N.Y. 1970). Dr. Ugone’s decision to use a lump-sum structure does not allow
him to forego any meaningful analysis of the value of the patented technology or the extent of
Google’s infringing use as required by these factors and § 284.
1.

Dr. Ugone’s Inproperly Relies on Non-Comparable Agreements in His
Damages Analysis

Defendants argue that I/P Engine cites no authority – and Defendants are aware of none –
that holds that non-comparable license agreements can permissibly provide guidance about a
party’s preferred form of a royalty payment. [Dkt. No. 459 at 10.] The plain language of
Georgia-Pacific factor two requires consideration of “[t]he royalty rates paid by the licensee for

4

the use of other patents comparable to the patents in suit.” Georgia-Pacific, 318 F. Supp. at
1120. Dr. Ugone ignores this language and includes all nine Google licenses, including the eight
admittedly non-comparable ones, in his damages analysis under Georgia-Pacific factor 2. [Exh.
1, Appx. A at 2.] Defendants proffer no support that it is proper to consider non-comparable
agreements in determining the amount or even the form of a reasonable royalty under the
Georgia-Pacific factors.
Federal Circuit cases requiring that the licenses be comparable in a reasonable-royalty
determination are legion.2 Thus, there can be no dispute that licenses considered by the experts
must be comparable. There is no exception to this rule that would permit a party to rely on noncomparable licenses for some purposes and not others. The Federal Circuit requires that the
licenses considered under Georgia-Pacific factor 2 be “comparable,” period. Defendants cite to
no authority in support of any such carve out. [Dkt. No. 459 at 10.] And contrary to Defendants
intimation, Defendants bear the burden of proving the reliability of Dr. Ugone’s testimony, not
I/P Engine. Cooper v. Smith & Nephew, Inc., 259 F.3d 194, 199 (4th Cir. 2001).
Defendants’ argument that many of the reasons that parties prefer lump-sum agreements
are independent of “comparability” does not change this result. [Dkt. No. 459 at 11.]3 To be
sure, there are certain benefits associated with a lump-sum royalty structure for both the licensee
and licensor. But the advantages cited by Defendants are applicable to every licensee in every
2

See, e.g., ResQNet.com, 594 F.3d at 872 (“This court should not sustain a royalty award based
on inapposite licenses”); Wordtech, 609 F.3d at 1320 (“We stressed that comparisons of past
patent licenses to the infringement must account for ‘the technological and economic
differences’ between them.”); Lucent Techs. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir.
2009) (“This factor examines whether the licenses relied on by the patentee in proving damages
are sufficiently comparable to the hypothetical license at issue in suit.”).
3

Significantly, Lycos testified that it would have preferred a running royalty at the time of the
hypothetical negotiation, thus demonstrating the fallacy of Google’s “one size fits all” argument.
[Exh. 4 (Excerpt of the 7/31/2012 Deposition Transcript of Mark Blais (“Blais Tr.”) at 57:2-16).]

5

license negotiation. If those advantages ruled the day, every license agreement would have a
lump-sum structure. To avoid such a nonsensical result, the Federal Circuit requires that
agreements relied upon by a damages expert be comparable to ensure that they “carefully tie
proof of damages to the claimed invention’s footprint in the market place.” Uniloc USA, Inc. v.
Microsoft, Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011), something Defendants admit they have
not done here.
Importantly, Defendants are not merely offering these admittedly non-comparable
licenses as evidence that Google would only take a lump sum payment structure, which again is
not the issue here. Dr. Ugone discusses in detail the lump-sum amounts of each of these noncomparable licenses and states in his report that those licenses “[p]rovide guidance to the . . .
amount Google would have negotiated with Lycos for a license to the Patents-in-Suit.” [Exh. 1
at 125.] Dr. Ugone’s attempt to conflate a lump sum with a low sum, by relying on noncomparable agreements is methodologically flawed and unreliable.
2.

The Lycos Settlement Agreements are Not Informative as to the
Royalty Structure in this Case.

The Lycos settlement agreements are not reliable evidence of a reasonable royalty for
many of the same reasons as discussed above in Section II(A)(1). They are admittedly not
comparable agreements under the Georgia-Pacific factors; too remote in time and have no value
as a data point in determining either the structure or amount of any reasonable royalty in this
case. See ePlus, Inc. v. Lawson Software, Inc., 764 F. Supp. 2d 807, 813 (E.D. Va. 2011) (“The
minimal probative value that can be attributable to settlement agreements that ensue litigation is
even less where, as here, the settlement agreements occurred years after the hypothetical
negotiation called for by Georgia–Pacific analysis would have occurred.”).

