Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 1 of 25 PageID #: 21470
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`Plaintiff,
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`Defendants.
`
`Civil Action No. 5:19-cv-00036
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSITION TO APPLE’S MOTION TO EXCLUDE THE
`TESTIMONY OF ROBERT L. STOLL
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 2 of 25 PageID #: 21471
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`TABLE OF CONTENTS
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`B.
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`I.
`II.
`III.
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`IV.
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 2
`ARGUMENT ..................................................................................................................... 4
`A.
`Mr. Stoll Will Testify Only About Topics for Which He Has Extensive
`Qualifications and Will Not Usurp the Role of the Court or Jury. ........................ 5
`1.
`Mr. Stoll Is a Qualified Expert on Identifying Facts Relevant to the
`Public Accessibility of Prior Art. ............................................................... 5
`Mr. Stoll Offers Opinions Only on Public Accessibility Based on
`His Unique USPTO Expertise. .................................................................. 6
`Mr. Stoll’s Opinions on Public Availability Should Not Be Excluded. ................ 7
`1.
`Mr. Stoll’s Opinions on The Public Accessibility of Abowd Are
`Not Opinions About “Library Records” and Should Not Be
`Excluded. ................................................................................................... 8
`Mr. Stoll’s Opinions on the Public Use of Cyberguide Are Helpful
`to the Jury and Should Not Be Excluded. ................................................ 10
`Mr. Stoll’s Opinions on the Alleged Public Use of NavTalk Are
`Helpful to the Jury and Should Not Be Excluded. ................................... 11
`Mr. Stoll’s Opinions on the Public Accessibility of the Sony
`Cameras Are Helpful to the Jury And Should Not Be Excluded. ............ 12
`Mr. Stoll Details the Basis and Methodologies of His Opinions. ........................ 14
`C.
`CONCLUSION ................................................................................................................ 15
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`2.
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`2.
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`3.
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`4.
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 3 of 25 PageID #: 21472
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`#1 Fan Co., LLC v. Pepco Licensed Prods.,
`No. SA-09-CA-1029-FB, 2011 U.S. Dist. LEXIS 167039 (W.D. Tex. Apr. 8,
`2011) ..........................................................................................................................................2
`
`ActiveVideo Networks, Inc. v. Verizon Communs., Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)..................................................................................................8
`
`Aspex Eyewear, Inc. v. E’Lite Optik, Inc.,
`No. 3:98-CV-2996-D, 2002 U.S. Dist. LEXIS 14834 (N.D. Tex. Apr. 4, 2002) ......................2
`
`Bausch & Lomb, Inc. v. Alcon Labs., Inc.,
`79 F. Supp. 2d 252 (W.D.N.Y. 2000) ........................................................................................4
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`Cybergym Research, LLC v. Icon Health & Fitness, Inc.,
`No. 2:05-CV-527, 2007 U.S. Dist. LEXIS 102197 (E.D. Tex. Sep. 4, 2007) ...........................3
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`Dey, L.P. v. Sunovion Pharm., Inc.,
`715 F.3d 1351 (Fed. Cir. 2013)................................................................................................10
`
`i4i Ltd. P’ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010)....................................................................................................8
`
`Ihde v. HME, Inc.,
`No. 4:15-CV-00585, 2017 U.S. Dist. LEXIS 120933 (E.D. Tex. Aug. 1, 2017) ................4, 10
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`Inline Packaging, LLC v. Graphic Packaging Int’l, LLC,
`351 F. Supp. 3d 1187 (D. Minn. 2018) ......................................................................................2
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`Innovative Sonic Ltd. v. Research In Motion Ltd.,
`No. 3:11-CV-706 (N.D. Tex. Jan. 09, 2013) .............................................................................2
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`Jazz Pharms., Inc. v. Amneal Pharms., LLC,
`895 F.3d 1347 (Fed. Cir. 2018)..................................................................................................8
`
`Kumho Tire Co. v. Carmichael,
`526 U.S. 137 (1999) ...................................................................................................................2
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`Liquid Dynamics Corp. v. Vaughan Co.,
`No. 01 C 6934, 2004 U.S. Dist. LEXIS 29992 (N.D. Ill. Sep. 30, 2004) ..............................3, 4
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`Magna Elecs., Inc. v. TRW Auto. Holdings Corp.,
`No. 12-654, 2016 WL 4239181 (W.D. Mich. Jan. 29, 2016) ................................................1, 2
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 4 of 25 PageID #: 21473
