AMY J. ST. EVE, District Judge.
Defendants Publications International, Ltd. ("PIL"), SD-X Interactive, Inc. ("SD-X"), Encyclopaedia Britannica, Inc. ("Britannica"), and Herff Jones, Inc. ("Herff Jones") (hereinafter "Defendants") move to bar certain aspects of the testimony of Plaintiff Sonix Technology Co.'s ("Sonix") technical expert Dr. Amit Ashok pursuant to the Federal Rules of Evidence and Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). For the following reasons, the Court, in its discretion, grants in limited part and denies in part Defendants' motion.
On March 8, 2013, PIL and SD-X filed a lawsuit seeking declaratory judgment of non-infringement and invalidity of United States Patent No. 7,328,845 ("the `845 patent"), against Sonix, the owner of the `845 patent. On March 18, 2013, Sonix, a Taiwanese company that designs and develops integrated circuits and related products, filed the present lawsuit involving the same occurrence. Rather than pursue service of a Taiwanese defendant, PIL and SD-X moved to voluntarily dismiss their action, which the district court granted on May 9, 2013. PIL and SD-X filed an answer in the present lawsuit on April 25, 2013. On September 17, 2013, Sonix filed a First Amended Complaint adding Herff Jones and Britannica as named Defendants.
The `845 patent, entitled "Method for Producing Indicators and Processing Apparatus and System Utilizing the Indicators," issued on February 12, 2008 and is directed to the use of graphical indicators (e.g., a matrix of small dots) affixed to the surface of an object and negligible to the human eye that provide information, beyond the visual text and images on the object's surface, that is retrievable through an electronic system. The `845 patent describes a method for producing visually negligible dot patterns — referred to as "graphical indicators" — affixed to a surface (e.g., the page of a book), that overlap and co-exist, but do not interfere, with the main information on the surface of the object (e.g., visual text and images). By the time Sonix filed this lawsuit in March 2013, the `845 patent had undergone two ex parte reexaminations before the United States Patent and Trademark Office ("PTO") — both resulting in the issuance of Ex Parte Reexamination Certificates on December 27, 2011 and December 26, 2012. The `845 patent was also subject to litigation that the parties settled and voluntarily dismissed in June 2011. See Sonix Tech. Co., Ltd. v. VTech Elecs. N. Am., LLC, 10 C 8291 (N.D. Ill. June 25, 2011).
Following the close of discovery in this lawsuit, Defendants filed a motion for summary judgment pursuant to Federal Rule of Civil Procedure 56(a) arguing that the `845 patent was invalid and non-infringed. The Court granted Defendants' summary judgment motion on the ground that the `845 patent was invalid for indefiniteness. Specifically, the Court concluded that the claim term "visually negligible" was subjective, that the claim language did not provide guidance on its meaning, and that the written description did not provide a person of ordinary skill in the art "with a meaning that is reasonably certain and defines objective boundaries as to the scope of `visually negligible' as used in the `845 Patent" — keeping in mind that because the parties agreed that the Court should give the term "visually negligible" its ordinary meaning, the Court did not construe "visually negligible" in its October 2014 claim construction ruling. In the December 2015 summary judgment ruling, the Court concluded that "visually negligible" rendered the asserted claims invalid as indefinite. Because the Court concluded that the `845 patent was invalid as indefinite, it did not address any infringement arguments at summary judgment.
Sonix then appealed to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reversed the determination of indefiniteness and the judgment of invalidity on the ground that the term "visually negligible" was not indefinite. The Federal Circuit specifically concluded that the claim term "visually negligible" was not purely subjective because "the question of whether something is `visually negligible' or whether it interferes with a user's perception...involves what can be seen by the normal human eye." Sonix Tech. Co., Ltd v. Publications Int'l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017). Further, the Federal Circuit concluded that although "visually negligible" is "a term of degree," what "can be seen by the normal human eye" is an "objective baseline through which to interpret the claims." Id. In sum, the Federal Circuit held "that `visually negligible' is not a purely subjective term and that, on this record, the written description and prosecution history provide sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention." Id. at 1381. Due to the Federal Circuit concluding that the asserted claims were not indefinite, it did not address Sonix's alternative arguments for reversal.
