IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

FOREVER WI-FI, INC., Plaintiff and Counterclaim-Defendant, v. ADRIA INC., Defendant and Counterclaimant.

) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:30-cv-55570

FOREVER WI-FI, INC.’S MOTION AND MEMORANDUM OF LAW IN

SUPPORT OF ITS MOTION TO STRIKE PORTIONS OF THE EXPERT REPORT OF ADRIA’S EXPERT DR. WILLIAM JONES AND TO PRECLUDE TRIAL

TESTIMONY PURSUANT TO FEDERAL RULE OF EVIDENCE 702 AND DAUBERT V. MERRELL DOW PHARM., INC.

i

TABLE OF CONTENTS I. INTRODUCTION ................................................................................................................... 1

II. LEGAL STANDARDS ........................................................................................................... 2

III.FOREVER WI-FI’S PATENTS-IN-SUIT .............................................................................. 5

IV.DR. JONES’S OPINIONS ARE IRRELEVANT AND UNRELIABLE BECAUSE HIS COMPARABILITY ANALYSIS IS UNTETHERED FROM THE PATENTS-IN-SUIT ................................................................................................................................... 6

V. DR. JONES’S ANALYSIS SHOULD BE STRICKEN BECAUSE IT DOES NOT MEET THE LEGAL REQUIREMENTS FOR COMPARABILITY UNDER GEORGIA-PACIFIC FACTOR 2 ...................................................................................... 9

VI.DR. JONES’S OPINIONS ARE CONCLUSORY AND THEREFORE INADMISSIBLE BECAUSE THEY WILL NOT ASSIST THE JURY ........................ 13

VII. DR. JONES’S TESTIMONY ON TECHNOLOGICAL COMPARABILITY WILL WASTE TIME AND UNFAIRLY PREJUDICE FOREVER WI-FI .............................. 15

VIII. CONCLUSION ................................................................................................................ 16

ii

TABLE OF AUTHORITIES

CasesBailey v. Allgas, Inc.,

148 F. Supp. 2d 1222 (N.D. Ala. 2000); aff’d, 284 F.3d 1237 (11th Cir. 2002) ....................... 4

Carapellucci v. Town of Winchester, 707 F. Supp. 611 (D. Mass. 1989) ............................................................................................. 4

Daubert v. Merrell Dow Pharms., 509 U.S. 579 (1993) ................................................................................................................... 3

Fenner Invs., Ltd. v. Hewlett-Packard Co., No. 08-cv-273, 2010 U.S. Dist. LEXIS 41514 (E.D. Tex. 2010) ............................................ 15

Figueroa v. Simplicity Plan de P.R., 267 F. Supp. 2d 161 (D.P.R. 2003) .................................................................................... 13, 15

Hebert v. Lisle Corp., 99 F.3d 1109 (Fed. Cir. 1996) ................................................................................................... 4

Inline Connection Corp. v. AOL Time Warner, Inc., No. 02-cv-272, 2007 U.S. Dist. LEXIS 6207 (D. Del. Jan. 29, 2007) ................................ 4, 13

Lamoureux v. AnazaoHealth Corp., No. 03-cv-01382, 2010 U.S. Dist. LEXIS 122831 (D. Conn. Nov. 8, 2010) .......................... 14

LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) ..................................................................................... 4, 8, 10, 16

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ............................................................................................. 3, 4

Masimo Corp. v. Philips Elecs. N. Am. Corp., No. 09-cv-80, 2013 U.S. Dist. LEXIS 70745 (D. Del. May 20, 2013). .......................... 3, 4, 10

Nevels v. Deerbrook Ins. Co., No. 10-cv-83, 2011 U.S. Dist. LEXIS 144887 (E.D. Ky. Dec. 16, 2011) ................................. 4

Palomar Med. Techs. v. Candela Corp., No. 06-cv-11400, 2011 U.S. Dist. LEXIS 44667 (D. Mass. April 26, 2011) (Zobel, J.) ........ 13

Ravo v. Covidien LP, No. 11-cv-1637, 2014 U.S. Dist. LEXIS 151342 (W.D. Pa. Oct. 24, 2014) ............... 3, 4, 9, 13

ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) ........................................................................................... 10, 16

iii

United States v. Wintermute, 443 F.3d 993 (8th Cir. 2006) ..................................................................................................... 4

RulesFed. R. Civ. P. Rule 26 ................................................................................................................ 13

1

I. INTRODUCTION

As an integral part of Adria’s attack on Forever Wi-Fi’s damages case, Adria’s

damages expert has attempted to argue that a reasonable-royalty license to Forever Wi-Fi’s seven

Patents-in-Suit would be “comparable” to a handful of cheap licenses Adria has taken in the past

to an assortment of different technologies. Adria’s damages expert admittedly has no expertise

in these technologies, so he relies solely on a short expert report from Adria’s paid

technical expert, Dr. William Jones, on the key question of technical “comparability.” A

“comparability” analysis requires finding substantial similarity between the claimed inventions

of one patent and the claimed inventions of a different patent. But, incredibly, Dr. Jones’s

report avoids actually comparing the claims of Forever Wi-Fi’s patents to any of the various

patents he concludes are “comparable.” Instead of performing the required comparison, Dr.

Jones arbitrarily created five broad criteria (e.g., “displays data relating to location”) and

checked whether Adria’s past licensed patents were merely related to a given criterion. Dr.

Jones admitted that these five criteria were not derived from the Patents-in-Suit, and he admitted

he did nothing to check whether the criteria even applied to the Patents-in-Suit.

Dr. Jones’s “comparability” opinions suffer from a fundamental methodological failure.

Dr. Jones’s methodology had no chance of testing the similarity between Forever Wi-Fi’s claims

and other patent claims (whether A is similar to B), because Dr. Jones avoided comparing

the patents. Dr. Jones did not even attempt an indirect comparison, because when he created his

five arbitrary criteria, he never determined whether the criteria were sufficiently similar to

Forever Wi-Fi’s claimed inventions (i.e., even if B were similar to C, Dr. Jones never

compared A to C, and thus cannot tell whether A is similar to B). Dr. Jones failed to apply any

methodology that could reliably meet the proper legal standard for determining comparability.

2

For this reason alone, Dr. Jones’s analysis in Part III(A) and paragraph 50 of his Supplemental

Expert Report should be excluded as unreliable and irrelevant.

Dr. Jones’s analysis should also be stricken because his opinions are conclusory, neither

reciting the factual basis for his conclusions, nor anything resembling a chain of reasoning that

could support them. Such opinions cannot assist the trier of fact in understanding the technology

he is testifying about. At best, if the Court were to allow Adria to present Dr. Jones’s testimony

at trial, his testimony would waste significant time. Forever Wi-Fi would have to establish

through its own witnesses and cross examination the many reasons why each of the many patents

addressed in the licenses on which Dr. Jones relies is not comparable to Forever Wi-Fi’s Patents-

in-Suit. This time would be wasted because no reasonable juror could base a comparability

decision on the completely inadequate and erroneous testimony of Dr. Jones. Rather, allowing

Adria to present to the jury these three irrelevant, low-price-tag licenses would unfairly prejudice

Forever Wi-Fi by encouraging the jury to ponder unrelated and irrelevant licenses.

Adria should not be allowed to use the ungrounded testimony of its experts to inject

irrelevant, misleading, and unfairly prejudicial evidence into the jury’s deliberation. Dr.

Jones’s opinions on comparability should therefore be excluded under Federal Rules of

Evidence 702, 402, and 403.

II. LEGAL STANDARDS

The admissibility of expert testimony is governed by Federal Rule of Evidence 702,

which states:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

3

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

Under Rule 702, a trial judge must ensure “that an expert’s testimony both rests on a

reliable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow Pharms., 509

U.S. 579, 597 (1993). The focus “must be solely on principles and methodology, not on the

conclusions that they generate.” Id. at 595. While Rule 702 has no “definitive checklist or test,”

the Supreme Court has made some “general observations” about factors to be considered: (1)

whether a theory or technique can be or has been tested, (2) whether a theory or technique has

been peer-reviewed or published, (3) the known or potential error rate, and (4) the level of

acceptance. Id. at 593-94.

Adria’s damages expert, Dr. Jonathan Peters, relies upon Dr. Jones’s technological

comparability opinions that are the subject of this motion for the determination of a reasonable

royalty rate that Adria would owe Forever Wi-Fi, and in particular for Dr. Peters’s analysis under

Georgia-Pacific Factor 2, which covers “rates paid by the licensee for the use of other patents

comparable to the patent in suit.” See Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325

(Fed. Cir. 2009) (emphasis added) (internal quotation marks omitted). The burden is on the

asserting party to demonstrate comparability. Ravo v. Covidien LP, No. 11-cv-1637, 2014 U.S.

Dist. LEXIS 151342, at *19 (W.D. Pa. Oct. 24, 2014). Comparability involves two distinct

components: technological and economic. Id.

To establish technological comparability, Adria must show that the licensed technology is

substantially similar to the technology of the Patents-in-Suit. Masimo Corp. v. Philips Elecs. N.

Am. Corp., No. 09-cv-80, 2013 U.S. Dist. LEXIS 70745, at *69-72 (D. Del. May 20, 2013).

4

“[A]lleging a loose or vague comparability between different technologies or licenses does not

suffice.” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012).

Licenses are not considered comparable to the Patents-in-Suit merely because they cover

technology in the same general field, and courts have precluded experts from relying on such

non-comparable licenses. Id. at 56, 79-81; Lucent, 580 F.3d at 1328; Ravo, 2014 U.S. Dist.

LEXIS 151342, at *1, *13-14, *32, *38; Masimo, 2013 U.S. Dist. LEXIS 70745, at *69-72.

It is also well established that an expert opinion premised on an incorrect legal standard

should be excluded. See, e.g., Hebert v. Lisle Corp., 99 F.3d 1109, 1117 (Fed. Cir. 1996) (“We

encourage exercise of the trial court’s gatekeeper authority when parties proffer, through

purported experts, not only unproven science . . . but markedly incorrect law.”); see also Bailey v.

Allgas, Inc., 148 F. Supp. 2d 1222, 1242-46 (N.D. Ala. 2000) (excluding testimony where the

expert’s analysis failed to apply Eleventh Circuit law), aff’d, 284 F.3d 1237 (11th Cir. 2002);

Inline Connection Corp. v. AOL Time Warner, Inc., No. 02-cv-272, 2007 U.S. Dist. LEXIS 6207,

at *12-16 (D. Del. Jan. 29, 2007) (excluding expert testimony as to enablement premised on

incorrect legal standard); Nevels v. Deerbrook Ins. Co., No. 10-cv-83, 2011 U.S. Dist. LEXIS

144887, at *15 (E.D. Ky. Dec. 16, 2011) (excluding expert opinion because “[the expert’s]

mistaken legal opinions would be not only unreliable, but prejudicial”); Carapellucci v. Town of

Winchester, 707 F. Supp. 611, 619-620 (D. Mass. 1989) (noting “uncontrollable risk of unfair

prejudice if the jury is allowed to hear an expert opinion … when the expert may be applying an

erroneous definition of the legal standard”); United States v. Wintermute, 443 F.3d 993, 1001

(8th Cir. 2006) (affirming exclusion of expert witness because “by misconstruing the legal

question at issue, the testimony was not relevant. If offered, the expert testimony would have

served to confuse rather than assist the jury in the jury’s attempt to understand the evidence on

5

this issue.”).