6

Dr. Ugone states that he relies on this settlement only for the purpose of showing that
Lycos would have been willing to accept a lump sum license back in 2004, not on the amounts
(which he claims he gives no weight (Exh. 2 at 52)). He also testified that exclusion of these
agreements would not impact his damages analysis. [Id.] Dr. Ugone fails to explain how these
settlement agreements are not comparable for valuation purposes, but are comparable for other
reasons—i.e., the payment structure of those amounts. Defendants do not address this.
Further, Defendants’ brand new theory (in their pretrial motions, but not in the expert
report) that these remote-in-time settlement agreements are now timely because the hypothetical
negotiation date is 2010, not 2004 “as claimed by I/P Engine”, is ridiculous. 4 In his report, Dr.
Ugone—Defendants’ damages expert—states that “[t]he hypothetical negotiation for a license to
the patents-in-suit would have taken place in or around March 2004 between Lycos and
Google.” [Exh. 1, ¶ 64.] Defendants’ current attempt to make agreements timely by shifting the
negotiation date is meritless. The initial infringement is and always has been, 20045. Instead of
attempting to try to explain how these settlement agreements are relevant despite the fact that
they occurred in 2008, 2009 and 20106, Defendants try to change the hypothetical negotiation
date. Even if this was somehow proper (which it is not) it still does not get them where they
need to be.
4

Not until their September 21, 2012 motion seeking to exclude the testimony of I/P Engine’s
damages expert, did Defendants raise this new legal theory. [Dkt. No. 310.] Defendants’ new
legal theory apparently finds its basis in source code that was not made available to I/P Engine
until September 14, 2012, ten days after the close of fact discovery. This untimely production of
source code is the subject of Plaintiff I/P Engine, Inc.’s Third Motion For Discovery Sanctions.
[Dkt. No. 282.]

5

Indeed, Defendants have filed a pending summary judgment motion that asserts a laches
defense because I/P Engine allegedly had constructive notice of infringement as early as 2005.
[Dkt. No. 238 at 39.]
6

Reference to the
agreement being in 2011 was simply a typo. Whether 2008 or 2011, it is
not near the hypothetical negotiation date of 2004.
7

The Federal Circuit requires that the licenses considered under Georgia Pacific be
“comparable.” There is no exception to this rule. And Defendants cite to no authority in support
of any exception. [Dkt. No. 459 at 10.] Accordingly, they fail to meet their burden of proving
the reliability of Dr. Ugone’s reliance on these settlement agreement. Cooper, 259 F.3d at 199.
3.

A Patent Damages Expert Must Account for the Relative Value of the
Patented Technology and its Footprint in the Marketplace.

According to Defendants (at 7), “[a] lump-sum payment need not be tied to the licensee's
royalty base or a royalty rate.” This again misstates the issue. The issue here is that Defendants
have failed to identify any connection between the lump sum amounts in the agreements that
they rely on (including

and

) and the value of the patented technology and its

footprint in the marketplace. Defendants do not address this issue. Neither do the cases relied
upon by Defendants contradict this requirement.
Attempting to comply with Wordtech, Defendants (at n.2) argue that
With respect to the two lump-sum agreements [in Wordtech] for the patented technology,
there was no evidence even of the licensees' intended product. In the case at bar,
however, the
agreement upon which Dr. Ugone relied related to Google's
internet search business and therefore would implicate similar search advertising
revenue as the hypothetical negotiation between Google and Lycos. (O'Brien Dec. Ex. D
at 77-78.) 7
[Dkt. No. 459 at 8, n.2 (emphasis added).] First, Exhibit D at 77-78 that Defendants rely upon is
referring to Dr. Ugone’s report. He does not say that the

patents “relate to Google’s

internet search business.” [See O’Brien Dec. Ex. D at 77-78.] In fact, the only evidence of
record establishes the contrary. [Exh. 3 (Excerpts of the 6/19/2012 Transcript of James W.
Maccoun at 72 & 8/17/2012 Tr. 204-05).] Second, what does “[i]mplicates” similar search

7

Notably, Defendants do not even attempt to argue that the
agreement or the other 7lump sum agreements are somehow connected to the value of the patents in suit. [See Dkt. No.
459 at 13.]