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`In re Namenda Direct Purchaser Antitrust Litig.,
`331 F. Supp. 3d 152 (S.D.N.Y. 2018)........................................................................................3
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`Network-1 Techs. v. Alcatel-Lucent USA, Inc.,
`No. 11-CV-492, 2017 U.S. Dist. LEXIS 154434 (E.D. Tex. Sep. 21, 2017) ....................3, 4, 7
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`Portus Sing. PTE Ltd. v. Kenyon & Kenyon LLP,
`No. 16-CV-6865, 2020 U.S. Dist. LEXIS 55449 (S.D.N.Y. Mar. 27, 2020) ............................2
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`Regeneron Pharms., Inc. v. Merus B.V.,
`No. 14-CV-1650, ECF No. 364 (S.D.N.Y Jun. 4, 2015) ...........................................................2
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`Robroy Indus. Tex., LLC v. Thomas & Betts Corp.,
`No. 2:15-CV-512-WCB, 2017 U.S. Dist. LEXIS 54230 (E.D. Tex. Apr. 10,
`2017) ........................................................................................................................................12
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`Sanitec Indus., Inc. v. Micro-Waste Corp.,
`No. H-04-3066, 2006 U.S. Dist. LEXIS 36460 (S.D. Tex. June 2, 2006) .................................4
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`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008)..................................................................................2, 7, 11, 12
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`Szoka v. Woodle,
`No. C 02-5524 SI, 2004 U.S. Dist. LEXIS 30791 (N.D. Cal. June 7, 2004) .............................3
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`Veazey v. Allstate Tex. Lloyd’s,
`No. 3-04-CV-0182-L, 2006 U.S. Dist. LEXIS 8797 (N.D. Tex. Mar. 6, 2006) ........................2
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`W. Plastics, Inc. v. Dubose Strapping, Inc.,
`334 F. Supp. 3d 744 (E.D.N.C. 2018)........................................................................................2
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`Zimmer Surgical, Inc. v. Stryker Corp.,
`365 F. Supp. 3d 466 (D. Del. 2019) ...................................................................................3, 4, 8
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`Statutes
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`U.S.C. 102(a), 102(b), 102(g) ..........................................................................................................9
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`35 U.S.C. 103 .................................................................................................................................14
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`35 U.S.C. 287 ...................................................................................................................................3
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`35 U.S.C. 101, 112, 102, 103 .........................................................................................................15
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`Other Authorities
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`37 CFR I .........................................................................................................................................15
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`MPEP § 2133.03 ............................................................................................................................14
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`Rule 702 ...........................................................................................................................................2
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 6 of 25 PageID #: 21475
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`TABLE OF EXHIBITS
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`Exhibit No. Description
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`1
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`2
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`3
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`4
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`5
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`6
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`Expert Report of Robert L. Stoll (June 4, 2020)
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`Excerpts from the Deposition of Robert Stoll (June 18, 2020)
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`Excerpts from the Opening Expert Report of Dr. Joseph A.
`Paradiso Regarding Invalidity of U.S. Patent Nos. 6,748,317,
`6,580,999, and 6,430,498 (May 7, 2020)
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`Excerpts from the Opening Expert Report of Dr. Alan C. Bovik
`Regarding Invalidity of U.S. Patent No. 8,339,493 (May 7,
`2020)
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`Expert Report of Jacob Robert Munford Concerning
`Publication and Public Accessibility (May 7, 2020)
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`Excerpts from the USPTO Manual of Patent Examining
`Procedure, Ninth Edition, Revision 10.2019 (Last Revised June
`2020
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 7 of 25 PageID #: 21476
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`Term
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`Mot.
