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Case 5:05-cv-00334-RMW
1
Document 2409
Filed 10/24/2008
Page 1 of 11
Attorney list on signature page
2 3 4 5 6 7 8 9
IN THE UNITED STATES DISTRICT COURT
10
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
11
RAMBUS, INC.,
12
Plaintiff,
13
v.
14
HYNIX SEMICONDUCTOR INC., et al.,
15
Defendants.
16 17
RAMBUS, INC.,
19
v.
20
SAMSUNG ELECTRONICS CO., LTD., et al.,
Trial Date: Time: Courtroom: Judge:
December 2, 2008 2:00 pm 6, 4th floor Hon. Ronald M. Whyte
Case No. C 05-02298 RMW
Defendants.
21
23
RAMBUS, INC., Plaintiff,
24
v.
25
MICRON TECHNOLOGY INC., et al., Defendants.
26
MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
Plaintiff,
18
22
Case No. C 05-00334 RMW
Case No. C 06-00244 RMW
27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
CASE NO. C 05 00334 RMW CASE NO. C 05 02298 RMW CASE NO. C 06 00244 RMW
Case 5:05-cv-00334-RMW
Document 2409
Filed 10/24/2008
Page 2 of 11
1
PLEASE TAKE NOTICE that on December 2, 2008, at 2:00 p.m., or as soon
2
thereafter as counsel can be heard, in the courtroom of the Honorable Ronald M. Whyte, 280
3
South First Street, San Jose, California, Defendants Micron Technology, Inc., Micron
4
Semiconductor Products, Inc., Hynix Seminconductor Inc., Hynix Semiconductor America Inc.,
5
Hynix Semiconductor Manufacturing America Inc., Hynix Semiconductor U.K. LTD, Hynix
6
Semiconductor Deutschland GmbH, Nanya Technology Corporation, Nanya Technology
7
Corporation USA, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
8
Semiconductor Inc., and Samsung Austin Semiconductor, L.P. (collectively “Manufacturers”)
9
hereby move the Court to preclude Mr. Robert J. Murphy (‘Murphy”) from offering certain
10
opinions and testimony pursuant to Federal Rules of Evidence 402, 403 and 702.
11
Specifically, the Manufacturers request that this Court issue an order precluding
12
Mr. Murphy from offering any opinions or testimony at trial regarding the infringement of the
13
asserted claims of the patents-in-suit under the doctrine of equivalents. This motion is based upon
14
the points and authorities discussed herein, the Omnibus Declaration of Sven Raz in Support of
15
the Manufacturers’ Summary Judgment and Daubert Motions (hereinafter, “Omnibus Decl.”) and
16
exhibits attached thereto, the Declaration of Dana K. Powers in Support of the Manufacturers’
17
Daubert Motion to Exclude Certain Testimony of Robert J. Murphy (Daubert No. 4) (hereinafter,
18
“Powers Decl.”) and exhibit attached thereto, and such other evidence and argument that may
19
properly come before the Court.
20
I.
INTRODUCTION
21
Under Daubert and Federal Rule of Evidence 702, Mr. Murphy should be
22
precluded from testifying or offering opinions suggesting that the Manufacturers have infringed
23
the asserted claims of the patents-in-suit under the doctrine of equivalents. Completely absent
24
from Mr. Murphy’s expert report on infringement, Omnibus Declaration of Sven Raz in Support
25
of the Manufacturers’ Summary Judgment and Daubert Motions (hereinafter, “Omnibus Decl.”)
26
Ex. 7 (Expert Report of Robert J. Murphy, dated September 5, 2008 [hereinafter, “Murphy
27
Report”]), is any discussion of how any limitation of any asserted claim is met equivalently under
28
any test (for example, interchangeability, insubstantial differences, or function-way-result) under MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
1
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the Court’s claim construction.
2
equivalence, and should be excluded as such.
Filed 10/24/2008
Page 3 of 11
Mr. Murphy’s opinions are nothing more than bald assertions of
3
In a futile attempt to provide the required specificity, Mr. Murphy states that his
4
conclusory opinions of infringement under the doctrine of equivalents are based on “previous
5
reports or declarations.” Critically, Mr. Murphy’s prior opinions are inadmissible under the
6
Federal Rules of Civil Procedure, the Federal Rules of Evidence, and Daubert, because they
7
evaluate equivalence under claim constructions that were proposed by the Manufacturers and
8
rejected by the Court. Mr. Murphy’s failure to offer any opinions on equivalence in this case
9
under the Court’s actual claim constructions demonstrates that he used an unreliable methodology
10
which deprives his conclusions of the basic foundation of trustworthiness that Daubert and Rule
11
702 require.
