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Case 5:05-cv-00334-RMW
1 2 3 4 5 6 7
Document 2535
Gregory P. Stone (SBN 078329) Andrea Weiss Jeffries (SBN 183408) Fred A. Rowley, Jr. (SBN 192298) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Email: [email protected] Email: [email protected] Email: [email protected]
12
Peter A. Detre (SBN 182619) Rosemarie T. Ring (SBN 220769) Jennifer L. Polse (SBN 219202) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Email: [email protected] Email: [email protected] Email: [email protected]
13
Attorneys for RAMBUS INC.
8 9 10 11
Filed 11/14/2008
Page 1 of 8
Rollin A. Ransom (SBN 196126) SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, CA 90013-1010 Telephone: (213) 896-6000 Facsimile: (213) 896-6600 Email: [email protected] Pierre J. Hubert (Pro Hac Vice) Craig N. Tolliver (Pro Hac Vice) McKOOL SMITH PC 300 West 6th Street, Suite 1700 Austin, TX 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: [email protected] Email: [email protected]
14
UNITED STATES DISTRICT COURT
15
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16 RAMBUS INC.,
CASE NO.: C 05-00334 RMW
17 Plaintiff, 18 vs. 19 HYNIX SEMICONDUCTOR INC., et al., 20
OPPOSITION TO MANUFACTURERS’ DAUBERT MOTION NO. 2 (TO PRECLUDE TESTIMONY OF ROBERT MURPHY REGARDING PTO PROCEDURE AND PATENT FILE HISTORIES)
Defendants. 21 Date: December 11, 2008 Courtroom: 6 Judge: Hon. Ronald M. Whyte
22 23 RAMBUS INC.,
CASE NO.: C 05-02298 RMW
24 Plaintiff, 25 vs. 26 27
SAMSUNG ELECTRONICS CO., LTD., et al.,
28
Defendants. 6331659.1
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
Document 2535
Filed 11/14/2008
Page 2 of 8
1 RAMBUS INC.,
CASE NO.: C 06-00244 RMW
2 Plaintiff, 3 vs. 4 MICRON TECHNOLOGY INC., et al., 5 Defendants. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6331659.1
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
1
I.
Document 2535
Filed 11/14/2008
Page 3 of 8
INTRODUCTION In opining on validity, Rambus’s expert Mr. Murphy reviewed and relied on not only the
2 3
claims and written descriptions of the asserted patents, but also their prosecution histories. The
4
Manufacturers’ motion to preclude Mr. Murphy from testifying regarding matters gleaned from
5
his review of the file histories of the patents-in-suit and their ancestor applications rests on the
6
theory that only a so-called expert in patent law or PTO procedure is qualified to review and
7
opine on the file histories or what the Manufacturers describe as “PTO procedures.” The file
8
histories form part of the public record to which a person of ordinary skill would look in
9
understanding the patented invention. As an expert in electrical engineering, Mr. Murphy
10
therefore is well qualified to review and opine on the contents of the file histories and the events
11
during the prosecution reflected in them, and the Manufacturers’ argument to the contrary is
12
belied by their own technical experts’ reliance on the prosecution histories. The Manufacturers’
13
motion should be denied.
14
II.
TECHNICAL EXPERTS ARE QUALIFIED TO REVIEW FILE HISTORIES
15
The Manufacturers’ motion must fail because its central premise, that only an expert
16
“qualified . . . in patent office procedure,” patent law, or patent prosecution can testify to the
17
content of file histories or implications that may be drawn from them, Br. at 3, is simply incorrect.
18
The Manufacturers offer no support for this position, which is contrary to well-established
19
principles of patent law. The file histories form an integral part of the public record of an issued
20
patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (file “history
21
contains the complete record of all the proceedings before the Patent and Trademark Office,
22
including any express representations made by the applicant regarding the scope of the claims”).