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`USPTO
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`MPEP
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`TABLE OF ABBREVIATIONS
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`Meaning
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`Apple’s Motion to Exclude the Testimony of Robert L.
`Stoll (Dkt. 357)
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`United States Patent and Trademark Office
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`Manual of Patent Examining Procedure
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 8 of 25 PageID #: 21477
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`I.
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`INTRODUCTION
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`Rather than root its fear in the subject matter of Mr. Stoll’s intended expert testimony,
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`Apple manufactures concerns about Mr. Stoll usurping the roles of the Court and the jury simply
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`because he is an attorney. But he is also a well-qualified expert on USPTO practices and
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`procedures related to public availability, public use, and public sale of alleged prior art.
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`As the holder of various positions at the USPTO, including Commissioner of Patents, Mr.
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`Stoll has unique insight and expertise on such practices and procedures, including what kinds of
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`evidence the USPTO considers when determining if printed materials and products presented are
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`indeed prior art, how it is determined if such evidence is flawed, and whether the evidence
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`presented is sufficient. Mr. Stoll is thus uniquely qualified to provide this Court and the jury with
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`relevant testimony from the USPTO’s perspective. Mr. Stoll’s testimony will allow the jury to
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`consider his analysis on issues surrounding Apple’s evidence, specifically the public accessibility
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`of the Abowd paper (“Abowd”), Cyberguide prototypes (“Cyberguide”), NavTalk device
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`(“NavTalk”), and Sony MVC-FD83 and MVC-FD88 Cameras (“Sony Cameras”).
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`Apple’s Motion ignores the bulk of Mr. Stoll’s qualifications, and instead focuses only on
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`his recent work as a patent attorney in an effort to mischaracterize his opinions as “instructing
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`the jury on the applicable law.” Mot. at 1. But as Mr. Stoll makes clear in his report and
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`throughout his deposition, he is not offering testimony on legal standards to “instruct” this Court
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`or the jury on the law. Instead, he relies on established legal principles just as Apple’s own
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`experts do, and his status as an attorney does not preclude his testimony. Contrary to Apple’s
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`claims, numerous courts have allowed Mr. Stoll’s opinions.1 Apple’s Motion should be denied.2
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`1 Apple cited a non-binding case that guided Mr. Stoll not to provide “opinions concerning legal standards” that
`were in dispute. Magna Elecs., Inc. v. TRW Auto. Holdings Corp., No. 12-654, 2016 WL 4239181, at *1 (W.D.
`Mich. Jan. 29, 2016). But the court did not strike Mr. Stoll’s report, and noted he would be allowed to testify on
`issues including USPTO practice and procedure, and expert analysis “consistent with well-established factors
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 9 of 25 PageID #: 21478
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`II.
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`LEGAL STANDARD
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`“Under Daubert and Rule 702, courts are charged with a ‘gatekeeping role,’ the objective
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`of which is to ensure that expert testimony admitted into evidence is both reliable and
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`relevant.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir.
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`2008) (citation omitted); see also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999).
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`“Patent cases, like all other cases, are governed by Rule 702.” Id. Expert testimony is allowed if
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`the expert’s “scientific, technical, or other specialized knowledge will assist the trier of fact to
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`understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702.
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`The Fifth Circuit recognizes that “[n]o authority precludes a lawyer from rendering a
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`proper expert opinion.” #1 Fan Co., LLC v. Pepco Licensed Prods., No. SA-09-CA-1029-FB,
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`2011 U.S. Dist. LEXIS 167039, at *7-8 (W.D. Tex. Apr. 8, 2011) (collecting cases). One
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`example of a proper expert opinion is “legal matters that involve questions of fact.” Id.; see also
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`Veazey v. Allstate Tex. Lloyd’s, No. 3-04-CV-0182-L, 2006 U.S. Dist. LEXIS 8797, at *2 (N.D.
