Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 1 of 305 PageID #: 20350
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBOCAST, INC.,
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`v.
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`NETFLIX, INC.,
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`Plaintiff and
`Counterclaim
`Defendant,
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`Defendant and
`Counterclaim
`Plaintiff.
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`Civil Action No. 1:22-cv-00305-
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`LETTER MOTION TO STRIKE CERTAIN PORTIONS OF THE EXPERT REPORTS
`OF DR. AVIEL RUBIN AND MR. CHRISTOPHER MARTINEZ
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`JLH-CJB
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`JURY TRIAL DEMANDED
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`[PUBLIC VERSION]
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 2 of 305 PageID #: 20351
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`Dear Judge Burke:
`Netflix misled both the Court and Robocast regarding two issues: certain alleged prior art
`materials it was pursuing from third parties it subpoenaed, and its legal theories concerning alleged
`non-infringing alternatives. Netflix’s experts purport to rely on these surprise materials and
`theories. Thus, pursuant to Fed. R. Civ. P. 37, Robocast requests that the Court strike those portions
`of Netflix’s expert reports identified below that rely on: 1) a declaration produced on the last day
`of fact discovery from an alleged prior artist whom Netflix subpoenaed, but represented to the
`Court it would not be pursuing discovery from; and 2) new theories of non-infringing alternatives
`not disclosed until the last day of discovery, after Netflix represented that non-infringing
`alternatives were irrelevant to its case.
` Robocast respectfully requests limited portions of the following expert reports be struck
`for these two discrete reasons, as detailed below and in the attached Proposed Order: 1) Paragraphs
`327-28 of the Expert Report of Dr. Aviel D. Rubin on Invalidity of U.S. Patent Nos. 7,155,451;
`8,606,819; 8,965,932, served by Netflix on June 14, 2024 (Ex. 1, “Rubin Invalidity Report”); 2)
`Paragraphs 614-753 of the Expert Report of Aviel D. Rubin, Ph.D. Non-Infringement of U.S.
`Patent Nos. 7,155,451, 8,606,819, 8,965,932 served by Netflix on July 11, 2024 (Ex. 2, “Rubin
`Non-infringement Report”); 3) Paragraphs 197-201 and Schedules 16.0-16.3 of the Rebuttal
`Expert Report of Christopher A. Martinez with Respect to Damages, served by Netflix on July 11,
`2024 (Ex. 3, “Martinez Rebuttal Report”); and 4) Paragraphs 322, 323, and 338 of the Reply Expert
`Report of Dr. Aviel D. Rubin on Invalidity of U.S. Patent Nos. 7,155,451; 8,606,819; 8,965,932,
`served by Netflix on August 6, 2024 (Ex. 4, “Rubin Invalidity Reply”).
`I. Legal Standard
`Under F.R.C.P. 37(c)(1), “[i]f a party fails to provide information ... as required by Rule 26(a)
`or (e), the party is not allowed to use that information ... to supply evidence on a motion, at a
`hearing, or at trial, unless the failure was substantially justified or is harmless.” Whether a failure
`to disclose was harmless is guided by the Pennypack factors: (1) the prejudice or surprise to the
`party against whom the evidence is offered; (2) the possibility of curing the prejudice; (3) the
`potential disruption of an orderly and efficient trial; (4) the presence of bad faith or willfulness in
`failing to disclose the evidence; and (5) the importance of the information withheld. See
`Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997) (citations omitted). “When
`a case involves complex litigation between sophisticated parties, courts are more willing, given a
`strong showing of prejudice, to exclude evidence even absent a showing under each Pennypack
`factor.” Acceleration Bay LLC v. Activision Blizzard Inc., No. 1:16-CV-00453-RGA, 2019 WL
`4194060, at *7 (D. Del. Sept. 4, 2019).
`
`II. Netflix Misled Robocast and the Court About Discovery Sought From Third
`Parties Through Its Subpoenas
`At the April 5, 2024, hearing concerning Robocast’s request to extend the fact discovery
`deadline, Judge Hall asked the parties what fact depositions needed to be scheduled. Robocast
`alerted the Court that Netflix had subpoenaed multiple third parties for documents and testimony
`concerning alleged prior art, but had provided no documents produced by such parties to Robocast,
`or any indication as to whether or when depositions would be proceeding. In response, Netflix
`represented to Robocast—and the Court—that it did not intend to proceed with the subpoenas,
`only to ambush Robocast with declarations from two subpoenaed witnesses on the last day of
`discovery. Robocast thus respectfully requests that the following paragraphs of Dr. Rubin’s reports
`relying on one of these surprise declarations be struck: Rubin Invalidity Report ¶¶ 327-28; Rubin
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`1
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 3 of 305 PageID #: 20352
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`Invalidity Reply ¶¶ 322–23, 338.