III. FOREVER WI-FI’S PATENTS-IN-SUIT

Forever Wi-Fi’s Patents-in-Suit relate to using Wi-Fi access points to locate a device,

such as a mobile phone. This requires a database of Wi-Fi access points and the geographic

locations of those access points. Mobile devices can determine their location by detecting nearby

Wi-Fi access points and using the information in the database on the geographic location of those

Wi-Fi access points.

Forever Wi-Fi’s Patents-in-Suit can be grouped into three groups: (1) the “Server-Side

Patents,” that are directed primarily at the Wi-Fi access point (“AP”) database, how that database

is created, and how the accuracy of the database is maintained when the APs are moved over

time from one location to another; and (2) the “User Device Patents,” that are directed primarily

at how mobile devices accurately calculate their location based on the Wi-Fi AP database; and (3)

the 423 Patent is directed primarily to using Wi-Fi location information to estimate an initial

location in a GPS system to increase the speed of GPS and decrease the battery usage by GPS.

Adria’s experts, including Dr. Jones to some extent, also acknowledge the above-cited features

and have confirmed these specific technological areas that Dr. Jones’s comparability report

ignores. Having broadly recognized the actual relevant claimed inventions of the Forever Wi-Fi

patents for alleged invalidity purposes, Dr. Jones then systematically ignores the same

fundamental facts on which he previously opined when advocating that numerous unrelated

licenses cover “comparable” subject matter to the Forever Wi-Fi patents.

The Court in this case has also expressly acknowledged the specific areas of technology

at issue, further contradicting Dr. Jones’s disregard of the actual non-comparability of the

licenses on which he opines. As the Court explained,

6

The technology in this case relates to collecting, recording, and using the location of Wi-Fi access points to determine the location of a mobile device with a Wi-Fi receiver. Such a device is also known as a Wireless Local Area Network-enabled (“WLAN”) device. . . . The Wi-Fi access point locations are maintained in a database that is accessed by the mobile device to determine the mobile device’s location.

Markman Order at 1-2.

IV. DR. JONES’S OPINIONS ARE IRRELEVANT AND UNRELIABLE BECAUSE HIS COMPARABILITY ANALYSIS IS UNTETHERED FROM THE PATENTS-IN-SUIT

Dr. Jones opined that patents and technology Adria licensed from third parties in three

license agreements are technologically comparable to the Patents-in-Suit despite not applying

any reliable methodology that would allow him to reach such a conclusion. See Ex. 1

[Supplemental Expert Report of Dr. William Jones, Ph.D. (“Jones Expert Report”)] ¶¶ 10-18, 50.

Dr. Jones did not directly compare the Patents-in-Suit with the patents Adria licensed, let alone

compare their respective claimed inventions. Ex. 2 [Jones Dep.] at 263:20-264:5. The only

portion of Dr. Jones’s report that refers specifically to the technology of the Patents-in-Suit is a

single four-line paragraph, in which Dr. Jones makes a general statement that the technology in

the Patents-in-Suit is “used to provide information about the location of mobile devices” and

opines that the location of a mobile device can be determined using many different systems and

techniques. Ex. 1 [Jones Expert Report] ¶ 11. Dr. Jones does not distinguish between the

individual Patents-in-Suit, much less the claims of those patents, in this paragraph or anywhere

else in his report.

Further, Dr. Jones did not apply even this general statement about the technology of the

Patents-in-Suit as a definition of the specific field in which he found supposedly comparable

patents. Instead, Dr. Jones devised a so-called “location criterion,” which was broader than his

general statement about the Patents-in-Suit and which he defined as “whether the technology

7

concerns computational aspects of the location of real-world entities in space and time, inclusive

of related properties such as velocity, distance, height, and orientation.” Ex. 1 [Jones Expert

Report] ¶ 12 (emphasis added). Moreover, he did not apply that definition either in analyzing

Adria’s licensed patents and technology, and instead he devised five different comparability sub-

criteria, which he then sought to identify in Adria’s licensed patents and technology. Id.; Ex. 2

[Jones Dep.] at 247:21-248:23, 263:20-264:5, 306:22-307:14, 316:14-317:16. Dr. Jones’s five

comparability criteria are “whether [1] the technology calculates location [criterion C], [2]

manipulates location information [M], [3] builds or updates a database that stores (perhaps in

part) location data (including data that can be used to calculate location) [B], [4] accesses or uses

location data [A], or [5] displays data relating to location [D].” Ex. 1 [Jones Expert Report] ¶ 12.

Dr. Jones does not define the scope of any of these five comparability criteria, so that, for

example, “location data” could mean anything and not be related in any sense to the

determination of an actual location of a mobile device, which is covered by the Patents-in-Suit.

To the extent Dr. Jones found any of the five comparability criteria (C, M, B, A, or D) in the

licensed patents, he concluded that the licensed technology is comparable. In fact, for one license

he found comparable, Dr. Jones found satisfaction of two broad criteria—i.e., [D] displays data

relating to location and [M] manipulates location information—to be sufficient to qualify the

licensed patents as technologically comparable. Ex. 1 [Jones Expert Report] ¶ 17.

These loose comparability criteria allowed Dr. Jones to find comparability in Adria’s

licensed technology that is far removed from the Patents-in-Suit. For example, Dr. Jones found

comparable several patents directed to alarm systems and patents enabling the rendering of three-

dimensional images of the terrain. Ex. 1 [Jones Expert Report] ¶¶ 16-17. None of these patents is

actually comparable to the claimed inventions of the Patents-in-Suit: the creation, maintenance,

8

and accuracy of a database of Wi-Fi access points; the determination of accurate and reliable

device location based on that database; and the use of Wi-Fi to overcome the disadvantages of

GPS location. See Section III above.

Dr. Jones’s comparability analysis is thus untethered from the actual technologies in the

Patents-in-Suit, asserted claims of the Patents-in-Suit, and any specific disclosures in those

patents, which renders it irrelevant, arbitrary, and speculative. See LaserDynamics, 694 F.3d at

81. Dr. Jones admitted that he did not derive his five comparability criteria directly from the

Patents-in-Suit:

Q. You did not derive your five criteria, constituent criteria, based on a specific matching of each of those criteria to the asserted patents in suit, correct?

A. That’s correct. Ex. 2 [Jones Dep.] at 311:18-22. Moreover, not only did he not derive his five comparability

criteria from the Patents-in-Suit, Dr. Jones never confirmed that those criteria can even be found

in the Patents-in-Suit at all:

Q. It is correct, isn’t it, that you did not go back, once you have come up with the five comparability constituents’ parts, to apply them to the seven patents in suit, correct? Yes or no.

A. That’s – that’s correct. Yes. Ex. 7 [Jones Dep.] at 308:12-16. Dr. Jones’s expert report also does not include any analysis of

the asserted claims, and Dr. Jones admitted he did not analyze the asserted claims, but merely

analyzed what he calls the “totality of those patents.” Id. at 310:12-18.

Dr. Jones’s analysis is divorced from the Patents-in-Suit and cannot be used to establish

the substantial similarity between the technology of the Patents-in-Suit and the technology Adria

licensed. Dr. Jones did not compare the claimed inventions of the Patents-in-Suit with the

claimed inventions of the licensed patents. Ravo, 2014 U.S. Dist. LEXIS 151342, at *32 (“[I]t is

9

the expert’s duty to make a threshold showing that there is some discernible link between the

comparable license and the claimed technology.” (internal citations omitted)). Dr. Jones’s

comparability criteria are not even rooted in the Patents-in-Suit and such methodology is neither

based on sufficient facts or data nor a reliable methodology in this specific context where there

must be a discernable link between the Patents-in-Suit and the patents Adria licensed from third

parties.

Further, when independently tested against the Patents-in-Suit, Dr. Jones’s methodology

fails. The seven Patents-in-Suit cover the creation, maintenance, and accuracy of a database of

Wi-Fi access points; the determination of accurate and reliable device location based on that

database; and the use of Wi-Fi to overcome the disadvantages of GPS location. See Section III

above. Dr. Jones admitted that his comparability criteria did not include a determination that the

licensed technology was related to accurate or reliable location determination, Wi-Fi technology,

or the use of Wi-Fi technology to overcome the known disadvantages of the GPS systems. Ex. 2

[Jones Dep.] at 299:14-25; 300:24-301:11, 303:11-14, 304:1-6.

Dr. Jones ignored the specific disclosures and the scope of the asserted claims of the

Patents-in-Suit and established his own five comparability criteria that are divorced from the

Patents-in-Suit. Dr. Jones’s failure to tether his analysis to the patented technology of the

Patents-in-Suit renders his analysis unreliable and irrelevant to the question of whether the

technology covered by Adria’s agreements is comparable to the technology covered by the

Patents-in-Suit. Therefore, Dr. Jones’s opinions should be excluded on this basis.

V. DR. JONES’S ANALYSIS SHOULD BE STRICKEN BECAUSE IT DOES NOT MEET THE LEGAL REQUIREMENTS FOR COMPARABILITY UNDER GEORGIA-PACIFIC FACTOR 2

Dr. Jones’s analysis that is divorced from the Patents-in-Suit also fails to meet the legal

requirements for showing technological comparability. “[A]lleging a loose or vague

10

comparability between different technologies or licenses does not suffice.” LaserDynamics, 694

F.3d at 79. Further, the Federal Circuit “has long required district courts performing reasonable

royalty calculations to exercise vigilance when considering past licenses to technologies other

than the patent in suit.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010).

To establish technological comparability, Adria must show that the licensed technology is

substantially similar to the technology of the Patents-in-Suit. Masimo, 2013 U.S. Dist. LEXIS

70745, at *70. Even if Dr. Jones could show that the five technological comparability criteria he

devised (and the licensed patents) are in the same general field as the Patents-in-Suit—an inquiry

Dr. Jones did not perform—his analysis should still be stricken because patents covering

technology in the same general field as the Patents-in-Suit are not comparable to the hypothetical

license under the Georgia-Pacific analysis to the Patents-in-Suit, and courts have precluded

experts from relying on such non-comparable licenses or found such licenses irrelevant. The

following cases provide examples of impermissibly loose and broad comparability allegations:

• “DVD-related patent licensing programs” were not comparable to a hypothetical license to a patent-in-suit directed to a method of optical disc discrimination that enabled the drive to identify the type of disc (i.e., a CD versus a DVD), LaserDynamics, 694 F.3d at 56, 79-81 (concluding that an expert’s opinion was unreliable under Fed. R. Civ. P. 702 and should have been excluded and that a new trial was required because the jury’s verdict was based on the expert’s opinion);

• an agreement covering “broad, PC-related technologies” was “vastly different” from a hypothetical license to “a narrower method of using a graphical user interface tool known as the date-picker,” Lucent, 580 F.3d at 1328 (concluding that Georgia-Pacific Factor 2 weighed strongly against the jury’s verdict);

• licenses in the “medical device industry” related to the treatment of hemorrhoidal disease and an inquinal hernia prosthesis were not comparable to a hypothetical license to a patent-in-suit with embodiments consisting of a surgical device that can resect a section of bowel preventing the intraluminal contents from contaminating the body cavity, even though one of the licenses appeared to cover a device that treats hemorrhoidal disease with the same effect as the accused devices, Ravo, 2014 U.S. Dist. LEXIS 151342, at *1, *13-14, *32, *38 (striking portions of the expert’s report);

• an agreement referring to “pulse oximetry technology” was not comparable to a

11

hypothetical license to the narrower pulse oximetry-related Patents-in-Suit covering technology such as “read through motion or low perfusion,” Masimo, 2013 U.S. Dist. LEXIS 70745, at *69-72 (concluding that an expert was precluded from relying on the non-comparable agreement).