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`Tex. Mar. 6, 2006) (“While attorneys may not offer expert testimony on pure questions of law,
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`they may testify as to mixed questions of law and fact”); Aspex Eyewear, Inc. v. E’Lite Optik,
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`Inc., No. 3:98-CV-2996-D, 2002 U.S. Dist. LEXIS 14834, at *103-05 (N.D. Tex. Apr. 4, 2002)
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`(distinguishing an expert’s admissible factual testimony on mixed questions of law and fact that
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`have “the potential to assist the trier of fact” versus impermissible testimony on “purely legal
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`issues.”) (citing Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1570 (Fed. Cir.
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`founded in case law.” Id. at *4-5. Various other district courts have similarly admitted Mr. Stoll’s opinions over the
`opposing party’s objection. See, e.g. Innovative Sonic Ltd. v. Research In Motion Ltd., No. 3:11-CV-706 (N.D. Tex.
`Jan. 09, 2013) (opinions on materiality and on patent law); Portus Sing. PTE Ltd. v. Kenyon & Kenyon LLP, No. 16-
`CV-6865, 2020 U.S. Dist. LEXIS 55449 (S.D.N.Y. Mar. 27, 2020) (opinions on the ordinary skill of a patent
`lawyer); W. Plastics, Inc. v. Dubose Strapping, Inc., 334 F. Supp. 3d 744 (E.D.N.C. 2018); Inline Packaging, LLC v.
`Graphic Packaging Int'l, LLC, 351 F. Supp. 3d 1187 (D. Minn. 2018); Regeneron Pharms., Inc. v. Merus B.V., No.
`14-CV-1650, ECF No. 364 (S.D.N.Y Jun. 4, 2015).
`2 If the Court grants Maxell’s Motions for Partial Summary Judgment of No Invalidity based on the prior art
`references Mr. Stoll opines on (D.I. 370, 382, 383), there will be no need for Stoll’s expert testimony at trial and this
`Motion would be moot.
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 10 of 25 PageID #: 21479
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`1984)). Thus, “when determining whether a patent attorney’s opinion is proper expert testimony,
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`courts examine whether an expert offers a legal conclusion or whether the opinion ‘involve[s] the
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`application of a legal framework to the factual record.’” Szoka v. Woodle, No. C 02-5524 SI,
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`2004 U.S. Dist. LEXIS 30791, at *6-7 (N.D. Cal. June 7, 2004) (allowing patent attorney’s
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`testimony on the underlying factual determinations of laches and estoppel).
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`Courts in this District are in good company. District courts across the country accept
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`patent attorneys as experts who may provide helpful testimony to the court and jury in various
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`forms. See, e.g., In re Namenda Direct Purchaser Antitrust Litig., 331 F. Supp. 3d 152, 188
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`(S.D.N.Y. 2018) (denying motion to exclude opinions of a patent attorney in an antitrust case
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`who testified about “the likelihood [of success] in [a patent] lawsuit” as the attorney
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`“unquestionably has the expertise to evaluate the things he assessed . . . and to draw conclusions
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`about who is more likely to win a patent lawsuit.”). Particularly for patent cases, expert patent
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`attorneys can provide helpful testimony to the court and jury in patent-specific situations. See,
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`e.g., Zimmer Surgical, Inc. v. Stryker Corp., 365 F. Supp. 3d 466, 497 (D. Del. 2019) (allowing a
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`patent attorney’s analysis and opinions on willful infringement, prior notice and marking under
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`35 U.S.C. § 287, and the priority date of the patents at issue); Network-1 Techs. v. Alcatel-Lucent
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`USA, Inc., No. 11-CV-492, 2017 U.S. Dist. LEXIS 154434, at *14 (E.D. Tex. Sep. 21, 2017)
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`(allowing patent attorney’s opinions on the materiality of broadening contentions as it relates to
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`inequitable conduct); Cybergym Research, LLC v. Icon Health & Fitness, Inc., No. 2:05-CV-
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`527, 2007 U.S. Dist. LEXIS 102197, at *18 (E.D. Tex. Sep. 4, 2007) (permitting defendant to
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`offer “legal expert” on laches, unclean hands, waiver, and estoppel).