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`Netflix represented to the Court on April 5th that it had received no documents from and
`was not pursuing certain subpoenas issued on the inventors of alleged prior art, including Dr. Marc
`H. Brown. (See D.I. 178-181 (1/23/24 Notices of Subpoenas).) When asked by the Court about
`the status of these four outstanding subpoenas to prior artists, including the subpoena issued to Dr.
`Brown, Netflix’s counsel stated simply “My understanding is we did not receive any documents
`from those four individuals and we do not intend to pursue the depositions.” Ex. 5 (April 5 Tr.) at
`54:5-7. The Court accepted and relied on that representation as an indication that Netflix would be
`dropping its subpoenas, noting simply: “Okay. So I’m hearing from them that they’re not going to
`pursue the first four, they don’t have anything to give you from those, so that takes care of those.”
`(Id. at 54:22-25.) Netflix made no attempt to correct the Court’s understanding.
`Despite this representation, on the last day of fact discovery, Netflix produced declarations
`from two of the third parties it subpoenaed, Dr. Brown and Mr. Robert Tarabella purporting to
`provide substantive information related to supposed prior art.1 (Ex. 6 (Email correspondence) at 2;
`Ex. 7 (4/16/24 Tarabella Decl.); Ex. 8 (5/12/23 Brown Decl.); D.I. 279.) Robocast immediately
`objected to this late produced, inadmissible “evidence.” Ex. 9.2 Further enhancing prejudice to
`Robocast, the version of the Brown Declaration served on Robocast on May 13, 2023 which bore
`his signature and a date of May 12, 2024, omitted Exhibits A-D, which were on May 20, 2024.
`Ex. 6, Ex. 10 (Brown Decl. with Exs. A-D).) Robocast reiterated its objections. (Ex. 6.)
`While Mr. Brown’s declaration claims he had no documents to produce responsive to the
`subpoena, he “direct[ed]” Netflix to documents in the public domain which he attached to his
`declaration and on which Dr. Rubin relied in his Reports. (Exs. 8, 10 ¶ 5.) This language was likely
`orchestrated to allow Netflix to argue that their representation to Court that it did not “receive”
`documents in response to its subpoena was not technically false, but clever pedantry cannot hide
`Netflix’s willful conduct. It is highly likely that Netflix was in contact with these third parties at
`the time of the April 5th hearing, given that Netflix identified the documents it had been “directed
`to” as constituting the DeckScape reference for the first time in its March 12, 2024 final invalidity
`contentions less than a month before the hearing. (Compare Ex. 11 (7/6/23 Invalidity Contentions
`at i, 13-18 (not discussing Deckscape in summary of prior art, listing several documents now
`considered “Deckscape” as separate prior art) to Ex. 12 (3/12/24 Final Invalidity Contentions) at
`i, 35-36 and Exs. 8, 10 ¶¶ 6-9.) Further, Mr. Tarabella’s declaration was executed less than two
`weeks after Netflix represented to the Court that it was not pursuing these subpoenas. (Ex. 7.)3
`Pennypack Factor 1 – Prejudice And Surprise To Robocast. Netflix’s maneuver was
`prejudicial to Robocast. By representing to Robocast and the Court that it had neither received nor
`
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`1 Mr. Tarabella’s declaration is dated April 16, 2024, nearly a month before the close of fact
`discovery and Netflix’s production of the declarations. While Dr. Brown’s declaration is dated
`May 12, 2024, it is unclear when Netflix first made contact with Dr. Brown and when he “directed”
`Netflix to the documents attached thereto.
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`2 In making the instant motion to strike, Robocast does not waive any evidentiary objections to use
`of these declarations at trial.
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`3 While Mr. Tarabella’s declaration was not cited in Dr. Rubin’s expert report, he is relying on the
`“Tarabella” reference as prior art. As such, Netflix should have been candid about its efforts to
`obtain the declaration and timely in producing it once obtained. Robocast reserves all rights to
`object to any attempted use of the Tarabella Declaration in dispositive motions or at trial.
