EXPRESS MOBILE, INC.,
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`GODADDY.COM, LLC,
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Civil Action No. 1:19-cv-01937-MFK
`
`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 1 of 19 PageID #: 44641
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`MEMORANDUM OPINION AND ORDER
`
`MATTHEW F. KENNELLY, District Judge:
`
`
`
`Express Mobile, Inc. sued GoDaddy.com, LLC alleging that two of GoDaddy's
`
`products—Website Builder (WSB) and Managed WordPress (MWP)—willfully infringe
`
`numerous claims of certain patents owned by Express Mobile that are directed to tools
`
`for displaying content on mobile devices.1 Express Mobile's claims went to a jury trial in
`
`late February 2023. In addition to asserting a defense of non-infringement, GoDaddy
`
`contended that Express Mobile's patents were invalid. The jury found in GoDaddy's
`
`favor on the question of infringement and willfulness but found in favor of Express
`
`Mobile on the question of invalidity. Because it found in favor of GoDaddy on the
`
`question of infringement, the jury awarded Express Mobile no damages.
`
`
`
`After the close of GoDaddy's case in chief, Express Mobile moved for judgment
`
`as a matter of law under Federal Rule of Civil Procedure Rule 50(a). The Court took the
`
`motion under advisement. Express Mobile has now renewed its Rule 50 motion and
`
`
`1 Express Mobile contends that GoDaddy's WSB and MWP products infringe claims 1,
`3, 12, 16, and 22 of U.S. Patent No. 9,063,755 (the '755 patent); claims 1 and 13 of U.S.
`Patent No. 9,471,287 (the '287 patent); and claims 1, 11, 13, 17, and 19 of U.S. Patent
`No. 9,928,044 (the '044 patent).
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 2 of 19 PageID #: 44642
`
`has also moved for a new trial under Federal Rule of Civil Procedure 59(a). For the
`
`reasons set forth below, the Court denies both motions.
`
`Background
`
`
`
`The Court assumes familiarity with this case's factual and procedural
`
`background, which the Court has discussed in prior written opinions. The following
`
`background is relevant to the post-trial motions and largely is taken from the Court's
`
`summary judgment decision.
`
`A.
`
`The asserted patents
`
`
`
`The asserted patents relate to two concepts that allow web designers to integrate
`
`third-party web services into their websites. The patents disclose an authoring tool that
`
`generates two sets of code, a device-independent application and a device-specific
`
`player. Second, the patents disclose an authoring tool that allows for integration of web
`
`services into the application and player.
`
`B.
`
`The accused products
`
`
`
`Two GoDaddy products are at issue in this case. WSB is a browser-based
`
`website creator, designed to allow a user with little or no website design experience to
`
`quickly create and publish a website. MWP, in contrast, targets more advanced users.
`
`It comprises a set of custom functionalities that GoDaddy has added to WordPress, an
`
`open-source (i.e. free) platform for creating websites. Both WSB and MWP allow for
`
`incorporation of features into a user's website, such as YouTube videos or embedded
`
`Twitter feeds. GoDaddy provides several free themes for use in designing a website,
`
`but users can also buy third-party themes for use with the MWP platform.
`
`C.
`
`Claim construction
`
`
`
`2
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 3 of 19 PageID #: 44643
`
`
`
`Two orders have previously been issued in this case construing certain disputed
`
`claim terms. Express Mobile, Inc. v. GoDaddy.com, LLC, No. 19-1937-RGA, 2021 WL
`
`2209868 (D. Del. Jun. 1, 2021), and Express Mobile, Inc. v. GoDaddy.com, LLC, No.
`
`19-1937-MFK, Mem. Op. and Order (dkt. no. 261) (D. Del. Aug. 8, 2022). The claim
`
`terms relevant to the issues decided at trial were construed as follows:
`
`registry
`
`player
`
`device-dependent code
`
`
`
`D.