As shown by these examples, a loose connection through a broad identification of a

general field is insufficient to qualify the licensed patents comparable to the Patents-in-Suit for

the purpose of Georgia-Pacific analysis. Dr. Jones’s analysis that attempts to connect the

technology of the Patents-in-Suit with the technology Adria licensed via a loose set of five

comparability sub-criteria is tenuous at best, and does not meet the test for any similarity, let

alone substantial similarity. Dr. Jones considers as comparable to the Patents-in-Suit any

technology in any agreement that falls within any of the five categories in his broad location

criterion, which is akin to considering the Patents-in-Suit comparable to the overly-broad fields

of technology in the agreements in LaserDynamics, Lucent, Ravo, and Masimo, except that Dr.

Jones has also impermissibly removed the consideration of the Patents-in-Suit themselves from

the analysis. Because these cases have concluded that expert opinions relying on such non-

comparable licenses are properly excluded, the portions of Dr. Jones’s report finding

comparability under a similarly improper standard should be excluded on the same basis as

unreliable.

Even if Adria responds to this motion by trying to prove that Dr. Jones (despite his sworn

testimony)1 applied the broad location criterion—which is “whether the technology concerns

computational aspects of the location of real-world entities in space and time, inclusive of related

1 On redirect, Adria’s counsel attempted to lead Dr. Jones to testify that he applied a broader comparability criterion than the five comparability criteria. But Dr. Jones, testifying on redirect, confirmed that in applying his comparability analysis, he only applied the five comparability criteria to the licensed patents. Ex. 2 [Jones Dep.] at 316:23-317:4 (“Q. Okay. So in doing your analysis, did you only look at the fact of whether the patent licenses – the patents at issue met criteria C, M, B, A, or D? … THE WITNESS: Yes.” (emphasis added)).

12

properties such as velocity, distance, height, and orientation”—and not the five comparability

criteria, Dr. Jones’s opinions sweep in as allegedly comparable patents in various fields

unmistakably far removed from even the field of locating a mobile device, which Dr. Jones

identified as the technology covered by the Patents-in-Suit, let alone the claimed inventions of

the Patents-in-Suit. For example, Dr. Jones found comparable with the Patents-in-Suit several

patents directed to alarm systems that limit when location information is sent. Ex. 1 [Jones

Expert Report] ¶ 16. Dr. Jones also opined that patents directed to enabling the rendering of

three-dimensional images of the terrain, are comparable to the Patents-in-Suit. Id. ¶ 17. These

examples reveal a deep and irreparable flaw in Dr. Jones’s analysis in that whatever criteria he

applied, he cannot show a discernible link between the Patents-in-Suit and the technologies

Adria licensed.

An independent additional basis for striking Dr. Jones’s opinion is that he was unable to

articulate the legal standard he applied for determining technological comparability. Dr. Jones

included a section on legal standards in his invalidity report, but failed to include any such

section in his technological comparability report. Ex. 2 [Jones Dep.] at 235:16-25. Given that Dr.

Jones’s opinion fails to follow the relevant legal standards and that he failed to articulate the

legal standard he applied, his opinion on comparability is not relevant or reliable. See Hebert, 99

F.3d at 1117 (“We encourage exercise of the trial court’s gatekeeper authority when parties

proffer, through purported experts, not only unproven science, see Daubert . . . , but markedly

incorrect law.”); Inline Connection, 2007 U.S. Dist. LEXIS 6207, at *12-16 (“Because [the

expert] did not conduct a proper enablement analysis, his opinion is not reliable and is not

admissible on enablement.”).

Therefore, Dr. Jones’s opinions have not met the threshold showing of comparability

13

such that he should be allowed to opine on the comparability of Adria’s agreements. See Ravo,

2014 U.S. Dist. LEXIS 151342, at *32. As discussed above, his analysis is not tethered to the

Patents-in-Suit and it fails to apply and meet the applicable legal requirements. For these reasons,

his opinions should be excluded from trial.

VI. DR. JONES’S OPINIONS ARE CONCLUSORY AND THEREFORE INADMISSIBLE BECAUSE THEY WILL NOT ASSIST THE JURY

The portion of Dr. Jones’s comparability analysis where he applies his five comparability

criteria to Adria’s licensed patents is entirely conclusory in that Dr. Jones included no

explanation of his reasoning or the facts on which he relies to reach his conclusions, and such

conclusory opinions will not assist the jury in understanding the licensed technology. Expert

statements may be excluded as conclusory because they lack a sufficient factual foundation, are

unsupported by scientific knowledge, or fail to provide the method or reasoning used to reach the

conclusion. See Palomar Med. Techs. v. Candela Corp., No. 06-cv-11400, 2011 U.S. Dist.

LEXIS 44667, at *10-13 (D. Mass. April 26, 2011) (Zobel, J.); Figueroa v. Simplicity Plan de

P.R., 267 F. Supp. 2d 161, 165-67 (D.P.R. 2003). Dr. Jones’s opinions in this section include no

explanation of his reasoning or the facts on which he relies to reach his conclusions. See also

Fed. R. Civ. P. Rule 26(a)(2)(B)(i) (expert report must include “a complete statement of all

opinions the witness will express and the basis and reasons for them”).

Dr. Jones’s analysis follows the same pattern for all licenses. Ex. 1 [Jones Expert Report]

¶¶ 15-17. First, Dr. Jones includes a broad statement about what he believes the licensed patents

cover. Then, he states his conclusion identifying which of his five comparability criteria are met.

He then concludes that the patents are comparable for meeting those criteria. Dr. Jones does not

cite a single specific line or figure of any of the many patents he reviewed. Ex. 1 [Jones Expert

Report] at ¶¶ 15-18. He does not explain where he finds support for his broad definitions of the

14

subject matter of each of the patents, and he does not explain nor include support from the

licenses for why he believes that any of those patents meets any of his five comparability criteria.

For example, Dr. Jones’s entire opinion for Find It Inc. is this:

The patent covered by the Find It Inc. license is directed to a location-based system. This patent satisfies location criteria [C, B, M]. Thus, in my opinion, the Find It Inc. patent is comparable to the Asserted Patents.

Ex. 1 [Jones Expert Report] ¶ 15. Dr. Jones never explained how the licensed patent meets any

of the three comparability criteria he opined are found in the Find It Inc. patent. Dr. Jones’s bare

conclusions are no different from a conclusory addendum to an expert report that listed patent

claims and said simply “yes” or “no” to indicate whether the defendant’s product infringed that

claim. Lamoureux v. AnazaoHealth Corp., No. 03-cv-01382, 2010 U.S. Dist. LEXIS 122831, at

*11-12 (D. Conn. Nov. 8, 2010). This portion of the addendum was stricken under Federal Rule

of Evidence 702 because it did not identify the facts or analysis used to support the conclusion,

and would not assist the trier of fact to determine a factual dispute in issue. Id.

Dr. Jones’s statements related to the Patents-in-Suit and the description of his

comparability methodology are similarly conclusory. Dr. Jones has one sentence that provides a

broad overview of the technological field for the Patents-in-Suit. Ex. 1 [Jones Expert Report] ¶

11. He then states his broad “location criterion,” but does not explain how it relates to the field

he identified for the Patents-in-Suit. Id. ¶ 12. Next he states his five comparability criteria, but

does not explain how he derived those criteria from the “location criterion” and he certainty does

not explain how they related to the Patents-in-Suit. Id. ¶ 12. The role of experts is to assist the

jury by conveying their scientific knowledge in a way that helps the trier of fact understand a fact

in issue. See Figueroa, 267 F. Supp. 2d at 166. Because Dr. Jones does not provide the basis and

reasons for his opinions or describe the bases for his methodology, such testimony will not assist

15

the trier of fact. See id. at 166-67.

VII. DR. JONES’S TESTIMONY ON TECHNOLOGICAL COMPARABILITY WILL WASTE TIME AND UNFAIRLY PREJUDICE FOREVER WI-FI

Allowing Dr. Jones to offer his comparability opinions will also waste time. Dr. Jones’s

opinions lack probative value, and to present them at trial, Dr. Jones would have to introduce

testimony about many patents and from the three patent licenses. If the Court permits Dr. Jones

to testify on technological comparability, Adria will then also present testimony from its

damages experts on those licenses. Forever Wi-Fi will have to respond by cross-examining both

Adria experts and offering testimony of its experts on these issues, Mr. Davis and Dr. Owens.

Unlike Dr. Jones, Forever Wi-Fi’s technical expert, Mr. Davis, has analyzed the Patents-in-Suit

and compared them with the patents Dr. Jones opined are comparable and concluded that these

technologies are not comparable to the technology of the Patents-in-Suit. This is already a

complex case in which the jury will be charged with deciding infringement, validity, willfulness,

and damages issues relating to seven Patents-in-Suit. Adding a “mini-trial” that would be

necessary to demonstrate the reason each of these licenses is not comparable will waste time.

See Fenner Invs., Ltd. v. Hewlett-Packard Co., No. 08-cv-273, 2010 U.S. Dist. LEXIS 41514, at

*10-11 (E.D. Tex. 2010).

Finally, the probative value (if any) of each of the three license agreements is

substantially outweighed by the unfair prejudice to Forever Wi-Fi in presenting these agreements

to the jury. Dr. Peters, Adria’s damages expert, relies on Dr. Jones’s opinions regarding the

comparability of technologies as a basis for his analysis of their economic terms to support his

opinion that Adria and Forever Wi-Fi would have agreed to a hypothetical license with a very

low royalty amount.

The Federal Circuit “has long required district courts performing reasonable royalty

16

calculations to exercise vigilance when considering past licenses to technologies other than the

patent in suit.” ResQNet.com, Inc., 594 F.3d at 869 (Fed. Cir. 2010). Since these licenses are

not comparable, they have “no place in this case” and opinions relying on them are unreliable

under Federal Rule of Evidence 702 and should be excluded. See LaserDynamics, 694 F.3d at

79, 80-81 (internal quotation marks omitted). Moreover, the negligible (if any) probative value

of considering licenses that are not technologically comparable is outweighed by the significant

prejudice Forever Wi-Fi would face if these low-value, irrelevant licenses were shown to the jury.