Dr. Ashok graduated from the University of Swaziland with a B.Sc. in Electronics and Telecommunication Engineering in 1998, and in 2001, he graduated from the University of Cape Town, South Africa with a M.S. in Electrical Engineering. In 2008, Dr. Ashok graduated from the University of Arizona with a Ph.D. in Electrical and Computer Engineering with a minor in Optical Sciences. While working on his Ph.D, Dr. Ashok was a graduate research assistant in the University of Arizona Department of Electrical and Computer Engineering Optical Computing and Processing Lab.
Thereafter, specifically, from 2007 to 2009, Dr. Ashok was a senior scientist in the New Applications and Research and Development Group at OmniVision CDM Optics Inc. In 2009, Dr. Ashok became a senior research scientist in the Optical Computing and Processing Lab at the University of Arizona. He began teaching at the University of Arizona in the Department of Electrical and Computer Engineering as an assistant professor and the College of Optical Science as an associate professor in 2011. Presently, Dr. Ashok directs the Intelligent Imaging and Sensing Lab at the University of Arizona. In addition, he has conducted research in the areas of image processing, optical engineering, computational imaging, partially-coherent compressive imaging, knowledge enhanced compressive measurement, post-measurement information theoretic compression, and compressive passive 3D imaging.
Furthermore, Dr. Ashok has published numerous scholarly journal and conference articles relating to sensing and imaging, including Yujie Gu, Nathan Goodman & Amit Ashok, Compressed Sensing Kernel Design for Radar Range Profiling, 62 IEEE Transactions on Signal Processing 3194 (2014); Amit Ashok, Liang C. Huang & Mark A. Neifeld, Information Optimal Compressive Sensing: Static Measurement, 30 JOSA A 831 (2013); Vicha Treeaporn, Amit Ashok & Mark A. Neifeld, Space-time Compressive Imaging, 51 Applied Optics A67 (2012); B.M. Kaylor, Amit Ashok, et al., Dynamically Programmable, Dual-Band Computational Imaging System, in Computational Optical Sensing and Imaging, OSA Technical Digest (2012); Amit Ashok & Mark A. Neifeld, Compressive Imaging: Hybrid Measurement Basis Design, 28 JOSA A 1041 (2011); and Jun Ke, Amit Ashok & Mark A. Neifeld, Object reconstruction from adaptive compressive measurements in feature-specific imaging, 49 Applied Optics H27 (2010). Dr. Ashok has numerous manuscripts in progress, including work with Roman Kerviche entitled "Joint-Design Approach for Extended Depth of Field Imaging," and "Scalable Information-Optimal Imaging." Also, Dr. Ashok is a journal reviewer for SPIE Journal: Optical Engineering; OSA Journals: JOSA A, Applied Optics, Optics Letters, Optics Express; and IEE Journals: Transactions on Image Processing, Signal Processing Letters.
Dr. Ashok has given numerous talks at conferences, including "Projective Imager Design with Task Specific Information" at Frontiers in Optics in 2007, "Multi-Domain Optimization for Ultra-Thin Cameras" at Frontiers in Optics in 2006, and "Engineering the Point-Spread-Function for Super-Resolution from Multiple Low-Resolution Sub-Pixel Shifted Frames" at Frontiers in Optics in 2005. He is named as an inventor on several publications and patents, namely, "Color imaging based on computations imaging and narrow band absorption color filter array," "Object-based pre-processing for OCR," and "Image Data Fusion Systems and Methods." U.S. Patent Application Publication No. US 2016/0245698 (filed Apr. 6, 2016); U.S. Patent Application Publication No. US 2012/0063690 (filed Sep. 6, 2011); U.S. Patent No. 8,824,833 (filed Jan. 30, 2009).