8

advertising revenue” mean? Dr. Ugone is relying upon the

agreement to set the lowest

amount of the royalty for the patents in suit. Such a conclusory statement cannot be sufficient to
establish that the

lump-sum amount is somehow an indicator of the value of the patents-

in-suit. Neither does Dr. Ugone make this assertion in his report. It is nothing more than
attorney positing.
The Wordtech Court’s decision clearly requires consideration of the expected sales in
determining a lump-sum royalty.
Neither license describes how the parties calculated each lump sum, the licensees’
intended products, or how many products each licensee expected to produce.
Indeed, when asked if the record supplied “any idea of the volume of sales or
projected sales,” Wordtech’s counsel admitted: “With the trial court, none of that
was discussed.” . . . . Thus, without additional data, the licenses offered the jury
little more than a recitation of royalty numbers.
Wordtech, 609 F.3d at 1320. Defendants fail to offer any additional data or evidence relating to
any of the lump-sum agreements that Dr. Ugone relies upon to offer the jury anything more than
a mere recitation of the lump sum amount. The district court cases relied upon by Defendants do
not dictate otherwise.
In Personal Audio, the district court did not find error in the fact that the expert did not
consider the projected expected sales of the accused products. Personal Audio, LLC v. Apple,
Inc., No, 9:09-cv-111, 2011 WL 3269330, at *9 (E.D. Tex. July 29, 2011). That court reasoned
that because at the time of the hypothetical negotiation there was uncertainty whether the
accused product would be successful in the marketplace consideration of the projected future
sales was not necessary. Id. at, *9. No such uncertainty over the success of the accused
AdWords system existed at the time of the hypothetical negotiation here. Indeed, Dr. Ugone
dedicates multiple pages of his report asserting that “Google’s Accused Products (i.e., AdWords
and AdSense for Search) were successful prior to the date of the first alleged infringement.”

9

[Exh. 1, ¶ 91.] Nowhere in Personal Audio does it state that a lump sum payment does not have
to account for the relevant value of the patents-in-suit.
In Uniloc, the movant sought to exclude the expert’s damages report arguing that “[a]
lump-sum royalty is per se unreliable because it is fundamentally at odds with the compensatory
nature of 35 U.S.C. § 284.” Uniloc USA, Inc. v. Microsoft Corp., 632 F. Supp. 2d 147, 151
(D.R.I. 2009). After a “careful review” of the expert’s report, the Uniloc court concluded it fell
within the bounds of FRE 702. Id. The court reasoned that there is no one correct formula for
computing damages in a patent case. Id. at 151-52. based upon the evidence it may be either a
running royalty or a lump sum. Id. at 152. The district court did not consider and rule on
whether an expert must consider the use of an invention or its revenues in determining a lumpsum royalty. The language cited by Defendants for this premise was the court’s summary of the
movant’s position, not the issue addressed by the Court.
Finally, Defendants cite LaserDynamics (at 8) for the premise that Dr. Ugone was not
required to calculate a royalty base or apportion any such base. But this again is not the issue.
The issue is that Dr. Ugone does not attempt to connect the value of the patents-in-suit to any of
the licenses that he relies on to value those patents. [See Dkt. No. 340 at 10.] LaserDynamics
does not stand for the proposition that in selecting a lump-sum royalty structure an expert need
not consider the value of the accused feature relative to the overall accused system. It states that
it could be difficult to precisely apportion the value attributable to patented technology.
LaserDynamics, 2012 U.S. App. LEXIS 18441, at *41. But the Court did not find that any such
difficulty excused violating the entire market value rule. Id. at 40.
Defendants continue to ignore the fundamental issue, however. If there is no connection
between the lump-sum agreements and the patented invention, how does Dr. Ugone comply with

10

35 U.S.C. § 284 (“adequate compensation” for infringement must not be “less than a reasonable
royalty for the use made of the invention by the infringer). He cannot. And he has not. The
Federal Circuit has said that he must otherwise he is doing nothing more than improperly reciting
the royalty from the agreements. See Wordtech, 609 F.3d at 1320.
4.

The
Agreement is Inapposite and Cannot Properly be Relied
Upon for Setting an Upper Limit to the Reasonable Royalty.