23
As such, they are part of the background information that the public, and persons of ordinary skill
24
in the art, may consult to understand the teachings of the patent and what it claims. Id.; see also
25
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (noting that “the
26
prosecution history can often inform the meaning of the claim language by demonstrating how
27
the inventor understood the invention and whether the inventor limited the invention in the course
28
of prosecution, making the claim scope narrower than it would otherwise be”). Indeed, the file 6331659.1
-1-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
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Page 4 of 8
1
history is so important a part of this inquiry that when determining the meaning the claims would
2
carry to a person of ordinary skill, courts presume such a person of ordinary skill would review
3
the file history to make such a judgment. Computer Docking Station, Corp. v. Dell, Inc., 519
4
F.3d 1366, 1373-74 (Fed. Cir. 2008) (noting that “the person of ordinary skill is deemed to read
5
the claim terms in the context of the entire patent, including the specification and prosecution
6
history”). As an expert in electrical engineering, Mr. Murphy is more than qualified to review
7
and opine upon the file histories of the patents-in-suit, all of which relate to inventions falling
8
within his area of technical expertise.
9
The Manufacturers themselves have recognized that technical experts appropriately can
10
rely and opine on file histories. Like Mr. Murphy, their technical experts have reviewed and
11
relied upon the prosecution histories of the patents in suit. Declaration of Jennifer Polse in
12
Support of Rambus’s Opposition to Manufacturers Daubert Motion No. 2 (hereinafter, “Polse
13
Decl.”), Exh. A (Exhibit 4 to the Expert Report of William K. Hoffman Regarding
14
Noninfringement); Exh. B (Appendix B to the Expert Report of Michael Runas Regarding Non-
15
Infringement of U.S. Patent Numbers 6,182,184; 6,266,285; 6,314,051; 6,324,120; 6,378,020;
16
6,426,916; 6,452,863; 6,546,446; 6,584,037; 7,751,696); Exh. C (Exhibit B to the Expert Report
17
of David Taylor Regarding Claim Construction, submitted on November 1, 2001 in Case No. 00-
18
CV-20905); Exh. D, (Attachment N to the Corrected Expert Report of Joseph McAlexander
19
Regarding Invalidity of U.S. Patent Numbers 6,038,195; 6,182, 184; 6,266,285; 6,314,120; 6,378,
20
020; 6,426,916; 6,452,863; 6,546,446; 6,584,037; 6,697,285; 6,715,020; 7,751,696; 6,493,789;
21
6,496,897). Consistent with the well-established practice of technical experts reviewing and
22
opining on the prosecution history, Mr. McAlexander previously has offered extensive testimony
23
on the prosecution histories of the patents in suit, Confidential Declaration of Jennifer Polse in
24
Support of Rambus’s Opposition to Manufacturers’ Daubert Motions Nos. 1 & 2 (hereinafter
25
Confidential Polse Decl.), Exh. 1, Rebuttal Report of Joseph McAlexander Regarding
26
Noninfringement of Rambus Patents, January 19, 2001, Rambus, Inc. v. Infineon, Case No.
27
00CV524 (E.D. VA) at 11-21, and lists the file histories as material he considered in reaching the
28
opinions to which the challenged portions of Mr. Murphy’s report respond, see Polse Decl., Exh. 6331659.1
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RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
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1
D. The Manufacturers’ present attempt to apply a different rule to Mr. Murphy than that followed
2
by their own experts should be rejected.
3
III.