"In Daubert v. Merrell Dow Pharmaceuticals, Inc., the Supreme Court explained that Rule 702 requires the district court to serve in a gatekeeping role and make `a preliminary assessment of whether the reasoning or methodology underlying the testimony is scientifically valid.'" Haley v. Kolbe & Kolbe Millwork Co., 863 F.3d 600, 611 (7th Cir. 2017) (quoting Daubert, 509 U.S. at 592-93). In short, Daubert requires the district court to act as an evidentiary gatekeeper, ensuring that an expert's testimony rests on a reliable foundation and is relevant to the task at hand." Krik v. Exxon Mobil Corp., ___ F.3d ___, 2017 WL 3768933, at *3 (7th Cir. Aug. 31, 2017). Although the Seventh Circuit reviews "the district court's application of Daubert [] de novo," if "the court adhered to the Daubert framework, then its decision on admissibility is reviewed for abuse of discretion." Estate of Stuller v. United States, 811 F.3d 890, 895 (7th Cir. 2016).
A district court's evaluation of expert testimony under Daubert does not "take the place of the jury to decide ultimate issues of credibility and accuracy." Lapsley v. Xtek, Inc., 689 F.3d 802, 805 (7th Cir. 2012). Once it is determined that "the proposed expert testimony meets the Daubert threshold of relevance and reliability, the accuracy of the actual evidence is to be tested before the jury with the familiar tools of `vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof.'" Id. (quoting Daubert, 509 U.S. at 596). A district court's inquiry under Daubert is a flexible one and district courts have wide latitude in performing this gate-keeping function. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999); see also Krik, ___ F.3d ___, 2017 WL 3768933, at *3 ("The district court holds broad discretion in its gatekeeper function of determining the relevance and reliability of the expert opinion testimony."). "`[T]he key to the gate is not the ultimate correctness of the expert's conclusions,'" rather, "`it is the soundness and care with which the expert arrived at her opinion[.]'" C.W. ex rel. Wood v. Textron, Inc., 807 F.3d 827, 834 (7th Cir. 2015) (citation omitted). "[T]he proponent of the evidence must establish that the expert's testimony is reliable (and relevant) by a preponderance of the evidence." United States v. Saunders, 826 F.3d 363, 368 (7th Cir. 2016).
In Defendants' Daubert motion, they seek to exclude certain portions of Dr. Ashok's expert opinion testimony for three reasons: (1) in applying the claim term "visually negligible" in his infringement and validity analyses, Dr. Ashok utilized an improper subjective standard; (2) Dr. Ashok used an unjustified assumption to extend the analysis he performed on a few accused products to all fifty-three accused products relevant in this lawsuit; and (3) when Dr. Ashok applied the term "header information," he added new limitations and requirements that were not in the Court's claim construction.
Dr. Ashok has offered expert opinions relating to the limitation "visually negligible" in the context of both the accused products' alleged infringement and the alleged invalidity of the `845 patent based on certain prior art references. In his May 5, 2015 Opening Expert Report relating to infringement, Dr. Ashok opined:
(R. 279-1, 5/5/15 Ashok Report, at 19.)
Defendants move to exclude portions of Dr. Ashok's testimony regarding the term "visually negligible" arguing that his opinions do not fulfill the Daubert standard for reliability and relevance. See Daubert, 509 U.S. at 597 (district court must ensure that expert evidence "both rests on a reliable foundation and is relevant to the task at hand."). More specifically, Defendants argue that Dr. Ashok utilized an improper subjective standard in light of the Federal Circuit's ruling that "visually negligible" is an objective term. As discussed above, the Federal Circuit held "that `visually negligible' is not a purely subjective term" and that what "can be seen by the normal human eye" is an "objective baseline through which to interpret the claims." Sonix, 844 F.3d at 1378, 1381. Thus, the premise of Defendants' argument that "visually negligent" is an objective term misstates the Federal Circuit's ruling. With this in mind, the Court first turns to Defendants' argument that Dr. Ashok's expert opinions as to the term "visually negligible" are scientifically unreliable. See United States v. Smith, 811 F.3d 907, 909 (7th Cir. 2016) (expert opinion must be based on "scientific, technical, or other specialized knowledge") (quoting Fed.R.Evid. 702).
