ROY S. PAYNE, Magistrate Judge.
Defendant HTC Corporation moves to exclude certain testimony of Oded Gottesman, Plaintiff's invalidity expert, based on his purportedly incorrect application of law. HTC's Motion to Exclude [Dkt. # 157]. Specifically, HTC contends Gottesman's opinions concerning three claim terms should be excluded based on his improper analysis. The Court will
Gottesman repeatedly opines, in reference to the preambles
The question is whether Gottesman's report (1) concerns his opinion based on his expertise about the meaning of "communications system," which is permissible, or (2) construes the term to have a different meaning based on the '467 Patent's intrinsic record, which is not permissible (since it would be claim construction reserved for the Court). Here, Gottesman did the latter by, for example, opining on the meaning of the term based on the specification:
Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 19:8-21 (emphasis added).
Id. at 20:5-12 (emphasis added). In other words, Gottesman has interpreted "communications system"—based on his review of the specification, and not on its plain meaning within the art—to require a telephonic device. Such an interpretation is impermissible claim construction, and the Court will therefore grant this part of Defendant's motion.
With reference to Claim 1's preamble, Gottesman opines "[t]he touchscreen, keypad, microphone, and/or opto-detector disclosed in Goldstein is not a disclosure or teaching of a sensor coupled to a microprocessor for detecting and measuring physical phenomena, physical indications, physical phenomena corresponding to a user, or a physical phenomena measure in response to a user's skin contact as claimed in claims 23, 29-32." See, e.g., Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶¶ 36, 53, 71. He makes similar contentions regarding two other references, Thompson and Simon. Id. ¶¶ 158-59, 176-77, 198-99, 221-22, 241-42. HTC argues this imports these limitations from dependent claims into Claim 1. Def.'s Motion [Dkt. # 157] at 3. Salazar contends Gottesman simply rebuts Wolfe's characterization of the "sensing system." Pl.'s Opp'n [Dkt. # 175] at 5-7.
The Court will grant this part of the motion because Gottesman construes the claim language, which is evident from his deposition. For example, when questioned about why he thought Claim 1 required a microprocessor, Gottesman testified:
Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 33:23-34:5. When asked whether Claim 1 requires "detecting and measuring physical phenomena," he testified
Id. at 35:12-22. When asked whether a person of ordinary skill would understand "sensing system" to relate to detecting and measuring physical phenomena, he testified
Id. at 36:4-8 (emphasis added). These excerpts show Gottesman was not relying on his own expertise in explaining the plain and ordinary meaning of the term, but rather relying on the patent's intrinsic record to narrow the plain meaning.
Last, HTC complains about Gottesman's opinion that "Goldstein does not teach any compression of command code sets or compressed parameter storage." Def.'s Motion [Dkt. # 157] at 3-4. HTC objects to use of "compression," and contends the claim language simply requires that the memory space required to store the parameters be smaller than that required to store the command code sets, regardless of whether the command code sets are compressed. Id. at 4. Salazar responds that Gottesman describes how a person of ordinary skill would understand the '467 Patent, and that Gottesman's use of the term "compression" is simply shorthand for the broad category of what the limitation requires. Pl.'s Opp'n [Dkt. # 175] at 7-9.
Defendant's motion specifically concerns Claim 1 and Claim 34. Claim 1 recites
'467 Patent at 26:1-6. Claim 34 recites
Id. at 30:15-20. The Court construed part of these limitations, but did not address whether they require "compression." See generally Cl. Constr. Op. & Order [Dkt. # 108] at 22-30.
With respect to Claim 1, precluding Gottesman from referencing "compression" would go too far. The word appears twice in the patent, bookending a lengthy discussion of the only specifically described encoding technique. See '467 Patent at 8:16, 17:32. Thus, "compression" is not so foreign to the patent to warrant exclusion from a conversation about the technology. Moreover, Gottesman's report ties his use of "compression" to Claim 1's "memory space" language. Gottesman Rebuttal Rep. [Dkt. # 157-2] ¶ 15. He also acknowledges the claim language does not require "compression." See Gottesman Dep. (Feb. 19, 2018) [Dkt. # 175-3] at 53:22-23 (testifying "the language of the claim itself is not requiring compression"). Given Gottesman's clear statements on the term, HTC can address Gottesman's use of the term during cross-examination.
Claim 34 does not include the "memory space" limitation of Claim 1, but when rebutting Wolfe's opinions concerning Claim 34, Gottesman incorporates his "memory space" arguments. See, e.g., Gottesman Rep. [Dkt. # 157-2] ¶¶ 52 (referring to ¶¶ 39-40), 70 (referring to ¶¶ 56-57), 92 (referring to ¶¶ 75-76). Wolfe's invalidity charts, however, do the same. See, e.g., Wolfe Rep., Ex. A at 62 ("[o]pinions and evidence to support this claim element are identified with respect to Claim element 1[b] above."); id. at 8 (discussing, with respect to limitation [1b], why Goldstein teaches the memory space limitation). Given that, it would be unfair to exclude Gottesman's imprecision with respect to this limitation when he is rebutting an equally imprecise position. The Court will therefore deny this part of HTC's motion.
The Court