4
MR. MURPHY IS QUALIFIED TO OPINE ON THE FACTS AND INFERENCES THAT CAN BE DRAWN FROM THE FILE HISTORIES OF THE PATENTS-INSUIT
5
As noted above, as an expert in electrical engineering, Mr. Murphy is qualified to review
6
and analyze the public record of the patents-in-suit, which concern technology within his field of
7
expertise. Furthermore, his testimony regarding the file histories falls squarely within the scope
8
of his expertise. He does not opine on the minutia of patent prosecution or PTO practice. Rather,
9
the majority of the testimony to which the Manufacturers object consists of Mr. Murphy’s
10
opinions regarding facts that a person of ordinary skill would appreciate based on his or her
11
review of the patents and file histories. These include the filing, issuance, and priority dates of
12
the asserted patents,1 see Expert Report of Robert J. Murphy Regarding Patent Validity,2
13
(hereinafter “Murphy Report”) ¶¶ 90-99, the identity of prior art disclosed to the patent office
14
during prosecution, id. ¶¶ 103-104, 106, 109-111, 114-116, 118-122, 126-130, 132, 134-136, 138-
15
139, 141-148, and 150-151, examples of office actions in which the examiner required the
16
applicants to identify support in the written description for particular limitations, id. ¶¶ 209-219, a
17
statement in an office action demonstrating an understanding of a claimed “bus” that does not
18
require multiplexing, id. ¶¶ 227-228, and information gleaned from Mr. Murphy’s search and
19
review of the numerous patents Rambus has sought and obtained that claim priority to the ’898
20
application as well as basic background information concerning the filing and prosecution history
21
of the original ’898 application, id. ¶ 41.3
22
1
23 24 25 26 27 28
The Manufacturers object to Mr. Murphy’s statement that each patent issued “after a period of evaluation.” Br. at 4. The Manufacturers do not explain why recognizing that the patent office evaluated the patents prior to issuance requires any expertise in patent law or procedure. That the PTO evaluated the patents prior to issuance is readily apparent to any person of ordinary skill upon review of the file histories, which contain correspondence to and from the PTO reflecting an evaluation of the patents.
2
A copy of the Murphy Report was attached as Exhibit 1 to the Omnibus Declaration of Sven Raz in Support of the Manufacturers’ Summary Judgment And Daubert Motions, filed by the Manufacturers on October 24, 2008. 3 The Manufacturers also seek to preclude Mr. Murphy from testifying regarding paragraph 281 of his report, notwithstanding the fact that that paragraph primarily sets forth Mr. Murphy’s technical opinion regarding support in the written description for the DLL. Br. at 7. Such 6331659.1
-3-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
1
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Filed 11/14/2008
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The Manufacturers’ objection to Mr. Murphy’s discussion of whether particular references
2
were cited to the examiner is particularly inappropriate in light of their own expert’s explicit
3
statement that, in rendering his opinions on invalidity, he considered the file histories “inclusive
4
of cited references.” Polse Decl., Exh. D. Furthermore, the references cited to the examiner form
5
part of the public record that a person of ordinary skill uses to understand the patented invention.
6
Phillips, 415 F.3d at 1317 (“The prosecution history, which we have designated as part of the
7
‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and
8
includes the prior art cited during the examination of the patent.”); Vitronics, 90 F.3d at 1583
9
(holding that “within an analysis of the file history may be an examination of the prior art cited
10
therein”), citing Autogiro Co. of Am. v. United States, 384 F.2d 391, 399 (1967) (“In its broader
11
use as source material, the prior art cited in the file wrapper gives clues as to what the claims do
12
not cover.”). The identity and disclosure of such references therefore is an appropriate subject for
13
testimony for a technical expert.
14
Nor is it true, as the Manufacturers claim, Br. at 5, that Mr. Murphy adds no technical
15
analysis in the portions of his report that they seek to exclude. To the contrary, the paragraphs
16
describing the testimony the Manufacturers seek to exclude, together with the referenced
17
attachments4 and exhibits, set forth Mr. Murphy’s technical opinions regarding various invalidity
18
theories raised in Mr. McAlexander’s report. See, e.g., Murphy Report ¶ 110 (“[a]s I explain in
19
my Attachment A (in response to McAlexander Attachment A), I disagree that SCI in
20
combination with any other reference identified by Mr. McAlexander, renders obvious claim 33
21
of the ’120, claim 3 or 4 of the ’446, or claim 34 of the ’037 patent,” and noting that “[r]egardless
22
of whether SCI was considered by the patent office, it is my opinion that this reference does not
23
render obvious” the claims); id. ¶ 281 (explaining where support exists in the specification for the
24 25 26 27 28
testimony from a technical expert is entirely proper. To the extent the Manufacturers seek only to preclude Mr. Murphy from implying “that the PTO has rendered an additional opinion on the patents’ validity” by stating that he “agrees with the PTO” that the written description is met, Br. at 7 n. 4, Rambus does not intend to elicit that statement from Mr. Murphy. 4
Attachments A-G to Mr. Murphy’s report, which set forth in detail his analysis of the various prior art references cited by Mr. McAlexander, are attached to the Confidential Polse Declaration as Exhibit 2. 6331659.1
-4-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
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Page 7 of 8
1
DLL limitation); id. ¶ 227 (explaining the technical differences between two groups of claims).