`
`Evidence at trial
`
`"a database that is used for computing
`functionality"
`"device-specific code which contains
`instructions of a device and which is
`separate from the Application"
`code that is specific to the operating
`system, programming language, or
`platform of a device
`
`
`
`As relevant to the contentions Express Mobile has made in its motions, the
`
`following witnesses testified during the trial, either live or via deposition:
`
`• Dr. Kevin Almeroth, Express Mobile's infringement expert
`• Peter Kent, GoDaddy's infringement expert
`• Steven Rempell, CEO of Express Mobile
`• Ken Brown, Inventor of the asserted patents
`• Franklin Jarrett, GoDaddy engineer
`• Aaron Silvas, GoDaddy engineer
`
`On a high level, GoDaddy argued that Express Mobile made a bad bet when it
`
`
`
`
`filed its patent applications back in 2008, as the patents are directed to device-specific
`
`players that have since been rendered obsolete. GoDaddy argued that, by contrast, its
`
`WSB and MWP products operate not via players but on browsers and that they use
`
`programming language such as JavaScript that is completely device-independent,
`
`which GoDaddy argued is necessary in the ever-evolving technological space of
`
`smartphones.
`
`
`
`3
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 4 of 19 PageID #: 44644
`
`
`
`The asserted patents recite nineteen claim elements. Kent testified, and
`
`GoDaddy argued based on his testimony, that neither WSB nor MWP infringe the
`
`asserted patents because they do not include three of the nineteen required claim
`
`elements: (1) "player" code that receives web service output; (2) "registry"; or (3)
`
`"symbolic names."
`
`
`
`Regarding the player limitation, Dr. Almeroth testified, and Express Mobile
`
`argued based on his testimony, that WSB and MWP include device-dependent
`
`JavaScript player code that branches and accounts for different browser platforms.
`
`Because the player is also required to "receive the output symbolic name and
`
`corresponding one or more output values and provide[] instructions for a display of the
`
`device to present an output value," JTX-001 at claim 1, and because GoDaddy's
`
`products are browser-based, Dr. Almeroth testified that WSP and MWP infringe
`
`because their JavaScript players contain browser detection code that work together with
`
`other code to receive inputs and display outputs.
`
`
`
`GoDaddy, for its part, argued that JavaScript—the primary programming
`
`language used in WSP and MWP—can work on all browsers and is thus not device-
`
`dependent-code. This argument was based in part on Kent's testimony that a browser
`
`cannot constitute a platform under the Court's construction of the "player" claim term.
`
`GoDaddy also argued that Dr. Almeroth confirmed on cross examination that the only
`
`specific code segments in each of the files that Express Mobile contends received the
`
`web service outputs were not, in fact, device-dependent code.
`
`
`
`Regarding symbolic names, Dr. Almeroth testified, and Express Mobile argued
`
`based on his testimony, that WSB and MWP use a registry that stores symbolic names,
`
`
`
`4
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 5 of 19 PageID #: 44645
`
`and that those symbolic names are incorporated into HTML code that is sent from
`
`GoDaddy's servers to its customers' web browsers. It further argued that the symbolic
`
`names stored in the registry were used for evoking web components.
`
`
`
`By contrast, Kent testified, and GoDaddy argued based on his testimony, that to
`
`be a symbolic name, the name must evoke one or more web components and must be
`
`stored in a registry—a claim term that the Court construed as "a database used for
`
`computing information." Thus, GoDaddy argued, because the existence of a registry is
`
`required for the symbolic name claim element to be infringed (and vice versa)—and
`
`because the accused symbolic name does not evoke one or more web components or
`
`is not stored in a database—then there is no infringement. Kent explained that what Dr.
`
`Almeroth pointed to as symbolic names were actually something called "div IDs," which
`
`are randomly generated and thus cannot be stored in a registry. Kent also explained
`
`that, to the extent symbolic names or registry exist in WSB or MWP at all, they are kept
`
`and stored by the external web services intended to be accessed—like YouTube—and
`
`not by GoDaddy.
`
`A.
`
`Applicable law
`
`Discussion
`
`
`
`For issues that are not patent-law-specific, the Federal Circuit defers to the law of
`
`the regional circuit in which the district court sits—here, the United States Court of
`
`Appeals for the Third Circuit. Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248
`
`(Fed. Cir. 2005); see also, In re Cambridge Biotech Corp., 186 F.3d 1356, 1367 (Fed.
`
`Cir. 1999) ("we apply our own law with respect to issues of substantive patent law and
`
`certain procedural issues pertaining to patent law, but as to nonpatent issues, we apply
`
`
`
`5
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 6 of 19 PageID #: 44646
`
`the law of the circuit in which the district court sits."). The Federal Circuit "review[s] the
`
`denial or grant of JMOL under regional circuit law." ActiveVideo Networks, Inc. v.
`
`Verizon Commc'ns, Inc., 694 F.3d 1312, 1319 (Fed. Cir. 2012).
