Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 1 of 26
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`FLYPSI, INC., (D/B/A FLYP),
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`
`
`CIVIL ACTION NO. 6:22-cv-00031-ADA
`
`JURY TRIAL DEMANDED
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`DEFENDANT GOOGLE LLC’S OPPOSITION TO PLAINTIFF FLYP’S MOTION TO
`STRIKE THE EXPERT REPORTS OF DR. ODED GOTTESMAN, PH.D. REGARDING
`NONINFRINGEMENT AND INVALIDITY
`
`
`
`
`
`

`

`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 2 of 26
`
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION ............................................................................................................. 1
`OPPOSITION AND ARGUMENT ................................................................................... 1
`A.
`Dr. Gottesman’s Noninfringement Opinions Properly Apply Plain and
`Ordinary Meanings, and Are Not Untimely Claim Construction. ......................... 1
`1.
`Dr. Gottesman Applies the Plain and Ordinary Meanings of
`“bridge telephone number” and “voice channel” ....................................... 1
`Dr. Gottesman Applies the Plain and Ordinary Meaning of the
`Claim Term “switch” ................................................................................. 3
`Dr. Gottesman Applies the Plain and Ordinary Meaning of
`“directing the switch to” ............................................................................ 4
`Dr. Gottesman Applies the Plain and Ordinary Meaning of “the at
`least one data channel” Limitation of the ’770 Patent ............................... 5
`Dr. Gottesman’s Opinions that Prior Art Google Voice Included
`Integration
` Are Proper .................................................... 6
`Dr. Gottesman’s Invalidity Opinion Involving the Nokia N80 Internet
`Edition Is Proper and Timely ................................................................................. 9
`Dr. Gottesman’s Opinions on Motivation to Combine Are Legally
`Sufficient, and Include More Than One Motivation to Combine ........................ 11
`Dr. Gottesman’s Opinions on Non-Infringing Alternatives Are Well
`Supported and Reliable ........................................................................................ 13
`1.
`The Hypothetical Negotiation Date ......................................................... 13
`2.
`Dr. Gottesman’s Opinions on Non-Infringing Alternatives Are Not
`Conclusory ............................................................................................... 15
`Corroborating Documents Should Not Be Excluded ........................................... 16
`Dr. Gottesman’s Invalidity Opinions Related to Google Voice Are Not
`Conclusory ........................................................................................................... 18
`Flyp’s Motion to Exclude Dr. Gottesman’s Opinions that Burner Phone
`Anticipates or Renders Obvious Any Claim Is Moot .......................................... 20
`CONCLUSION ................................................................................................................ 20
`
`2.
`
`3.
`
`4.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`G.
`
`H.
`
`I.
`II.
`
`III.
`
`-i-
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`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 3 of 26
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Advanced Fiber Techs. Tr. v. J & L Fiber Servs., Inc.,
`No. 1:07-CV-1191 LEK/DRH, 2010 WL 1930569 (N.D.N.Y. May 11, 2010) ......................18
`
`CA, Inc. v. Simple.com, Inc.,
`780 F. Supp. 2d 196 (E.D.N.Y. 2009) .....................................................................................18
`
`Digital Reg of Tex., LLC v. Adobe Sys. Inc.,
`No. CV 12-01971, 2014 WL 1653131 (N.D. Cal. Apr. 24, 2014) ......................................9, 16
`
`Finjan LLC v. SonicWall, Inc.,
`84 F.4th 963 (Fed. Cir. 2023) ....................................................................................................6
`
`Harris Corp. v. Fed. Express Corp.,
`502 F. App’x 957 (Fed. Cir. 2013) ............................................................................................6
`
`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
`540 F.3d 1337 ............................................................................................................................2
`
`In re Kollar,
`286 F.3d 1326 (Fed. Cir. 2002)..................................................................................................8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................................12, 13
`
`Mettler-Toledo, Inc. v. Fairbanks Scales, Inc.,
`No. 9:06-CV-97, 2008 WL 11348468 (E.D. Tex. Oct. 27, 2008) ...........................................19
`
`NetFuel, Inc. v. Cisco Sys.,
`No. 5:18-cv-02352-EJD, 2020 WL 1274985 (N.D. Cal. Mar. 17, 2020) ................................19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................2
`
`Pisony v. Commando Constrs., Inc.,
`No. 6:17-cv-00055-ADA, 2020 WL 4934463 (W.D. Tex. Aug. 24, 2020) ..................9, 11, 16
`
`Poly-America, L.P. v. GSE Lining Technology, Inc.,
`383 F.3d 1303 (Fed. Cir. 2004)..................................................................................................8
`
`ProTradeNet, LLC v. Predictive Profiles, Inc.,
`No. 6:18-CV-00038-ADA, 2019 WL 6499488 (W.D. Tex. Oct. 11, 2019) ............................20
`
`-ii-
`
`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 4 of 26
`
`
`Viterbo v. Dow Chem. Co.,
`826 F.2d 420 (5th Cir. 1987) ...................................................................................................20
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................................14, 18
`
`35 U.S.C. § 112 ..............................................................................................................................12
`
`35 U.S.C. § 273 ........................................................................................................................13, 14
`
`
`
`-iii-
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`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 5 of 26
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`
`I.
