Case 6:20-cv-01128-ADA Document 153 Filed 09/08/22 Page 1 of 12
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`PUBLIC VERSION
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`STRATOSAUDIO, INC.,
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`Plaintiff,
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`v.
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`SUBARU OF AMERICA, INC.
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`Defendant.
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`Case No. 6:20-CV-01128-ADA
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`JURY TRIAL DEMANDED
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`STRATOSAUDIO’S OPPOSITION TO SUBARU OF AMERICA, INC.’S MOTION TO
`STRIKE EXPERT OPINIONS REGARDING CLAIM CONSTRUCTION
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`StratosAudio Exhibit 2019
`Hyundai v StratosAudio
`IPR2021-01267
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`Case 6:20-cv-01128-ADA Document 153 Filed 09/08/22 Page 2 of 12
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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` ARGUMENT ...................................................................................................................... 1
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`A.
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`B.
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`Dr. Mangione-Smith and Dr. Moon Correctly Describe the “Output” Element .... 2
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`Dr. Mangione-Smith Properly Opines on Infringement of the “Location”
`Limitation for the ’405 Patent ................................................................................. 5
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` CONCLUSION ................................................................................................................... 7
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`Case 6:20-cv-01128-ADA Document 153 Filed 09/08/22 Page 3 of 12
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`Apple, Inc. v. Samsung Elecs. Co.,
`No. 12:cv-00630-LHK, 2014 U.S. Dist. LEXIS 22938 (N.D. Cal. Feb. 20, 2014) ...................2
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`Brown v. 3M,
`265 F.3d 1349 (Fed. Cir. 2001)..................................................................................................3
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`Cordis Corp. v. Boston Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009)..................................................................................................2
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`Game & Tech. Co. v. Activision Blizzard Inc.,
`926 F.3d 1370 (Fed. Cir. 2019)..................................................................................................4
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`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008)..................................................................................................4
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`Kustom Signals, Inc. v. Applied Concepts, Inc.,
`264 F.3d 1326 (Fed. Cir. 2001)..................................................................................................3
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`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013)..................................................................................................3
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`Yeti Coolers, LLC v. RTIC Coolers, LLC,
`No. A-15-CV-597-RP, 2017 U.S. Dist. LEXIS 11163 (W.D. Tex. Jan. 27, 2017) ...................2
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`INTRODUCTION
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`It its motion to strike expert opinions regarding claim construction (Dkt. No. 100 (the
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`“Motion” or “Mot.”)), Subaru of America, Inc. (“Subaru”) challenges certain portions of the
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`expert opinions of Dr. William Mangione-Smith and Dr. Todd Moon as purportedly raising
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`improper new claim constructions. Subaru only identified these purported “claim construction”
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`disputes after StratosAudio, Inc. (“StratosAudio”) notified Subaru that it would move to strike
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`improper claim constructions from Subaru’s technical expert. As explained in that pending
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`motion (Dkt. No. 107), Subaru’s expert provides new constructions based on previously
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`undisclosed dictionary definitions that contradict express definitions in the specifications. By
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`contrast, StratosAudio’s experts do not rely on any new extrinsic evidence or offer any new
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`constructions of the claim terms; they merely apply the plain and ordinary meaning of the claim
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`terms at issue as a person of ordinary skill in the art would understand them. The Federal Circuit
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`has recognized the distinction between showing infringement based on plain meaning and
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`improper attempts to re-construe terms with new evidence.
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`Neither Dr. Mangione-Smith nor Dr. Moon offers new constructions on the meaning of
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`“or.” Instead, they explain that the plain language of the “output” limitation of claim 9 of the
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`’081 patent requires two outputs, an output of the first receiver module and an output of the
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`second receiver module. Similarly, Dr. Mangione-Smith explains how Subaru’s transmission of
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`location information infringes the ’405 patent under the plain language of the asserted claims.
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`His opinion raises at most a factual dispute. Because none of the opinions Subaru identifies are
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`improper, its motion to strike should be denied.