Defendants specifically argue that Dr. Ashok's "visually negligible" infringement opinion is speculative and that because Dr. Ashok did not apply any scientific method in forming his opinion, his conclusions are mere ipse dixit. See General Elec. Co. v. Joiner, 522 U.S. 136, 146, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997) ("A court may conclude that there is simply too great an analytical gap between the data and the opinion proffered."). Under Daubert, a "critical inquiry is whether there is a connection between the data employed and the opinion offered; it is the opinion connected to existing data `only by the ipse dixit of the expert,' that is properly excluded under Rule 702." Manpower, Inc. v. Ins. Co. of Penn., 732 F.3d 796, 806 (7th Cir. 2013) (quotation omitted); see also Brown v. Burlington N. Santa Fe Ry. Co., 765 F.3d 765, 772 (7th Cir. 2014) ("Rule 703 requires the expert to rely on "facts or data," as opposed to subjective impressions.").
In support of their argument that Dr. Ashok did not base his visually negligible infringement opinions on a reliable methodology, Defendants point to Dr. Ashok's deposition testimony in which counsel questioned him about the method he used in determining "visual negligibility" as to the accused products:
(R. 279-3, 07/15/15 Ashok Dep. at 51.)
In making their argument, however, Defendants ignore the Federal Circuit's ruling on appeal. In particular, after concluding that "visually negligible" is "a term of degree," and that what "can be seen by the normal human eye" is an "objective baseline through which to interpret the claims," the Federal Circuit considered intrinsic and extrinsic evidence to further support its holding that the term "visually negligible" was not indefinite. See Sonix, 844 F.3d at 1378-80 ("[c]laim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.") (citation omitted); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014) ("we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."). In doing so, the Federal Circuit discussed Defendants' arguments concerning Dr. Ashok's deposition testimony:
Id. at 1380 (internal record citations omitted).
Not only do the Federal Circuit's observations regarding Dr. Ashok's deposition testimony explain why Dr. Ashok did not determine a technical standard for the term "visually negligible," but the appellate court's opinion speaks to why Dr. Ashok's opinion testimony that the accused products satisfy the claim requirement that they be "visually negligible" may be unnecessary. See Daubert, 509 U.S. at 591 (Rule 702 "requires that the evidence or testimony `assist the trier of fact to understand the evidence or to determine a fact in issue,'" which "goes primarily to relevance."). In particular, the Federal Circuit reasoned:
Id. (emphasis in original).
Equally important — prior to their Daubert reply brief dated July 27, 2017 in which they state for the first time that their view of the term "visually negligible" has changed — Defendants did not dispute that the dot patterns in all of the accused products are "visually negligible" in the district court litigation. In Defendants' response to Sonix's final infringement contentions, for example, "Defendants admit that the dots printed in the Identified Product(s) are visually negligible, and therefore would fall within the literal scope of that requirement in this claim element."
The Court now turns to Dr. Ashok's "visually negligible" opinions in relation to the alleged invalidity of the `845 patent based on certain prior art references. To give context, as early as early as January 17, 2014, Sonix disputed Defendants' invalidity contentions based on prior art in relation to the term "visually negligible." (R. 213-5, Resp. to Initial Invalidity Contentions.) Meanwhile, as stated in their Final Invalidity Contentions:
(R. 213-6, Final Invalidity Contentions, at 3.) Defendants then identified numerous prior art references in support of their invalidity contentions. In his Rebuttal Expert Report, Dr. Ashok provided opinions regarding certain prior art references identified by Defendants, including U.S. Pat. No. 5,416,312 to Lamoure ("Lamoure"), U.S. Pat. No. 6,438,251 to Yamaguchi ("Yamaguchi"), U.S. Pat. No. 5,329,107 to Priddy ("Priddy"), U.S. Pat. No. 5,591,956 to Longacre ("Longacre"), and U.S. Pat. No. 4,924,078 to Sant' Anselmo ("Sant' Anselmo"). (R. 279-2, 6/1/15 Rebuttal Report.)