For the first time in their moving papers, Defendants allege that the

Agreement is

technologically comparable to the patents-in-suit. [Dkt. No. 459 at 14-15.] Dr. Ugone testified
to the exact opposite. And Defendants’ own technical expert, Dr. Ungar, does not opine that
is comparable in his report. There is no evidence of record (aside from Defendants’
attorney’s statement in their moving brief) that

covers a comparable technology to the

patents-in-suit.
To support their new position, Defendants ask (at 14-15) the Court to compare ¶ 124 of
Dr. Ugone’s report with the Summary Judgment Declaration of Howard Chen, a Quinn Emanuel
attorney. According to Defendants these show that the

Agreement involves technology

to the patents-in-suit. Neither ¶ 124 of Ugone’s report nor Chen’s summary judgment
agreement involves similar technology to

declaration stands for the premise that that the
the patents in suit.

Mr. Chen’s declaration simply states that Exhibit 24 is a true and accurate copy of the
‘664 patent. [Dkt. No. 240 at ¶ 25.] Dr. Ugone expressly states that the
not comparable.
In ¶ 124 of his report, Dr. Ugone states:
Google purchased

11

Agreement is

[Exh. 1, ¶ 124).] He cites to the

patents as support for these statements.

At his deposition, Dr. Ugone testified regarding his statements in ¶ 124:
Q. Did you read all the [

] patents?

A. I believe that I touched all those patents, yes. I didn't -- I mean, there's -- when you say
all the patents, there's figures and there's diagrams and things I'm not going to understand,
but I'd generally be looking at abstracts and things like that. And you can see what we did
on the top of page 76 where we give just a general overview of what we were able to
glean from the patents.
***
Q. And you're not trying to express an opinion in your report as to what those patents
cover, technology wise?
A. Other than just the hint of some of the words that we've seen in the abstract that we
repeat -- or in the patent that we repeat on the top of page 76, but I'm not going to give a
technical opinion as to what those things are.
[Exh. 2 at 183:21-184:17.] Dr. Ugone also testified that:
[w]hereas I've received guidance and input that the
patent is -- or the
purchase and technology is comparable to the patents-in-suit, I don't have that same
anchor on the
side of it.
[Id. at 178:8-11] and:
Q. Well, let's stop there for a second. You do not assert in your report that it's
a comparable technology, right?
A. Right. The only thing I say is that Mr. Maccoun testified that the technology
covered in the agreement pertains to search.
***
Q. And Dr. Ungar is not in his report asserting that the technology in
comparable to the patents-in-suit, right?
A. That's correct. He did not assert that.

12

is

[Id. at 181 (emphasis added).] Defendants do not attempt to explain this inconsistency. Instead,
they argue that I/P Engine has not provided any evidence that the

patents are not

comparable.
Defendants’ have the burden of proving that Dr. Ugone’s testimony is reliable and
relevant. Cooper, 259 F.3d at 199. Accordingly, Defendants bear the burden of showing that the
licenses relied upon by their expert are comparable under Georgia Pacific—not I/P Engine.
Defendants fail to point to a scintilla of evidence in support of their brand-new argument that the
patents are comparable. Their counsel’s attempt to construe the ‘420 patent and combine
patents is not evidence.

it with Dr. Ugone’s admittedly non-technical description of the
5.

Dr. Ugone Does Not Have a Sufficient Factual Basis to Use the
Agreement as a Value Indicator of the Patents in Suit.

In what appears to be a pattern, Defendants once again misconstrue the issue and I/P
Engine’s position regarding the admissibility of the

Agreement. Defendants make two

arguments: (1) I/P Engine does not provide any evidence that the
technologically comparable to the patents in suit; and (2)

agreement is not

is not remote in time (as

allegedly I/P Engine solely argues) because it occurred in 2008, and the real hypothetical
negotiation date is 2010, not 2004. [Dkt. No. 459 at 13-14.]
Not to beat a dead horse, but Defendants have the burden of proving that Dr. Ugone's
testimony is reliable and relevant. Cooper, 259 F.3d at 199. Accordingly, Defendants bear the
burden of showing that the

patents are comparable under Georgia Pacific.8 And again,

8

Nevertheless, if the Court permits the
Agreement to come into evidence, I/P Engine will
provide evidence at trial to show that the
patent is not technologically comparable.
Defendants asserted
for the first time in their rebuttal-expert reports. I/P Engine has not
had an opportunity to provide evidence refuting their opinions regarding this agreement.