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`ARGUMENT
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`An expert’s role is limited to applying the Court’s claim construction and, for non-
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`construed claim terms, applying the plain and ordinary meaning as would be understood by a
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`1
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`person having ordinary skill in the art. See Yeti Coolers, LLC v. RTIC Coolers, LLC, No. A-15-
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`CV-597-RP, 2017 U.S. Dist. LEXIS 11163, at *7 (W.D. Tex. Jan. 27, 2017) (“The third phrase
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`was not construed, as neither party requested its construction. As a result, the plain and ordinary
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`meaning of that phrase applies as well.”). When an expert goes beyond his prescribed role, it is
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`appropriate for a Court to strike those portions of his report and thereby prevent him from
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`presenting new legal conclusions to the jury. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319,
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`1337 (Fed. Cir. 2009) (holding it was proper to exclude expert opinion attempting to opine on
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`claim construction to the jury). In contrast, when the expert merely explains and applies the
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`plain and ordinary meaning of a claim term, a motion to strike should be denied. See Apple, Inc.
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`v. Samsung Elecs. Co., No. 12:cv-00630-LHK, 2014 U.S. Dist. LEXIS 22938, at *25-34 (N.D.
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`Cal. Feb. 20, 2014) (denying motion to strike expert’s opinions on the basis that the “experts
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`have applied a plain and ordinary meaning”).
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`A.
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`Dr. Mangione-Smith and Dr. Moon Correctly Describe the “Output”
`Element
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`Subaru now attempts to raise a claim construction dispute about the “output system”
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`limitation in the ’081 patent, which recites “an output system configured to present [media
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`content] concurrently … on the output of the first receiver module or second receiver module.”
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`Dkt. No. 1-1 (“’081 patent”), cl. 9 (emphasis added). Subaru contends that StratosAudio’s
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`experts have construed the term “or” to mean “both must first exist. And then only one of them
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`needs to meet the rest of the claim.” Mot. at 5. However, neither expert has offered any
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`construction for the term “or,” let alone the specific construction Subaru suggests. Instead, both
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`Dr. Mangione-Smith and Dr. Moon explain that a person of ordinary skill in the art would read
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`the system of claim 9 as requiring two outputs: an output of the first receiver module and an
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`output of the second receiver module. See Ex. 1 (Dkt. No. 100-2) at ¶¶ 89-90; Ex. 4 (Dkt. No.
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`2
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`100-5) at ¶ 110. That is what the claim says, and there was nothing improper about
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`StratosAudio’s experts applying the claims as they are written.
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`Indeed, Subaru should not be permitted to argue that claim 9 requires anything less than
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`two outputs. In a related inter partes review proceeding before the Patent Trial and Appeal
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`Board that Subaru joined, the arguing attorney (and therefore Subaru) acknowledged that claim 9
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`of the ’081 patent requires two outputs. Decl. of Jonathan Lamberson (“Lamberson Decl.”) at
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`¶¶4-6. Having made this admission in a parallel proceeding (or at least joined in it), Subaru
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`cannot now contend that less than two outputs are required.
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`Setting aside Subaru’s adoptive admission, Subaru declares that it is “settled law” that the
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`“plain meaning of the term ‘or’ is ‘and/or’ and requires one, or the other, or both.” Mot. at 3.
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`Contrary to Subaru’s contention, the law is not “settled” as to the meaning of “or.” In fact the
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`very cases Subaru cites show that the meaning of “or” has been understood to have different
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`plain meanings depending on the claim language. See Brown v. 3M, 265 F.3d 1349, 1352 (Fed.
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`Cir. 2001) (looking at the “plain reading of the claim text” in construing “at least one of two-
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`digit, three-digit, or four-digit year-date representations” to mean “only two-digit, only three-
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`digit, only four-digit, or any combination of two-, three-, and four-digit date-data”) (emphasis
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`added); Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1331 (Fed. Cir. 2001)
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`(finding the “district court construed ‘or’ and ‘either’ in their common usage as designating
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`alternatives”); see also SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013)
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`(“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Moreover, the
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`Federal Circuit has held that “or” indicates two alternatives that must both be present: “The
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`claim’s use of the term ‘comprising,’ combined with the use of the disjunctive conjunction ‘or’
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`supports the construction that ‘displaying’ and ‘performing game functions’ are two alternatives
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`3
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`for layers. . . . Thus, the Challenged Claims require more than one layer.” Game & Tech. Co. v.