`
`B.
`
`Standard for JMOL
`
`
`
`
`
`Express Mobile has moved for judgment as a matter of law (JMOL) on all of its
`
`infringement claims, or in the alternative for a new trial. Under Federal Rule of Civil
`
`Procedure 50(b), JMOL is proper only if "viewing the evidence in the light most
`
`favorable to the nonmovant and giving it the advantage of every fair and reasonable
`
`inference, there is insufficient evidence from which a jury reasonably could find" for the
`
`nonmovant. Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir.
`
`1993) (citing Wittekamp v. Gulf & Western Inc., 991 F.2d 1137, 1141 (3d Cir.
`
`1993)). "The question is not whether there is literally no evidence supporting the party
`
`against whom the motion is directed but whether there is evidence upon which the jury
`
`could properly find a verdict for that party." Id. (quoting Patzig v. O'Neil, 577 F.2d 841,
`
`846 (3d Cir. 1978)).
`
`
`
`To grant JMOL on infringement in favor of Express Mobile, the party with the
`
`burden of proof, the Court "must be able to say not only that there is sufficient evidence
`
`to support the finding [sought by Express Mobile] . . . but additionally that there is
`
`insufficient evidence for permitting any different finding." Fireman's Fund Ins. Co. v.
`
`Videfreeze Corp., 540 F.2d 1171, 1177 (3d Cir. 1976) (emphasis added); see also,
`
`Smollett v. Skayting Dev. Corp., 793 F.2d 547, 548 (3d Cir. 1986) (motion for JMOL
`
`must be denied when "the record contains the minimum quantum of evidence from
`
`which a jury might reasonably afford relief").
`
`
`
`6
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 7 of 19 PageID #: 44647
`
`
`
`In assessing Express Mobile's motion, the Court must also give GoDaddy, the
`
`non-movant, "the benefit of all logical inferences that could be drawn from the evidence
`
`presented" and "resolve all conflicts in the evidence in [GoDaddy's] favor and, in
`
`general, view the record in the light most favorable to [GoDaddy]." Williamson v.
`
`Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991).
`
`
`
`The Third Circuit has held that motions for judgment as a matter of law under
`
`Rule 50(b) should be granted only sparingly. Marra v. Phila. Hous. Auth, 497 F.3d 286,
`
`300 (3d Cir. 2007) (citation omitted). This is particularly true when, as just discussed,
`
`the movant bears the burden of proof. Fireman's Fund Ins. Co., 540 F.2d at 1177 (entry
`
`of JMOL after a jury verdict "is rare[ ] [and] reserved for extreme circumstances.").
`
`C.
`
`Standard for a new trial
`
`
`
`The Court has discretion to grant a new trial under Rule 59(a) "for any of the
`
`reasons for which new trials have heretofore been granted in actions at law in the courts
`
`of the United States." Fed. R. Civ. P. 59(a). Some reasons for granting a new trial are:
`
`(1) the jury's verdict is against the clear weight of the evidence and a new trial is
`
`necessary to prevent a miscarriage of justice; (2) improper conduct by an attorney or
`
`the Court unfairly influenced the verdict; or (3) the jury's verdict was facially inconsistent.
`
`See Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., 85 F. Supp. 3d 768,
`
`775 (D. Del. 2015).
`
`D.
`
`Summary of Express Mobile's motion
`
`
`
`Express Mobile raises two grounds for JMOL or, in the alternative, a new trial.2
`
`
`2 Express Mobile also appears to raise an amorphous third basis, namely that GoDaddy
`confused the jury with irrelevant "strawmen," Mot. for J. as a Matter of Law at 16, such
`
`
`
`
`7
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 8 of 19 PageID #: 44648
`
`First, it contends that GoDaddy misled the jury by consistently misstating and
`
`contradicting the Court's claim constructions for player, device-dependent code, and
`
`registry. Express Mobile contends that, under the correct claim constructions adopted
`
`by the Court, no reasonable jury could have found that GoDaddy did not infringe the
`
`asserted patents. Second, Express Mobile contends that the jury's verdict was unfairly
`
`influenced by improper testimony from two witnesses that GoDaddy called as fact
`
`witnesses but who Express Mobile contends provided undisclosed expert testimony.
`
`The Court will address each of these arguments in turn.
`
`E.