13

the hypothetical negotiation date is 2004—not 2010. Dr. Ugone (Defendants’ own expert) used
the 2004 hypothetical negotiation date in his damages analysis. [Exh. 1, ¶ 64.]
Regardless, even assuming that the
Ugone’s reliance on the

patents are technologically comparable, Dr.

agreement is improper as a matter of law. The Federal Circuit

makes clear that “[t]o be admissible, expert testimony opining on a reasonable royalty rate must
‘carefully tie proof of damages to the claimed invention’s footprint in the market place.’” Uniloc
USA, Inc, v. Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011). In “[c]onsidering licenses, a
damages expert must account not only for technological differences but economic differences as
well.” DataQuill Ltd. v. High Tech Comp. Corp., No. 08-cv-543, 2011 WL 6013022, at *18
(S.D. Cal. Dec. 1, 2011). This includes “whether the patented technology is essential to the
licensed product being sold, or whether the patented invention is only a small component or
feature of the licensed product . . . .” Lucent Tech. v. Gateway, Inc., 580 F.3d 1301, 1330 (Fed.
Cir. 2009).
As discussed in I/P Engine’s opening brief, but not addressed in Defendants’ opposition,
Dr. Ugone fails to tie the

Agreement to the claimed invention or explain how the

economics of both are the same or even similar. Dr. Ugone uses the

-lump sum of

to place a value on the patents in suit. [Exh. 1, ¶ 132(b).] But he does not explain how
the

patents are even remotely comparable to the patents-in-suit to adequately compensate

for the infringe. See 35 U.S.C. § 284. At a minimum, adequate damages must be no less than a
reasonable royalty for the use made of the invention by the Defendants. Id.; see also Wordtech,
609 F.3d at 1319. Here, Dr. Ugone provides no information as to any connection between the
and patented technology; whether Google used any of the

technology; the extent of

such use; how any use impacted or benefited Google or even that it relates to the accused

14

products; or why Google even bought the patents. [See Dkt. No. 340 at 7.] The Federal Circuit
has rejected expert reliance on lump-sum agreements where that expert failed to provide such
additional data.
In Wordtech, the Federal Circuit found as flawed, the expert’s reliance on two lump-sum
agreements relating to the asserted patents in that case under Georgia-Pacific factor 1.
Wordtech, 609 F.3d at 1320. The Court’s reason, that the agreements provided no basis for
comparison with the defendant’s infringing sales. Id. “The license neither described how the
parties calculated each lump sum, the licensees’ intended products, or how many products each
licensee expected to produce.” Id. Without this “additional data, the licenses offered the jury
‘little more than a recitation of royalty numbers.’” Id. (citing Lucent, 508 F.3d at 1329).
Here, the

agreement does not even relate to the asserted patents. Dr. Ugone relies

upon this agreement under Georgia-Pacific factor 2. If the Federal Circuit requires something
more to support the basis for comparing a license relating to the asserted patents in a hypothetical
negotiation, certainly something more is required for Dr. Ugone to rely upon the
Agreement as a “value indicator” of the patents-in-suit. Simply saying that the
covers comparable technology, was for a lump sum of

agreement

four years after the

hypothetical negotiation period, without applying any additional data that ties

to the

patents in suit or the use by Defendants’ of the infringing technology (like Wordtech) is
fundamentally flawed, and should be rejected.9

9

As to Defendants’ argument that Dr. Becker could not meet these “exacting requirements”
relating to the licenses upon which he relies, as discussed in opposition to Defendants’ Daubert
Motion of Dr. Becker’s report, he does not value the patents-in-suit by using any licenses. Also,
unlike Dr. Ugone, Dr. Becker directly ties the damages to Defendants’ use of the infringing
technology—as required by § 284.

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6.

Dr. Ugone Improperly Relied Upon the 2011 Patent Purchase
Between Lycos and I/P Engine as an Indicator of Value.