12
II.
LEGAL STANDARD
13
Pursuant to Federal Rule of Evidence 702, expert testimony is inadmissible unless:
14
“(1) the testimony is based on sufficient facts or data, (2) the testimony is the product of reliable
15
principles and methods, and (3) the witness has applied the principles and methods reliably to the
16
facts of the case.” In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), the
17
Supreme Court provided the analytical framework for determining the admissibility of expert
18
testimony under Rule 702.
19
determine if expert testimony is admissible based on “whether the reasoning or methodology
20
underlying the testimony is scientifically valid and . . . whether that reasoning or methodology
21
properly can be applied to the facts in issue.” Daubert, 509 U.S. at 592-93. The trial courts are
22
tasked with “ensuring that an expert’s testimony both rests on a reliable foundation and is relevant
23
to the task at hand.” Id. at 597.
24
requires a district court to admit opinion evidence that is connected to existing data only by the
25
ipse dixit of the expert.” Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997).
Under Daubert, the trial courts must act as “gatekeepers” to
“Nothing in either Daubert or the Federal Rules of Evidence
26
The law is clear that an infringement analysis under the doctrine of equivalents
27
requires the production of particularized testimony and linking argument - not mere conclusions
28
based upon vague generalizations. See, e.g., Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
2
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1314, 1322-23 (Fed. Cir. 2003) (affirming district court's grant of JMOL of non-infringement
2
under the doctrine of equivalents where expert merely offered conclusory opinions that the
3
accused device performed the same function, in the same way, to achieve the same result);
4
Mahurkar v. C.R. Bard, Inc., 2004 U.S. Dist. LEXIS 18466, *84-85 (N.D. Ill. Sept. 7, 2004)
5
(granting motion to bar expert testimony on doctrine of equivalents because expert report was
6
“devoid of any analysis under the doctrine of equivalents”). In addition, a plaintiff asserting
7
infringement under the doctrine of equivalents must provide evidence demonstrating why the
8
functions, ways, and results in the accused device and the claimed invention are substantially the
9
same. Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991) (emphasis
10
in original).
11
III.
12
ARGUMENT Federal Rule of Evidence 702 requires the trial court assess the reliability of the
13
proffered testimony in its role as “gatekeeper”.
14
1063 (9th Cir . 2002) (“The trial court must act as a ‘gatekeeper’ to exclude ‘junk science’ that
15
does not meet Rule 702’ s reliability standards by making a preliminary determination that the
16
expert's testimony is reliable.”).
17
of the expert’s reasoning and “whether that reasoning or methodology properly can be applied to
18
the facts in issue .” Daubert, 509 U.S. at 592-93.
Mukhtar v. Cal. State Univ., 299 F.3d 1053,
Fulfilling this “gatekeeping” obligation requires an assessment
19
In order show infringement under the doctrine of equivalents, Mr. Murphy must
20
provide particularized testimony linking the claimed invention to the Accused Products. See e.g.,
21
Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996)
22
(holding that to establish infringement under the doctrine of equivalents, a patentee must provide
23
particularized testimony and linking argument as to the “insubstantiality of the differences”
24
between the claimed invention and the accused product). The Federal Circuit requires this level
25
of proof in order to “assure that the fact-finder does not, ‘under the guise of applying the doctrine
26
of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on
27
which the public is entitled to rely in avoiding infringement.’” Id. at 1567, citing, Pennwalt Corp.
28
v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc). MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
3
If the particularized
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1
testimony and specific arguments explaining the testimony are not provided, the jury is “put to
2
sea without guiding charts when called upon to determine infringement under the doctrine of
3
equivalents.” Id.
4
Mr. Murphy had ample opportunity to include the requisite analysis required for an
5
assertion of infringement under the doctrine of equivalents – yet his report entirely omits any such
6
analysis except for a conclusory footnote.
7
explanation to support an opinion under the Court’s construction that the Accused Products
8
infringe the asserted claims of the patents-in-suit under the doctrine of equivalents. Rather, Mr.