`
`
`
`Claim construction-related issues
`
`"[T]he claims of a patent define the invention to which the patentee is entitled the
`
`right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
`
`1111, 1115 (Fed. Cir. 2004). "Literal infringement of a claim exists when every limitation
`
`recited in the claim is found in the accused device." Kahn v. Gen. Motors Corp., 135
`
`F.3d 1472, 1477 (Fed. Cir. 1998) (emphasis added).
`
`
`
`Express Mobile contends that it presented to the jury uncontradicted evidence
`
`that all of the asserted claims' limitations—including the three that GoDaddy argued
`
`were missing from its products—were met by WSB and MWP. Specifically, it contends
`
`that Dr. Almeroth "identif[ied] exemplary portions of source code and related evidence
`
`for each and every limitation of all Asserted Claims for both WSB and MWP, with a
`
`particular focus on contact form and add to cart web service implementations of the
`
`
`as: (1) its overuse of the YouTube web service example to illustrate some of its
`arguments regarding the symbolic names limitation; and (2) its arguments regarding div
`IDs. But it offers no authority for the proposition that "red herring"-type arguments—if
`that characterization is even accurate—would entitle it to either JMOL or a new trial. Id.
`8
`
`
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 9 of 19 PageID #: 44649
`
`respective products." Mot. for J. as a Matter of Law at 4. Thus, it contends that there is
`
`no evidentiary basis in the record on which the jury could have found non-infringement
`
`for any of the disputed claim elements.
`
`
`
`As for GoDaddy's evidence showing non-infringement, Express Mobile contends
`
`that it was premised upon constructions of claim terms that contradicted the Court's
`
`claim construction rulings. It is settled law that "[n]o party may contradict the court's
`
`construction to a jury." Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321
`
`(Fed. Cir. 2009).
`
`
`
`Regarding the player limitation, Express Mobile contends that GoDaddy
`
`argued—contrary to the Court's claim construction of device-dependent code as "code
`
`that is specific to the operating system, programming language, or platform of a device"
`
`—that its JavaScript player was not a device-dependent code because device-
`
`dependent code is limited to code specific to the operating system of a device. This,
`
`Express Mobile contends, obviates the "programming language, or platform" language
`
`in the Court's construction. This is significant, Express Mobile says, because it argued
`
`that the accused browser constitutes a "platform" under the Court's construction, which
`
`means the browser's code is device-dependent code and thus a player.
`
`
`
`Next is the registry limitation, construed by the Court as meaning "a database
`
`that is used for computing functionality." Express Mobile contends that GoDaddy
`
`improperly narrowed the term's construction to a structured database. Express Mobile
`
`contends that a "database," according to the Court's construction of the registry term,
`
`can include a file and need not be structured.
`
`There are multiple problems with Express Mobile's arguments. First, the Court is
`
`9
`
`
`
`
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 10 of 19 PageID #: 44650
`
`not persuaded that GoDaddy presented a modified or narrowed version of the Court's
`
`claim construction to the jury. GoDaddy consistently included programming language or
`
`platforms in its arguments at trial regarding the "device-dependent code" term. See.
`
`e.g., Trial Tr. at 1024-26 (explaining during closing arguments how device specific code
`
`encompasses code specific to certain operating systems, programming languages, or
`
`platforms). And contrary to Express Mobile's contention, GoDaddy expert witness Kent
`
`also testified that, consistent with the Court's construction, device-dependent code could
`
`include dependency on the operating system, programming language, or platform, not
`
`merely on an operating system. Id. at 618:12-619:23, 676:16-23, 697:23-698:10, and
`
`699:24-700:8. On the "registry" term, contrary to Express Mobile's view, the Court's
`
`construction does not require it to include a simple, unstructured database. In addition,
`
`as GoDaddy points out, the slides it showed to the jury and used during Kent's
`
`testimony could not have more clearly spelled out each of the Court's claim
`
`constructions that Kent was using to render his opinions on infringement of those
`
`claims.
`
`
`
`Second, Express Mobile is essentially raising a claim construction argument
`
`regarding the meaning of the terms "platform" and "database" under the guise of a
`
`challenge to the sufficiency of the evidence of noninfringement. That is, Express
`
`Mobile's argument invites the Court to hold that a browser may constitute a platform,
`
`and vice versa, and that a simple file may constitute a database. But the Court did not
`
`construe the terms platform or database. "In the absence of such a construction . . . the
`
`jury was free to rely on the plain and ordinary meaning of the term[s] [platform and
`
`database] and conclude"—consistent with Kent's testimony—that a browser is not a
`
`
`
`10
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 11 of 19 PageID #: 44651
`
`platform under the Court's construction of device-dependent code (and therefore,
`
`player), and that a file is not a database under the Court's construction of registry.