`
`INTRODUCTION
`
`Flyp wishes to preclude Google’s technical expert, Dr. Gottesman, from presenting key
`
`opinions on non-infringement and invalidity to the jury. First, Flyp effectively asks for the Court
`
`to resolve genuine factual disputes regarding a host of late-disclosed Flyp infringement theories
`
`by disingenuously characterizing Dr. Gottesman’s opinions on those theories as improper claim
`
`construction arguments. But Dr. Gottesman consistently applies the plain and ordinary meanings
`
`of the claim elements identified by Flyp. Next, Flyp attempts to strike Dr. Gottesman’s invalidity
`
`opinions by suggesting deficiencies with Dr. Gottesman’s report. But Dr. Gottesman’s report
`
`disclosures were more than sufficient to apprise Flyp of his invalidity and non-infringing
`
`alternative opinions, along with their factual bases, as required by the rules. Flyp provides no basis
`
`for striking Dr. Gottesman’s opinions altogether. The Court should deny Flyp’s motion.
`
`II.
`
`OPPOSITION AND ARGUMENT
`A.
`
`Dr. Gottesman’s Noninfringement Opinions Properly Apply Plain and
`Ordinary Meanings, and Are Not Untimely Claim Construction.
`
`Contrary to Flyp’s assertion, Dr. Gottesman does not raise untimely claim constructions as
`
`to the four claim elements: “bridge telephone number,” “voice channel,” “switch,” and “direct the
`
`switch to.” Dkt. 152 at 4–11. Instead, Dr. Gottesman properly applies the plain and ordinary
`
`meanings of these terms to form his opinions on non-infringement and invalidity.1
`
`1.
`
`Dr. Gottesman Applies the Plain and Ordinary Meanings of “bridge
`telephone number” and “voice channel”
`
`Dr. Gottesman’s opinions that the “bridge telephone number” and “voice channel”
`
`limitations in the Incoming Call Patents do not cover Voice-over-IP (“VoIP”) implementations of
`
`
`1 As in other filings by Google, this Opposition will refer to U.S. Patent Nos. 9,667,770 (“the ’770
`patent”) and 10,051,105 (“the ’105 patent”) as the Incoming Call Patents and U.S. Patent Nos.
`10,334,094 (“the ’094 patent”), 10,125,554 (“the ’054 patent”), and 11,218,585 (“the ’585 patent”)
`as the Outgoing Call Patents.
`
`-1-
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`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 6 of 26
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`the claimed inventions are appropriately based on application of the plain and ordinary meaning
`
`of these claims terms.