In the present motion, Defendants contend that Dr. Ashok's prior art opinions regarding the term visually negligible "suffer from the same flaws as his infringement opinions." In making this argument, Defendants fail to acknowledge that Dr. Ashok's validity opinions relate to whether certain prior art references disclose the concept of "visually negligible" graphical indicators. In other words, Dr. Ashok's prior art analysis was not based on his own observations of exemplary dot patterns, but rather he based his opinions on the express disclosures in the prior art references as he understood them based on his background, training, and experience in electrical engineering and optical physics. That being said, Dr. Ashok's understanding of "visually negligible" speaks to his ability to differentiate the claimed invention from prior art.
Turning to Defendants' specific arguments, they first assert that Dr. Ashok did not give a reasoned basis that the Priddy, Longacre, and Sant' Anselmo references were not intended to be visually negligible and that the dot patterns disclosed in Priddy would not be visually negligible in the first instance. Despite Defendants' argument to the contrary, Dr. Ashok gave detailed explanations for the basis of his opinions in his Rebuttal Report and during his deposition as to these prior art references. More specifically, in discussing the Priddy reference, Dr. Ashok opined:
(Rebuttal Rep., at 16-18.) (emphasis in original). At his deposition, Dr. Ashok explained that he relied upon testing done by Sonix's printing expert as to the irritability or visual non-negligibility of certain patterns in forming his opinions. (Ashok Dep. at 111-12.) Also, Dr. Ashok meticulously walked counsel through his Priddy analysis. (Id. at 135-36.)
Similarly, Dr. Ashok's analyses of the Longacre and Sant' Anselmo references sufficiently substantiate his conclusions, especially in the context of Dr. Ashok's entire Rebuttal Report. In his analysis of the Longacre reference, Dr. Ashok explained:
(Id. at 20-21). In discussing the Sant' Anselmo reference, Dr. Ashok clarified:
(Id. at 22-23) (emphasis in original). At his deposition, Dr. Ashok testified why — from a usability perspective — it is important that a pattern be noticeable when discussing the Sant' Anselmo reference:
(Ashok Dep., at 114-15.)
Despite Dr. Ashok's comprehensive explanations, Defendants contend that Dr. Ashok did not explain how certain factors affected visual negligibility in the prior art. Instead of fleshing out this argument, Defendants drop a footnote stating that Dr. Ashok did not identify or explain how size of dots, fill factor, density, spacing, homogeneity, or non-isotropy of codes affect the visual negligibility of dot patterns. Defendants' undeveloped argument is waived. See Evergreen Square of Cudahy v. Wisconsin Hous. & Econ. Dev. Auth., 848 F.3d 822, 829 (7th Cir. 2017) ("A party may waive an argument by presenting it only in an undeveloped footnote."). Further, Defendants may test Dr. Ashok's reliance on these factors at trial through "vigorous cross-examination." See Daubert, 509 U.S. at 596.
Finally, Defendants' argument that Dr. Ashok is not qualified to testify about "dot-pattern technology" because his curriculum vitae fails to show experience working with any such technology overlooks Dr. Ashok's extensive training, experience, and education in optical physics and electrical engineering. See Fed.R.Evid. 702 (An expert may be qualified "by knowledge, skill, experience, training or education."); Smith v. Ford Motor Co., 215 F.3d 713, 718 (7th Cir. 2000) (courts "should consider a proposed expert's full range of practical experience as well as academic or technical training when determining whether that expert is qualified to render an opinion in a given area."). In fact, Defendants admit that Dr. Ashok is "well qualified in the areas of electrical engineering and optical physics." (R. 279, Opening Brief, at 6.) Moreover, Defendants' attempt to carve out a narrow "dot pattern technology" expertise from Dr. Ashok's broader expertise and multi-disciplinary research in optical engineering is misplaced, especially in light of Dr. Ashok's deposition testimony explaining how his expertise and technical knowledge is relevant to understanding his ability to differentiate the claimed invention from prior art. Therefore, the Court, in its discretion, denies Defendants' Daubert motion as to Dr. Ashok's expert opinions regarding the term "visually negligible" in the context of the prior art references.