2
Viewed in context, Mr. Murphy’s discussion of the file histories simply form one part of his
3
overall analysis of the prior art and other invalidity issues raised in Mr. McAlexander’s report.
4
In short, Mr. Murphy’s testimony reflected in paragraphs 41, 90-99, 103-104, 106, 109-
5
111, 114-116, 118-122, 126-130, 132, 134-136, 138-139, 141-148, 150-151, 209-219, 227-228
6
and 281 is appropriate based on his technical expertise and his review of the file histories, the
7
patents-in-suit, and the other materials on which he relied. The Manufacturers’ motion to exclude
8
his testimony on the prosecution-history related matters described in those paragraphs of his
9
report should be denied. 5
10
IV.
11 12
MR. MURPHY’S TESTIMONY REGARDING LEGAL STANDARDS RESPONDS TO MR. MCALEXANDER’S TESTIMONY ON LEGAL STANDARDS The remainder of the testimony that the Manufacturers seek to exclude concerns Mr.
13
Murphy’s understanding of the legal principles bearing on the areas on which he opines. See
14
Murphy Report ¶¶ 88-89, 101-102, & 203-208. These and other explanations of the applicable
15
law contained in Mr. Murphy’s report resemble those contained in the expert report to which Mr.
16
Murphy’s validity report responds. See Corrected Expert Report of Joseph McAlexander
17
Regarding Invalidity, ¶¶ 23-43.6 Rambus agrees that expert witnesses should not testify at trial
18
regarding their understanding of the law, and seeks in its Daubert Motion No. 1, filed on October
19
24, 2008, to preclude Mr. McAlexander from testifying regarding the various legal opinions set
20
forth in his report. See also Rambus’s Daubert and Motion in Limine No. 2 to Exclude Certain
21
Testimony of Peter Heuser, Case No. 05-cv-00334, Docket No. 2432. Should the Court deny
22
Rambus’s Daubert Motion No. 1 and permit Mr. McAlexander to testify regarding his legal
23 5
24 25 26 27 28
It is unclear whether, by this motion, the Manufacturers seek to exclude Mr. Murphy from testifying as to all of the material contained in the paragraphs they deem objectionable as referencing the prosecution or file histories. Br. at 8. Even if exclusion of testimony relating to the prosecution history were appropriate, which it is not, the Manufacturers provide no ground for excluding Mr. Murphy’s testimony on the other matters raised in the objected-to paragraphs of his report. 6
A copy of the pertinent portions of Mr. McAlexander’s report is attached as Exhibit A to the Declaration of Peter Detre filed on October 24, 2008 in support of Rambus’s Daubert Motion No. 1. 6331659.1
-5-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
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1
opinions, Mr. Murphy should be allowed to respond in kind, including by setting forth his
2
understanding of legal principles that informed his analysis.
3
V.
CONCLUSION
4 5
For the reasons explained above, the Manufacturers’ Daubert Motion No. 2 should be denied.
6 7
DATED: November 14, 2008
MUNGER, TOLLES & OLSON LLP
8
SIDLEY AUSTIN LLP
9
McKOOL SMITH PC
10 11 By:
12 13
/s/ Jennifer Polse Jennifer Polse
Attorneys for Plaintiff RAMBUS INC.