`
`As Google explained in its Opposition to Flyp’s Motion for Partial Summary Judgment
`
`Concerning Google’s Affirmative Defenses (Dkt. 149), regarding the claim term “bridge telephone
`
`number,” Dr. Gottesman refers to the patents’ prosecution histories, inventor testimony,2 and other
`
`extrinsic evidence merely to confirm his understanding of the ordinary meaning. Dr. Gottesman
`
`has not attempted to construe “telephone number” or “bridge telephone number” and has not
`
`contended that those terms have anything other than their ordinary meaning, consistent with Flyp’s
`
`expert’s understanding of the term, e.g., in the U.S., the ten-digit dialable number that you would
`
`give “
`
`also Dkt. 145 at 6, n. 7.3
`
`.” Ex. 1 at 51:19–52:13; see
`
`For the term “voice channel” as used in the Asserted Patents, Dr. Gottesman likewise
`
`applies the ordinary meaning in concluding that such a channel does not exist in a VoIP
`
`implementation of the Asserted Claims. Dkt. 152-2 (“Gottesman Invalidity Report”) ¶¶ 142–146;
`
`Dkt. 152-1 (“Gottesman Noninfringement Report”) ¶ 108. As with “bridge telephone number,”
`
`Dr. Gottesman’s reference to inventor testimony and other extrinsic evidence merely confirms his
`
`understanding of the ordinary meaning of the term “voice channel” as used in the Asserted Patents.
`
`
`2 “The testimony of an inventor, of course, may be pertinent as a form of expert testimony, for
`example, as to understanding the established meaning of particular terms in the relevant art.”
`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 n.5 (Fed. Cir. 2008
`(citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc)).
`3 It is not clear whether Flyp seeks to exclude Dr. Gottesman from opining on the prosecution
`history regarding “bridge telephone number” in response to Flyp’s Doctrine of Equivalents
`position. Google addresses the propriety of Dr. Gottesman’s reliance on the prosecution history
`(including timeliness) in support of his opinion that there can be no infringement of the bridge
`telephone number term under the Doctrine of Equivalents in its Opposition to Dkt. 149 at Section
`II.B.
`
`-2-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 7 of 26
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`Ex. 2 at 185:10–15 (“
`
`”)
`
`
`
`
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`Dr. Gottesman does not propose a claim construction based on prosecution disclaimer nor
`
`does he even suggest that there was a disclaimer. Rather, Dr. Gottesman opines that when
`
`prosecuting the patents, the patentee added and used terms with ordinary meanings that do not
`
`include or encompass VoIP implementations (e.g., that “bridge telephone number” means an actual
`
`telephone number,
`
` or some other type of address, used for bridging a call).
`
`Contrary to Flyp’s suggestion, Dr. Gottesman did not use the term “disclaimer” in any deposition
`
`response. Dkt. 152 at 5. Instead, he stated only that the patentee “distinguished” the prior art Black
`
`reference during prosecution by adding the term “bridge telephone number” to the pending claims.
`
`Ex. 2 at 183:11–25 and see id. at 184:11–25. Dr. Gottesman has applied only the plain and ordinary
`
`meaning of the terms “bridge telephone number” and “voice channel” as used in the Asserted
`
`Claims.
`
`2.
`
`Dr. Gottesman Applies the Plain and Ordinary Meaning of the Claim
`Term “switch”
`
`Flyp’s effort to strike Dr. Gottesman’s noninfringement opinion that
`
`
`
` rests on the false premise that Dr.
`
`Gottesman is attempting to construe the term “switch.” Dkt. 152 at 7–9. As explained in Google’s
`
`Opposition to Flyp’s Motion for Partial Summary Judgment on the Outgoing Call Patents (Dkt.
`
`150), Dr. Gottesman merely applies the plain and ordinary meaning of “switch” as used in the
`
`Asserted Patents. See, e.g., Gottesman Invalidity Report ¶¶ 128–131, 133, 136–137, 141, 142–
`
`154; Gottesman Noninfringement Report ¶¶ 59, 66, 91. Dr. Gottesman does not propose, and does
`
`not rely on, any specialized or unusual meaning of “switch.” That Flyp and its expert disagree with
`
`-3-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 8 of 26
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`Dr. Gottesman’s ultimate opinion about whether
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`is not a basis to strike Dr. Gottesman’s opinions.