`
`ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 520 (Fed. Cir. 2012). Moreover, "[a]
`
`sound claim construction need not always purge every shred of ambiguity, including
`
`potential ambiguity arising from the words a court uses to construe a claim term."
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1378–79 (Fed.
`
`Cir. 2017) (internal quotation marks omitted). "Such an endeavor could proceed ad
`
`infinitum." Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1318 (Fed.
`
`Cir. 2016).
`
`
`
`Third, even assuming that Express Mobile is correct that GoDaddy misled the
`
`jury about the proper claim constructions, that would not automatically entitle Express
`
`Mobile to JMOL. "Where an [non]infringement verdict relies on incorrect construction of
`
`the disputed claim terms, this court may grant JMOL or order a new trial to correct the
`
`error, depending on the degree of difference between the incorrect construction and the
`
`correct construction." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1333 (Fed.
`
`Cir. 2008). Express Mobile has not persuaded the Court that the degree of difference
`
`between the allegedly incorrect constructions used by GoDaddy/Kent and the Court's
`
`constructions—if there is even a difference—is significant enough to entitle it to JMOL.
`
`To hold otherwise would "constitute a usurpation of the jury's province as factfinder."
`
`Garrison v. Mollers N. Am., Inc., 820 F. Supp. 814, 819 (D. Del. 1993).
`
`
`
`Express Mobile's other argument on this point is that "[u]nder the correct claim
`
`constructions, Express Mobile presented undisputed evidence that WSB and MWP"
`
`infringe the asserted patents, and that "no reasonable jury could have concluded
`
`
`
`11
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 12 of 19 PageID #: 44652
`
`otherwise." Mot. for J. as a Matter of Law at 2. But the evidence presented by Express
`
`Mobile was disputed, and "when there is conflicting testimony at trial, and the evidence
`
`overall does not make only one finding on the point reasonable, the jury is permitted to
`
`make credibility determinations and believe the witness it considers more trustworthy."
`
`MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1168 (Fed. Cir. 2015). When
`
`evaluating a motion for JMOL, "the court may not weigh the evidence, determine the
`
`credibility of witnesses, or substitute its version of the facts for the jury's version."
`
`Lightning Lube, Inc., 4 F.3d at 1166.
`
`
`
`Express Mobile cites Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306,
`
`(Fed. Cir. 2003), and contends that, in that case, the Federal Circuit "revers[ed] denial
`
`of JMOL where 'the district court allowed the jury to add an additional limitation to the
`
`district court's construction' and this error altered the verdict because there was 'no
`
`alternative basis upon which a reasonable jury could find' noninfringement." Mot. for J.
`
`as a Matter of Law at 11 (quoting Moba, B.V., 325 F.3d at 1322). But even if GoDaddy
`
`did add additional limitations to the Court's construction—which, again, the Court is not
`
`persuaded it did—in this case there were alternative bases upon which a reasonable
`
`jury could find noninfringement. Again, GoDaddy argued that its products were missing
`
`three of the required claim elements taught by the patents, and a finding of
`
`noninfringement on any one of those claim elements would have entitled GoDaddy to
`
`the same verdict. It is not enough for Express Mobile to argue the jury should have
`
`found in its favor, it must establish "there is insufficient evidence for permitting any
`
`different finding" other than that of infringement. Fireman's Fund Ins. Co., 540 F.2d at
`
`1171 (emphasis added). Express Mobile has not made that showing.
`
`
`
`12
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 13 of 19 PageID #: 44653
`
`
`
`In sum, the Court presumes, as it must at this stage, that the jury credited Kent's
`
`testimony over Dr. Almeroth's in finding that the accused instrumentalities did not
`
`infringe the asserted claims as construed by the Court—specifically that the WSB and
`
`MWP platforms did not include: (1) "player" code, (2) "symbolic names," or (3) a
`
`"registry." The trial record demonstrates that the jury received sufficient evidence from
`
`which it could reasonably find that GoDaddy's products do not infringe. The Court
`
`therefore denies Express Mobile's renewed motion for JMOL on this basis.