14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6331659.1
-6-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
1 2 3 4 5 6 7
Document 2535
Gregory P. Stone (SBN 078329) Andrea Weiss Jeffries (SBN 183408) Fred A. Rowley, Jr. (SBN 192298) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Email: [email protected] Email: [email protected] Email: [email protected]
12
Peter A. Detre (SBN 182619) Rosemarie T. Ring (SBN 220769) Jennifer L. Polse (SBN 219202) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077 Email: [email protected] Email: [email protected] Email: [email protected]
13
Attorneys for RAMBUS INC.
8 9 10 11
Filed 11/14/2008
Page 1 of 8
Rollin A. Ransom (SBN 196126) SIDLEY AUSTIN LLP 555 West Fifth Street, Suite 4000 Los Angeles, CA 90013-1010 Telephone: (213) 896-6000 Facsimile: (213) 896-6600 Email: [email protected] Pierre J. Hubert (Pro Hac Vice) Craig N. Tolliver (Pro Hac Vice) McKOOL SMITH PC 300 West 6th Street, Suite 1700 Austin, TX 78701 Telephone: (512) 692-8700 Facsimile: (512) 692-8744 Email: [email protected] Email: [email protected]
14
UNITED STATES DISTRICT COURT
15
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
16 RAMBUS INC.,
CASE NO.: C 05-00334 RMW
17 Plaintiff, 18 vs. 19 HYNIX SEMICONDUCTOR INC., et al., 20
OPPOSITION TO MANUFACTURERS’ DAUBERT MOTION NO. 2 (TO PRECLUDE TESTIMONY OF ROBERT MURPHY REGARDING PTO PROCEDURE AND PATENT FILE HISTORIES)
Defendants. 21 Date: December 11, 2008 Courtroom: 6 Judge: Hon. Ronald M. Whyte
22 23 RAMBUS INC.,
CASE NO.: C 05-02298 RMW
24 Plaintiff, 25 vs. 26 27
SAMSUNG ELECTRONICS CO., LTD., et al.,
28
Defendants. 6331659.1
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
Document 2535
Filed 11/14/2008
Page 2 of 8
1 RAMBUS INC.,
CASE NO.: C 06-00244 RMW
2 Plaintiff, 3 vs. 4 MICRON TECHNOLOGY INC., et al., 5 Defendants. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6331659.1
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
Case 5:05-cv-00334-RMW
1
I.
Document 2535
Filed 11/14/2008
Page 3 of 8
INTRODUCTION In opining on validity, Rambus’s expert Mr. Murphy reviewed and relied on not only the
2 3
claims and written descriptions of the asserted patents, but also their prosecution histories. The
4
Manufacturers’ motion to preclude Mr. Murphy from testifying regarding matters gleaned from
5
his review of the file histories of the patents-in-suit and their ancestor applications rests on the
6
theory that only a so-called expert in patent law or PTO procedure is qualified to review and
7
opine on the file histories or what the Manufacturers describe as “PTO procedures.” The file
8
histories form part of the public record to which a person of ordinary skill would look in
9
understanding the patented invention. As an expert in electrical engineering, Mr. Murphy
10
therefore is well qualified to review and opine on the contents of the file histories and the events
11
during the prosecution reflected in them, and the Manufacturers’ argument to the contrary is
12
belied by their own technical experts’ reliance on the prosecution histories. The Manufacturers’
13
motion should be denied.
14
II.
TECHNICAL EXPERTS ARE QUALIFIED TO REVIEW FILE HISTORIES
15
The Manufacturers’ motion must fail because its central premise, that only an expert
16
“qualified . . . in patent office procedure,” patent law, or patent prosecution can testify to the
17
content of file histories or implications that may be drawn from them, Br. at 3, is simply incorrect.
18
The Manufacturers offer no support for this position, which is contrary to well-established
19
principles of patent law. The file histories form an integral part of the public record of an issued
20
patent. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (file “history
21
contains the complete record of all the proceedings before the Patent and Trademark Office,
22
including any express representations made by the applicant regarding the scope of the claims”).