`
`
`
`Dr. Gottesman’s opinion that
`
` was timely presented in his
`
`expert report. Dkt. 152-1 ¶¶ 93–96. Moreover, there was no indication before claim construction
`
`of any dispute whether
`
`did not assert that the accused
`
` Flyp’s infringement contentions
`
`. See, e.g., Ex. 3. In
`
`those contentions, Flyp did nothing more than generally reference a few technical diagrams that
`
`included
`
`pointing to or calling out
`
`
`
`, without specifically
`
`
`
`
`
`
`
`
`
`. See, e.g., id. The first time Flyp clearly stated its infringement theory identifying
`
` came in the September 12, 2023 expert report of Flyp’s
`
`infringement expert, Dr. Nettles. Ex. 4 at p. 326 ¶ 347, p. 327 ¶ 352, p. 354 ¶ 397. In responding
`
`to that infringement theory, which was disclosed after the close of fact discovery, Dr. Gottesman
`
`explained that
`
` under the ordinary meaning of that term. There is
`
`no basis to strike Dr. Gottesman’s opinions on
`
`.
`
`3.
`
`Dr. Gottesman Applies the Plain and Ordinary Meaning of “directing
`the switch to”
`
`Flyp suggests that Dr. Gottesman is misconstruing the “receiving, at the switch,
`
`information from the server directing the switch to” limitation of the Outgoing Call Patents when
`
`he concludes that
`
`
`
`. Dkt. 152 at 9–11. But yet again, as explained in Google’s Opposition to Flyp’s Motion for
`
`Partial Summary Judgment on the Outgoing Call Patents (Dkt. 150), Dr. Gottesman simply applies
`
`-4-
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`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 9 of 26
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`the plain and ordinary meaning of “directing the switch to,” as it is used in the Asserted Patents,
`
`to
`
`. Gottesman
`
`Noninfringement Report ¶¶ 97–106. Dr. Gottesman is not proposing, and does not rely on, any
`
`specialized or unusual meaning of that claim phrase.
`
`Nowhere in its infringement contentions did Flyp explicitly contend that the claimed
`
` The infringement theory
`
`was first presented in the September 12, 2023 expert report of Dr. Nettles. Ex. 4 at p. 206 ¶ 222,
`
`p. 262 ¶ 228, p. 354 ¶ 397, p. 376 ¶ 433, p. 377 ¶¶ 436, 438. Dr. Gottesman timely responded to
`
`that new theory using the plain and ordinary meanings of the claim terms, by explaining that (a)
`
`, and (b)
`
`
`
`. There is no basis for Flyp’s suggestion that Google should have guessed Dr.
`
`Nettles’ eventual theory before claim construction. And Flyp and its expert’s disagreement with
`
`Dr. Gottesman is not a basis to strike his opinion.
`
`4.
`
`Dr. Gottesman Applies the Plain and Ordinary Meaning of “the at
`least one data channel” Limitation of the ’770 Patent
`
`Flyp’s motion fails to quote all of the claim limitations reciting “at least one data channel.”
`
`The three recitations in the claims, in order, are as follows:
`
`acquiring first digital information from the handset over at least one data channel . . .
`acquiring second digital information from the handset over the at least one data channel
`. .
`transmitting pre-call information to the handset over the at least one data channel. . .
`
`’770 patent, Claim 1 (Ex. 23) (emphasis added).
`
`Dr Gottesman’s non-infringement opinion is based on the fact that the second and third
`
`instances add “the” to the phrase “at least one data channel.” The claims thus require the “at least
`
`one data channel” selected and used to acquire first digital information from the handset in the first
`
`instance becomes, and must be, “the” same “at least one data channel” used to acquire second
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`-5-
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`

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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 10 of 26
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`digital information and to transmit pre-call information in the second and third instances. It is black
`
`letter patent law that the presence of “the” in the second and third recitations of “at least one data
`
`channel,” but not in the first, means the first recitation is the antecedent basis for the second and
`
`third recitations, such that all three “at least one data channel[s]” must be the same. See Finjan
`
`LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (where reference to “a computer” may
`
`mean “one or more computers,” the subsequent references to “the computer” can only be satisfied
`
`by the same “one or more computers” that satisfied the first limitation.); Harris Corp. v. Fed.