VIII. CONCLUSION

For the forgoing reasons, Forever Wi-Fi respectfully requests that this court strike the

entirety of Part III(A) and paragraph 50 of Dr. Jones’s Supplemental Expert Report, which is

Exhibit 1 to this Motion, and prohibit Dr. Jones from testifying regarding technological

comparability of Adria’s licenses with Forever Wi-Fi’s Patents-in-Suit.

1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

FOREVER WI-FI, INC., Plaintiff and Counterclaim-Defendant, v. ADRIA INC., Defendant and Counterclaimant.

) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:30-cv-55570

SUPPLEMENTAL EXPERT REPORT OF DR. WILLIAM JONES, Ph.D.

2

* * *

II. CREDENTIALS AND QUALIFICATIONS

4. I received my Bachelor of Arts degree in Mathematics, with a minor in Computer

Science, from the University of Connecticut in 1983. Then at Stanford I earned my Ph.D. in

Computer Science in 1989. Upon graduating from Stanford, I became an Assistant Professor of

Computer Science in Engineering at the University of Michigan. I advanced to the Associate

Professor rank in 1995 and the Full Professor rank in 2001.

5. My most relevant professional experience to this case started in 2002. At that time

I began the University Maps project, when I had observed that a number of technological trends

had made wide-scale handheld wireless computing a possibility. The University Maps project

focused on creating location-based mobile services available to the University of Michigan

community, as well as advancing the underlying technologies of calculating location from WiFi

signals (among other things). By 2004 I had a working system.

6. Starting in 2006, I also began work using the Global Positioning System (GPS) and

related technologies. In that same time frame I began working with the various mobile phone

technologies, as they have advanced, and have worked with them ever since. This work included

a significant amount of research in calculating device location and proximity.

* * *

III. ANALYSIS

9. Below I address in turn the two topics on which Adria sought my opinion.

A. Comparability of In-Licensed Technologies to Asserted Patents

10. I have been asked to evaluate whether the technology of certain patents, patent

applications, and systems that Adria has licensed or acquired is comparable to the technology of

the Asserted Patents.

3

11. As explained in my invalidity report, the Asserted Patents relate to technology used

to provide information about the location of mobile devices such as mobile phones. Such “location

aware” technology has been available and in use for many years, and the location of a mobile

device can be determined using many different systems and techniques.

12. In determining the comparability of the technology underlying the licenses acquired

by Adria to the technology of the Asserted Patents, I used the following criterion: whether the

technology concerns computational aspects of the location of real-world entities in space and time,

inclusive of related properties such as velocity, distance, height, and orientation. In the foregoing,

I will refer to this as the location criterion. To operationalize this criterion, I specifically considered

whether the technology calculates location [criterion C], manipulates location information [M],

builds or updates a database that stores (perhaps in part) location data (including data that can be

used to calculate location) [B], accesses or uses location data [A], or displays data relating to

location [D].

13. I am not opining on the relevance of these patents to the accused products or

services, which incorporate many functions beyond the WiFi positioning functionality that Forever

Wi-Fi asserts that the Asserted Patents cover. Rather, I address only the technological similarity

of the patents and systems covered by these licenses to the technology of the Asserted Patents.

14. My analysis is set out in alphabetical order by name of patent licensor. My

conclusions are summarized in Section IV below.

1. Find It Inc.

15. The patent covered by the Find It Inc. license is directed to a location-based system.

This patent satisfies location criteria [C, B, M]. Thus, in my opinion, the Find It Inc. patent is

comparable to the Asserted Patents.

4

2. Personal Alarm

16. The three patents covered by the Personal Alarm license relate to personal-alarm

systems that will transmit a different alarm if the individual is at home or away from home, and

will transmit GPS location information only if the individual is away from home. These patents

thus satisfy criteria [A, C] set forth above. Accordingly, in my opinion, all of the Personal Alarm

patents are comparable to the Asserted Patents.

3. Map Maker

17. The five patents covered by the Map Maker license relate to the transmission and

rendering of 3D geographic terrain information and thus satisfy criteria [M, D] above.

Accordingly, in my opinion, the Map Maker patents all are comparable to the Asserted Patents.

4. User Solutions

18. The five patents covered by the User Solutions license are directed to search results

tailored to specific users. In my opinion, these patents do not satisfy any of the location criteria set

forth above and thus are not comparable to the Asserted Patents.

* * *

IV. SUMMARY OF ANALYSIS

50. Comparability of in-licensed technologies to Asserted Patents: The following list

summarizes my analysis of the comparability of the technology covered by Adria licenses to the

technology of the Asserted Patents:

Comparable Technology

• Find It Inc.

• Personal Alarm

• Map Maker

Non-Comparable Technology

5

• User Solutions

* * *

1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

FOREVER WI-FI, INC., Plaintiff and Counterclaim-Defendant, v. ADRIA INC., Defendant and Counterclaimant.

) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:30-cv-55570

Deposition of

WILLIAM G. JONES, Ph.D.

2

* * *

Page 228 15 Q. Do you recall how much time you have spent

16 in writing your comparability report? 17 A. It's about 30 hours. I'd say, excuse me,

18 researching and writing, 30 hours. 19 Q. Do you recall how much time you spent in

20 writing your invalidity report? 21 A. It was about 300 hours.

* * *

Page 235 16 Q. Dr. Jones, do you recall that in your

17 invalidity report, you included a section on legal 18 standards regarding validity, level of ordinary

19 skill, and claim construction? 20 THE WITNESS: To my recollection, those are

21 there. 22 Q. Now, in your report we marked in this

23 deposition, it is true, isn't it, that you did not 24 include a section on legal standards?

25 A. No. And I don't see why I had to. * * *

Page 240

21 Q. Isn't it true that you have not used the 22 words "substantially similar" anywhere in your

23 report? 24 MR. HOMRIG: Objection; vague and ambiguous.

25 THE WITNESS: Those exact words did not Page 241

1 appear, but words to that effect, or meaning to that 2 effect, I should say, is communicated in paragraphs

3

3 10 through 14 -- 13. * * *

Page 247

21 Q. So is there or is there not a technological 22 field in which you have conducted your technical

23 comparability analysis? 24 A. Well, as I said earlier, I -- I

25 characterized what I thought might be sort of an Page 248

1 umbrella field that likely encompasses all these 2 things; that is, computing technologies for

3 location-aware computing. 4 Q. Looking at the second or bottom half of

5 paragraph 12 of your report, do you see 6 your sentence "To operationalize" -- I'm sorry, "To

7 operationalize this criterion"? Do you see that? 8 A. Okay. Paragraph 12.

9 Yes. 10 Q. It is true, isn't it, that to

11 operationalize your comparability criterion, you 12 chose five different comparability categories, which

13 are shown in paragraph 12 of your report? 14 A. Yes. I identified five broad categories.

15 Q. And those five comparability categories you 16 used in your comparability analysis are:

17 "calculates location," C; "manipulates location 18 information," M; "builds or updates a database that

19 stores, perhaps in part, location data, including 20 data that can be used to calculate location," B;

21 "accesses or uses location data," A; "or displays 22 data relating to location," correct?

23 A. Yes.

4

* * *

Page 254 14 It is correct, isn't it, that your

15 comparability analysis in your report makes no 16 distinction between individual seven patents in

17 suit? 18 MR. HOMRIG: Objection; asked and answered.

19 THE WITNESS: That's correct. * * *

Page 257 17 Q. The basis for your comparability analysis

18 was not the analysis of specific asserted Forever Wi-Fi's 19 claims?

20 MR. HOMRIG: Objection; vague and ambiguous. 21 THE WITNESS: Now, I'm generally aware,

22 and, of course, I've read the Forever Wi-Fi patents and 23 are aware of those claims, and those claims do

24 reveal the technologies that the Forever Wi-Fi patents use 25 and develop. And so in that way, they -- they were

Page 258 1 part of the basis for my comparability analysis.

* * *

Page 263 20 Q. It is correct, isn't it, that for any

21 particular license, you did not provide a direct 22 comparison between that licensed patent and each of

23 the patents in suit? 24 MR. HOMRIG: Objection; vague and ambiguous.

25 You mean any particular Adria license, Page 264

5

1 correct? 2 MS. HADZIMEHMEDOVIC: (Nods head.)

3 MR. HOMRIG: Okay. 4 THE WITNESS: That's correct. I used my

5 location criterion. * * *

Page 299 14 Q. The question is, none of your five

15 comparability criteria -- 16 A. Uh-huh.

17 Q. -- specifically included an assessment that 18 the licensed technology provided accurate location?

19 MR. HOMRIG: Objection; misstates his report, 20 vague and ambiguous.

21 THE WITNESS: My -- my criteria concern the 22 computational aspects of location. Whether these

23 patents express those aspects, that does not include 24 specifically the accuracy of -- of any such

25 locations. * * *

Page 300 24 Q. So is it also correct that none of your

25 comparability categories, the five comparability Page 301

1 categories, included specifically determining 2 whether the licensed technology provided reliable

3 location information? 4 MR. HOMRIG: Objection; misstates his report,

5 vague and ambiguous. 6 THE WITNESS: Let's -- let's call the five

7 things whatever we're going to call them, criteria, 8 categories.

9 The location criterion and its constituents

6

10 thereof did not consider the provision of reliable 11 location.

* * * Page 303

11 Q. You didn't opine that any of the patents or 12 technology you identified as comparable is using

13 Wi-Fi technology; yes or no? 14 A. Yes.

* * * Page 304

1 Q. You didn't opine that any of the patents or 2 technology you identified as comparable is using

3 Wi-Fi location information to overcome the known 4 disadvantages of the GPS location systems, correct?

5 A. Yes. Yes. That wasn't part of my 6 criterion.

16 Right. Referring to my 17 report, my report did not include any citations of a

18 single line or a single specific line or figure of 19 any of the patents or patent application

20 technologies. 21 BY MS. HADZIMEHMEDOVIC:

22 Q. And your report did not 23 specifically include a specific citation to a single

24 line or figure of any of the seven asserted patents? 25 MR. HOMRIG: Objection; vague and ambiguous.

Page 305 1 THE WITNESS: Give me a second here.

2 That's correct. * * *

Page 305

20 Q. Just to be clear, are you or are you not

7

21 testifying today that the five comparability 22 criteria you used in your report are derived from

23 Forever Wi-Fi's seven patents in suit? 24 MR. HOMRIG: Objection; misstates his report

25 and misstates his testimony. Page 306

1 THE WITNESS: The seven patents in suit and 2 the technologies they discuss were a critical part

3 of my derivation of the location criterion -- 4 BY MS. HADZIMEHMEDOVIC:

5 Q. I'll ask it -- 6 A. -- and -- and its five constituent parts.

7 Q. Did you or did you not derive the five 8 constituent parts of your comparability analysis

9 from the seven patents in suit? 10 MR. HOMRIG: Objection; misstates his

11 testimony, misstates his report, asked and answered. 12 THE WITNESS: Yes, in large part I did.