23
As such, they are part of the background information that the public, and persons of ordinary skill
24
in the art, may consult to understand the teachings of the patent and what it claims. Id.; see also
25
Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (noting that “the
26
prosecution history can often inform the meaning of the claim language by demonstrating how
27
the inventor understood the invention and whether the inventor limited the invention in the course
28
of prosecution, making the claim scope narrower than it would otherwise be”). Indeed, the file 6331659.1
-1-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
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Document 2535
Filed 11/14/2008
Page 4 of 8
1
history is so important a part of this inquiry that when determining the meaning the claims would
2
carry to a person of ordinary skill, courts presume such a person of ordinary skill would review
3
the file history to make such a judgment. Computer Docking Station, Corp. v. Dell, Inc., 519
4
F.3d 1366, 1373-74 (Fed. Cir. 2008) (noting that “the person of ordinary skill is deemed to read
5
the claim terms in the context of the entire patent, including the specification and prosecution
6
history”). As an expert in electrical engineering, Mr. Murphy is more than qualified to review
7
and opine upon the file histories of the patents-in-suit, all of which relate to inventions falling
8
within his area of technical expertise.
9
The Manufacturers themselves have recognized that technical experts appropriately can
10
rely and opine on file histories. Like Mr. Murphy, their technical experts have reviewed and
11
relied upon the prosecution histories of the patents in suit. Declaration of Jennifer Polse in
12
Support of Rambus’s Opposition to Manufacturers Daubert Motion No. 2 (hereinafter, “Polse
13
Decl.”), Exh. A (Exhibit 4 to the Expert Report of William K. Hoffman Regarding
14
Noninfringement); Exh. B (Appendix B to the Expert Report of Michael Runas Regarding Non-
15
Infringement of U.S. Patent Numbers 6,182,184; 6,266,285; 6,314,051; 6,324,120; 6,378,020;
16
6,426,916; 6,452,863; 6,546,446; 6,584,037; 7,751,696); Exh. C (Exhibit B to the Expert Report
17
of David Taylor Regarding Claim Construction, submitted on November 1, 2001 in Case No. 00-
18
CV-20905); Exh. D, (Attachment N to the Corrected Expert Report of Joseph McAlexander
19
Regarding Invalidity of U.S. Patent Numbers 6,038,195; 6,182, 184; 6,266,285; 6,314,120; 6,378,
20
020; 6,426,916; 6,452,863; 6,546,446; 6,584,037; 6,697,285; 6,715,020; 7,751,696; 6,493,789;
21
6,496,897). Consistent with the well-established practice of technical experts reviewing and
22
opining on the prosecution history, Mr. McAlexander previously has offered extensive testimony
23
on the prosecution histories of the patents in suit, Confidential Declaration of Jennifer Polse in
24
Support of Rambus’s Opposition to Manufacturers’ Daubert Motions Nos. 1 & 2 (hereinafter
25
Confidential Polse Decl.), Exh. 1, Rebuttal Report of Joseph McAlexander Regarding
26
Noninfringement of Rambus Patents, January 19, 2001, Rambus, Inc. v. Infineon, Case No.
27
00CV524 (E.D. VA) at 11-21, and lists the file histories as material he considered in reaching the
28
opinions to which the challenged portions of Mr. Murphy’s report respond, see Polse Decl., Exh. 6331659.1
-2-
RAMBUS’S OPPOSITION TO MFR’S DAUBERT NO. 2; CASE NOS. 05-334 RMW; 05-2298 RMW; 06-244 RMW
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1
D. The Manufacturers’ present attempt to apply a different rule to Mr. Murphy than that followed
2
by their own experts should be rejected.
3
III.