`
`Express Corp., 502 F. App’x 957, 963 (Fed. Cir. 2013) (“When identical language is found in
`
`multiple steps within the same claim, it is reasonable to assume that all references relate to the
`
`same subject matter. . . . This is especially true where, as here, the later instance refers to ‘the’ data
`
`and therefore begs for some antecedent basis.”). This is consistent with the patent showing the
`
`same data channel used for acquiring second digital information and pre-call information (’770
`
`patent, Fig. 3, element 316). Dr. Gottesman did not require or assert any unusual claim construction
`
`of any kind. He merely applied the straight-forward plain meaning of these terms.
`
`As explained by Dr. Gottesman, in the accused Google Voice system, (a)
`
`, and (b)
`
`
`
`
`
`
`
`
`
`. Gottesman Noninfringement Report ¶ 126 and see generally ¶¶ 125–128. Once
`
`again, Flyp’s disagreement with Dr. Gottesman’s principled opinions does not provide a basis for
`
`striking those opinions.
`
`B.
`
`Dr. Gottesman’s Opinions that Prior Art Google Voice Included Integration
` Are Proper
`
`Flyp challenges Dr. Gottesman’s opinions that
`
` were
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`-6-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 11 of 26
`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 11 of 26
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`part of the prior art Google Voice system and instead alleges that they were distinct systems that
`
`Dr. Gottesman improperly collapses into Google Voice. Dkt. 152 at 11-16. Flyp is wrong.In his
`
`report, Dr. Gottesman provided evidence including deposition testimony, public documents,
`
`internal Google documents, and discussions with knowledgeable Google personnel showing that
`
`Po were part of Google Voice before the July 17, 2013 priority date of the
`Asserted Patents.* From this, Dr. Gottesman concludesPe
`Sc:
`
`Invalidity Report §§ 92-100, Table T-1 (Dkt. 152-7). It is for the jury to decide whether the
`
`evidence supports Dr. Gottesman’s opinions, and the Court should reject Flyp’s improper request
`
`effectively to resolve the factual dispute by striking those opinions.
`
`Flyp further errs in arguing that Dr. Gottesman’s opinions should be stricken because he
`
`contends thePo systems could have been used to perform the claimed steps. Dkt.
`
`152 at 12-16.° Thepremiseis false. Dr. Gottesman’s opinionrests on the factthat prior art Google
`
`\ie,Isecsough a person
`ofordinary skill a call processing system (Google Voice) used withi
`
`a. Because prior art Google Voice necessarily included and taught performance of the
`
`various claim steps when used as directed and intended—trather than merely possessing the
`
`”: id. at GOOG-FLYP-000185-86:
`
`specifically to Dr. Gottesman’s observation that
`
`4 See also Ex. 5 at GOOG-FLYP-000184: ‘
`
`
`Google understands Flyp’s argument to apply
`
`(1)
`GrandCentral an Voice’s predecessor) (id. at 15); and (3)rs
`the Nokia N80 Internet Edition was integrated with
`and
`supporte
`(Dkt. 152 at 12-13);
`
`
`(2)
`
`(id. at 15).
`
`-7-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 12 of 26
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`capability to covertly practice the claim steps if used in an unusual or atypical manner—it
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`anticipates the Incoming Call Patent claims.
`
`Flyp’s authority, Poly-America, L.P. v. GSE Lining Technology, Inc., 383 F.3d 1303, 1309
`
`(Fed. Cir. 2004), is thus inapposite. Dkt. 152 at 12. In Poly-Am, the defendant’s invalidity argument
`
`was premised on the assertion that the prior art “die” was capable of performing the claimed
`
`method if used in a manner for which it was not originally designed. There was no assertion by
`
`the Poly-Am defendant that the claimed method was actually taught by use of the prior art “die.”