9
Murphy makes one perfunctory, conclusory reference to infringement under the doctrine of
10
equivalents and waves his hands generally at other declarations as support “per the same
11
analysis.” This one reference to a doctrine of equivalents opinion is found in a footnote on page
12
90 of his report, and states in relevant part:
13 14 15 16 17 18 19
The Murphy Report does not set forth any analysis or
In my opinion, the claim limitations are met, and even pretending for a moment that certain limitations were not met, I already have provided my opinion as to the function, way, and result of certain limitations in previous reports or declarations such as my declaration in support of Rambus’s opposition to the Manufacturer’ motion for summary judgment of non-infringement, which I understand is Docket No. 657. Certain of these limitations are carried over into Accused Products. I incorporate in this report those opinions as to those limitations and my opinion is that the accused products have elements that perform substantially the same function in substantially the same way to achieve substantially the same result, per the same analysis. Omnibus Decl. Ex. 7 (Murphy Report) at 90 n.70.
20 As can be readily ascertained, Mr. Murphy’s unsubstantiated assertions regarding 21 equivalence are devoid of the limitation-by-limitation analysis required for a doctrine of 22 equivalents opinion. See, Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 23 1567-1568 (Fed. Cir. 1996) (expert testimony that was “merely generalized testimony as to 24 overall similarity” and that did not explain why the accused products were similar to the missing 25 claim limitations or otherwise explain why the function and result were the same was inadequate 26 to establish infringement under the doctrine of equivalents). 27 Moreover, Mr. Murphy’s attempt to provide the required specificity for his 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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conclusory opinions through “previous reports or declarations” is fatally flawed.
2
declaration in which he claims he has “already provided [his] opinion as to the function, way, and
3
result of certain limitations” is completely deficient since it is specifically based on the
4
Manufacturers’ claim constructions – which were not adopted by the Court. Omnibus Decl. Ex. 7
5
(Murphy Report) at 90; See Powers Decl., Ex. A [Murphy 11/2/07 Declaration In Opposition to
6
Manufacturers’ Motion for Summary Judgment] at 139 (“In my opinion the accused devices
7
would infringe the claims of the Farmwald/Horowitz patents, even under Manufacturers’
8
proposed construction of ‘device’ under the doctrine of equivalents.”); id. at 146 (“In my opinion,
9
even should the accused devices not be found to infringe literally under Manufacturers’
10
construction of the so-called transaction terms, they would infringe under the doctrine of
11
equivalents.”); id. at 152 (“In my opinion, the accused devices would infringe the claims of
12
Rambus’s patents, even under Manufacturers’ proposed construction of the clocking terms under
13
the doctrine of equivalents.”).
14
relevant to show how any of the limitations of the disputed claims are met under the doctrine of
15
equivalents, and are thus not a proper basis for Murphy’s equivalency opinions. See, e.g., Frank's
16
Casing Crew v. PMR Techs., LTD., 292 F.3d 1363, 1375 (Fed. Cir. 2002) (rejecting an expert’s
17
conclusion that a claim limitation was not satisfied because it was based on an incorrect claim
18
construction); E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1371 (Fed. Cir. 2003)
19
(vacating and remanding case to district court because analysis of noninfringement under the
20
doctrine of equivalents was based on an incorrect claim construction); Dawn Equip. Co. v.
21
Kentucky Farms, 140 F.3d 1009, 1014 (Fed. Cir. 1998) (stating that when determining
22
infringement, whether literally or under the doctrine of equivalents, the “construction of each
23
claim limitation is crucial”).
The
Arguments based on claim constructions not at issue are not
24
Having failed to provide any analysis under the Court’s actual claim constructions,
25
it is clear that Mr. Murphy should not be permitted to testify about the doctrine of equivalents at
26
trial. See Atmel Corp. v. Information Storage Devices, Inc., 189 F.R.D. 410, 416 (N.D. Cal. 1999)
27
(excluding expert testimony because methodology for conclusory statement was insufficient and
28
unreliable). A district court, in performing its gatekeeper role under Federal Rule of Evidence MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
5
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1
702, must “determine that [the experts] arrived at their conclusions using scientific methods and
2
procedures, and that those conclusions were not mere subjective beliefs or unsupported
3
speculation.” Claar v. Burlington Northern Railroad Co., 29 F.3d 499, 502 (9th Cir. 1994).
4
his expert report, Mr. Murphy fails to provide any support whatsoever for his blanket statement
5
that the Manufactuers’ accused products infringe under the doctrine of equivalents. The “previous
6
reports or declarations” on which he attempts to base his opinions are legally irrelevant since they
7
evaluate equivalence under claim constructions not at issue. Accordingly, this Court should
8
exclude Murphy’s conclusory opinions regarding the doctrine of equivalents as unreliable
9
speculation under Rule 702 and Daubert.