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`2
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 4 of 305 PageID #: 20353
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`was pursuing evidence from the third parties it subpoenaed, Netflix misled Robocast and deprived
`it of the opportunity to seek its own discovery relating to the declarant and his work or to cross-
`examine him on the statements in his declaration. This has undermined Robocast’s ability to
`challenge Dr. Rubin’s invalidity opinions insofar as it is based on the supposed prior art system
`propped up by the Brown Declaration.
`Pennypack Factor 2 – The Prejudice Cannot Feasibly Cured. It is too late to cure the
`prejudice of these surprise prior artist declarations with additional discovery. Fact discovery is
`closed, expert depositions have already taken place, and summary judgment motions are due in
`two days. Indeed, Judge Hall has been reticent to grant any schedule extensions which further
`highlights the prejudice suffered by Robocast due to Netflix’s tactics.
`Pennypack Factor 3 – Allowing Reliance On Surprise Declarations Will Disrupt An
`Orderly And Efficient Trial. Because Netflix actively led Robocast away from discovery of these
`prior artists, Robocast had no opportunity to test the representations made in the declarations with
`deposition testimony nor determine their accuracy or authenticity. Reopening fact and expert
`discovery at this stage of litigation would be extremely disruptive, and allowing reliance on the
`declarations at this stage risks a sideshow at trial concerning the propriety of such reliance and the
`circumstances by which Netflix procured the declarations as relevant to declarant bias. Nor is it
`clear that the witnesses are within the Court’s trial subpoena power.
`Pennypack Factor 4 – Netflix Willfully Misled Robocast And The Court. There is no
`question that Netflix’s conduct indicates willfulness or bad faith. In order to avoid an extension of
`discovery, it represented to the Court that it received no documents and would not be pursuing
`discovery from certain third parties, including Dr. Brown. And then, only when it was too late for
`Robocast to seek further discovery, it produced Dr. Brown’s and Mr. Tarabella’s declarations.
`Netflix did not explain why these declarations were not produced earlier, or how they could be
`squared with Netflix’s prior representations. Nor did it ever attempt to correct its prior
`(mis)representation to the Court.
`Pennypack Factor 5 – Striking Reliance On The Surprise Declarations Would Not
`Exclude Crucial Evidence. Nor would striking the relevant portions of Dr. Rubin’s reports fatally
`undermine Netflix’s case. Netflix itself made clear to the Court that it was willing to forego
`receiving testimony from the subpoenaed prior artists. And while Robocast will of course contest
`Dr. Rubin’s contentions that the Deckscape system is prior art and that it renders any claim of any
`asserted patent obvious on the merits at trial, striking opinions relying on the late-disclosed
`declaration does not prevent Netflix from putting on its invalidity case in general.4
`At this stage, the appropriate remedy for Netflix’s willfully misleading conduct is to strike
`the portions of Dr. Rubin’s reports that rely on the late disclosed declarations, namely: ¶¶ 327-28
`of the Rubin Invalidity Report and ¶¶ 322–23, 338 of the Rubin Invalidity Reply.
`III. Because Netflix Misled Robocast About Its Non-Infringing Alternatives
`Theories, Its Experts’ Opinions On These Theories Should be Struck
`Netflix affirmatively misled Robocast about its position concerning the relevance of non-
`infringing alternatives (“NIAs”) in order to block Robocast from probing its brand-new theories
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`4 Robocast also raised objections to the late disclosure of the Deckscape system as grounds for
`invalidity and a number of late-disclosed obviousness combinations, but in the interest of
`narrowing issues to the most flagrant and prejudicial has elected to defer moving to strike Dr.
`Rubin’s obviousness opinions on these late-disclosed references and combinations in general.
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`3
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 5 of 305 PageID #: 20354
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`sprung on Robocast on the last day of fact discovery. The portions of Netflix’s experts’ reports
`opining on these undisclosed purported NIAs should be struck.
`On August 11, 2023, Robocast served its Interrogatory No. 8 as follows: “If you contend
`that you have an available and acceptable alternative to infringing the Patent-in-Suit, Identify and
`describe the technical and financial details and commercial features and benefits of any such
`available, acceptable non-infringing alternative(s).” (Ex. 13 (8/11/23, Robocast’s 1st Set
`Interrogatories to Netflix) at 11.) On September 11, 2023, Netflix refused to respond on the
`grounds that the information sought was “no longer relevant to any claim or defense in this
`litigation.” (Ex. 14 (Netflix’s 5/13/24 4th Supp. Objs. & Resps. to Interrogatories 1-11) at 62-64.)