`
`
`
`The next question is whether the cited conduct entitles Express Mobile to a new
`
`trial. The Court is not persuaded that a new trial is warranted. As Express Mobile
`
`argues, "[a] court may grant a new trial when 'the jury's verdict is against the clear
`
`weight of the evidence, and a new trial must be granted to prevent a miscarriage of
`
`justice.'" Mot. for J. as a Matter of Law at 3 (quoting Genzyme Corp. v. Atrium Med.
`
`Corp., 315 F. Supp. 2d 552, 562 (D. Del. 2004)). Express Mobile also contends that "[a]
`
`court may . . . grant a new trial 'when improper conduct by an attorney or the court
`
`unfairly influenced the verdict.'" Id. (quoting Zarow-Smith v. New Jersey Transit Rail
`
`Operations, Inc., 953 F. Supp. 581, 584–85 (D.N.J. 1997)). Neither situation is present
`
`here. As just discussed, the clear weight of the evidence did not lean in favor of a
`
`verdict of infringement. Nor were the arguments made by GoDaddy, when considered
`
`"as a whole," "so constantly and effectively addressed to the prejudices of the jury that
`
`[the Court] must order a new trial." Draper v. Airco, Inc., 580 F.2d 91, 97 (3d Cir. 1978).
`
`F.
`
`
`
`Undisclosed expert witness testimony
`
`Express Mobile next contends that it is entitled to JMOL or, in the alternative, a
`
`new trial because GoDaddy presented undisclosed expert rebuttal testimony through
`
`
`
`13
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 14 of 19 PageID #: 44654
`
`two of its fact witnesses that resulted in "jury confusion and error." Mot. for J. as a
`
`Matter of Law at 16. The Court sees—and Express Mobile presents—no viable
`
`argument for JMOL on this basis, so it will consider Express Mobile's contentions on this
`
`point only as support for its motion for a new trial. Express Mobile again contends that
`
`"a court may [] grant a new trial 'when improper conduct by an attorney or the court
`
`unfairly influenced the verdict,'" id. at 3 (quoting Zarow-Smith, 953 F. Supp. at 584–85),
`
`or based on "substantial errors in admission or rejection of evidence." Montgomery
`
`Ward & Co. v. Duncan, 311 U.S. 243, 251 (1940).
`
`
`
`Under Federal Rule of Civil Procedure 26(a)(2)(A), a party must disclose the
`
`identity of a witness who is going to present expert (i.e., non-lay person) testimony.3
`
`Rule 26(a)(3)(B) requires that disclosure to be made at least thirty days before trial
`
`unless the court orders otherwise. A disclosure under Rule 26(a)(2)(A) must be
`
`accompanied by a statement of "the subject matter on which the witness is expected to
`
`present evidence under Federal Rule of Evidence 702, 703, or 705" and "a summary of
`
`the facts and opinions to which the witness is expected to testify." Fed. R. Civ. P.
`
`26(a)(2)(C). A party that fails to make a disclosure required by Rule 26(a) is precluded
`
`from relying on that evidence on a motion or at trial unless the failure to disclose was
`
`"substantially justified or harmless." Fed. R. Civ. P. 37(c)(1).
`
`
`
`During the trial, GoDaddy called as witnesses Aaron Silvas and Franklin Jarrett,
`
`two of its engineers who worked on WSP and MWP, respectively. Express Mobile
`
`contends that their testimony: (1) ran afoul of Rules 26(a)(2)(A) and 26(a)(2)(C)
`
`
`3 There are, of course, additional requirements for retained witnesses who will present
`expert testimony, see Fed. R. Civ. P. 26(a)(2)(B), but that is not what is at issue here.
`14
`
`
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 15 of 19 PageID #: 44655
`
`because it was not timely or properly disclosed; and (2) should have been barred
`
`because "it is an abuse of discretion to permit a witness to testify as an expert on the
`
`issue[] of noninfringement . . . unless that witness is qualified as an expert in the
`
`pertinent art . . . . [and this] prohibition of unqualified witness testimony extends to the
`
`ultimate conclusion[] of infringement . . . as well as to the underlying technical
`
`questions." HVLPO2, LLC v. Oxygen Frog, 949 F.3d 689, 689 (Fed. Cir. 2020).
`
`
`
`Both of these contentions lack merit, as they are based on the mistaken premise
`
`that the testimony of Silvas and Jarrett amounted to rebuttal expert testimony. But
`
`Express Mobile's argument regarding this testimony fails for an even more basic
`
`reason: Express Mobile failed to contemporaneously object to any of Silvas and Jarrett's
`
`testimony during the trial.