10
IV.
In
CONCLUSION
11
Because Mr. Murphy did not provide any reliable basis for infringement under the
12
doctrine of equivalents under the proper claim constructions in either his expert report, his
13
deposition, or in other declarations, under Federal Rule of Evidence 702 and Daubert, he should
14
be precluded from presenting testimony or opinions at trial regarding the infringement of the
15
asserted claims of the patents-in-suit under the doctrine of equivalents.
16 17
Dated: October 24, 2008
18
By:
/s/ Matthew D. Powers MATTHEW D. POWERS (Bar No. 104795) [email protected] STEVEN S. CHERENSKY (Bar No. 168275) [email protected] WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, California 94065 Telephone: (650) 802-3034 Facsimile: (650) 802-3100
19 20 21 22 23 24
ROBERT S. BEREZIN (pro hac vice) [email protected] MATTHEW J. ANTONELLI (pro hac vice) [email protected] WEIL, GOTSHAL & MANGES LLP 767 Fifth Avenue New York, New York 10153 Telephone: (212) 310-8000
25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
6
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Facsimile: (212) 310-8007 Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
2 3 4 5
By:
6
/s/ Sven Raz
Sven Raz (Bar No. 222262) Email: [email protected] JARED BOBROW (Bar No. 133712) Email: [email protected] SVEN RAZ (Bar No. 222262) Email: [email protected] WEIL GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3034 Facsimile: (650) 802-3100
7 8 9 10 11 12
ELIZABETH S.WEISWASSER (pro hac vice) Email: [email protected] DAVID J. LENDER (pro hac vice) Email: [email protected] WEIL, GOTSHAL & MANGES LLP New York Office 767 Fifth Avenue New York, NY 10153 Telephone: (212) 310-8000
13 14 15 16 17
WILLIAM C. PRICE (Bar No. 108542) Email: [email protected] HAROLD A. BARZA (Bar No. 80888) Email: [email protected] JON R. STEIGER (Bar No. 229814) Email: [email protected] ROBERT J. BECHER (Bar No. 193431) Email: [email protected] QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 865 South Figueroa Street, 10th Floor Los Angeles, CA 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100 Attorneys for Defendants MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC.
18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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1 By: 2 3
/s/ Theodore G. Brown III
DANIEL J. FURNISS (Bar No. 73531) Email: [email protected] THEODORE G. BROWN III (Bar No. 114672) Email: [email protected] JORDAN TRENT JONES (Bar No. 166600) Email: [email protected] TOWNSEND and TOWNSEND and CREW LLP 379 Lytton Avenue Palo Alto, California 94301 Telephone: (650) 326-2400 Facsimile: (650) 326-2422
4 5 6 7 8 9
KENNETH L. NISSLY (Bar No. 77589) Email: [email protected] SUSAN van KEULEN (Bar No. 136060) Email: [email protected] GEOFFREY H. YOST (Bar No. 159687) Email: [email protected] THELEN REID BROWN RAYSMAN & STEINER LLP 225 West Santa Clara Street, Suite 1200 San Jose, California 95113 Telephone: (408) 292-5800 Facsimile: (408) 287-8040
10 11 12 13 14 15
KENNETH R. O’ROURKE (Bar No. 120144) Email: [email protected] WALLACE A. ALLAN (Bar No. 102054) Email: [email protected] O’MELVENY & MYERS LLP 400 South Hope Street, Suite 1060 Los Angeles, California 90071-2899 Telephone: (213) 430-6000 Facsimile: (213) 430-6407
16 17 18 19 20
Attorneys for Defendants HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., and HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.
21 22 23 24
By:
25 26
/s/ Vickie L. Feeman
ROBERT E. FREITAS (Bar No. 80948) Email: [email protected] CRAIG R. KAUFMAN (Bar No. 159458) Email: [email protected]
27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
8
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VICKIE L. FEEMAN (Bar No. 177487) Email: [email protected] ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: (650) 614-7400 Facsimile: (650) 614-7401 Attorneys for Defendants NANYA TECHNOLOGY CORPORATION, and NANYA TECHNOLOGY CORPORATION U.S.A.
2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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ATTESTATION CLAUSE REGARDING SIGNATURES I hereby attest that I have on file permission to sign for co-counsel indicated by a “conformed” signature (/S/) within this efiled document.