13 BY MS. HADZIMEHMEDOVIC: 14 Q. Did you -- did you find each of your five

15 comparability constituents in each of the seven 16 patents in suit?

17 MR. HOMRIG: Objection; misstates his 18 testimony and misstates his report.

19 THE WITNESS: I didn't specifically go back 20 and apply the criteria to the patents.

21 BY MS. HADZIMEHMEDOVIC: 22 Q. That suggested you did not derive those

23 criteria from the patents? 24 MR. HOMRIG: Objection; asked and answered,

25 misstates his testimony, and misstates his report. Page 307

1 THE WITNESS: No, it doesn't suggest that

8

2 at all. I began with the seven patents in suit. I 3 identified the technologies that they disclosed. I

4 thought about the field of the inventions -- the 5 inventions. I -- I came up with the location

6 criterion. I then derived the -- the five specific 7 indicators. I did not go back and then -- and

8 analyze the patents and apply those criteria back. 9 It was a -- you might say it was a one-way -- a

10 one-way process. 11 These were criteria that I was asked to

12 apply -- or sorry. I was asked to find 13 comparability for, you know, these four patent

14 sets and licenses, and that's what I did. * * *

Page 308

12 Q. It is correct, isn't it, that you did not 13 go back, once you have come up with the five

14 comparability constituents' parts, to apply them to 15 the seven patents in suit, correct? Yes or no.

16 A. That's -- that's correct. Yes. * * *

Page 310

12 Q. You did not provide, in in your report, any 13 specific analysis of Forever Wi-Fi's asserted claims in

14 suit? 15 MR. HOMRIG: Objection; vague and ambiguous.

16 THE WITNESS: Correct. I did not -- 17 specifically analyze the asserted

18 claims; rather, the totality of those patents. * * *

Page 311

9

18 Q. You did not derive your five criteria, 19 constituent criteria, based on a specific matching

20 of each of those criteria to the asserted patents in 21 suit, correct?

22 A. That's correct. * * *

Redirect

Page 316 14 Q. Sir, what -- what criteria did you use to

15 determine comparability for the patents in suit and 16 the patents at issue in the Adria licenses?

17 A. So the -- the overarching criterion is the 18 location criterion, which is, does it concern

19 computational aspects of location. I then 20 operationalized that location criterion into

21 these -- into these five particular expressions 22 of -- of computational aspects of location.

23 Q. Okay. So in doing your analysis, did you 24 only look at the fact of whether the patent

25 licenses -- the patents at issue met criteria C, M, Page 317

1 B, A, or D? 2 MS. HADZIMEHMEDOVIC: Leading, outside the

3 scope. 4 THE WITNESS: Yes.

5 BY MR. HOMRIG: 6 Q. And did you -- sir, did you also look at a

7 broader criterion? 8 MS. HADZIMEHMEDOVIC: Asked and answered,

9 leading. 10 THE WITNESS: These -- these are the

11 computational expressions of the location criterion

10

12 that I used. 13 BY MR. HOMRIG:

14 Q. Okay. 15 A. These -- those were all expressions of --

16 of computations about locations.

1

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

FOREVER WI-FI, INC., Plaintiff and Counterclaim-Defendant, v. ADRIA INC., Defendant and Counterclaimant.

) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:30-cv-55570

Deposition of

THOMAS DAVIS

2

* * *

Page 37 23 Q Yeah. Maybe you could tell me what you

24 mean by the phrase "substantially similar" as used 25 in your report?

Page 38 1 A Most of the content that's being claimed

2 is similar, you know, a substantial amount of the 3 patent, what it's discussing, the technology that is

4 used, that it's basically similar to -- to the 5 documents that I'm comparing it to.

6 Q And that definition of "substantial 7 similarity," where does that come from?

8 MS. HADZIMEHMEDOVIC: Vague. 9 BY MR. HOMRIG:

10 Q The definition that you just gave me of 11 "substantial similarity," where does that come from?

12 A That comes from -- if you look in a 13 engineering textbook, for instance, and my

14 understanding of what it means from an engineering 15 point of view, that's where it came from.

16 Q Your own -- is it fair to say it came from 17 your own independent experience?

18 A Plus what other -- my peers in 19 engineering, in these textbooks and encyclopedias

20 and dictionaries of engineering terms, what they've 21 defined that to mean.

22 Q You haven't cited any of those engineering 23 textbooks or encyclopedias or dictionaries in this

24 report that's Exhibit 2, have you? 25 A No, I have not.

3

* * *

Page 69 9 Q Is it fair at a high level to say that your

10 methodology for determining what was comparable is 11 similar to Dr. Jones's?

12 MS. HADZIMEHMEDOVIC: Vague. 13 THE WITNESS: I think on a very, very high

14 level, methodology is similar. 15 BY MR. HOMRIG:

16 Q So setting aside your disagreement with 17 the criterion -- criteria that Dr. Jones

18 developed, you would agree that it's appropriate for 19 the expert to review the patents-in-suit, develop a

20 set of criteria and then apply those criteria to the 21 licenses that he's opining on; is that right?

22 MS. HADZIMEHMEDOVIC: Vague to the extent 23 that it mischaracterizes Dr. Jones's analysis.

24 You may answer. 25 THE WITNESS: In general, that's what you

Page 70 1 would do, yes.

* * *

Page 78 11 Q But you didn't specifically do a

12 patent-to-patent comparison in your report anywhere? 13 MS. HADZIMEHMEDOVIC: Vague. Vague.

14 THE WITNESS: No. I probably did more of 15 a patent-to-a-patent group analysis.

* * *

Page 80 21 Q You said that you compared the

4

22 Adria-licensed patents to the criteria that you had 23 developed and derived from the patents-in-suit; is

24 that correct? 25 A That's correct.

Page 81 1 Q And you believe that was an appropriate

2 methodology for determining whether patents were 3 comparable?

4 A Yes.

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

FOREVER WI-FI, INC., Plaintiff and Counterclaim-Defendant, v. ADRIA INC., Defendant and Counterclaimant.

) ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 3:30-cv-55570

ADRIA INC.’S MEMORANDUM OF POINTS AND AUTHORITIES IN

OPPOSITION TO FOREVER WI-FI, INC.’S MOTION TO STRIKE PORTIONS OF THE EXPERT REPORT OF ADRIA’S EXPERT DR. WILLIAM JONES

AND TO PRECLUDE TRIAL TESTIMONY PURSUANT TO FEDERAL RULE OF EVIDENCE 702 AND DAUBERT V. MERRELL DOW PHARM., INC.

ii

TABLE OF CONTENTS I. INTRODUCTION ............................................................................................................. 1

II. FACTUAL BACKGROUND ............................................................................................ 2

A. The Patents-in-Suit ..................................................................................................... 2

B. Dr. Jones’s Analysis and Opinions ............................................................................ 2

III. LEGAL STANDARD ........................................................................................................ 4

A. Admissibility of Expert Testimony Generally ........................................................... 4

B. Admissibility of Expert Testimony Regarding Technical Comparability ................. 4

IV. ARGUMENT ..................................................................................................................... 5

A. Dr. Jones’s methodology is reliable and will assist the jury. ..................................... 5

1. Dr. Jones directly compared the patented and previously licensed technologies using a methodology based on his unchallenged expertise. . 6

2. Forever Wi-Fi’s expert employed the same methodology as Dr. Jones. ... 8

3. Forever Wi-Fi’s attacks on Dr. Jones’s conclusions, disguised as methodological critiques, are meritless. ..................................................... 9

B. Dr. Jones’s opinions are exactly the sort allowed under Georgia–Pacific and the jury is entitled to consider them. .......................................................................... 11

1. The jury is entitled to consider comparability opinions regardless of whether the connection to the technology at issue is disputed. ............... 12

2. Exclusion is appropriate only when no evidence supports a comparability opinion. .................................................................................................... 13

3. Forever Wi-Fi’s arguments regarding its “substantially similar” standard are baseless. .............................................................................................. 15

C. Dr. Jones’s opinions will assist the jury and will not prejudice Forever Wi-Fi. ...... 17

V. CONCLUSION ................................................................................................................ 19

iii

TABLE OF AUTHORITIES

CasesActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,

694 F.3d 1312 (Fed. Cir. 2012) ........................................................................................ passim

Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993) ................................................................................................... 1, 4, 10, 12

Ericsson, Inc. v. D-Link Sys., Inc., --- F.3d ---, 2014 WL 6804864 (Fed. Cir. Dec. 4, 2014) ..................................................... 8, 20

Georgia–Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) ................................................................................. passim

Hebert v. Lisle Corp., 99 F.3d 1109 (Fed. Cir. 1996) ................................................................................................. 18

i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) ................................................................................................... 9

LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) ................................................................................................... 15

LaserDynamics, Inc. v. Quanta Computer, Inc., No. 2:06-CV-348-TJW-CE, 2011 WL 7563818 (E.D. Tex. Jan. 7, 2011) .............................. 16

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ................................................................................. 6, 8, 10, 14

Masimo Corp. v. Philips Electronics North America Corp., C.A. No. 09-80-LPS-MPT, 2013 WL 2178047 (D. Del. May 20, 2013) ................................ 16

Milward v. Acuity Specialty Products Grp., Inc., 639 F.3d 11 (1st Cir. 2011) .............................................................................................. 4, 5, 13

Palomar Med. Techs., Inc. v. Candela Corp., No. 06-11400-RWZ, 2011 WL 1576580 (D. Mass. Apr. 26, 2011) ........................................ 19

Pelletier v. Main St. Textiles, LP, 470 F.3d 48 (1st Cir. 2006) ...................................................................................................... 17

ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) ................................................................................................. 15

Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1312 (Fed. Cir. 2011) ....................................................................................... 5

iv

VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014) ............................................................................... 5, 13, 14, 17

Wordtech Sys., Inc v. Integrated Networks Solutions, Inc., 609 F.3d 1308 (Fed. Cir. 2010) ............................................................................................... 10

Statutes35 U.S.C. § 284 .............................................................................................................................. 5

RulesFed. R. Civ. P. 26(a)(2)(B)(i) ....................................................................................................... 17

Fed. R. Evid. 402 ......................................................................................................................... 19

Fed. R. Evid. 403 ......................................................................................................................... 19

Fed. R. Evid. 702 .................................................................................................................. passim

1

I. INTRODUCTION

Dr. William Jones’s expert opinion on the comparability of the technologies claimed by

the patents-in-suit and certain technologies licensed by Adria Inc. (“Adria”) is methodologically

sound and will assist the jury in determining a reasonable royalty to award Forever Wi-Fi, Inc.

(“Forever Wi-Fi”) if it finds the patents valid and infringed. Dr. Jones is a computer science

professor with more than two decades of experience and, by the patentees’ own admission, the

inventor of one of the “most important research efforts” in the field of WiFi-based location

systems. He directly compared the patented and previously licensed technologies using a

location criterion that he derived from the patents and for which he developed five indicators.