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`Challenging a qualified expert’s opinion as unhelpful goes to the weight of the testimony,
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`not its admissibility. Liquid Dynamics Corp. v. Vaughan Co., No. 01 C 6934, 2004 U.S. Dist.
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`LEXIS 29992, at *19-20 (N.D. Ill. Sep. 30, 2004). “[C]ourts have discretion to adopt the legal
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`opinion as their own, find guidance from it, or disregard it completely.” Id. (citing Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995)). Similarly, “disputes between
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`[patent law] experts regarding which documents, facts, and standards should control the outcome
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`of the overall case are properly resolved at later stages of litigation and do not bear on
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`admissibility of an expert’s testimony.” Ihde v. HME, Inc., No. 4:15-CV-00585, 2017 U.S. Dist.
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`LEXIS 120933, at *31 (E.D. Tex. Aug. 1, 2017). Therefore, if a patent attorney expert provides
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`disputed opinions, “that is a matter for cross-examination.” Zimmer, 365 F. Supp. 3d at 497.
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`Patent attorney experts regularly offer opinions on USPTO practices and procedures. See
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`Bausch & Lomb, Inc. v. Alcon Labs., Inc., 79 F. Supp. 2d 252, 256 (W.D.N.Y.
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`2000) (“Obviously PTO procedures are foreign to the average person, and it may be helpful to
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`the jury to hear someone experienced in those procedures explain how they operate in terms that
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`a layperson can understand”); see also Network-1 Techs., 2017 U.S. Dist. LEXIS 154434, at *16
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`(explaining that one with knowledge of and experience with the procedures of the USPTO is an
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`appropriate expert on patent issues of inequitable conduct that are independent of any scientific
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`complexity); Sanitec Indus., Inc. v. Micro-Waste Corp., No. H-04-3066, 2006 U.S. Dist. LEXIS
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`36460, at *8 (S.D. Tex. June 2, 2006) (allowing a patent attorney and former USPTO
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`Commissioner to testify “to the extent necessary for an understanding of the issues presented”
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`including testimony on the patent’s priority date and writing requirements).
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`III. ARGUMENT
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`Mr. Stoll will not testify on legal standards, technical issues, or the prosecution history of
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`the patents-in-suit. Instead, based on his decades of experience performing similar analysis at the
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`USPTO, Mr. Stoll offers an analysis on the underlying factual evidence of public accessibility,
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 12 of 25 PageID #: 21481
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`public knowledge, public use, and public sale related to the printed publication and products
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`Apple relies upon as prior art. This analysis is helpful to the jury’s ultimate decisions at issue.
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`A. Mr. Stoll Will Testify Only About Topics for Which He Has Extensive
`Qualifications and Will Not Usurp the Role of the Court or Jury.
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`Mr. Stoll’s testimony is both proper in scope and relevant to the issues to be tried. First,
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`Apple has not challenged Mr. Stoll’s qualifications as an expert in USPTO practice and
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`procedure. Nor can it: Mr. Stoll possesses extensive qualifications accrued over almost three
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`decades of working at the USPTO. Second, Mr. Stoll drew from that expertise to form his
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`opinions in this matter regarding the public accessibility of certain alleged prior art; he is not
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`opining on areas traditionally reserved for the Court, the jury, or technical experts.
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`1.
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`Mr. Stoll Is a Qualified Expert on Identifying Facts Relevant to the
`Public Accessibility of Prior Art.
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`Apple’s motion ignores much of Mr. Stoll’s qualifications. He began his profession at the
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`USPTO as a patent examiner in 1984 and was promoted to a supervisory patent examiner in
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`1990. See Ex. 1, Stoll Rep., at ¶ 8. In 1994, he became the executive assistant to the Director for
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`Patents, and from 2002-2007 served as the Director of the Office of Enforcement. Id. at ¶¶ 6-7.