As discussed immediately above, Dr. Ashok has offered expert opinions distinguishing prior art references in relation to Defendants' invalidity defenses. In this vein, in their opening brief, Defendants make a cursory, two-paragraph argument that Dr. Ashok added improper limitations to the term "header information" during his deposition, and thus the Court should strike his opinions as to that term. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009) ("No party may contradict the court's construction to a jury"). In their reply brief, Defendants further argue that Dr. Ashok and Sonix are "importing unstated limitations into the Court's constructions for `header information'" in an attempt to avoid the teachings of the Lamoure prior art reference (Pat. No. 5,416,312 to Lamoure). On the other hand, Plaintiff maintains that the challenged deposition testimony is Dr. Ashok's description of the distinctions between the `845 patent and the Lamoure reference.
Turning the Court's claim construction relevant to Defendants' argument, after the September 2014 Markman hearing, the Court construed "header information" to mean "information in the graphical indicator that is used to retrieve the graphical indicator and corresponding content information and is capable of (1) distinguishing the corresponding graphical indicator from an adjacent graphical indicator, and (2) indicating the orientation of the corresponding graphical indicator to the optical device." Sonix Tech. Co. Ltd. v. Pub'ns Int'l Ltd., 2014 WL 5489353, at *29 (N.D. Ill. 2014). In both his Opening and Rebuttal Reports, Dr. Ashok acknowledged the Court's construction of "header information" as follows:
(See, e.g., Opening Report, at 22.) Furthermore, Dr. Ashok states in both of his expert reports that: "I understand that the Court has construed certain terms used in the patent claims and I have applied the Court's constructions as set forth in its Claim Construction Order dated October 30, 2014 in formulating my opinions." (Id. at 2.)
To lend further guidance to Defendants' arguments, Dr. Ashok's opinions in his Rebuttal Report concerning the Lamoure reference state:
(Rebuttal Rep., at 11-13.) (internal citations omitted). Dr. Ashok further opined:
(Id. at 23.) (emphasis in original) (internal citation omitted).
At his deposition, Dr. Ashok distinguished the Lamoure reference from the `845 patent as follows:
(Id. at 138-40) (emphasis added).
Defendants first argue that Dr. Ashok added a new requirement to the term "header information," namely, that the dot pattern must "not have any limitations in terms of which orientations which it can distinguish, which it cannot." In response, Plaintiff explains that Dr. Ashok's statements about the disclosures in the Lamoure reference do not add new limitations to "header information," but rather his testimony describes the distinctions between the `845 patent and the Lamoure reference. The Court agrees. More specifically, the Court's construction requires "header information" to be capable of "indicating the orientation of the corresponding graphical indicator to the optical device." In his Rebuttal Report, Dr. Ashok clarified "Lamoure fails to disclose a graphical indicator as claimed in the Asserted Claims of the `845 patent" because a "graphical indicator can take any regular or irregular shape and may have any orientation on the surface" and "Lamoure's indexes could only be used in a specific orientation relative to the surface or the optical reader." Dr. Ashok's testimony that "header information" in the `845 patent does not place any limitations on which orientations the header can indicate distinguishes the Lamoure reference's shortcomings in that the dot pattern ("indexes") disclosed can only indicate orientation in certain circumstances.