4
MR. MURPHY IS QUALIFIED TO OPINE ON THE FACTS AND INFERENCES THAT CAN BE DRAWN FROM THE FILE HISTORIES OF THE PATENTS-INSUIT
5
As noted above, as an expert in electrical engineering, Mr. Murphy is qualified to review
6
and analyze the public record of the patents-in-suit, which concern technology within his field of
7
expertise. Furthermore, his testimony regarding the file histories falls squarely within the scope
8
of his expertise. He does not opine on the minutia of patent prosecution or PTO practice. Rather,
9
the majority of the testimony to which the Manufacturers object consists of Mr. Murphy’s
10
opinions regarding facts that a person of ordinary skill would appreciate based on his or her
11
review of the patents and file histories. These include the filing, issuance, and priority dates of
12
the asserted patents,1 see Expert Report of Robert J. Murphy Regarding Patent Validity,2
13
(hereinafter “Murphy Report”) ¶¶ 90-99, the identity of prior art disclosed to the patent office
14
during prosecution, id. ¶¶ 103-104, 106, 109-111, 114-116, 118-122, 126-130, 132, 134-136, 138-
15
139, 141-148, and 150-151, examples of office actions in which the examiner required the
16
applicants to identify support in the written description for particular limitations, id. ¶¶ 209-219, a
17
statement in an office action demonstrating an understanding of a claimed “bus” that does not
18
require multiplexing, id. ¶¶ 227-228, and information gleaned from Mr. Murphy’s search and
19
review of the numerous patents Rambus has sought and obtained that claim priority to the ’898
20
application as well as basic background information concerning the filing and prosecution history
21
of the original ’898 application, id. ¶ 41.3
22
1
23 24 25 26 27 28
The Manufacturers object to Mr. Murphy’s statement that each patent issued “after a period of evaluation.” Br. at 4. The Manufacturers do not explain why recognizing that the patent office evaluated the patents prior to issuance requires any expertise in patent law or procedure. That the PTO evaluated the patents prior to issuance is readily apparent to any person of ordinary skill upon review of the file histories, which contain correspondence to and from the PTO reflecting an evaluation of the patents.
2
A copy of the Murphy Report was attached as Exhibit 1 to the Omnibus Declaration of Sven Raz in Support of the Manufacturers’ Summary Judgment And Daubert Motions, filed by the Manufacturers on October 24, 2008. 3 The Manufacturers also seek to preclude Mr. Murphy from testifying regarding paragraph 281 of his report, notwithstanding the fact that that paragraph primarily sets forth Mr. Murphy’s technical opinion regarding support in the written description for the DLL. Br. at 7. Such 6331659.1
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The Manufacturers’ objection to Mr. Murphy’s discussion of whether particular references
2
were cited to the examiner is particularly inappropriate in light of their own expert’s explicit
3
statement that, in rendering his opinions on invalidity, he considered the file histories “inclusive
4
of cited references.” Polse Decl., Exh. D. Furthermore, the references cited to the examiner form
5
part of the public record that a person of ordinary skill uses to understand the patented invention.
6
Phillips, 415 F.3d at 1317 (“The prosecution history, which we have designated as part of the
7
‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and
8
includes the prior art cited during the examination of the patent.”); Vitronics, 90 F.3d at 1583
9
(holding that “within an analysis of the file history may be an examination of the prior art cited
10
therein”), citing Autogiro Co. of Am. v. United States, 384 F.2d 391, 399 (1967) (“In its broader
11
use as source material, the prior art cited in the file wrapper gives clues as to what the claims do
12
not cover.”). The identity and disclosure of such references therefore is an appropriate subject for
13
testimony for a technical expert.
14
Nor is it true, as the Manufacturers claim, Br. at 5, that Mr. Murphy adds no technical
15
analysis in the portions of his report that they seek to exclude. To the contrary, the paragraphs
16
describing the testimony the Manufacturers seek to exclude, together with the referenced
17
attachments4 and exhibits, set forth Mr. Murphy’s technical opinions regarding various invalidity
18
theories raised in Mr. McAlexander’s report. See, e.g., Murphy Report ¶ 110 (“[a]s I explain in
19
my Attachment A (in response to McAlexander Attachment A), I disagree that SCI in
20
combination with any other reference identified by Mr. McAlexander, renders obvious claim 33
21
of the ’120, claim 3 or 4 of the ’446, or claim 34 of the ’037 patent,” and noting that “[r]egardless
22
of whether SCI was considered by the patent office, it is my opinion that this reference does not
23
render obvious” the claims); id. ¶ 281 (explaining where support exists in the specification for the
24 25 26 27 28
testimony from a technical expert is entirely proper. To the extent the Manufacturers seek only to preclude Mr. Murphy from implying “that the PTO has rendered an additional opinion on the patents’ validity” by stating that he “agrees with the PTO” that the written description is met, Br. at 7 n. 4, Rambus does not intend to elicit that statement from Mr. Murphy. 4
Attachments A-G to Mr. Murphy’s report, which set forth in detail his analysis of the various prior art references cited by Mr. McAlexander, are attached to the Confidential Polse Declaration as Exhibit 2. 6331659.1
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1
DLL limitation); id. ¶ 227 (explaining the technical differences between two groups of claims).