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`Activision Blizzard Inc., 926 F.3d 1370, 1378 (Fed. Cir. 2019). That is how the word “or” is
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`used in the claims at issue here; by choosing “or,” StratosAudio intended to designate two
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`alternative outputs for concurrently presenting the first media content and the second media
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`content.
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`The term “and/or,” by contrast, is used repeatedly throughout the patent specification—
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`but not in the asserted claims. See generally, ’081 patent at 8:11-16, 8:17-43, 8:59-61, 8:66-9:6.
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`If StratosAudio wanted to claim a single output, it could have simply recited “an output.” But
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`that is not the claim StratosAudio wrote, and its drafting choice must be respected, since it is
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`StratosAudio—not Subaru or any other accused infringer—that chose the language of the claims
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`and, accordingly, their scope. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
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`1379, 1383 (Fed. Cir. 2008) (“It is often the case that different claims are directed to and cover
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`different disclosed embodiments. The patentee chooses the language and accordingly the scope
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`of his claims.”).
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`Indeed, there is simply no other way to read the plain language of the asserted claims. The
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`disputed limitation recites:
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`an output system configured to present concurrently the first media content and the
`second media content on the output of the first receiver module or second receiver
`module.
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`’081 patent, cl. 9 (emphasis added). In order for an accused system to practice this claim, two
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`outputs must be present (an “output of the first receiver module” and an output of a “second
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`receiver module”), and at least one of those outputs must support concurrent presentation. That
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`is all Dr. Mangione-Smith and Dr. Moon stated in their reports, it is what a person of ordinary
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`skill in the art would have understood from reading the claim language, it is what Subaru
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`admitted the claims mean in the co-pending IPR, and there is no claim construction dispute here
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`to resolve.1 Subaru’s argument is nothing more than an attempt to manufacture a new claim
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`construction dispute on the eve of trial—a dispute it hopes will cause the Court to expand the
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`scope of the asserted claims to ensnare prior art that otherwise does not disclose the system
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`recited in claim 9. This is not a legitimate reason to strike an expert opinion that applies the
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`plain and ordinary meaning of the claims as written, and Subaru’s motion should be denied.
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`B.
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`Dr. Mangione-Smith Properly Opines on Infringement of the “Location”
`Limitation for the ’405 Patent
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`Subaru is incorrect in arguing that Dr. Mangione-Smith offers a new construction of
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`“location” for the ’405 patent. The disputed limitation recites:
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`transmitting electronically to a computer server a response message comprising at
`least the uniquely identifying data specific to at least the second media content and
`the location of the electronic receiving device.
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`Dkt. No. 1-13 (“’405 patent”), cl. 12 (emphasis added). Subaru objects to only the following
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`portion of Dr. Mangione-Smith’s report, which addresses infringement of this limitation:
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`To the extent Subaru argues that sending a message with a link to Apple Maps is
`not literally “transmitting . . . the location of the electronic receiving device,” I
`disagree. The link conveys location information. Regardless, this limitation
`would be met under the doctrine of equivalents. A person of ordinary skill would
`understand that sending a link to Apple Maps performs the same function of
`sending location information (the location of the sender) in the same way (using
`GPS data) to achieve the same result (sharing the sender’s location with a
`recipient). In addition, if applicable, the differences between the two approaches
`are
`insubstantial
`and
`interchangeable, making
`them
`equivalent. See
`https://www.youtube.com/watch?v=KNJ-TX_FNIY.
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`1 StratosAudio’s understanding of the plain meaning of the “output system” limitation is based
`on the claim language, but is also supported by the ’081 patent’s specification, which discloses
`embodiments with two outputs. The use of the word “or” in the claims captures disclosed
`embodiments that choose between two separate outputs, for example outputs present on two
`separate devices. See ’081 patent at 14:27-41. The patent explains that devices may have
`different capabilities; for example, one device may have better bandwidth or better graphics
`resolution than a second device. ’081 patent at 15:43-47. Choosing between the two outputs
`thus provides benefits over systems that utilize only a single output.