`For the better part of a year after, as the parties proceeded through fact discovery, Netflix did not
`amend or supplement that response. Then, on the final day of fact discovery—and after all
`documents were produced and fact witness deposed—Netflix changed course, and served a 15-
`page supplemental interrogatory response with no fewer than seven categories of alleged non-
`infringing alternatives on Robocast. (Ex. 14 at 64-79.) Now, Netflix has served expert reports that
`rely heavily on these previously undisclosed non-infringing alternatives. (See Martinez Rebuttal
`Report ¶¶ 197-201, Schedules 16.0-16.3; Rubin Non-Infringement Report ¶¶ 614-753.)
`Netflix may argue that its September 11, 2023, interrogatory response reserved its rights to
`later identify non-infringing alternatives “in response to any reasonable royalty damages
`contentions provided by Robocast, which Robocast has yet to provide.” (Ex. 14 at 63.) This excuse
`fails for multiple reasons. First, Netflix did not merely refuse to identify NIAs – it insisted they
`were irrelevant until the eleventh hour. Second, Netflix failed to provide any justification as to
`how its own contentions on NIAs somehow depended on Robocast’s damages contentions. Third,
`Robocast had provided sufficient damages contentions months earlier,5 as evidenced by the fact
`that Netflix never moved to compel further damages contentions before the close of fact discovery.
`Fourth, Netflix’s NIA contentions in no way rely on Robocast’s damages contentions, and were
`in fact served on the same day and without the benefit of Robocast’s more detailed response to
`Netflix’s Interrogatory on damages.
`Pennypack Factor 1 – Prejudice And Surprise To Robocast: The prejudice to Robocast
`of Netflix’s maneuver is plain. Robocast proceeded through discovery understanding, in reliance
`on Netflix’s sworn discovery responses, that Netflix would not be relying on NIAs as part of its
`non-infringement or damages case. Then, when Netflix supplemented its response at the close of
`fact discovery to identify NIAs, it no longer had the opportunity to seek documents relating to
`these supposed NIAs or question Netflix’s fact witnesses about them. This, in turn, has
`
`5 Robocast served its initial Rule 26 damages disclosures on February 27, 2023. (Ex. 15.) Robocast
`supplemented its Rule 26 damages disclosures on June 16, 2023, (Ex. 16) and again supplemented
`its Rule 26 damages disclosures on August 23, 2023 to indicate it no longer sought to pursue
`damages under a lost profit theory in favor of seeking a reasonable royalty under the Georgia-
`Pacific framework, with a detailed computation to be provided in forthcoming expert report(s).
`(Ex. 17.) The Court held that Robocast’s Rule 26 disclosures were sufficient at that time. (Ex. 18.)
`Robocast thereafter responded to Netflix’s Interrogatory No. 12 seeking premature expert
`testimony on damages consistently with and incorporating by reference its Rule 26 disclosures on
`September 5, 2023. (Ex. 19.) Netflix did not move to compel a further response to its Interrogatory
`No. 12 nor to compel further Rule 26 disclosures. On May 13, 2024, Robocast again supplemented
`its response to Interrogatory 12 to provide additional details on how it expected its expert to
`analyze damages, incorporating largely information and documents from Netflix. (Ex. 20.)
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`4
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`substantially hampered the ability of Robocast’s experts to address the opinions offered by
`Netflix’s experts based on these previously undisclosed NIAs.
`For example, Robocast’s infringement expert Dr. Almeroth indicated that Netflix’s
`interrogatory response failed to cite evidence of the acceptability of these purported non-infringing
`alternatives and likely seriously underestimated the time, effort, and costs involved in engineering,
`testing, and implementing the alleged alternatives. (Ex. 21 (6/14/24 Expert Report of Kevin
`Almeroth) ¶¶ 496-524.) Because Netflix’s actual NIA position came after Robocast had deposed
`Netflix’s engineers who would have had knowledge on these topics, and after Robocast could
`serve document requests for, e.g. documents relevant to design changes with similar scope,
`Robocast and its expert had no opportunity to further investigate the viability of Netflix’s NIAs.