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`In 2009, Mr. Stoll was appointed to Commissioner for Patents, a position he held until he retired
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`in 2011. Id. at ¶ 4. Since retiring, Mr. Stoll has been appointed for nine years as an Advisory
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`Council Member to the Federal Circuit and currently serves on the board of AIPLA. Id. at ¶ 9.
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`Through these experiences, Mr. Stoll has developed a deep familiarity with the rules and
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`procedures that the USPTO must follow to identify and scrutinize the public accessibility date of
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`alleged prior art. This includes, for example, identifying the date when a prior art publication
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`became publicly available, when a prior art device was publicly in use in this country, and when
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`a prior invention was publicly offered for sale or sold. This experience comes in part from the
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`thousands of patents examined or supervised by Mr. Stoll during his time at the USPTO.
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 13 of 25 PageID #: 21482
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`2.
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`Mr. Stoll Offers Opinions Only on Public Accessibility Based on His
`Unique USPTO Expertise.
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`Mr. Stoll is not masquerading as a technical expert. Ex. 2, Stoll Dep., at 118:15-21,
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`120:11-21, 122:21-123:11, 217:3-13. Nor is he testifying about claim construction, id. at 60:10-
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`21, or instructing the jury on the law, id.at 67:19-68:3. Rather, Mr. Stoll is testifying only as to
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`the “[f]ield of process before the Patent and Trademark Office, for example, public accessibility
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`and prior art.” Id. at 19:2-4; see also id. at 58:20-59:2 (“Did you provide any opinion about any
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`topic that doesn’t fall in the category of U.S. patent practice and procedure and their application
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`to the patents-in-suit? A. Not that I’m aware of.”).
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`Despite these assurances, Apple at best misunderstands and at worst intentionally distorts
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`Mr. Stoll’s opinions. For example, Apple complains that Mr. Stoll may instruct the jury on the
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`law, Mot. at 5-6, ignoring that Mr. Stoll repeatedly stated that he is not providing an opinion on
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`the law or legal standards or otherwise providing legal testimony. See, e.g., Ex. 1, Stoll Rep. at
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`¶ 17 (“I have been asked only to opine on matters related to USPTO patent practice and
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`procedures and their application to the patents-in-suit.”); Ex. 2, Stoll Dep., at 58:19-59:2, 66:11-
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`68:3 (“But my intent is to apply [the law] to the situation here, to actually talk about the facts.”).
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`Apple also fears that Mr. Stoll may “undermine the Court’s claim construction.” Mot. at 6-7.
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`These fears are also unfounded. Mr. Stoll testified that he is not providing opinions on claim
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`construction as “the court has already made a claim construction.” Ex. 2, Stoll Dep., at 60:10-21.
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`Apple next suggests that Mr. Stoll’s discussion of IPR proceedings should be excluded
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`because he should not be permitted “to argue that the patents-in-suit are ‘higher quality patents.’”
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`Mot. at 7 (quoting Stoll Rep. at ¶¶ 88, 102). This is yet another fiction: Mr. Stoll never opines
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`that any of the patents here are “higher quality.” See Ex. 1, Stoll Rep., at ¶¶ 88, 102. In fact, Mr.
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`Stoll’s testimony on the background of IPR proceedings is no more problematic than Apple’s
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`Case 5:19-cv-00036-RWS Document 408 Filed 07/16/20 Page 14 of 25 PageID #: 21483
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`experts’ testimony about the specific IPRs here. See, e.g., Ex. 3, Paradiso Rep., at ¶ 22
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`(discussing in non-technical terms IPR petitions related to this case); Ex. 4, Bovik Rep., at ¶¶ 59-
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`62 (discussing in non-technical terms IPR petitions filed against the ’493 Patent). If Apple’s
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`experts are permitted to discuss IPR proceedings, Mr. Stoll should be permitted to discuss the
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`context for those proceedings based on his knowledge and experience.