`
`Conversely, Google asserts the claimed method was actually disclosed and taught by the ordinary
`
`use of Google Voice (and by publications describing use of that product). This is not a situation
`
`like Poly-Am where Google Voice needed to undergo “development work in order to be
`
`commercially useful and to enable the product of the process to be sold,” such that there was no
`
`disclosure of the claimed process steps by ordinary use of the product. Poly-Am, 383 F.3d at 1308
`
`(citing In re Kollar, 286 F.3d 1326, 1333 (Fed. Cir. 2002)).
`
`Here, Dr. Gottesman does not base his opinion on a theoretical, but undisclosed, possibility
`
`of Google Voice’s operation, nor does he seek to fill in missing teachings with hindsight
`
`observations. Instead, Dr. Gottesman relies on contemporaneous materials that explicitly disclose
`
`and teach the use of prior art Google Voice to perform the Asserted Claims’ method steps. For
`
`example,
`
`
`
`.
`
`See, e.g., Gottesman Invalidity Report, Table T-1 (Dkt. 152-7) at 19. He then points to public
`
`documents describing the use of
`
`See, e.g., Ex. 5 at GOOG-FLYP-000184. He further testified that the
`
`.
`
`
`
` (Ex. 2 at 338:10–339:8, cited at Dkt. 152, p. 16), and Google
`
`-8-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 13 of 26
`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 13 of 26
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`producedevidence during fact discovery that (a) Grand Central was integrated with Google Voice
`
`(Ex. 5 at GOOG-FLYP 0000183), and(b)
`Ss: c7es
`
`Based on the express disclosures and teachings to a person of ordinary skill in the art, Dr.
`
`Gottesman explains that prior art Google Voice, as implemented winiiii
`a. anticipates the Asserted Claims ofthe Incoming Call Patents. There is no basisto strike
`
`Dr. Gottesman’s opinions.°®
`
`Cc.
`
`Dr. Gottesman’s Invalidity Opinion Involving the Nokia N80 Internet
`Edition Is Proper and Timely
`
`Flyp seeksto strike Dr. Gottesman’s invalidity opinionrelating to prior art Google Voice’s
`
`use of a VoIP endpoint called the Nokia N80 Internet Edition. Contrary to Flyp’s suggestion, Dr.
`
`Gottesman’s invalidity opinion relating to prior art Google Voice’s use of a VoIP endpointcalled
`
`the Nokia N80 Internet Edition is not a new theory of invalidity. Dkt. 152 at 17. As explained
`
`further below, Dr. Gottesman disclosed the N80 Internet Edition as one of multiple examples of
`
`VoIP endpoints, i.e., devices that were capable of engaging in VoIP communications for Google
`
`Voicecall.
`
`Expert reports may contain information not found within invalidity contentions so long as
`
`they do not changethe disclosed invalidity theories. Pisony v. Commando Constrs., Inc., No. 6:17-
`
`cv-00055-ADA, 2020 WL 4934463, at *4 (W.D. Tex. Aug. 24, 2020) (citing Digital Reg of Tex.,
`
`LLC v. Adobe Sys. Inc., No. CV 12-01971, 2014 WL 1653131, at *5 (N.D. Cal. Apr. 24, 2014)).
`
`
`
`° Dr. Gottesman also opines that the Asserted Claimsare invalid as obvious in view of Google
`Voice. Gottesman Invalidity Report§189.b.
`
`
`See, e.g., id. F§ 92, 94, 95, 96, 97.