`Pennypack Factor 2 – The Prejudice Cannot Feasibly Be Cured: The prejudice suffered
`by Robocast cannot feasibly be cured through additional discovery at this stage of the case. Fact
`discovery has closed. The relevant witnesses who could testify regarding the supposed non-
`infringing alternatives identified by Netflix—including as to their cost, work required, feasibility,
`likely user response—were already deposed. Expert reports have been served and the experts
`deposed. Dispositive motions are due in two days. Any attempt to reopen these proceedings in an
`attempt to cure the prejudice suffered by Plaintiff would require a complete rewrite of the case
`schedule—including the trial date—and impose substantial cost on the Plaintiff.
`Pennypack Factor 3 – Allowing The NIA Opinions Will Disrupt An Orderly And
`Efficient Trial: Netflix’s late-breaking change of heart on the relevance and existence of
`numerous NIAs is contrary to the orderly and efficient progress of this litigation. As noted above,
`at this late stage, allowing Netflix’s surprise NIAs evidence without prejudicing Robocast would
`require at a minimum reopening fact and expert discovery. Given the stage of the litigation —
`imminent dispositive motions and a trial set for early March 2025 — this would derail the case
`schedule and impede an efficient resolution of the action.
`Pennypack Factor 4 – Netflix’s Bait And Switch Was Willful: It is not a coincidence
`that Netflix waited until the very last day of discovery to make a complete U-turn on its consistently
`held position that NIAs were irrelevant, when Robocast could no longer seek documents or
`question witnesses about the supposed NIAs. It cannot be that Netflix only discovered the
`relevance of the supposed non-infringing alternatives exactly when Robocast lost the ability to
`seek further discovery, and when its prior position might prove inconvenient for its experts. And
`this maneuver is simply one particular instance of Netflix’s pattern of gamesmanship and strategic
`non-disclosure throughout this litigation.
`Pennypack Factor 5 – Striking NIAs Opinions Will Not Exclude Crucial Evidence:
`Striking the relevant portions of the Martinez and Rubin reports will not prevent Netflix from
`putting on its defense. Netflix consistently took the position that non-infringing alternatives were
`irrelevant. Instead, it will simply prevent Netflix from introducing a brand new issue on which
`Robocast was deprived of the opportunity to seek discovery, preserving the vast majority of both
`experts’ opinions as to damages and Netflix’s non-infringement and invalidity defenses.
`Accordingly, Robocast respectfully asks that the Court strike ¶¶ 183-201 and Schedule 16
`of the Martinez Rebuttal Report and ¶¶ 614-753 of the Rubin Non-Infringement Report.
`IV. Conclusion
`Netflix has engaged in a repeated pattern of non-disclosure, misleading conduct, and
`gamesmanship, resulting in prejudice to Robocast. Accordingly, for the reasons stated herein,
`Robocast respectfully asked that the Court strike the portions of the expert reports of Mr. Martinez
`and Dr. Rubin described above and in the attached Proposed Order.
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`5
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`cc: Counsel of Record
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`Respectfully Submitted,
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`/s/ Stephen B. Brauerman
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`Stephen B. Brauerman (#4952)
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`6
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 8 of 305 PageID #: 20357
`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 8 of 305 PagelD #: 20357
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 9 of 305 PageID #: 20358
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`PRIATE IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ROBOCAST, INC.,
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`
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`v.
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`NETFLIX, INC.,
`
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`Defendant and
`Counterclaim Plaintiff.
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`)
`)
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`EXPERT REPORT OF AVIEL D. RUBIN, Ph.D. ON INVALIDITY OF U.S. PATENT
`NOS. 7,155,451; 8,606,819; 8,965,932
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`C.A. No. 1:22-cv-00305-JLH-CJB
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`HIGHLY CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY
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`
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`) ) ) ) ) ) ) ) )
`
`Plaintiff and
`Counterclaim Defendant,
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`

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`for generating a set of indicia used to select and create sets of
`image collections for subsequent display on a video terminal at a
`user-selected time and sequence; means for collecting sets of
`image collections based on the set of indicia; and means for
`displaying of representative portions of each of the sets of image
`collections on the video terminal. Means are provided for
`displaying the sets of image collections.
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`See Tarabella at Abstract.