Defendants’ argument that Dr. Ugone’s reliance on Lycos’s 2011 sale of the patents in
suit as a “value indicator” is justified is equally meritless. [Dkt. No. 459 at 15-17.] The cases
relied upon by Defendants in support of their position are inapposite. As set forth in I/P Engine’s
moving brief (at 7), the intervening events that occurred between the 2004 hypothetical
negotiation date and the sale by Lycos of the patents-in-suit mandates that Dr. Ugone has
improperly relied upon this event as a matter of law.
Of the four cases relied upon by Defendants in support of their position, three are nondispositive, district court cases (Endress & Hauser, Oracle and Personal Audio). None of these
cases addressed the issues or facts applicable in this case. Indeed, in Endress & Hauser, the
issue was not whether a patent sale was admissible. The trial court was issuing proposed
conclusions of law following a bench trial. Endress & Hauser, Inc. v. Hawk Measurement Sys.
Pty. Ltd., 892 F. Supp. 1123, 1130 (S.D. Ind. 1995). The patents were purchased in 1988; three
years before the 1999 hypothetical negotiation. Id. at 1126, 1128. The parties would have been
aware of the acquisition price at the time of the negotiation. The Oracle case involved an
internal accounting valuation, not a patent sale. Oracle Am., Inc. v. Google Inc., No. 10-cv3561, 2012 WL 877125, at *3 (N.D. Cal. Mar. 15, 2012). The value was placed by the party
who was seeking above what it had originally valued the patents. Id. And in Personal Audio,
the district court found the offer to sell the patents in suit by an inventor seven years after the
infringement began was proper. Personal Audio, LLC v. Apple, Inc., No. 9:09-cv-111, 2011 WL
3269330 (E.D. Tex. July 29, 2011). Again, the issue in that case was not admissibility, but rather
whether the lump sum royalty awarded by the jury was supported by the evidence. Id. at, *1.
The Personal Audio court reasoned that the offer was not made by an inventor who had no

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opportunity to consider the potential of his invention or was tricked or forced into accepting a
nominal sum before realizing the full value of the patented technology. Id. at, *11.
In the sole Federal Circuit case, again the issue was not admissibility. The Court
remanded for further factual development relating to the damages award. Intergra Lifesciences
I, Ltd. v. Merck KGaA, 331 F.3d 860 (Fed. Cir. 2003). The hypothetical negotiation in Integra
would have taken place in 1994 or 1995. Id. at 870. The Federal Circuit effectively said that an
actual sale in 1996 of the patents at issue would be relevant the hypothetical negotiations. Id. at
871. The decision is unclear as to what factors the Court was considering regarding the
acquisition of the patents by the plaintiff in that case. Id. The Court does not provide sufficient
facts surrounding the patent purchase or parties to be able to determine the applicability of the
Court’s single comment, in dicta, that the royalty amount “seems unbalanced in view of the
overall acquisition price.” Id. The Federal Circuit did not hold (nor has it ever held) that, as a
matter of law, a reasonable-royalty award cannot exceed what someone paid to acquire a patent
portfolio that includes the patents in suit. In fact, such a rule would make little sense.
The facts surrounding the sale by Lycos of the patent portfolio that included the patentsin-suit further distinguish it from the above cases, and show that Dr. Ugone improperly relies on
the Lycos agreement to distort the damages amount. Actual damages are determined by what a
willing buyer would have been reasonably required to pay a willing seller for using the patented
invention. Trell v. Marlee Elecs Corp., 912 F.2d 1443, 1446 (Fed. Cir. 1990). Nothing about the
amount of the Lycos sale in 2011 and the negotiations and bidding associated with that sale is
informative as to the economic mindset of the parties in June 2004 (the hypothetical negotiation
date that the jury must consider).

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The Lycos sale occurred in 2011, seven years after the hypothetical negotiation date.
Lycos had been sold twice in the interim. During his deposition, Lycos’s General Counsel, Mark
Blais, testified about a myriad of internal and external pressures that led to the sale of the Lycos
portfolio, none of which related to the value of the patents-in-suit. [Exh. 4 at 122-156.] Mr. Blais
also testified that at no time between 2004 to the 2011 sale did Lycos know or suspect that
Defendants were infringing any of its patents. [Exh. 4 at 50-51, 115-116.] Nothing regarding
the 2011 sale, or the various discussions Lycos had between 2009 and 2011 regarding a possible
sale, is “a reasonable or sufficiently reliable approximation of the value of the patents-in-suit.
The sale price by Lycos of the patents (that it never valued, used or enforced) is significantly
different from the value of licensing the patented technology when (as in the hypothetical
negotiation) the patent covering it is known to be valid and infringed, and the infringer is seeking
a license. Surely had Lycos known that Defendants were infringing the patents-in-suit in their
search-advertising system, it would not have sold that patent portfolio for

. During

the hypothetical negotiation, on the other hand, Lycos would have been armed with that
information.
B.

Dr. Ugone’s Technical Testimony on the Accused Systems is Improper.