`
`. See, e.g., id. § 100. Flyp does not
`
`challenge Dr. Gottesman’s opiions regarding
`obviousness based solely on Google Voice,
`ES52-01:152
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`
`
`-9-
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 14 of 26
`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 14 of 26
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`Dr. Gottesman’s reference to the Nokia N80 Internet Edition endpoint does not offer a new
`
`invalidity theory but instead corroborates the long-disclosed theory that prior art Google Voice
`
`used various mobile VoIP endpoints
`
`a I
`
`n its March 21, 2023 invalidity contentions, Google expressly disclosed its contention that
`
`MM. sec Ex. 6 at 15(»). 27 (citing GOOG-FLYP-Pa-
`000046454648 (Ex. 22), which states concerninga at GOOG-FLYP-PA-00004646: “On
`
`mobile phones that support SIP applications, calls may be placed over WiFi... ”), Table T-1 at 2
`
`eee
`I©101-12 2.105127
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`EE). Uable T-2 at 32, Table T-1 at 3(
`eee
`a1:
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`2 at 3. Dr. Gottesman cites the Nokia N80 Internet Edition solely to explain and support this theory
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`from the contentions; not to present a wholly new theory. Gottesman Invalidity Report § 93, Table
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`7’ Gottesman Invalidity Report
`at 20 and
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`and see Ex. 8 at 35:11—
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`Tables T-1 and T-2 (Dkts. 152-7, 152-8
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 15 of 26
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`T-1 (Dkt. 152-7) at 19, Table T-2 (Dkt. 152-8) at 13–14.8
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`Flyp argues that “Google has no good explanation for failing to disclose its own products’
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`alleged integration with the Nokia N80.” Dkt. 152 at 18, 19. But, it was only in preparing his
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`invalidity report that Dr. Gottesman discovered the publicly disclosed Nokia N80 Internet Edition
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`as yet another example corroborating
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`.9 Dr. Gottesman was entitled to detail the facts and materials that supported his opinion
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`relating to Google’s previously disclosed theory, including his discovered knowledge of the Nokia
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`N80 Internet Edition. Pisony, 2020 WL 4934463, at *4.
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`Flyp suggests that Dr. Gottesman’s testimony regarding the Nokia N80 is immaterial
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`because there is no evidence of actual use integrating the N80 with Google Voice. Dkt. 152 at 18.
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`But, as discussed in Section B supra, Dr. Gottesman’s opinion rests on the fact that the public
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`materials discussing the use of Nokia N80 Internet Edition as a VoIP endpoint for Google Voice
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`actually disclose and teach a person of ordinary skill how to practice certain of the claim elements.
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`Dr. Gottesman’s opinion on this issue is properly presented to the jury for evaluation, subject to
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`cross-examination.
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`D.
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`Dr. Gottesman’s Opinions on Motivation to Combine Are Legally Sufficient,
`and Include More Than One Motivation to Combine
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`Flyp’s motion to strike repeats the argument from its Motion for Partial Summary
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`
`8 Flyp can hardly contend that doing so was improper when Flyp’s own damages expert, Dr. Lewis,
`similarly introduced supporting documents in his report that were not disclosed or produced in
`discovery. See, e.g., Ex. 9 at n.12 (citing various unproduced documents such as Recent Trends in
`Reasonable Royalty Damages in Patent Cases, and Settlement Evidence and Patent Damages); id.
`at Exhibit 10.0, Notes & Sources 1–16 (citing 16 unproduced documents).
`9 The materials cited by Dr. Gottesman concerning Nokia N80 are publicly available, found on the
`internet by Dr. Gottesman. They did not originate with Google. Gottesman Invalidity Report ¶ 93;
`Gottesman Noninfringement Report ¶¶ 30, 132, 140.
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 16 of 26
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`Judgment Concerning Burner, Obviousness and Google’s 35 U.S.C. § 112 Arguments (Dkt. 151)
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`that Dr. Gottesman allegedly failed to provide legally sufficient motivation to combine references.
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`Dkt 152 at 19–21. As Google explained in its opposition to Dkt. 151, Dr. Gottesman’s opinion on
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`motivation to combine is based, in part, that the “the natural evolution of systems is to integrate
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`more and more networks, in order to offer more versatile features and seamless overall
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`internetwork solutions, especially when there are already pre-existing standards and competitive
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`markets.” Gottesman Invalidity Report ¶¶ 200, 205. This theory meets the obviousness test set
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`forth in KSR that “in determining whether the subject matter of a patent claim is obvious, neither
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`the particular motivation nor the avowed purpose of the patentee controls.”KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 419 (2007). A patent’s subject matter can be proven obvious by showing there
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`was a known problem with an obvious solution encompassed by the patent’s claims. Id. at 419–
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`20. That is precisely what Google’s expert opinions and invalidity contentions demonstrate,
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`making summary judgment of no motivation to combine inappropriate, and any effort to strike Dr.