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`Apple also argues that Mr. Stoll’s opinions should be excluded because he “is neither an
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`expert nor a person of ordinary skill in the art.” Mot. at 10. But Mr. Stoll repeatedly confirmed
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`that he is not providing any opinion as a technical expert in this case. Ex. 1, Stoll Rep. at ¶ 17 (“I
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`do not profess to have special technical expertise in the patents-in-suit.”); see also Ex. 2, Stoll
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`Dep., at 118:15-21, 120:11-21, 122:21-123:11, 217:3-13 (“I am not offering anything with
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`respect to claim scope, validity, infringement, or communications in this particular case . . . .”).
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`Despite these assurances, and leaning heavily on Sundance, Apple nevertheless argues
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`that Mr. Stoll plans to offer testimony reserved to technical experts. Mot. at 5, 11-12. But
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`Sundance is “confined to situations in which the patent law experts [without the relevant
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`technical background] opined on technical issues such as infringement, analogous art, and claim
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`interpretation.” Network-1 Techs., 2017 U.S. Dist. LEXIS 154434, at *14 (citing Sundance, 550
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`F.3d at 1363). Because Mr. Stoll is not testifying on technical issues, Sundance is inapplicable.
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`Mr. Stoll has no intent to testify about the law, claim construction, or technical issues.
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`Thus, this portion of Apple’s motion should be denied. See id. at *23 (denying motion to strike
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`as “moot” when it was confirmed that expert would not present testimony on the topics at issue).
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`B. Mr. Stoll’s Opinions on Public Availability Should Not Be Excluded.
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`Apple’s technical experts conclude that Abowd, Cyberguide, NavTalk, and the Sony
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`Cameras were publicly available as prior art to the ’317, ’999, ’498, and ’493 Patents. Mr. Stoll
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`should not be precluded from relying on his extensive experience analyzing similar evidence—
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`such as printed publications, inspections of potentially counterfeit products, and other evidence
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`routinely considered by the USPTO—to opine on the public accessibility of the art at issue here.
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`Whatever gripes Apple may have about Mr. Stoll’s specific qualifications in each of these areas
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`can be addressed through vigorous cross examination, not by excluding this witness entirely. See
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`Zimmer, 365 F. Supp. 3d at 497 (disputed opinions are “a matter for cross-examination”).
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`Preventing Mr. Stoll from testifying would effectively foreclose Maxell from pointing out
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`the factual failings of Apple’s experts, a point that cannot effectively be made on cross-
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`examination alone. Without Mr. Stoll, Maxell will be unable to present opinion testimony on
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`what Apple’s experts should have done (but failed to do) to meet their obligations for public
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`accessibility according to USPTO practices and procedures. Maxell should be free to provide the
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`expert it believes has the most experience on the topic of public accessibility, and any
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`disagreement speaks only to weight, not admissibility. See i4i Ltd. P’ship v. Microsoft Corp., 598
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`F.3d 831, 852 (Fed. Cir. 2010) (“[w]hen the methodology is sound, and the evidence relied upon
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`sufficiently related to the case at hand, disputes about the degree of relevance or accuracy [] may
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`go to the testimony's weight, but not its admissibility.”) (citing Fifth Circuit cases); see also
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`ActiveVideo Networks, Inc. v. Verizon Communs., Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012).
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`1.
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`Mr. Stoll’s Opinions on The Public Accessibility of Abowd Are Not
`Opinions About “Library Records” and Should Not Be Excluded.
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`Apple must show by clear and convincing evidence that the Abowd publication was
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`publicly accessible and disseminated. See Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d
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`1347, 1356 (Fed. Cir. 2018). To try to meet this burden, Apple relies on a librarian, Jacob R.
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`Munford, to show that Abowd was publicly available on or before the critical date of the ’317,
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`’999, and ’498 Patents. See generally Ex. 5, Munford Rep.
