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

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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 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.

2 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 VI. DR. JONES S OPINIONS ARE CONCLUSORY AND THEREFORE INADMISSIBLE BECAUSE THEY WILL NOT ASSIST THE JURY VII. DR. JONES S TESTIMONY ON TECHNOLOGICAL COMPARABILITY WILL WASTE TIME AND UNFAIRLY PREJUDICE FOREVER WI-FI VIII. CONCLUSION i

3 Cases TABLE OF AUTHORITIES Bailey v. Allgas, Inc., 148 F. Supp. 2d 1222 (N.D. Ala. 2000; aff d, 284 F.3d 1237 (11th Cir Carapellucci v. Town of Winchester, 707 F. Supp. 611 (D. Mass Daubert v. Merrell Dow Pharms., 509 U.S. 579 ( Fenner Invs., Ltd. v. Hewlett-Packard Co., No. 08-cv-273, 2010 U.S. Dist. LEXIS (E.D. Tex Figueroa v. Simplicity Plan de P.R., 267 F. Supp. 2d 161 (D.P.R , 15 Hebert v. Lisle Corp., 99 F.3d 1109 (Fed. Cir Inline Connection Corp. v. AOL Time Warner, Inc., No. 02-cv-272, 2007 U.S. Dist. LEXIS 6207 (D. Del. Jan. 29, , 13 Lamoureux v. AnazaoHealth Corp., No. 03-cv-01382, 2010 U.S. Dist. LEXIS (D. Conn. Nov. 8, LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir , 8, 10, 16 Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir , 4 Masimo Corp. v. Philips Elecs. N. Am. Corp., No. 09-cv-80, 2013 U.S. Dist. LEXIS (D. Del. May 20, , 4, 10 Nevels v. Deerbrook Ins. Co., No. 10-cv-83, 2011 U.S. Dist. LEXIS (E.D. Ky. Dec. 16, Palomar Med. Techs. v. Candela Corp., No. 06-cv-11400, 2011 U.S. Dist. LEXIS (D. Mass. April 26, 2011 (Zobel, J Ravo v. Covidien LP, No. 11-cv-1637, 2014 U.S. Dist. LEXIS (W.D. Pa. Oct. 24, , 4, 9, 13 ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir , 16 ii

4 United States v. Wintermute, 443 F.3d 993 (8th Cir Rules Fed. R. Civ. P. Rule iii

5 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. 1

6 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 Patentsin-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 which states: The admissibility of expert testimony is governed by Federal Rule of Evidence 702, 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; 2

7 (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 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 (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 , at *19 (W.D. Pa. Oct. 24, 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,

8 [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 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 , at *1, *13-14, *32, *38; Masimo, 2013 U.S. Dist. LEXIS 70745, at * 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 ( 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, (N.D. Ala (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 , 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, (D. Mass (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 (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 4

9 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, 5

10 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 6

11 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 subcriteria, 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 threedimensional images of the terrain. Ex. 1 [Jones Expert Report] None of these patents is actually comparable to the claimed inventions of the Patents-in-Suit: the creation, maintenance, 7

12 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: 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: 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: 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 , at *32 ( [I]t is 8

13 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 9

14 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 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, (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 , 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 10

15 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 noncomparable 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. 11

16 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: 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 12

17 such that he should be allowed to opine on the comparability of Adria s agreements. See Ravo, 2014 U.S. Dist. LEXIS , 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, (D.P.R 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] 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 He does not explain where he finds support for his broad definitions of the 13

18 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 , at *11-12 (D. Conn. Nov. 8, 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 14

19 the trier of fact. See id. at 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 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 15

20 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 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, (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. 16

21 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 SUPPLEMENTAL EXPERT REPORT OF DR. WILLIAM JONES, Ph.D. 1

22 * * * 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 Then at Stanford I earned my Ph.D. in Computer Science in 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 My most relevant professional experience to this case started in 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. 2

23 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. 3

24 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 4

25 User Solutions * * * 5

26 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 Deposition of WILLIAM G. JONES, Ph.D. 1

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

28 3 10 through * * * Page 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 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 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. 3

29 * * * Page 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 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 part of the basis for my comparability analysis. * * * Page 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 4

30 1 correct? 2 MS. HADZIMEHMEDOVIC: (Nods head. 3 MR. HOMRIG: Okay. 4 THE WITNESS: That's correct. I used my 5 location criterion. * * * Page Q. The question is, none of your five 15 comparability criteria 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 Q. So is it also correct that none of your 25 comparability categories, the five comparability Page 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 5

31 10 thereof did not consider the provision of reliable 11 location. * * * Page 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 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 THE WITNESS: Give me a second here. 2 That's correct. * * * Page Q. Just to be clear, are you or are you not 6

32 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 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 THE WITNESS: No, it doesn't suggest that 7

33 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 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 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 specifically analyze the asserted 18 claims; rather, the totality of those patents. * * * Page 311 8

34 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 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 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 9

35 12 that I used. 13 BY MR. HOMRIG: 14 Q. Okay. 15 A. These -- those were all expressions of of computations about locations. 10

36 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 Deposition of THOMAS DAVIS 1

37 * * * Page 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. 2