Defendants also assert that Dr. Ashok's testimony adds the requirement that the header information must "be a somewhat well-defined local pattern" as opposed to a "distributed kind of restriction on the patterns of dots." As Dr. Ashok explained when making these comments, he was drawing a very fine distinction between Lamoure and the `845 patent — but he also admitted that the "concept of a localized header or localized header information" was from his own understanding, not the Court's claim construction. (Ashok Dep., at 140.) In this respect, Dr. Ashok's testimony contradicts the Court's claim construction, and thus would not be helpful to the jury. See Rodefer v. Hill's Pet Nutrition, Inc., No. IP 01-123-C H/K, 2003 WL 23096486, at *5 (S.D. Ind. 2003) (Hamilton, J.) ("Evidence is relevant under Daubert if it is `helpful' to the trier of fact and `fits' the issues in the case."). The Court, in its discretion, grants Defendants' Daubert motion in this respect.
Further, Defendants argue that Dr. Ashok's deposition testimony adds to the Court's construction of "header information" by requiring that "the same information be used to perform each of the functions in the Court's construction." Defendants point to the following deposition testimony in support of their argument:
(Ashok Dep., at 141-43) (emphasis added).
In response, Plaintiff argues that the dual functionality requirement applied by Dr. Ashok is consistent with the Court's claim construction of the term "header information" because the Court's construction of "header information" defines this term as "information in the graphical indicator that is...capable of (1) distinguishing the corresponding graphical indicator from an adjacent graphical indicator, and (2) indicating the orientation of the corresponding graphical indicator to the optical device." Indeed, Ashok applied reasoning consistent with this Court's construction because this term only refers to "information in the graphical indicator," so it is necessarily true that the same information is used for the functionality following in the definition.
Next, Defendants argue that Dr. Ashok's deposition testimony adds new limitations in the context of the Court's construction that header information is capable of "distinguishing the corresponding graphical indicator from an adjacent graphical indicator." In his Rebuttal Report, Dr. Ashok opined:
(Rebuttal Report, at 32.) In making their argument, Defendants point to Dr. Ashok's deposition testimony as follows:
(Ashok Dep., at 150.)
Specifically, Defendants contend that this testimony adds the requirement "that there cannot be `mandatory spacing' used in the dot pattern" to the term "header information" as construed by the Court. In making this argument, Defendants misstate Dr. Ashok's testimony because he was describing Figure 4 of the Lamoure reference when he directed counsel's attention to Figure 4 explaining that it had "mandatory spacing on all four sides to allow them to be distinguished from each other." In sum, Dr. Ashok's testimony regarding the mandatory spacing in Lamoure reiterates his Rebuttal Report opinion where he distinguishes the Lamoure checkerboard pattern arrangement of indexes in Figure 4.
Last, Defendants maintain that Dr. Ashok's testimony adds a limitation to the Court's construction requiring "header information" to be capable of "distinguishing the corresponding graphical indicator from an adjacent graphical indicator." In particular, Defendants state that Dr. Ashok's deposition testimony adds the limitation "`adjacent' dot patterns require the dot patterns to be entirely surrounded by other dot patterns." In support of this argument, Defendants merely point to a snippet of Dr. Ashok's testimony and fail to give context to their argument. Without more, the Court cannot untangle Defendants' argument to examine it under the Daubert rubric.
On a final note, Defendants point to the inconsistencies in Dr. Ashok's testimony in relation to "header information" in the context of his infringement testimony and his testimony concerning the prior art references. That Dr. Ashok may have contradicted himself is not a proper challenge under Daubert. See Lapsley, 689 F.3d at 805 (District court's evaluation of expert testimony under Daubert does not "take the place of the jury to decide ultimate issues of credibility and accuracy."). Instead, Defendants may explore these alleged contradictions at trial.
Therefore, the Court, in its discretion, grants in part and denies in part Defendants' Daubert motion in relation to Dr. Ashok's expert opinions regarding the term "header information."
The Court, in its discretion, grants in limited part and denies in part Defendants' motion to bar certain portions of Plaintiff's expert witness Dr. Ashok brought pursuant to the Federal Rules of Evidence and Daubert.