`
`
`
`As GoDaddy points out, this post trial motion is not the first time Express Mobile
`
`has asserted a challenge to the testimony of Silvas and Jarrett. During the final pretrial
`
`conference, the Court heard arguments regarding Express Mobile's motion in limine
`
`number seven, in which it sought to preclude Jarrett and Silvas from offering expert
`
`opinions on GoDaddy's source code. The Court concluded that it could not rule on this
`
`in vacuum and that Express Mobile would have to assert any such objections at trial.
`
`The Court stated, quite unambiguously, that it was "going to do this the way Judge
`
`Andrews did, and it's going to be based on objections that are made at the trial and
`
`everybody basically acts at their peril. It's just that simple." Pretrial Conf. Tr. at 27:8-24
`
`(emphasis added). The Court went on to say:
`
`So, you know, I'll determine when I get an objection whether -- if it
`concerns the dividing line between fact and opinion testimony, I'll
`determine based on whatever foundation's been laid, which side of the line
`it's on. And if I conclude it's on the opinion side of the line, and there's not
`
`
`
`15
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 16 of 19 PageID #: 44656
`
`a sufficient disclosure under Rule 26(a), then it's probably going to get
`excluded. And if I conclude it's on the fact side of the line, then it's
`probably not going to get excluded. So -- but I just think it would be
`borderline reckless for me to try to define that line right now. I think that's
`best dealt with by, A, people being careful, and, B, objections and ruling
`on the objections. So that's what I'm going to do.
`
`Id. at 27:15–28:2 (emphasis added). The Court therefore denied Express Mobile's
`
`motion in limine "without prejudice to making objections at trial." Id. at 28:3-4 (emphasis
`
`added).
`
`
`
`On the morning of the third day of trial, before the jury entered the courtroom,
`
`Express Mobile again raised its concerns regarding Jarrett and Silvas's testimony.
`
`Specifically, counsel for Express Mobile stated that, because Jarrett and Silvas were
`
`going to be shown and asked about some of the same exhibits that Dr. Almeroth used
`
`to conduct his infringement analysis, it appeared that GoDaddy sought "to implicitly or
`
`explicitly, you know, engage in a rebuttal." Trial Tr. at 468:14-16. The Court overruled
`
`the objection, concluding that the mere fact that these witnesses would be shown
`
`exhibits that had been shown to an expert was not enough to make their testimony
`
`expert testimony. The Court further stated, "as it's characterized, I don't think it's expert
`
`testimony . . . . [and] the jury's basically told they're to evaluate expert testimony and
`
`fact testimony the same way." Id. at 470:9-13. The Court instructed GoDaddy,
`
`however, that it was not to refer to Dr. Almeroth when showing Jarrett or Silvas these
`
`exhibits or asking questions about them.
`
`
`
`According to Express Mobile, Jarrett and Silvas proceeded to charge ahead past
`
`the Court's directive and give what Express Mobile contends was undisclosed expert
`
`testimony rebutting that of Dr. Almeroth. But Express Mobile did not make a single
`
`contemporaneous objection to their testimony. Again, the Court had clearly instructed
`
`
`
`16
`
`

`

`Case 1:19-cv-01937-MFK-JLH Document 341 Filed 07/05/23 Page 17 of 19 PageID #: 44657
`
`Express Mobile during the pretrial conference that if it believed that Jarrett or Silva were
`
`asked during the trial to render expert testimony during the trial, it would be incumbent
`
`upon Express Mobile to object at that time. And the Court provided more guidance
`
`about what the appropriate boundaries might be on the morning Jarrett and Silvas took
`
`the stand, when Express Mobile raised the issue for the second time. But Express
`
`Mobile still did not object to either witness's testimony as it was unfolding, as it was
`
`required to do.
`
`
`
`In fact, the only objection Express Mobile made contemporaneously concerned
`
`not the content of Jarrett or Silvas's testimony, but a single exhibit that was not timely
`
`disclosed as an exhibit that would be used during Jarrett's testimony.4 But GoDaddy's
`
`failure to include that exhibit—PTX-550D—in Jarrett's exhibit binder is not a violation of
`
`the Federal Rules of Civil Procedure that could even conceivably entitle Express Mobile
`
`to a new trial. Instead, it was a mere violation of paragraph 47 of the parties' mutual
`
`agreement—as contained in the joint pretrial ord