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`326. The term “images” as used in Tarabella “refers to the graphic images such as
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`drawings or photographic-type representations, to text, to sounds associated with the graphics or
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`text, and to combinations of graphic images, text and sound.” Tarabella at 3:29-33. Tarabella
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`provides the means for a user to identify at least one resource from a plurality of resources via a
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`communications network. Resources called “images” in Tarabella are stored in one or more
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`libraries located on remote computers. The user creates a user profile that specifies the subject
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`matter they are interested in. Software in the user’s computer communicates regularly and
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`automatically over a network with the libraries to collect the resources that match the user’s profile.
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`These resources are downloaded to the user’s computer and are automatically displayed in a
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`sequence when the computer becomes idle. The user can determine the duration during which the
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`resource is displayed on their terminal.
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`C.
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`DeckScape
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`1.
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`Prior Art Status of DeckScape
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`327. DeckScape is a web browsing program developed in 1994 by Dr. Marc H. Brown
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`and Robert Schiller. I understand that DeckScape was publicly described in printed publications
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`as early as April 1995, and specifically in following documents:
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`• Marc H. Brown and Robert A. Shillner, DeckScape: An Experimental Web
`Browser, 27 Computer Networks and ISDN Systems at 1097–1104 (April, 1995)
`(NFLX_0000882–889);
`• Marc H. Brown and Robert A. Shillner, A New Paradigm for Browsing the Web,
`ACM CHI Companion (May 7-11, 1995) (NFLX_019195–906);
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`133
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`• Marc H. Brown and Robert A. Shillner, The DeckScape Web Browser, CHI 96
`(April 13-18, 1996)
`(Abstract and
`accompanying Technical Video)
`(NFLX_0192088–089, NFLX_0191880); and
`• Marc H. Brown and Marc A. Najork, Distributed Active Objects, SRC Research
`Report (April 15, 1996) (NFLX_0000750–775).
`
`
`See Brown Declaration ¶¶ 3-9. According to Dr. Brown, “only one version of the DeckScape
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`product was developed, and its functionality remained the same from the summer of 1994 through
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`the end of 1996. Dr. Brown further stated that the publications listed above “each describe the
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`DeckScape product as it existed after its development in the summer of 1994.” Id.
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`328. Thus, I understand that the DeckScape system is prior art to the Asserted Patents at
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`least under 35 U.S.C. §§ 102(a) and 102(b) because the DeckScape system was first described in
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`a printed publication and in public use by April 1995, over a year before Robocast’s asserted
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`priority date of the Asserted Patents, which is September 3, 1996, the filing date of U.S. Provisional
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`Application No. 60/025,360.
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`329. Furthermore, I understand that each of the above publications is individually prior
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`art to the Asserted Patents at least under 35 U.S.C. § 102(a), as they each predate the September
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`3, 1996 alleged priority date, which is September 3, 1996, the filing date of U.S. Provisional
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`Application No. 60/025,360. Moreover, those publications dating over one year prior to September
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`3, 1996 (i.e., before September 3, 1995) are additionally prior art under 35 U.S.C. § 102(b) because
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`they were published at least a year before Robocast’s asserted priority date of the Asserted Patents.
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`330.
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`I further understand that for prior art systems, like DeckScape, I may rely on
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`multiple publications and media describing that prior art system, and that I am not limited to
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`referring to any single publication to understand the functionality of that system.
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`134
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`2.
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`Overview of DeckScape
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`331. DeckScape was an experimental Web browser developed by Robert A. Shillner and
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`Marc H. Brown in 1994 at the Systems Research Center (SRS) of the Digital Equipment
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`Corporation (DEC) in Palo Alto California. Like most of the work coming out of SRS, DeckScape
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`was a prototype product intended at investigating the usefulness of certain novel ideas in computer
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`systems through daily usage. More precisely, DeckScape was aimed at “exploring new methods
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`of navigating and organizing pages on the Web.” See DeckScape: An Experimental Web Browser
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`(NFLX_0000882-889) at Overview.
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`332. These “new methods of navigating and organizing pages” were inspired by the
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`arrangement of cards in a deck of playing cards. DeckScape introduced the concept of “deck
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`abstraction” – “a way for the users to organize material” and used it in creative ways to improve
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`the user experience in browsing the Web. SeeDeckScape: An Experimental Web Browser
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`(NFLX_0000882-889) at Overview and Decks For Organizing Web Pages. DeckScape allowed
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`users to record and revisit their browsing content and sequence, search for and organize Web pages
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`in categories and take advantage of several convenience features.