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`But Mr. Munford’s report fails to address several discrepancies in Apple’s evidence. For
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`example, Mr. Munford overlooked the fact that alleged publicly available book containing
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`Abowd has a “DO NOT CIRCULATE” sticker, something Mr. Stoll uncovered in his analysis of
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`the evidence. Ex. 1, Stoll Rep., at ¶ 118. Mr. Stoll also brings clarity to the library’s “Holdings
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`Information” on the book presented by Mr. Munford, noting that the library appears not to have
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`had the book on hand until years after the critical date. Id. at ¶ 120. This is precisely the type of
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`evidence and analysis that a jury would find helpful in determining whether Abowd was publicly
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`available on or before the critical date.
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`Apple would exclude Mr. Stoll’s analysis on these points because he “is unqualified to
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`interpret the library records of the University of Pittsburgh.” Mot. at 8. But specific credentials in
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`the field of library science are unnecessary to address the factual issue of public accessibility in
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`the context of USPTO practices and procedures, as Mr. Stoll does here. Mr. Stoll explained this
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`at his deposition. Ex. 2, Stoll Dep., at 232:22-233:18. If Apple believes additional qualifications
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`would have made Mr. Stoll’s opinions more reliable, it is free to cross examine him on that point.
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`Apple next argues that, even if the USPTO’s standards and law were the same from that
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`of a fact finder in this litigation, Mr. Stoll’s testimony amounts only to legal argument. Mot. at 9.
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`But as Mr. Stoll explains in his report, the law followed by the USPTO on public accessibility,
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`use and sale is the same as that applied in this litigation—Pre-AIA U.S.C. 102(a), 102(b), 102(g)
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`and binding legal precedence such as Federal Circuit cases. Ex. 1, Stoll Rep., at ¶¶ 42-52; see
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`also Ex. 6, MPEP, at § 2133.02 (describing rejections based on publications and patents),
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`§ 2133.03 (describing rejections based on prior “public use” or “on sale”). Mr. Stoll’s analysis of
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`the public accessibility of Abowd, including the identification of important facts overlooked by
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`Mr. Munford, is not mere legal argument: it is an opinion based on extensive experience
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`performing similar analyses at the USPTO.
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`At bottom Apple’s argument is that Mr. Munford’s opinion should be the only one
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`offered because he possesses a degree in Library Sciences whereas Mr. Stoll does not. Mot. at 10
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`(“[T]o the extent the jury needs context …, a qualified librarian should provide that testimony.”).
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`But this is a question of weight, not admissibility. See Ihde, 2017 U.S. Dist. LEXIS 120933, at
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`*31. Jurors in this District are well equipped to apportion the appropriate weight of each expert’s
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`opinions regarding Abowd’s public accessibility. Excluding Mr. Stoll’s opinions is unwarranted.
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`2.
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`Mr. Stoll’s Opinions on the Public Use of Cyberguide Are Helpful to
`the Jury and Should Not Be Excluded.
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`Apple must also prove that the Cyberguide prototypes—physical devices—were “known
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`or used by others in this country” on or before the critical date of the relevant patents. See Dey,
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`L.P. v. Sunovion Pharm., Inc., 715 F.3d 1351, 1355 (Fed. Cir. 2013). The public accessibility
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`“factors” for analyzing the question of public use include “the nature of the activity that occurred
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`in public; the public access to and knowledge of the public use; [and] whether there was any
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`confidentiality obligation imposed on persons who observed the use.” Id.
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`For
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`this showing, Apple’s
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`technical expert—Dr. Paradiso—relies on Abowd’s
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`discussions of testing the Cyberguide prototypes to conclude that “Dr. Abowd’s team had
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`developed fully operational prototypes of Cyberguide and demonstrated them in public.” Ex. 3,
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`Paradiso Rep., at ¶¶ 120-21; Ex. 1, Stoll Rep., at ¶ 134. Despite arguing invalidity based on these
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`prototypes, no physical sample of any Cyberguide prototype was ma