Ultimately, Dr. Jones concluded that, of the four licenses he reviewed, three covered comparable

technology and one covered non-comparable technology. Such analysis is common in patent

cases and is undeniably relevant to a damages calculation under Georgia–Pacific Corp. v. United

States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and Federal Circuit precedent.

Because Forever Wi-Fi disagrees with the conclusions that Dr. Jones reached, it moves to

exclude his opinion under Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharms.,

Inc., 509 U.S. 579, 595 (1993). Disagreements as to an expert’s conclusions are not grounds for

exclusion, however, and the Federal Circuit has held that comparability of patent licenses is a

“factual issue[] best addressed by cross examination and not by exclusion.” ActiveVideo

Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1333 (Fed. Cir. 2012). Forever Wi-Fi

thus attempts to recast its disagreements as criticisms of Dr. Jones’s methodology, and argues for

exclusion based on alleged methodological flaws. These arguments are meritless.

First, Forever Wi-Fi asserts that Dr. Jones did not compare the patents-in-suit to the

Adria-licensed technology. But Dr. Jones testified unequivocally that he derived his location

criterion and its associated indicators directly from the patents-in-suit and then compared them to

2

the licensed technology. Forever Wi-Fi’s own expert admitted that he used this same

methodology himself. Second, Forever Wi-Fi argues that Dr. Jones failed to articulate or apply

the proper legal standard. Forever Wi-Fi is wrong. Dr. Jones evaluated technical comparability,

as required by Federal Circuit precedent. Third, Forever Wi-Fi suggests that Dr. Jones’s opinions

on comparability will waste the jury’s time. However, the damages experts for both parties rely

on previous patent or technology licenses, which are a standard consideration under the second

and fifteenth of the factors enumerated in Georgia–Pacific, 318 F. Supp. at 1120. Far from

creating a “mini-trial,” Dr. Jones’s testimony will provide the jury with a reference point for how

Adria has valued comparable technology in the real world.

Because Dr. Jones’s opinions are methodologically sound and will assist the jury, Adria

respectfully requests that the Court deny Forever Wi-Fi’s Motion to Strike Portions of the Expert

Report of Dr. Jones and to Preclude Trial Testimony of Dr. Jones (“Motion”).

II. FACTUAL BACKGROUND

A. The Patents-in-Suit

According to Forever Wi-Fi, the patents-in-suit generally fall into three categories. First,

the “Server-Side Patents” are primarily directed to a database of WiFi APs, including the

processes by which the database is created and maintained. Second, the “User Device Patents”

are primarily directed to the use of WiFi radio signals in conjunction with the database to

determine a device’s location. Third, the ’423 Patent is primarily directed to the use of WiFi-

based location estimates to speed the determination of GPS-based location estimates.

B. Dr. Jones’s Analysis and Opinions

Dr. Jones has issued two expert reports. In Dr. Jones’s first report, which he issued on

August 8, 2015 and which Forever Wi-Fi does not challenge, he opined on the validity of two of

3

the Server-Side Patents and two of the User Device Patents. Dr. Jones spent approximately 300

hours preparing his first report. Ex. 2 (Jones Dep.) at 228:19-21.

On October 9, 2015, Dr. Jones issued a second expert report, in which he opined on the

comparability of all of the patents-in-suit to certain patents that Adria previously had licensed.

Dr. Jones spent approximately 30 additional hours preparing the second report, which involved

reviewing the ’423 Patent and those Server-Side and User Device Patents that he had not

previously examined. Ex. 2 (Jones Dep.) at 228:15–18. To evaluate technical comparability, Dr.

Jones identified the technologies that the patents-in-suit claim, derived a “location criterion” that

characterizes those technologies, and defined five specific indicators to determine whether a

given technology satisfies the location criterion. Ex. 1 (Jones Rep.) ¶ 12; Ex. 2 (Jones Dep.) at

257:17–258:1, 307:2–7. Using this approach, Dr. Jones concluded that, of the four licenses he

reviewed, three covered technology comparable to that claimed by the patents-in-suit and one

covered non-comparable technology. Ex. 1 (Jones Rep.) ¶ 50. Dr. Peters, the damages expert

retained by Adria, relied on Dr. Jones’s comparability opinions in his own expert report.

Forever Wi-Fi did not submit a report on technical comparability with its damages report.

After Dr. Jones submitted his report, however, Forever Wi-Fi responded with comparability

report from Mr. James Davis. Mr. Davis used the same methodology as Dr. Jones; he derived

certain criteria from the patents-in-suit and used those criteria to determine whether the patented

licensed technologies were comparable. Ex. 3 (Davis Dep.) at 80:21–81:4. However, Mr. Davis

concluded that none of the previously licensed technology was comparable because it did not

involve “the fundamentals of providing device location.” Forever Wi-Fi’s damages expert, Dr.

Stephen Owens, then issued a supplemental appendix that relied on Mr. Davis’s report in

reaffirming his original conclusions about the hypothetical license in this case.

4

III. LEGAL STANDARD

A. Admissibility of Expert Testimony Generally

Expert testimony is admissible as long as it satisfies the four requirements of Federal

Rule of Evidence 702:

(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

In determining admissibility under Rule 702, a court’s “focus, of course, must be solely on

principles and methodology, not on the conclusions that they generate.” Daubert, 509 U.S. at

595 (emphasis added). Relevant factors in reaching a decision include a theory or technique’s (i)

capability of being tested; (ii) history of peer review and publication; (iii) known or potential

error rate; and (iv) general acceptance. Id. at 593–94.

In weighing these factors, a trial court must take care not to “overstep[] the authorized

bounds of its role as gatekeeper,” particularly when the alleged flaws in an expert opinion raise

questions as to the weight it should be accorded rather than its admissibility. Milward v. Acuity

Specialty Products Grp., Inc., 639 F.3d 11, 22 (1st Cir. 2011). Put simply, a court may not

“t[ake] sides on questions” about “which reasonable [experts] can clearly disagree.” Id.

B. Admissibility of Expert Testimony Regarding Technical Comparability

In patent litigation, experts frequently opine on the comparability of technology

previously licensed by an accused infringer to the technology claimed by the asserted patents.

Such opinions assist the jury because one of the factors used to determine a reasonable royalty

for damages purposes—should the jury determine that the patents are valid and infringed—is

5

“[t]he rates paid by the licensee for the use of other patents comparable to the patents in suit.”

Georgia–Pacific, 318 F. Supp. at 1120 (describing the second of fifteen factors); see also Uniloc

USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1312, 1317 (Fed. Cir. 2011) (approving use of the

Georgia–Pacific factors); 35 U.S.C. § 284 (providing for “reasonable royalty” damages).

The Federal Circuit has explained that the “degree of comparability of . . . license

agreements,” along with alleged “failure[s] on the part of [an] expert to control for certain

variables[,] are factual issues best addressed by cross examination and not by exclusion.”

ActiveVideo, 694 F.3d at 1333. It also has cautioned that “identity of circumstances” is not

required for comparability. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1330 (Fed. Cir.

2014). Rather, the court has “long acknowledged that ‘any reasonable royalty analysis

necessarily involves an element of approximation and uncertainty.’” Id. (quoting Lucent Techs.,

Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009)).

IV. ARGUMENT

A. Dr. Jones’s methodology is reliable and will assist the jury.

To compare the technology claimed by the patents-in-suit to technology Adria previously

licensed, Dr. Jones developed a methodology based on his knowledge of WiFi location

technologies and his examination of the patents. Dr. Jones directly compared the patented and

previously licensed technology through a location criterion common to the patents-in-suit.

Forever Wi-Fi’s expert not only agreed that this methodology was sound but also employed the

same methodology himself. Accordingly, no basis exists to exclude Dr. Jones’s opinion.

6

1. Dr. Jones directly compared the patented and previously licensed technologies using a methodology based on his unchallenged expertise.

Dr. Jones relied on his substantial professional experience and extensive study of all the

patents-in-suit to derive the location criterion that he used for directly comparing the

technologies claimed by the patents and the technologies previously licensed by Adria.

Dr. Jones’s expertise regarding WiFi location technologies is unchallenged. He has been

a professor of computer science at the University of Michigan since 1989, and in 2002 began

developing a WiFi-based location system known as “University Maps.” Ex. 1 (Jones Rep.) ¶¶ 4-

5. All of the patents-in-suit cite Dr. Jones’s University Maps system as a precursor to the

inventions claimed. The specifications of five of the seven patents describe University Maps as

one of the “most significant research efforts in this field” of “Wi-Fi-based location systems” that

use “Wi-Fi access points to determine the location of mobile devices.” Since developing

University Maps, Dr. Jones has done additional research on location technologies. Ex. 1 (Jones

Rep.) ¶ 6.

In the context of the particular technologies at issue in this case, Dr. Jones spent

approximately 300 hours reviewing four of the seven patents-in-suit on a claim-by-claim basis to

prepare his report on the patents’ validity. Ex. 2 (Jones Dep.) at 228:19-21. The patents Dr. Jones

examined represent what Forever Wi-Fi contends are the two main groups of patents at issue: the

Server-Side Patents and the User Device Patents. (Only the ’423 Patent is not in one of these

groups.) In addition, Dr. Jones spent another thirty hours preparing the comparability report that

Forever Wi-Fi now challenges in part. Ex. 2 (Jones Dep.) at 228:15–18. A “critical part” of that

additional effort was an analysis of all of “[t]he seven patents in suit and the technologies they

discuss.” Ex. 2 (Jones Dep.) at 305:20–23, 306:1–3.

7

Informed by his experience with WiFi-based location systems and by his study of the

patents-in-suit, Dr. Jones derived the location criterion that he used for directly comparing the

technology claimed in those patents to other technologies Adria previously licensed. As Dr.

Jones explained, “I began with the seven patents in suit. I identified the technologies that they

disclosed. I thought about the field of the inventions . . . . I came up with the location criterion. I

then derived . . . the five specific indicators.” Ex. 2 (Jones Dep.) at 307:2–7.

The “location criterion” assesses comparability to the technology claimed in the patents-

in-suit by determining “whether the [previously licensed] technology concerns computational

aspects of the location of real-world entities in space and time, inclusive of related properties

such as velocity, distance, height, and orientation.” Ex. 1 (Jones Rep.) ¶ 12. The specific

indicators of the “location criterion” include: “whether the technology calculates location

[criterion C], manipulates location information [M], builds or updates a database that stores

(perhaps in part) location data (including data that can be used to calculate location) [B],

accesses or uses location data [A], or displays data relating to location [D].” Id.

Using the criterion and its indicators allowed Dr. Jones to directly compare the patented

and previously licensed technologies. Even a cursory review of the indicators makes clear that

they are all derived from, and closely linked to, the claims of the patents-in-suit. For example,

Forever Wi-Fi describes the Server-Side Patents as directed primarily at the Wi-Fi access point

(‘AP’) database, how that database is created, and how the accuracy of the database is

maintained when the APs are moved over time from one location to another. Dr. Jones’s

indicator B, which tests whether a technology “builds or updates a database that stores (perhaps

in part) location data,” thus maps onto the Server-Side Patents. Similarly, Forever Wi-Fi

describes the User Device Patents as directed primarily at how mobile devices accurately

8

calculate their location based on the Wi-Fi AP database. Dr. Jones’s indicator C, which tests

whether a technology “calculates location,” thus maps onto the User Device Patents. Forever

Wi-Fi’s experts also describe how, in the course of building and using the database, the Server-

Side and User Device Patents access, manipulate, and display location data—thus satisfying

indicators A, M, and D.