2
Viewed in context, Mr. Murphy’s discussion of the file histories simply form one part of his
3
overall analysis of the prior art and other invalidity issues raised in Mr. McAlexander’s report.
4
In short, Mr. Murphy’s testimony reflected in paragraphs 41, 90-99, 103-104, 106, 109-
5
111, 114-116, 118-122, 126-130, 132, 134-136, 138-139, 141-148, 150-151, 209-219, 227-228
6
and 281 is appropriate based on his technical expertise and his review of the file histories, the
7
patents-in-suit, and the other materials on which he relied. The Manufacturers’ motion to exclude
8
his testimony on the prosecution-history related matters described in those paragraphs of his
9
report should be denied. 5
10
IV.
11 12
MR. MURPHY’S TESTIMONY REGARDING LEGAL STANDARDS RESPONDS TO MR. MCALEXANDER’S TESTIMONY ON LEGAL STANDARDS The remainder of the testimony that the Manufacturers seek to exclude concerns Mr.
13
Murphy’s understanding of the legal principles bearing on the areas on which he opines. See
14
Murphy Report ¶¶ 88-89, 101-102, & 203-208. These and other explanations of the applicable
15
law contained in Mr. Murphy’s report resemble those contained in the expert report to which Mr.
16
Murphy’s validity report responds. See Corrected Expert Report of Joseph McAlexander
17
Regarding Invalidity, ¶¶ 23-43.6 Rambus agrees that expert witnesses should not testify at trial
18
regarding their understanding of the law, and seeks in its Daubert Motion No. 1, filed on October
19
24, 2008, to preclude Mr. McAlexander from testifying regarding the various legal opinions set
20
forth in his report. See also Rambus’s Daubert and Motion in Limine No. 2 to Exclude Certain
21
Testimony of Peter Heuser, Case No. 05-cv-00334, Docket No. 2432. Should the Court deny
22
Rambus’s Daubert Motion No. 1 and permit Mr. McAlexander to testify regarding his legal
23 5
24 25 26 27 28
It is unclear whether, by this motion, the Manufacturers seek to exclude Mr. Murphy from testifying as to all of the material contained in the paragraphs they deem objectionable as referencing the prosecution or file histories. Br. at 8. Even if exclusion of testimony relating to the prosecution history were appropriate, which it is not, the Manufacturers provide no ground for excluding Mr. Murphy’s testimony on the other matters raised in the objected-to paragraphs of his report. 6
A copy of the pertinent portions of Mr. McAlexander’s report is attached as Exhibit A to the Declaration of Peter Detre filed on October 24, 2008 in support of Rambus’s Daubert Motion No. 1. 6331659.1
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opinions, Mr. Murphy should be allowed to respond in kind, including by setting forth his
2
understanding of legal principles that informed his analysis.
3
V.
CONCLUSION
4 5
For the reasons explained above, the Manufacturers’ Daubert Motion No. 2 should be denied.
6 7
DATED: November 14, 2008
MUNGER, TOLLES & OLSON LLP
8
SIDLEY AUSTIN LLP
9
McKOOL SMITH PC
10 11 By:
12 13
/s/ Jennifer Polse Jennifer Polse
Attorneys for Plaintiff RAMBUS INC.
14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6331659.1
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