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`Gottesman’s opinions improper.
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`Flyp incorrectly alleges that “Dr. Gottesman’s invalidity report only identifies one specific
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`motivation to combine.” Dkt. 152 at 19. Dr. Gottesman’s reliance on “natural evolution” of
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`systems is only “further” motivation to others already provided in his report. As Flyp
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`acknowledges (id.), Dr. Gottesman identified the commonality of technology among the combined
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`references, including the similarity of protocols hardware, as motivation to combine the prior art
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`references. His opinion on motivation to combine is not based on a mere observation that the
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`“references . . . come from the same field, or involve similar technologies” (id. at 20). Rather, his
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`opinions are grounded in, and supported by, careful and exhaustive citation
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`
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` with prior art
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 17 of 26
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`references Backhaus, Saskena, Winblah and Quon. See, e.g., Gottesman Invalidity Report ¶¶ 196–
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`205. Dr. Gotteman’s detailed citation in his Expert Report on Invalidity to particular passages of
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`the prior art in paragraphs 192–205, and in the prior art charts for Google Voice (Tables T-1 and
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`T-2), form the basis for his opinion that the references individually and collectively provide the
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`motivation to combine because “[e]ach of these references and systems describes or implements
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`methods for delivering telephone calls using the combination of a data channel and a voice
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`channel.” Ex. 6 at 59. To this end, the contentions note that the solutions in each of the references
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`“would have been further enhanced and augmented by the other prior art references and systems,
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`which are directed to the same and similar problems,” providing further citations to the prior at.
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`Id. at 62–63. Because the prior art references “disclose similar steps and components that are
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`highly compatible with each other, it would have been natural for one of ordinary skill in the art
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`to contemplate adding to, or substituting the teachings of any one of these references with the
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`teachings of any one or more of the other references in order to provide additional functionality,
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`to improve upon the basic techniques taught in each reference, and/or to solve similar issues recited
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`in each.” Id. at 61 (citing KSR, 550 U.S. 398). Ultimately, the competing opinions of Dr. Gottesman
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`and Flyp’s validity expert, Dr. Conte, should both be presented to the jury for consideration.
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`E.
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`Dr. Gottesman’s Opinions on Non-Infringing Alternatives Are Well
`Supported and Reliable
`1.
`
`The Hypothetical Negotiation Date
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`Contrary to Flyp’s present assertion, Dr. Gottesman did not testify that the hypothetical
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`negotiation date fell on or before 2013. Dkt. 152 at 22–23. Rather, his opinion was and is that the
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`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 18 of 26
`Case 6:22-cv-00031-ADA Document 191 Filed 12/05/23 Page 18 of 26
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`. Ex. 2 at 455:9-456:8.!° Flyp’s counsel
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`did not ask Dr. Gottesman ifhe considered the “hypothetical negotiation date” to be 2013. Counsel
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`asked Dr. Gottesmanif he understood “the non-infringing analysis to take place in 2013.” Ex. 2 at
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`1562-5. Dr, Gottesmanexpsine¢
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`, specifically, the outgoing proxy call
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`flow from before the relevant Section 273 and Section 102(b) date (i.e., July 16, 2012, one year
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`before the effective filing date of the Asserted Patents). Jd. This is consistent with Dr Gottesman’s
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`
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`GottesmanInvalidity Report § 238.
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`In any event, the hypothetical negotiation date is effectively irrelevant to the substance of
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`Dr. Gottesman’s opinions regarding non-infringing alternatives.PO
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`Gottesman Invalidity Report §§] 237-239; Gottesman Noninfringement Report §§ 138-142.
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`444:3-15, 446:6-447:7. Once again, Flyp offers no legal basis to strike Dr. Gottesman’s
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`. Id., Ex. 2 at
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`ent based on Section 273 (Dkt. 147
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`Case 6:22-cv-00031-ADA Document 1