4 5 /s/ Steven Cherensky Steven Cherensky (Bar No. 168275) Email: [email protected]
6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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Attorney list on signature page
2 3 4 5 6 7 8 9
IN THE UNITED STATES DISTRICT COURT
10
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
11
RAMBUS, INC.,
12
Plaintiff,
13
v.
14
HYNIX SEMICONDUCTOR INC., et al.,
15
Defendants.
16 17
RAMBUS, INC.,
19
v.
20
SAMSUNG ELECTRONICS CO., LTD., et al.,
Trial Date: Time: Courtroom: Judge:
December 2, 2008 2:00 pm 6, 4th floor Hon. Ronald M. Whyte
Case No. C 05-02298 RMW
Defendants.
21
23
RAMBUS, INC., Plaintiff,
24
v.
25
MICRON TECHNOLOGY INC., et al., Defendants.
26
MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
Plaintiff,
18
22
Case No. C 05-00334 RMW
Case No. C 06-00244 RMW
27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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1
PLEASE TAKE NOTICE that on December 2, 2008, at 2:00 p.m., or as soon
2
thereafter as counsel can be heard, in the courtroom of the Honorable Ronald M. Whyte, 280
3
South First Street, San Jose, California, Defendants Micron Technology, Inc., Micron
4
Semiconductor Products, Inc., Hynix Seminconductor Inc., Hynix Semiconductor America Inc.,
5
Hynix Semiconductor Manufacturing America Inc., Hynix Semiconductor U.K. LTD, Hynix
6
Semiconductor Deutschland GmbH, Nanya Technology Corporation, Nanya Technology
7
Corporation USA, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
8
Semiconductor Inc., and Samsung Austin Semiconductor, L.P. (collectively “Manufacturers”)
9
hereby move the Court to preclude Mr. Robert J. Murphy (‘Murphy”) from offering certain
10
opinions and testimony pursuant to Federal Rules of Evidence 402, 403 and 702.
11
Specifically, the Manufacturers request that this Court issue an order precluding
12
Mr. Murphy from offering any opinions or testimony at trial regarding the infringement of the
13
asserted claims of the patents-in-suit under the doctrine of equivalents. This motion is based upon
14
the points and authorities discussed herein, the Omnibus Declaration of Sven Raz in Support of
15
the Manufacturers’ Summary Judgment and Daubert Motions (hereinafter, “Omnibus Decl.”) and
16
exhibits attached thereto, the Declaration of Dana K. Powers in Support of the Manufacturers’
17
Daubert Motion to Exclude Certain Testimony of Robert J. Murphy (Daubert No. 4) (hereinafter,
18
“Powers Decl.”) and exhibit attached thereto, and such other evidence and argument that may
19
properly come before the Court.
20
I.
INTRODUCTION
21
Under Daubert and Federal Rule of Evidence 702, Mr. Murphy should be
22
precluded from testifying or offering opinions suggesting that the Manufacturers have infringed
23
the asserted claims of the patents-in-suit under the doctrine of equivalents. Completely absent
24
from Mr. Murphy’s expert report on infringement, Omnibus Declaration of Sven Raz in Support
25
of the Manufacturers’ Summary Judgment and Daubert Motions (hereinafter, “Omnibus Decl.”)
26
Ex. 7 (Expert Report of Robert J. Murphy, dated September 5, 2008 [hereinafter, “Murphy
27
Report”]), is any discussion of how any limitation of any asserted claim is met equivalently under
28
any test (for example, interchangeability, insubstantial differences, or function-way-result) under MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
1
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the Court’s claim construction.
2
equivalence, and should be excluded as such.
Filed 10/24/2008
Page 3 of 11
Mr. Murphy’s opinions are nothing more than bald assertions of
3
In a futile attempt to provide the required specificity, Mr. Murphy states that his
4
conclusory opinions of infringement under the doctrine of equivalents are based on “previous
5
reports or declarations.” Critically, Mr. Murphy’s prior opinions are inadmissible under the
6
Federal Rules of Civil Procedure, the Federal Rules of Evidence, and Daubert, because they
7
evaluate equivalence under claim constructions that were proposed by the Manufacturers and
8
rejected by the Court. Mr. Murphy’s failure to offer any opinions on equivalence in this case
9
under the Court’s actual claim constructions demonstrates that he used an unreliable methodology
10
which deprives his conclusions of the basic foundation of trustworthiness that Daubert and Rule
11
702 require.
12
II.