To the extent Forever Wi-Fi argues that only a technology satisfying multiple or all

indicators is comparable to the technology claimed by the patents-in-suit, Forever Wi-Fi is

wrong. The law is clear that technical comparability does not require licenses to be exactly

comparable but only “similar” in nature. See, e.g., Lucent, 580 F.3d at 1329 (applying a “similar”

standard). Indeed, “[p]rior licenses . . . are almost never perfectly analogous to the infringement

action.” Ericsson, Inc. v. D-Link Sys., Inc., --- F.3d ---, 2014 WL 6804864, at *20 (Fed. Cir. Dec.

4, 2014). Accordingly, “that a license is not perfectly analogous generally goes to the weight of

the evidence, not its admissibility.” Id. The Federal Circuit has explained that even when “more

(or different) data might have resulted in a ‘better’ or more ‘accurate’ estimate in the absolute

sense, it is not the district court’s role under Daubert to evaluate the correctness of facts

underlying an expert’s testimony.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 856 (Fed.

Cir. 2010), aff’d, 131 S. Ct. 2238 (2011). Such fact questions “are for the jury,” which is

“entitled to hear the expert testimony and decide for itself what to accept or reject.” Id.

2. Forever Wi-Fi’s expert employed the same methodology as Dr. Jones.

Forever Wi-Fi’s expert, Mr. Davis, agreed that Dr. Jones’s methodology was sound. First,

he agreed that “on a very, very high level, [Dr. Jones’s] methodology is similar” to his own. Ex.

3 (Davis Dep.) at 69:9–14. Second, when asked specifically whether he agreed “that it’s

appropriate for the expert to review the patents-in-suit, develop a set of criteria and then apply

those criteria to the licenses,” Mr. Davis testified that “[i]n general, that’s what you would do,

9

yes.” Id. at 69:18–21, 69:25–70:1. And third, Mr. Davis agreed that he employed the exact same

approach that Forever Wi-Fi now challenges:

Q. [Y]ou compared the Adria-licensed patents to the criteria that you had developed and derived from the patents-in-suit; is that correct?

A. That’s correct.

Q. And you believe that was an appropriate methodology for determining whether patents were comparable?

A. Yes.

Ex. 3 (Davis Dep.) at 80:21–81:4.

The only difference between Dr. Jones’s opinion and Mr. Davis’s opinion is that they

selected different criteria or indicators and thus reached different conclusions. Indeed, Forever

Wi-Fi admits as much in its Motion when it argues that Dr. Jones’s conclusions “reveal a deep

and irreparable flaw in [his] analysis.” Under Rule 702 and Daubert, however, the “focus . . .

must be solely on principles and methodology, not on the conclusions that they generate.” 509

U.S. at 595. Forever Wi-Fi does not—and cannot—challenge Dr. Jones’s knowledge of the

technology and study of the patents, and thus his basis for developing the location criterion and

its indicators. It also cannot seriously challenge his use of the location criterion and its indicators

given Mr. Davis’s endorsement of the approach. Accordingly, Forever Wi-Fi resorts to

impermissibly reasoning backwards from Dr. Jones’s conclusions. In doing so, however, Forever

Wi-Fi has failed to articulate a basis for excluding his opinions.

3. Forever Wi-Fi’s attacks on Dr. Jones’s conclusions, disguised as methodological critiques, are meritless.

Because the parties agree that a disputed conclusion does not provide a basis for

excluding an expert opinion, Forever Wi-Fi recasts its attack on Dr. Jones as a methodological

10

one. But none of the three purported “methodological” shortcomings it identifies provides a basis

for excluding his opinion.

First, Forever Wi-Fi suggests—without authority—that a technical comparability opinion

must be supported with the same claim-by-claim analysis of the patents-in-suit that an invalidity

opinion requires. But the Federal Circuit has made clear that determining comparability is vastly

different from charting prior art; it necessarily involves “an element of approximation and

uncertainty.” Lucent, 580 F.3d at 1325; see also Wordtech Sys., Inc v. Integrated Networks

Solutions, Inc., 609 F.3d 1308, 1320 (Fed. Cir. 2010) (requiring only “some basis for

comparison”). Moreover, Forever Wi-Fi’s own expert, Mr. Davis, did not even undertake a

patent-by-patent analysis—let alone a claim-by-claim analysis—in assessing comparability. As

he admitted at his deposition, in comparing previously licensed patents to the patents-in-suit he

“probably did more of patent-to-a-patent group analysis.” Ex. 3 (Davis Dep.) at 78:11–15. Thus,

Dr. Jones’s approach is both appropriate under controlling precedent and endorsed by Forever

Wi-Fi itself.

Second, Forever Wi-Fi challenges the use of a location criterion derived from the patents-

in-suit for assessing comparability. Forever Wi-Fi asserts that Dr. Jones did not “directly”

compare the Patents-in-Suit with the patents Adria licensed and that his opinion is thus somehow

improper. As an initial matter, Forever Wi-Fi’s argument rests entirely on an idiosyncratic and

unjustifiably narrow definition of “directly.” Dr. Jones did directly compare the patented and

previously licensed technologies; he simply chose to use a location criterion derived from and

common to the patents-in-suit to frame his analysis. As explained above, the indicators for that

criterion map directly onto the patents-in-suit. Moreover, even accepting Forever Wi-Fi’s

tortured definition of “directly,” Forever Wi-Fi cites no authority for the position that using a

11

criterion for comparison is improper, nor does it explain how Dr. Jones’s use of a method that its

own expert not only endorsed but also employed calls into question the reliability of Dr. Jones’s

opinion. To the contrary, using the location criterion as a framework for comparison will assist

jury comprehension of a difficult technical issue.

Third, Forever Wi-Fi asserts that the five indicators of the location criterion that Dr.

Jones derived from the patents-in-suit are insufficiently reliable because Dr. Jones never

compared the indicators to the patents. Selectively quoting from deposition testimony, Forever

Wi-Fi misleadingly suggests that Dr. Jones therefore did not derive the criterion and its

indicators from the patents. But counsel for Forever Wi-Fi confronted Dr. Jones with exactly this

argument at his deposition, and in response he made clear that he “began with the seven patents

in suit” and that those patents were the source of the criterion and its indicators. Ex. 2 (Jones

Dep.) at 307:1–10. Dr. Jones did not then compare the indicators back to the very patents from

which they were derived because “it was . . . a one-way process.” Id. at 307:9-10. Forever Wi-

Fi’s Motion does not explain why a “two-way process” is in any way necessary.

In short, all of Forever Wi-Fi’s purported methodological challenges are meritless. Again,

Forever Wi-Fi’s true disagreement is not with Dr. Jones’s methodology, but with his conclusions.

Forever Wi-Fi’s Motion thus raises an issue to be resolved by the jury, and does not provide a

basis for excluding Dr. Jones’s opinion. See Daubert, 509 U.S. at 595.

B. Dr. Jones’s opinions are exactly the sort allowed under Georgia–Pacific and the jury is entitled to consider them.

Dr. Jones’s opinions not only are methodologically sound but also are exactly the sort

allowed under the second Georgia–Pacific factor for calculating damages, which assesses “[t]he

rates paid by the licensee for the use of other patents comparable to the patents in suit.” 318 F.

Supp. at 1120. In its Motion, Forever Wi-Fi avoids key Federal Circuit decisions, and distorts

12

others, to argue that a trial court’s role with respect to expert opinions concerning comparability

is radically different from its role with respect to other expert opinions. Specifically, Forever Wi-

Fi suggests that trial courts are charged with determining whether a comparability opinion is

convincing. Not so. The court has the same gatekeeper role with respect to a comparability

opinion that it does with respect to any other opinion. Indeed, the very cases Forever Wi-Fi cites

as providing a basis for excluding Dr. Jones’s opinion in fact demonstrate the high burden it

must meet—and show that exclusion is unwarranted and improper here.

1. The jury is entitled to consider comparability opinions regardless of whether the connection to the technology at issue is disputed.

The general role for district courts in weighing the admissibility of expert testimony is

clear. They may serve as a “gatekeeper” but may not “t[ake] sides on questions” about “which

reasonable [experts] can clearly disagree.” Milward, 639 F.3d at 22. Courts have the same role

with respect to an expert opinion regarding comparability under the second Georgia–Pacific

factor. They must ensure that the purportedly comparable technology has some connection to the

technology claimed by the patents-in-suit exists, but the Federal Circuit has “never required

identity of circumstances.” VirnetX, 767 F.3d at 1330. Accordingly, when a party contends that a

connection to the patented technology is “tenuous”—as Forever Wi-Fi does here—it is not

entitled to have the court resolve the dispute through exclusion. Rather, the complaining party

must challenge the opinions with which it disagrees through cross examination of the opposing

expert and the testimony of its own experts.

In ActiveVideo, for example, the Federal Circuit rejected a party’s argument that it was

error under Rule 702 and Daubert to admit an opinion as to the comparability of a license that

“did not cover any of the technologies in the case.” 694 F.3d at 1333. The court held that while

the party had identified “various weaknesses” in the opinion, “[a]t their core” the “disagreements

13

[were] with the conclusions reached by [the opposing] expert and the factual assumptions and

considerations underlying those conclusions, not his methodology.” Id. Because such

“disagreements go to the weight to be afforded the testimony and not its admissibility,” they

were “best addressed by cross examination and not by exclusion.” Id. Similarly, in VirnetX, the

Federal Circuit affirmed the district court’s refusal to exclude a comparability opinion regarding

licenses that a party contended “were not sufficiently comparable,” including because at least

one was “much broader” in the technology covered. 767 F.3d at 1330. As the panel explained,

the “differences . . . complain[ed] of were presented to the jury, allowing the jury to fully

evaluate the relevance of the licenses,” and “[n]o more is required.” Id.

Although it would be improper for this Court to weigh Dr. Jones’s conclusions, even a

cursory review of his opinions as to comparability makes plain that they satisfy the standards set

by ActiveVideo and VirnetX. Forever Wi-Fi itself admits that there is at least a “tenuous”

connection between the technology Dr. Jones found comparable and the technology claimed by

the patents-in-suit. Forever Wi-Fi furthermore apparently accepts that the technology Dr. Jones

found comparable satisfies the indicators of the location criterion. While Forever Wi-Fi engages

in a license-by-license argument as to why it believes some of the technology Dr. Jones found

comparable is “far removed” from the patented technology, these are disagreements with the

considerations underlying Dr. Jones’s conclusions. Because Forever Wi-Fi has every opportunity

to present the disagreements to the jury, it is not entitled to exclusion. See VirnetX, 767 F.3d at

1330.

