Rambus Inc. v. Hynix Semiconductor Inc.

254 F.R.D. 597, 78 Fed. R. Serv. 364, 2008 U.S. Dist. LEXIS 108203, 2008 WL 5411571
District Court, N.D. California·Decided December 29, 2008·No. Nos. C-05-00334 RMW, C-05-02298 RMW, C-06-00244 RMW·Published·Cited by 7 cases

Opinion

ORDER ON THE MANUFACTURERS’ DAUBERT MOTION No. 1 TO PRECLUDE TESTIMONY OF ROBERT MURPHY ON SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS

RONALD M. WHYTE, District Judge.

Rambus has accused the Manufacturers1 of infringing various patents. Trial is scheduled for January 19, 2009. Pursuant to a case management deadline for filing Daubert motions, the Manufacturers have filed a motion challenging the ability of Robert Murphy (Rambus’s technical expert) to testify regarding secondary considerations allegedly relevant to show that Rambus’s patent claims were not obviousness on their effective filing date. Specifically, the Manufacturers assert that Murphy lacks a sufficient foundation to express an opinion that: (1) the patented inventions enjoyed commercial success; (2) various DRAM manufacturers entered into licensing agreements with Rambus; (3) there was “long-felt need” for the claimed inventions; (4) there were “unsuccessful attempts by others” to solve the problem solved by the claimed inventions; (5) there was copying of the claimed inventions; (6) there were “unexpected superior results” from the claimed inventions; and (7) there was “praise from others” concerning the claimed inventions. Rambus opposes the motion.2 The court has reviewed the papers and considered the arguments of counsel. For the following reasons, the court partially grants and partially denies the motion.

I. LEGAL STANDARD

Federal Rule of Evidence 702 governs the admissibility of expert testimony. An expert must be qualified by virtue of his or her “knowledge, skill, experience, training, or education.” FRE 702. Expert testimony must also be helpful to the trier of fact in understanding the evidence or determining a fact in issue. Id. Finally, the court must be convinced that the expert testimony is reliable. Id. Reliable testimony must be (1) “based upon sufficient facts or data,” (2) “the product of reliable principles and methods,” and (3) a sound application of the principles to the facts. Id. “Facts or data” may include other experts’ reliable opinions or hypothetical facts that are supported by the evidence. FRE 702, Adv. Committee Note (2000); see FRE 703. The party offering expert testimony must demonstrate by a preponderance [601]*601of the evidence that its expert’s opinions are rehable. See In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 743-44 (3d Cir.1994).

The Supreme Court has confirmed that “the Rules of Evidence—especially Rule 702—do assign to the trial judge the task of ensuring that an expert’s testimony both rests on a rehable foundation and is relevant to the task at hand.” Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 597, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993); Cooper v. Brown, 510 F.3d 870, 942-43 (9th Cir.2007). While the court has broad discretion in deciding whether that standard has been met, the court cannot shirk its gatekeeper duties. See General Elec. Co. v. Joiner, 522 U.S. 136, 142, 146, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997); compare with id. at 148, 118 S.Ct. 512 (Breyer, J., concurring). The purpose for this gatekeeping is to ensure that an expert applies the same level of rigorous analysis inside the courtroom as he would outside. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 152, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999).

The parties basically agree on the analytical framework the court must use. However, Rambus characterizes the Manufacturers’ motion as seeking to apply a heightened ga-tekeeping standard with respect to evidence of secondary considerations of nonobviousness. The Manufacturers respond that a higher standard does not apply but that the “gatekeeping requirement applies with special force to expert opinions on secondary indicia of nonobviousness.” Reply at 1:15— 23. The parties’ only disputes, therefore, relate to how the court exercises its discretion with specific aspects of Mr. Murphy’s testimony. Ironically, the parties appear to have had changes of heart with respect to how carefully the court should scrutinize expert testimony. See, e.g., Hynix Semiconductor, Inc. v. Rambus Inc., 2008 WL 73686, *1 (N.D.Cal. Jan. 5, 2008) (noting Rambus’s emphasis of the “substantial danger” and “quite misleading” nature of improper expert testimony while some of the Manufacturers characterized the court’s gatekeeping duty as “limited” and that “rejection of expert testimony is the exception rather than the rule.”).

II. ASPECTS OF MR. MURPHY’S INTENDED TESTIMONY

Mr. Murphy’s analysis and opinions appear in his rebuttal report of September 26, 2008. Docket No. 2425, Omnibus Decl. of Sven Raz, Ex. 1 (Oct. 24, 2008) (hereinafter “Murphy Report”). Because of the intricate, factual nature of the parties’ arguments, the court dispenses with a background discussion of Mr. Murphy’s expert analysis. The court refers to Mr. Murphy’s report and other facts while considering each of the Manufacturers’ arguments.

A. Commercial Success of the Claimed Inventions in the Manufacturers’ Products

1. The Relevance of Commercial Success Evidence

The problem of hindsight plagues the non-obviousness inquiry. KSR Int’l Co. v. Tele-flex Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). For example, in this ease, the court must determine whether the inventions of Drs. Farmwald and Horowitz were obvious to a person of skill in the art as of 1990, i.e., almost 19 years ago. Recreating the mindset of a person of ordinary skill in the art, and not forming a bias based on the course of innovation in the field in the past two decades, is exceptionally difficult.

Hence, commercial success (and other secondary considerations) can be “the most probative and cogent evidence in the record” with respect to nonobviousness. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed.Cir.1983); see Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1129 (Fed.Cir.2000). Such evidence displays two virtues that can make it persuasive. First, it is contemporaneous, or at least much closer in time than the pending dispute.

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Rambus Inc. v. Hynix Semiconductor Inc., 254 F.R.D. 597, 78 Fed. R. Serv. 364, 2008 U.S. Dist. LEXIS 108203, 2008 WL 5411571 (N.D. Cal. 2008).

254 F.R.D. 597 (Rambus Inc. v. Hynix Semiconductor Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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