LEGAL STANDARD
13
Pursuant to Federal Rule of Evidence 702, expert testimony is inadmissible unless:
14
“(1) the testimony is based on sufficient facts or data, (2) the testimony is the product of reliable
15
principles and methods, and (3) the witness has applied the principles and methods reliably to the
16
facts of the case.” In Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), the
17
Supreme Court provided the analytical framework for determining the admissibility of expert
18
testimony under Rule 702.
19
determine if expert testimony is admissible based on “whether the reasoning or methodology
20
underlying the testimony is scientifically valid and . . . whether that reasoning or methodology
21
properly can be applied to the facts in issue.” Daubert, 509 U.S. at 592-93. The trial courts are
22
tasked with “ensuring that an expert’s testimony both rests on a reliable foundation and is relevant
23
to the task at hand.” Id. at 597.
24
requires a district court to admit opinion evidence that is connected to existing data only by the
25
ipse dixit of the expert.” Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997).
Under Daubert, the trial courts must act as “gatekeepers” to
“Nothing in either Daubert or the Federal Rules of Evidence
26
The law is clear that an infringement analysis under the doctrine of equivalents
27
requires the production of particularized testimony and linking argument - not mere conclusions
28
based upon vague generalizations. See, e.g., Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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1314, 1322-23 (Fed. Cir. 2003) (affirming district court's grant of JMOL of non-infringement
2
under the doctrine of equivalents where expert merely offered conclusory opinions that the
3
accused device performed the same function, in the same way, to achieve the same result);
4
Mahurkar v. C.R. Bard, Inc., 2004 U.S. Dist. LEXIS 18466, *84-85 (N.D. Ill. Sept. 7, 2004)
5
(granting motion to bar expert testimony on doctrine of equivalents because expert report was
6
“devoid of any analysis under the doctrine of equivalents”). In addition, a plaintiff asserting
7
infringement under the doctrine of equivalents must provide evidence demonstrating why the
8
functions, ways, and results in the accused device and the claimed invention are substantially the
9
same. Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991) (emphasis
10
in original).
11
III.
12
ARGUMENT Federal Rule of Evidence 702 requires the trial court assess the reliability of the
13
proffered testimony in its role as “gatekeeper”.
14
1063 (9th Cir . 2002) (“The trial court must act as a ‘gatekeeper’ to exclude ‘junk science’ that
15
does not meet Rule 702’ s reliability standards by making a preliminary determination that the
16
expert's testimony is reliable.”).
17
of the expert’s reasoning and “whether that reasoning or methodology properly can be applied to
18
the facts in issue .” Daubert, 509 U.S. at 592-93.
Mukhtar v. Cal. State Univ., 299 F.3d 1053,
Fulfilling this “gatekeeping” obligation requires an assessment
19
In order show infringement under the doctrine of equivalents, Mr. Murphy must
20
provide particularized testimony linking the claimed invention to the Accused Products. See e.g.,
21
Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996)
22
(holding that to establish infringement under the doctrine of equivalents, a patentee must provide
23
particularized testimony and linking argument as to the “insubstantiality of the differences”
24
between the claimed invention and the accused product). The Federal Circuit requires this level
25
of proof in order to “assure that the fact-finder does not, ‘under the guise of applying the doctrine
26
of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on
27
which the public is entitled to rely in avoiding infringement.’” Id. at 1567, citing, Pennwalt Corp.
28
v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc). MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
3
If the particularized
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testimony and specific arguments explaining the testimony are not provided, the jury is “put to
2
sea without guiding charts when called upon to determine infringement under the doctrine of
3
equivalents.” Id.
4
Mr. Murphy had ample opportunity to include the requisite analysis required for an
5
assertion of infringement under the doctrine of equivalents – yet his report entirely omits any such
6
analysis except for a conclusory footnote.
7
explanation to support an opinion under the Court’s construction that the Accused Products
8
infringe the asserted claims of the patents-in-suit under the doctrine of equivalents. Rather, Mr.
9
Murphy makes one perfunctory, conclusory reference to infringement under the doctrine of
10
equivalents and waves his hands generally at other declarations as support “per the same
11
analysis.” This one reference to a doctrine of equivalents opinion is found in a footnote on page
12
90 of his report, and states in relevant part:
13 14 15 16 17 18 19
The Murphy Report does not set forth any analysis or
In my opinion, the claim limitations are met, and even pretending for a moment that certain limitations were not met, I already have provided my opinion as to the function, way, and result of certain limitations in previous reports or declarations such as my declaration in support of Rambus’s opposition to the Manufacturer’ motion for summary judgment of non-infringement, which I understand is Docket No. 657. Certain of these limitations are carried over into Accused Products. I incorporate in this report those opinions as to those limitations and my opinion is that the accused products have elements that perform substantially the same function in substantially the same way to achieve substantially the same result, per the same analysis. Omnibus Decl. Ex. 7 (Murphy Report) at 90 n.70.