2. Exclusion is appropriate only when no evidence supports a comparability opinion.

Forever Wi-Fi does not cite ActiveVideo or VirnetX in describing the test for admissibility

under the second Georgia–Pacific factor. Instead, it focuses on three other Federal Circuit

14

decisions that it contends support exclusion here. But an examination of the comparability

opinions at issue in those cases in fact makes clear that exclusion is appropriate only when no

evidence supports a comparability opinion. Because even Forever Wi-Fi does not and cannot

contend that Dr. Jones’s opinions lack any evidentiary foundation, exclusion is not appropriate.

For example, in Lucent, the first of the decisions on which Forever Wi-Fi relies, the

Federal Circuit rejected an expert opinion that certain licenses covered technology comparable to

that claimed by the asserted patents because it was “simply unable to ascertain from the evidence

presented the subject matter of the agreements.” 580 F.3d at 1327–28. The panel “therefore

[could not] understand how the jury could have adequately evaluated the probative value of those

agreements.” Id. at 1328. One of the agreements at issue “appear[ed] to govern IBM’s licensing

of its entire patent portfolio protecting its one-time dominance in the personal computer market.”

Id. It thus covered an unknown array of technologies, and obviously vastly more than the

technology claimed by the lone asserted patent, which was “directed to a method of entering

information into fields on a computer screen without using a keyboard.” Id. at 1308. For the

other license agreements, the “expert supplied no explanation to the jury about the subject matter

or patents covered by those agreements.” Id. at 1328.

Similarly, in ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 870 (Fed. Cir. 2010), the

Federal Circuit rejected an opinion that licenses with “no relationship to the claimed invention”

and no “discernible link to the claimed technology” were somehow comparable. The majority of

the licenses were “re-branding or re-bundling licenses” that granted “the right to re-brand [the

plaintiff’s] products before resale or bundle these products into broader software suites” and that

covered “services such as training, maintenance, marketing, and upgrades.” Id.

15

And in LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 80 (Fed. Cir. 2012),

the Federal Circuit reversed a district court for “erroneously permitt[ing] continued reliance” on

licenses related to technology that the district court knew had not been shown to be comparable.

Specifically, the district court improperly allowed the plaintiff’s expert to rely on licenses for

which he had “not performed a comparability analysis” at all. LaserDynamics, Inc. v. Quanta

Computer, Inc., No. 2:06-CV-348-TJW-CE, 2011 WL 7563818, at *3 (E.D. Tex. Jan. 7, 2011).

Dr. Jones’s opinions are entirely unlike those at issue in Lucent, ResQNet.com, or

LaserDynamics. In those cases, no evidence supported the challenged comparability opinions;

they rested purely on the ipse dixit of an expert. The jurors in those cases thus had no basis to

weigh the significance of previous license agreements in determining a reasonable royalty. Here,

in contrast, Dr. Jones has directly compared the patented technology to previously licensed

technology using a clear location criterion and five highly specific indicators. Forever Wi-Fi

disagrees with Dr. Jones’s conclusions, but it cannot seriously contend that no evidence supports

them. Accordingly, exclusion is inappropriate.

3. Forever Wi-Fi’s arguments regarding its “substantially similar” standard are baseless.

Finally, Forever Wi-Fi incorrectly argues that expert opinions as to technical

comparability are admissible under the second Georgia–Pacific factor only if the expert uses the

specific term “substantially similar” to describe the relationship between comparable

technologies. Forever Wi-Fi plucks this gloss on “comparable” from Masimo Corp. v. Philips

Electronics North America Corp., C.A. No. 09-80-LPS-MPT, 2013 WL 2178047, at *20 (D. Del.

May 20, 2013), an unpublished, out-of-circuit Report and Recommendation. It contends that Dr.

Jones’s opinion should be excluded because he did not apply a “substantially similar” standard

16

and did not specifically articulate it. Both of these arguments are baseless: Dr. Jones did apply

this standard and was not required to articulate it.

First, Dr. Jones did determine that the technology claimed by the patents-in-suit is

“substantially similar” to technology previously licensed by Adria. As Dr. Jones testified at his

deposition, while his report does not include “[t]hose exact words,” the explanation of technical

comparability at paragraphs 10 through 13 of his report communicates “words to that effect, or

meaning to that effect.” Ex. 2 (Jones Dep.) at 240:21–241:3. As Forever Wi-Fi’s own expert, Mr.

Davis, explained, “substantially similar” is essentially synonymous with “technically

comparable”—whether technology is “substantially similar” is an inquiry informed by technical

knowledge and experience. Ex. 3 ( Davis Dep.) at 37:23–38:25.

Moreover, Forever Wi-Fi cannot argue that “substantially similar” requires some higher

showing of comparability—such as that two technologies are “virtually identical”—without

collapsing the second Georgia–Pacific factor, which looks at licenses to comparable technology,

into the first, which looks at licenses to the asserted patents. 318 F. Supp. at 1120. A “virtually

identical” or similarly high standard would also ignore the Federal Circuit’s clear instruction that

it has “never required identity of circumstances,” VirnetX, 767 F.3d at 1330, because the only

technology that could be comparable would be the same or nearly the same.

Second, Forever Wi-Fi’s argument that Dr. Jones’s opinion should be excluded because

he did not recite Forever Wi-Fi’s preferred “substantially similar” gloss on comparability reflects

a fundamental misunderstanding of the role of a technical expert. Generally, experts do not opine

on the law. See Pelletier v. Main St. Textiles, LP, 470 F.3d 48, 54 (1st Cir. 2006) (holding that “it

is the judge’s role, not a witness’s, to instruct the jury on the law”). Forever Wi-Fi cites Hebert v.

Lisle Corp., 99 F.3d 1109, 1117 (Fed. Cir. 1996), as support for its novel position that an

17

expert’s opinion should be excluded if he failed to articulate the legal standard he applied. This

argument reflects serious confusion as to the facts of Herbert. There, an expert was opining as to

the requirements of the Patent Act, which he described incorrectly. Hebert, 99 F.3d at 1116–17.

The Federal Circuit held that when a “patent law expert witness” offers “markedly incorrect

law,” it is no different than when a scientific expert witness offers “falsifiable scientific theories.”

Id. at 1117. The Federal Circuit in no way indicated that experts are responsible for expounding

on the legal standards related to their technical conclusions.

C. Dr. Jones’s opinions will assist the jury and will not prejudice Forever Wi-Fi.

Finally, Dr. Jones’s opinions will assist the jury and will not prejudice Forever Wi-Fi. In

its Motion, Forever Wi-Fi distorts Dr. Jones’s analysis and suggests that he offers only the

conclusory opinion that any technology licensed by Adria relating to “location” is comparable to

the technology claimed in the patents-in-suit. According to Forever Wi-Fi, Dr. Jones has failed to

provide “the basis and reasons” for his opinions, as required by the Federal Rules, Fed. R. Civ. P.

26(a)(2)(B)(i), and his opinion will simply waste the jury’s time. Forever Wi-Fi is wrong.

First, Dr. Jones concluded that a license that might broadly be understood as covering

location-related technologies is not comparable to the specific location technology claimed in the

patents-in-suit. Of the four licenses he examined, Dr. Jones concluded that three covered

comparable technology and one covered non-comparable technology. Ex. 1 (Jones Rep.) ¶ 50. In

finding that the one license was not comparable, Dr. Jones disagreed with one of Forever Wi-Fi’s

experts that the license agreement covered location technology possibly comparable to the

technology claimed by the patents-in-suit.

Specifically, Dr. Owens, Forever Wi-Fi’s damages expert, opined that under an

agreement with User Solutions, “Adria is a licensee to what appears to be generally related to a

location technology.” But Dr. Jones concluded that the licensed technologies, “are directed to

18

search results tailored to specific users.” Ex. 1 (Jones Rep.) ¶ 18. As a result, the technologies

“do not satisfy any of the location criteria set forth above and thus are not comparable” to the

patents-in-suit. Id. Dr. Jones thus looked beyond any facial similarities and instead examined the

technologies in detail to determine comparability, providing precisely the sort of opinion that

will assist the jury.

Second, for those licensed technologies that he concluded are comparable to the patents-

in-suit, Dr. Jones acknowledged that “comparability” can be assessed on many dimensions and

explained the basis and reasons for his conclusion. In contrast to Forever Wi-Fi’s expert, Mr.

Davis, who offered only a binary comparable/non-comparable analysis, Dr. Jones used five

indicators of comparability that map onto the patents-in-suit and explained how many indicators

each licensed technology satisfied. He thus articulated the “process of reasoning which makes

[his] conclusion viable.” Palomar Med. Techs., Inc. v. Candela Corp., No. 06-11400-RWZ, 2011

WL 1576580, at *4 (D. Mass. Apr. 26, 2011). Moreover, the indicators make clear the basis for

Dr. Jones’s opinion and allow the jury to weigh the importance of multiple aspects of

comparability, which is an essential jury function. See ActiveVideo, 694 F.3d at 1333.

Furthermore, although the jury, not this Court, must determine whether Dr. Jones’s

opinions are convincing, Forever Wi-Fi’s arguments as to Dr. Jones’s “loose comparability

criteria” are greatly overstated. For example, Forever Wi-Fi repeatedly attacks Dr. Jones for

finding a patent related to alarm systems comparable to the patents-in-suit. It fails to mention,

however, that the alarm patent claims a remote unit that determines whether its GPS location

differs from that of the individual’s home address when the alarm is activated. This claim thus

tracks the Server-Side Patents and User Device Patents, which are all directed to inferring the

location of a user device. Dr. Jones’s comparability opinions that Forever Wi-Fi failed to address

19

(and chose not to attack) in its Motion show an even stronger connection between the licensed

and patented technologies.

Third, Forever Wi-Fi’s contention that admitting Dr. Jones’s opinion will result in a

“mini-trial” and “waste time” is directly contradicted by Georgia-Pacific and Federal Circuit law

applying it. Georgia-Pacific Factor 2 calls for expert analysis of “[t]he rates paid by the licensee

for the use of other patents comparable to the patents in suit.” Georgia–Pacific, 318 F. Supp. at

1120. As the Federal Circuit recently reiterated, “licenses may be presented to the jury to help

the jury decide an appropriate royalty award.” Ericsson, 2014 WL 6804864, at *20.

Once again, Forever Wi-Fi’s objection to Dr. Jones’s testimony does not go to his

methodology or any concern with the scope of this trial; it goes to his conclusions. Dr. Jones

evaluated four licenses, and determined that three of them at least partially covered technology

comparable to the patents-in-suit. The highest fee that Adria paid for any of those licenses was

far below what Forever Wi-Fi’s damages expert opines that the hypothetical license in this case

would have been. Forever Wi-Fi may be entitled to argue to the jury that its patents are orders of

magnitude more valuable than comparable patents that Adria has previously licensed, but it is

not entitled to exclude all evidence to the contrary under either Rule 702 or Rules 402 and 403.

V. CONCLUSION

For the reasons set forth above, Adria respectfully requests that the Court deny Forever

Wi-Fi’s Motion to Strike Portions of the Expert Report of Dr. Jones and to Preclude Trial

Testimony of Dr. Jones.