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`Ex. 2 (Dkt. No. 100-3) at 54 (emphasis added). In this paragraph, Dr. Mangione-Smith simply
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`states that sending a link to Apple Maps that shows a user’s driving route meets the limitation of
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`“transmitting . . . the location of the electronic receiving device,” either literally or under the
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`doctrine of equivalents. Sending a location (which is a piece of information) via a link is
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`consistent with the plain language of the claim—language Subaru did not ask the Court to
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`construe during the Markman hearing. See Dkt. 50 at 1 (Joint Claim Construction Statement:
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`“there are no claim construction disputes with respect to the ’081 and ’405 patents”).
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`Dr. Mangione-Smith’s deposition testimony is consistent with his report. He explained
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`that the ’405 patent does not claim “literally transporting the physical location.” Ex. 3 (Dkt. No.
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`100-4). In other words, when the claim refers to “transmitting” a “location,” it is not referring to
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`sending a physical piece of the earth through space to another physical place. Instead, as a
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`person of ordinary skill would understand, a “location” is conveyed as information, such as
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`latitude and longitude, a marker on a map, or by some other means. See Ex. 3. This common-
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`sense explanation is not an “admission” that location and location information are somehow
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`different, as Subaru contends. Mot. at 4. Indeed, Subaru’s own expert used the words “location
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`information” multiple times in his deposition when explaining this limitation. See, e.g.,
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`Lamberson Decl., Ex. A at 133:23-135:13 (“It says they’re disabling location information”).
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`In its single-paragraph argument on this issue, Subaru does not explain how referring to
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`“location information” exceeds the plain meaning of the term, or how it is impermissible under
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`the doctrine of equivalents. See Mot. at 6. In fact, Subaru imposes its own new construction of
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`“location”: “The location of the receiving device is just that—an address, a latitude and
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`longitude, a place name, or something else denoting a specific location.” Id. (emphasis added).
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`Subaru never proposed this construction during the Markman proceedings, its expert did not
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`offer this construction in his report, and Subaru cites no evidentiary basis for its new definition.
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`Moreover, Subaru fails to explain how Dr. Mangione-Smith’s arguments are inconsistent with its
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`newly-proposed construction. “Location information” is “something else denoting a specific
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`location.” Subaru is once again attempting to manufacture a dispute where there is none, but this
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`is not a legitimate basis for excluding expert testimony that explains how Subaru infringes under
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`the plain language of the claims as written.
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` CONCLUSION
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`For the foregoing reasons, Subaru’s motion to strike should be denied.
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`Dated: August 8, 2022
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`/s/ Jonathan Lamberson
`WHITE & CASE LLP
`Jonathan Lamberson (admitted pro hac vice)
`Henry Huang (admitted pro hac vice)
`3000 El Camino Real
`2 Palo Alto Square, Suite 900
`Palo Alto, CA 94306
`Tel: (650) 213-0300
`Fax: (650) 213-8158
`lamberson@whitecase.com
`henry.huang@whitecase.com
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`WHITE & CASE LLP
`Michael Songer (admitted pro hac vice)
`701 Thirteenth Street, NW
`Washington, DC 20005
`Tel: (202) 626-3600
`Fax: (202) 639-9355
`michael.songer@whitecase.com
`
`WHITE & CASE LLP
`Daniel S. Sternberg (admitted pro hac vice)
`75 State Street
`Boston, MA 02109
`Tel: (617) 979-9300
`Fax: (617) 334-0401
`dan.sternberg@whitecase.com
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`Case 6:20-cv-01128-ADA Document 153 Filed 09/08/22 Page 11 of 12
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`FRIEDMAN, SUDER & COOKE, P.C.
`Jeffrey D. Parks
`Texas Bar No. 24076607
`614 East 4th Street, Suite 200
`Fort Worth, TX 76102
`Tel: (817) 334-0400
`Fax: (817) 334-0401
`parks@fsclaw.com
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`Attorneys for Plaintiff StratosAudio, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 8, 2022, I electronically filed the foregoing with the Clerk
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`of Court using the CM/ECF system, which will send notification of such filing to all counsel of
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`record, all of whom have consented to electronic service in this action.
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`/s/ Jonathan Lamberson
`Jonathan Lamberson
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