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`333. DeckScape automatically recorded the user’s browsing history by placing the most
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`recently visited page on the same deck window, on top of and obscuring the parent page.
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`Navigation controls were provided for each deck. More specifically, “When the user clicks a link
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`on a page, a new Web page appears on top of the deck, obscuring the page that was previously
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`visible. The user can leaf through a deck's pages one at a time, jump to the top or bottom of a deck,
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`or move to any particular page by choosing its name from a list of the deck’s current contents.”
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`See DeckScape: An Experimental Web Browser (NFLX_0000882-889) at Overview.
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`334. DeckScape allowed users to collect, organize, and view Web content on their
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`computer:
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`135
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 13 of 305 PageID #: 20362
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`XV. DECLARATION
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Dated: June 14, 2024
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`By: ____________________________
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`Aviel D. Rubin, Ph.D.
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`704
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`

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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 14 of 305 PageID #: 20363
`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 14 of 305 PagelD #: 20363
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`EXHIBIT 2
`EXHIBIT 2
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`

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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 15 of 305 PageID #: 20364
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 1:22-cv-00305-JLH-CJB
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`HIGHLY CONFIDENTIAL –
`ATTORNEYS’ EYES ONLY
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`HIGHLY CONFIDENTIAL –
`SOURCE CODE
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`
`
`)))))))))))
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`Plaintiff and
`Counterclaim Defendant,
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`Defendant and
`Counterclaim Plaintiff.
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`ROBOCAST, INC.,
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`v.
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`NETFLIX, INC.,
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`
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`EXPERT REPORT OF AVIEL D. RUBIN, Ph.D. ON NON-INFRINGEMENT OF U.S.
`PATENT NOS. 7,155,451; 8,606,819; 8,965,932
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`
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`

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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 16 of 305 PageID #: 20365
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`HIGHLY CONFIDENTIAL – SOURCE CODE
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`that influenced the development of the original Web browsers (e.g., Mosaic) in the beginning to
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`mid-1990s, during the introduction of the WWW. As such, Dr. Almeroth has not identified an
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`alleged benefit that reflects a point of novelty over the prior art.
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`612. Moreover, I also note that the concept of “how a user interacts with the platform,
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`including the ability to show the user certain content and direct the user to that content” is not
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`actually claimed by the Asserted Patents, let alone recited in the Asserted Claims. Dr. Almeroth
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`has not shown that the alleged benefit even flows from the Asserted Claims. The claim language
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`in each of the Asserted Claims recites “without requiring user input” as one step among the method
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`steps that must be performed. This indicates that the Asserted Claims, and therefore the claimed
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`invention, is intended to remove or eliminate user interaction. Therefore, the alleged benefit of
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`“how a user interacts with the platform” is contradictory to recited steps of the Asserted Claims.
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`613. Furthermore, as I have noted above, the presence of the Accused Functionality does
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`not indicate that subscribers have actually used the autoplay functionality; this is because Netflix
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`has preserved, since even the initial introduction of the Accused Functionality, the ability for the
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`subscriber to click to advance to a next title. Relatedly, the presence of the Accused Functionality
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`does not indicate that it has indeed influenced how a subscriber interacts with the platform. And,
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`as I have discussed throughout this Report, Netflix provides a limit on how many instances of
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`autoplayed titles can occur before the subscriber must affirmatively provide input to confirm that
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`he/she is still watching. Additionally, the points I have made with respect to Dr. Almeroth’s
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`allegations regarding user engagement in Section X.D apply here as well.
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`XI. NON-INFRINGING ALTERNATIVES
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`614. As discussed above, it is my opinion that Netflix has not infringed the Asserted
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`Patents during the alleged damages window, which I understand is from March 7, 2016, through
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`188
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`Case 1:22-cv-00305-JLH Document 371 Filed 10/08/24 Page 17 of 305 PageID #: 20366
`HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY
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`August 9, 2020. However, I provide my opinion below regarding whether there were acceptable
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`non-infringing alternatives to the Asserted Claims that would have been available at or around the
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`time of the hypothetical negotiation, for the purposes of calculating damages. My discussions
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`below of the non-infringing alternatives does not indicate that I believe the Netflix Service,
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`including the Accused Functionality, has infringed the Asserted Patents.
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`615.
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`It is my understanding that,