Doc 356:

PLAINTIFF’S REPLY IN SUPPORT OF ITS MOTION TO PRECLUDE DEFENDANTS FROM OFFERING NON-REBUTTAL TESTIMONY FROM THEIR DESIGNATED REBUTTAL EXPERT AT MARKMAN HEARING [Dkt. No. 349, filed 1/5/2011]

In this Reply, e.Digital raises three concise points in response to Defendants’ arguments in their Opposition to Plaintiff’s Motion to Preclude, Dkt. No. 354 (“Opp. Br.”).

First, Defendants’ Opposition Brief misses the fundamental point that if Defendants wanted to rely on Dr. Mihran to provide affirmative testimony to support their claim construction positions, the Court provided them a procedure to have done so. The Court’s Scheduling Order for Markman Issues (“Markman Scheduling Order”, Dkt. No. 277) required that Defendants identify Dr. Mihran in the Joint Claim Construction Statement and produce his expert report by May 7. Defendants chose not to identify Dr. Mihran in the Joint Claim Construction Statement (Dkt. No. 284) and not to provide an affirmative expert report. Instead, they waited for e.Digital to frame the claim construction issues in the Joint Claim Construction Statements and through the Declaration of Mr. Maltiel and only then (i.e., after e.Digital had set forth its claim construction positions) did Defendants respond and serve Dr. Mihran’s rebuttal expert report.

Now, apparently regretting that decision, Defendants ask this Court to ignore the schedule and procedural framework that was put in place in the Markman Scheduling Order and allow Dr. Mihran to testify on affirmative subjects such as Defendants’ version of “an overview of the technology” (Defendants’ Opp. Br. at 5) and to provide testimony related to and in response to the anticipated fact testimony from Mr. Norris. (Id. at 9). These are exactly the types of evidence that Defendants were expressly obligated pursuant to this Court’s Markman Scheduling Order to identify in the Joint Claim Construction Statement, if they intended to rely on such evidence to support their claim construction positions. Defendants did not do so and in fact affirmatively stated the opposite on multiple occasions:

*** Dr. Mihran’s rebuttal expert report was offered only to rebut the opinions of e.Digital’s claim construction expert, and was not cited in Defendants’ Opening Brief.

(Defendants’ Responsive Markman Brief, Dkt. No. 302, at p. 16 (emphasis added)), and

***Dr. Mihran is our witness designated by the defendants, so he was a rebuttal expert

***our [Defendants’] briefing takes the position that in further review, extrinsic evidence [such as expert opinions] is not necessary to claim construction here. And indeed, we argue in the brief, and we do not rely on extrinsic evidence in our formal briefing.

(July 30 Hearing Transcript, Dkt. No. 354-1, at p. 12-13 (emphasis added)). This Court should not permit Defendants to circumvent the Markman schedule and procedure that the Court put in place to allow for an expedited Markman hearing, as requested by Defendants.

Second, Defendants’ argument that Dr. Mihran should be permitted to rebut Mr. Norris’s testimony because Mr. Norris will provide expert testimony in disguise (Defendants’ Opp. Br., Dkt. No. 354, at 8-9) is a red herring. Mr. Norris is not being offered as an expert witness. He is a percipient witness and will testify regarding the specific factual matters set forth in his Declaration. Not surprisingly, Mr. Maltiel – similar to all experts – relied on certain predicate facts set forth in Mr. Norris’ Declaration (among other facts) to form his expert opinions, but that does not turn Mr. Norris’s factual testimony into expert opinions. Thus, while Defendants state that “Plaintiff will effectively present its expert’s opinions with Mr. Norris’ voice”, id. at 8-9, this is at best misleading.1 If Defendants believe that Mr. Norris’s testimony at the Markman hearing goes too far and crosses the line into expert testimony, they can make appropriate objections at the Markman hearing and seek to exclude the testimony.

Third and finally, e.Digital has no affirmative obligation to offer the expert testimony of Mr. Maltiel at the Markman hearing, and Defendants’ suggestion to the contrary is unfounded. Parties to litigation routinely make strategic decisions regarding whom they will call and/or not call as witnesses. Simply put, e.Digital has determined that the Markman issues do not require expert opinion and having complied with the disclosure rules of this Court, e.Digital has the right to control the use of its expert. If Defendants wanted to control this issue, it could have complied with the Court’s disclosure obligations and designated Dr. Mihran as a witness who would provide evidence in support of their claim construction positions.

Having failed to do so, Defendants now mischaracterize snippets of the July 30 hearing transcript to imply that e.Digital committed to bringing Mr. Maltiel to the Markman hearing. (Defendants’ Opp. Br. at 6-7). e.Digital did nothing of the sort. Rather, counsel for e.Digital informed the Court of the extrinsic evidence that had been produced in discovery and expressed a willingness to present e.Digital’s evidence on which it intends to rely in live testimony rather than declarations, if preferred by the Court. (See July 30 Hearing Transcript at pp. 11-12). By doing so, e.Digital was not representing that it guaranteed to offer Mr. Maltiel’s testimony at the Markman hearing; e.Digital only was representing a willingness to bring Mr. Maltiel to the Markman hearing if e.Digital chose to rely on that extrinsic evidence to make its claim construction arguments.2 And as e.Digital has stated, it does not intend to rely on the testimony of Mr. Maltiel because such testimony is not necessary in light of the issues raised in the parties’ Markman briefs.3

In conclusion, Defendants should not be permitted to circumvent the Markman procedures and schedules put in place by the Court at the request of Defendants so as to expedite the resolution of claim construction issues in this case and e.Digital’s Motion should be granted.

Respectfully Submitted,

Dated: January 11, 2011 FAEGRE & BENSON, LLP

Footnotes:

1 Defendants’ argument that Mr. Norris’s testimony regarding the operation of the Flashback product is opinion testimony, likewise, is misleading. Whether the Flashback used RAM is not the subject of an opinion. It is a fact question, the answer to which exposes a fundamental flaw in Defendants’ claim construction arguments.

2 Defendants were clearly aware of this at the July 30 hearing. First, counsel for Defendants characterized the evidence identified in the Joint Claim Construction Statement, such as Dr. Mihran’s and Mr. Maltiel’s expert testimony as “provisionally” listed (July 30 Hearing Transcript, Dkt. No. 354-1, at 13). Second, defense counsel repeatedly argued that Defendants were only identifying Dr. Mihran as a rebuttal expert, who may not need to testify. (Id. at 12-13). In other words, similar to e.Digital, Defendants were not committing to presenting testimony from Dr. Mihran at the Markman hearing.

3 Defendants’ suggestion that e.Digital should have provided revised Markman briefs if it did not intend to rely on Mr. Maltiel also is misplaced. e.Digital does not exclusively rely on Mr. Maltiel’s opinions for any argument in its Markman briefs. Thus, even upon striking the references to Mr. Maltiel’s declaration in e.Digital’s briefs, all of e.Digital’s arguments would remain supported by other evidence.