20 As can be readily ascertained, Mr. Murphy’s unsubstantiated assertions regarding 21 equivalence are devoid of the limitation-by-limitation analysis required for a doctrine of 22 equivalents opinion. See, Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 23 1567-1568 (Fed. Cir. 1996) (expert testimony that was “merely generalized testimony as to 24 overall similarity” and that did not explain why the accused products were similar to the missing 25 claim limitations or otherwise explain why the function and result were the same was inadequate 26 to establish infringement under the doctrine of equivalents). 27 Moreover, Mr. Murphy’s attempt to provide the required specificity for his 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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conclusory opinions through “previous reports or declarations” is fatally flawed.
2
declaration in which he claims he has “already provided [his] opinion as to the function, way, and
3
result of certain limitations” is completely deficient since it is specifically based on the
4
Manufacturers’ claim constructions – which were not adopted by the Court. Omnibus Decl. Ex. 7
5
(Murphy Report) at 90; See Powers Decl., Ex. A [Murphy 11/2/07 Declaration In Opposition to
6
Manufacturers’ Motion for Summary Judgment] at 139 (“In my opinion the accused devices
7
would infringe the claims of the Farmwald/Horowitz patents, even under Manufacturers’
8
proposed construction of ‘device’ under the doctrine of equivalents.”); id. at 146 (“In my opinion,
9
even should the accused devices not be found to infringe literally under Manufacturers’
10
construction of the so-called transaction terms, they would infringe under the doctrine of
11
equivalents.”); id. at 152 (“In my opinion, the accused devices would infringe the claims of
12
Rambus’s patents, even under Manufacturers’ proposed construction of the clocking terms under
13
the doctrine of equivalents.”).
14
relevant to show how any of the limitations of the disputed claims are met under the doctrine of
15
equivalents, and are thus not a proper basis for Murphy’s equivalency opinions. See, e.g., Frank's
16
Casing Crew v. PMR Techs., LTD., 292 F.3d 1363, 1375 (Fed. Cir. 2002) (rejecting an expert’s
17
conclusion that a claim limitation was not satisfied because it was based on an incorrect claim
18
construction); E-Pass Techs., Inc. v. 3COM Corp., 343 F.3d 1364, 1371 (Fed. Cir. 2003)
19
(vacating and remanding case to district court because analysis of noninfringement under the
20
doctrine of equivalents was based on an incorrect claim construction); Dawn Equip. Co. v.
21
Kentucky Farms, 140 F.3d 1009, 1014 (Fed. Cir. 1998) (stating that when determining
22
infringement, whether literally or under the doctrine of equivalents, the “construction of each
23
claim limitation is crucial”).
The
Arguments based on claim constructions not at issue are not
24
Having failed to provide any analysis under the Court’s actual claim constructions,
25
it is clear that Mr. Murphy should not be permitted to testify about the doctrine of equivalents at
26
trial. See Atmel Corp. v. Information Storage Devices, Inc., 189 F.R.D. 410, 416 (N.D. Cal. 1999)
27
(excluding expert testimony because methodology for conclusory statement was insufficient and
28
unreliable). A district court, in performing its gatekeeper role under Federal Rule of Evidence MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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702, must “determine that [the experts] arrived at their conclusions using scientific methods and
2
procedures, and that those conclusions were not mere subjective beliefs or unsupported
3
speculation.” Claar v. Burlington Northern Railroad Co., 29 F.3d 499, 502 (9th Cir. 1994).
4
his expert report, Mr. Murphy fails to provide any support whatsoever for his blanket statement
5
that the Manufactuers’ accused products infringe under the doctrine of equivalents. The “previous
6
reports or declarations” on which he attempts to base his opinions are legally irrelevant since they
7
evaluate equivalence under claim constructions not at issue. Accordingly, this Court should
8
exclude Murphy’s conclusory opinions regarding the doctrine of equivalents as unreliable
9
speculation under Rule 702 and Daubert.
10
IV.
In
CONCLUSION
11
Because Mr. Murphy did not provide any reliable basis for infringement under the
12
doctrine of equivalents under the proper claim constructions in either his expert report, his
13
deposition, or in other declarations, under Federal Rule of Evidence 702 and Daubert, he should
14
be precluded from presenting testimony or opinions at trial regarding the infringement of the
15
asserted claims of the patents-in-suit under the doctrine of equivalents.