It is undisputed that Dr. Ugone is an economist, and that he is providing a damages
opinion. It is undisputed that he is not providing a technical opinion in this case. [Exh. 2 at
17:5-6 (“So I’m not giving any technical opinions in this report.”).] Nor would he be qualified to
do so under FRE 702. Neither is I/P Engine disputing that experts are permitted to rely on
certain non-admissible evidence under FRE 703, including hearsay; or even that an expert does
not have to cite to support for every sentence in his report. None of these tenets are at issue here.
The only issue here is whether Dr. Ugone, (despite his testimony that he is not providing a

18

technical opinion and the fact that he relies on no technical witness) may properly provide his
independent technical opinions in his report and at trial.10
Defendants argue (at 18) that it is “well-settled that damages expert may testify to the
technical facts and assumptions that underlie his opinion.” They rely on Oracle Am., Inc. v.
Google Inc., No. 10-3561, 2011 WL 5914033 (N.D. Cal. Nov. 28, 2011) to support this
statement. Id. I/P Engine does not dispute this premise. The Oracle court allowed such
testimony because (as defendants state) the expert relied on technical, non-infringement
experts and foundational facts supplied by engineers. Id. Dr. Ugone does not, however, rely
on Defendants’ technical expert or engineers for the technical opinions he provides in paragraphs
50, 67, 68, 69, and 103. He cites to technical documents, I/P Engine’s technical expert report
and the Bid for Position decision. He then provides his technical interpretation of those
materials. This is improper.
Defendants’ assertion that they “[w]ill introduce [at trial] underlying factual testimony
and exhibits that support Dr. Ugone’s understanding of the technology” falls short. [See Dkt.
No. 459 at 18.] Dr. Ugone was required to identify his opinion and the support for his opinions
in his report. Attempting to backdoor support (that he never relied upon) in through yet
unidentified trial witnesses does not somehow provide Dr. Ugone with the proper technical
evidence to support of his technical opinions already in his report.
Dr. Ugone is not qualified to opine on the technical aspects of this litigation without
relying upon an technical expert or other witness for his understanding—his personal
10

Defendants’ argument that I/P Engine used creatively placed ellipses and improperly omitted
cited support for Dr. Ungar’s opinions is a red herring. [Dkt. No. 459 at 18.] First, ellipses were
used twice, and properly. Once to omit an entire sentence at the end of the paragraph (the
citations related to the omitted sentence); and once where no citations followed. Second, I/P
Engine identifies and discussed the materials that Defendants claim that it improperly omitted.
[See Dkt. No. 340 at 14.]

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interpretation is improper and irrelevant. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1362 (Fed. Cir. 2008). At his deposition, Dr. Ugone testified that he relied upon Dr. Ungar
and three Google employees relating to certain technical aspects of the case. [Exh. 2 at 15, 34,
57, 60.] He also identified the subjects that he discussed with the Google employees. [Exh. 1, ¶
26 (table 2).] None were identified for providing evidence in support of the technical aspects
identified in paragraphs 50, 67, 68, 69, and 103 of Dr. Ugone’s report.
Defendants’ argument that FRE 703 permits an expert to rely on inadmissible evidence,
including hearsay, does not cure this fundamental problem. Although technically true, the rule
does not permit experts cart-blanch to rely upon anything they see fit. It is a basic foundation for
admissibility that “[p]roposed [expert] testimony must be supported by appropriate validationi.e., ‘good grounds,’ based on what is known.” Daubert, 509 U.S. at 590. As the Supreme Court
put it, “the Rules of Evidence-especially Rule 702... assign to the trial judge the task of ensuring
that an expert's testimony ... rests on a reliable foundation.” Id. at 597. Thus, the district court
has an obligation to ensure that the basis of an expert's opinion is both reliable and reasonable.
See id. Defendants fail to provide any evidence or authority that the types of information that
Dr. Ugone relies upon for his technical opinions are routinely used by damages experts in
determining a reasonable royalty. See Fed. R. Evid. 703. Neither do they provide evidence that
it is permissible to establish technical aspects of a patent case by relying upon prior testimony
and case decisions in a different case about different patents. Defendants fail to explain how
such information is subject to cross-examination or verification.

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CERTIFICATE OF SERVICE
I hereby certify that on this 2nd day of October, 2012, the foregoing, PLAINTIFF I/P
ENGINE, INC.’s REPLY IN FURTHER SUPPORT OF ITS MOTION TO EXCLUDE
OPINIONS AND TESTIMONY OF KEITH R. UGONE, 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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