16 17
Dated: October 24, 2008
18
By:
/s/ Matthew D. Powers MATTHEW D. POWERS (Bar No. 104795) [email protected] STEVEN S. CHERENSKY (Bar No. 168275) [email protected] WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, California 94065 Telephone: (650) 802-3034 Facsimile: (650) 802-3100
19 20 21 22 23 24
ROBERT S. BEREZIN (pro hac vice) [email protected] MATTHEW J. ANTONELLI (pro hac vice) [email protected] WEIL, GOTSHAL & MANGES LLP 767 Fifth Avenue New York, New York 10153 Telephone: (212) 310-8000
25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
6
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Facsimile: (212) 310-8007 Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
2 3 4 5
By:
6
/s/ Sven Raz
Sven Raz (Bar No. 222262) Email: [email protected] JARED BOBROW (Bar No. 133712) Email: [email protected] SVEN RAZ (Bar No. 222262) Email: [email protected] WEIL GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3034 Facsimile: (650) 802-3100
7 8 9 10 11 12
ELIZABETH S.WEISWASSER (pro hac vice) Email: [email protected] DAVID J. LENDER (pro hac vice) Email: [email protected] WEIL, GOTSHAL & MANGES LLP New York Office 767 Fifth Avenue New York, NY 10153 Telephone: (212) 310-8000
13 14 15 16 17
WILLIAM C. PRICE (Bar No. 108542) Email: [email protected] HAROLD A. BARZA (Bar No. 80888) Email: [email protected] JON R. STEIGER (Bar No. 229814) Email: [email protected] ROBERT J. BECHER (Bar No. 193431) Email: [email protected] QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP 865 South Figueroa Street, 10th Floor Los Angeles, CA 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100 Attorneys for Defendants MICRON TECHNOLOGY, INC. and MICRON SEMICONDUCTOR PRODUCTS, INC.
18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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1 By: 2 3
/s/ Theodore G. Brown III
DANIEL J. FURNISS (Bar No. 73531) Email: [email protected] THEODORE G. BROWN III (Bar No. 114672) Email: [email protected] JORDAN TRENT JONES (Bar No. 166600) Email: [email protected] TOWNSEND and TOWNSEND and CREW LLP 379 Lytton Avenue Palo Alto, California 94301 Telephone: (650) 326-2400 Facsimile: (650) 326-2422
4 5 6 7 8 9
KENNETH L. NISSLY (Bar No. 77589) Email: [email protected] SUSAN van KEULEN (Bar No. 136060) Email: [email protected] GEOFFREY H. YOST (Bar No. 159687) Email: [email protected] THELEN REID BROWN RAYSMAN & STEINER LLP 225 West Santa Clara Street, Suite 1200 San Jose, California 95113 Telephone: (408) 292-5800 Facsimile: (408) 287-8040
10 11 12 13 14 15
KENNETH R. O’ROURKE (Bar No. 120144) Email: [email protected] WALLACE A. ALLAN (Bar No. 102054) Email: [email protected] O’MELVENY & MYERS LLP 400 South Hope Street, Suite 1060 Los Angeles, California 90071-2899 Telephone: (213) 430-6000 Facsimile: (213) 430-6407
16 17 18 19 20
Attorneys for Defendants HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., and HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.
21 22 23 24
By:
25 26
/s/ Vickie L. Feeman
ROBERT E. FREITAS (Bar No. 80948) Email: [email protected] CRAIG R. KAUFMAN (Bar No. 159458) Email: [email protected]
27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
8
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VICKIE L. FEEMAN (Bar No. 177487) Email: [email protected] ORRICK, HERRINGTON & SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: (650) 614-7400 Facsimile: (650) 614-7401 Attorneys for Defendants NANYA TECHNOLOGY CORPORATION, and NANYA TECHNOLOGY CORPORATION U.S.A.
2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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ATTESTATION CLAUSE REGARDING SIGNATURES I hereby attest that I have on file permission to sign for co-counsel indicated by a “conformed” signature (/S/) within this efiled document.
4 5 /s/ Steven Cherensky Steven Cherensky (Bar No. 168275) Email: [email protected]
6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MANUFACTURERS’ DAUBERT MOTION TO EXCLUDE CERTAIN TESTIMONY OF ROBERT J. MURPHY (DAUBERT NO. 4)
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