Free Answering Brief in Opposition - District Court of Delaware - Delaware

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 1 of 10

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE POLAROID CORPORATION, Plaintiff, v. HEWLETT-PACKARD COMPANY, Defendant. ) ) ) ) ) ) ) ) )

C.A. No. 06-738 (SLR)

POLAROID'S ANSWERING BRIEF IN OPPOSITION TO HEWLETT-PACKARD'S CROSS-MOTION TO PRECLUDE

OF COUNSEL: Russell E. Levine, P.C. G. Courtney Holohan Michelle W. Skinner David W. Higer Maria A. Meginnes KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, IL 60601 (312) 861-2000 July 28, 2008

MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 N. Market Street Wilmington, Delaware 19801 (302) 658-9200 [email protected] Attorneys for Plaintiff, Polaroid Corporation

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 2 of 10

TABLE OF CONTENTS

NATURE AND STAGE OF THE PROCEEDINGS ......................................................................1 SUMMARY OF THE ARGUMENT ..............................................................................................1 ARGUMENT...................................................................................................................................2 I. THE AGOURIS DECLARATION REGARDING THE OKADA REFERENCE -- WHICH REBUTS HP'S UNTIMELY OKADA CONTENTIONS -- COULD NOT HAVE BEEN SUBMITTED EARLIER.................................................................................................................2 THE AGOURIS AND WROBLEWSKI DECLARATIONS REGARDING SOURCE CODE PROPERLY RESPOND TO HP'S DAUBERT MOTION...............................................................................................3 DR. AGOURIS PROVIDED DEPOSITION TESTIMONY ON MARKING AT THE APPROPRIATE TIME.........................................................3 THE MCCULLOUGH DECLARATION PROPERLY RESPONDS TO HP'S DAUBERT MOTION. ....................................................................................4 THE BEAUDOIN DECLARATION FALLS SQUARELY WITHIN THE SUBJECTS POLAROID IDENTIFIED FOR BEAUDOIN IN ITS FIRST AMENDED INITIAL DISCLOSURES AND PROPERLY ADDRESSES HP'S LACHES SUMMARY JUDGMENT MOTION. ..........................................5

II.

III. IV. V.

CONCLUSION................................................................................................................................5

i

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 3 of 10

TABLE OF AUTHORITIES Cases In re TMI Litigation, 193 F.3d 613 (3d Cir. 1999)................................................................................................ 2 Philips Elecs. N. Am. Corp. v. Contec Corp., No. Civ. A. 02-123-KAJ, 2004 WL 769371 (D. Del. Apr. 5, 2004) ................................. 2 Praxair, Inc. v. ATMI, Inc., 445 F. Supp. 2d. 460 (D. Del. 2006)................................................................................... 2 Rules FED. R. CIV. P. 37(c)(1)................................................................................................................... 2

ii

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 4 of 10

NATURE AND STAGE OF THE PROCEEDINGS HP has filed a Cross-Motion To Preclude (D.I. 266) ("Cross-Motion") and Memorandum In Opposition To Polaroid's Motion To Preclude And In Support Of HP's Cross-Motion To Preclude (D.I. 267) ("Cross-Motion Brief"). This is Polaroid's answering brief in opposition to HP's Cross-Motion. SUMMARY OF THE ARGUMENT HP's Cross-Motion -- coming weeks after Polaroid submitted its initial motion to preclude, in conjunction with HP's opposition to Polaroid's second preclusion motion, and which is conditioned upon the grant of Polaroid's motion -- is an attempt to divert attention from HP's discovery abuses. Polaroid submitted all of the evidence referenced in HP's Cross-Motion in accordance with this Court's scheduling orders, and HP's Cross-Motion lacks merit: · Polaroid timely disclosed the allegedly "new" opinion contained in the declaration submitted by Polaroid's technical expert, Dr. Peggy Agouris, regarding the Okada reference, which was disclosed late by HP. The declarations submitted by Dr. Agouris and Joseph P. Wroblewski regarding source code issues rebutted arguments made for the first time in HP's motion to preclude Dr. Agouris' testimony. This Court's schedule provided for only two rounds of expert reports, and Dr. Agouris appropriately addressed HP's rebuttal report on marking at her deposition in light of the schedule. The declaration of Polaroid's survey expert, Walter McCullough, simply summarizes information given at his deposition and responds to issues first raised in HP's preclusion motion directed at McCullough. Thomas Beaudoin's declaration discusses only his personal background and Polaroid's corporate history in response to HP's summary judgment motion. Polaroid disclosed Beaudoin's knowledge of this subject matter in its amended initial disclosures months before the close of fact discovery.

·

·

·

·

1

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 5 of 10

ARGUMENT HP's contention that Polaroid submitted declarations and deposition testimony late is factually inaccurate, and HP's Cross-Motion should be denied. See, e.g., FED. R. CIV. P. 37(c)(1) (providing for preclusion only where party "fails to provide information or identify a witness as required by [the rules of discovery]"); In re TMI Litigation, 193 F.3d 613, 722 (3d Cir. 1999); Praxair, Inc. v. ATMI, Inc., 445 F. Supp. 2d. 460, 471 (D. Del. 2006); Philips Elecs. N. Am. Corp. v. Contec Corp., No. Civ. A. 02-123-KAJ, 2004 WL 769371, at *1 (D. Del. Apr. 5, 2004).1 HP has not identified -- and did not experience -- any prejudice as a result of

Polaroid's timely submission of this evidence. I. THE AGOURIS DECLARATION REGARDING THE OKADA REFERENCE -- WHICH REBUTS HP'S UNTIMELY OKADA CONTENTIONS -- COULD NOT HAVE BEEN SUBMITTED EARLIER. HP belatedly disclosed opinions regarding the Okada reference, and the declaration submitted by Polaroid's expert, Dr. Agouris -- responding to HP's eleventh hour contentions -- was timely. D.I. 172 at 2­4; D.I. 246 at 1­4. HP's technical expert, Dr. Rangaraj Rangayyan, improperly filed two opening expert reports in this case. D.I. 271 at 2, n.1. His second opening report, filed on the same day that Dr. Agouris filed her rebuttal expert report, identified brandnew opinions regarding the Okada reference. Id. at 3. As a result of HP's untimely disclosure of the Okada reference opinions, Dr. Agouris could not rebut Dr. Rangayyan's new opinions in her rebuttal expert report. After HP relied on the Okada reference in its summary judgment motion, Dr. Agouris submitted her declaration to address the late-disclosed Okada reference. See D.I.

1

Earlier-filed Polaroid briefs detail the applicable case law on preclusion. See, e.g., D.I. 172; D.I. 246; D. I. 248; D.I. 271.

2

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 6 of 10

193, Ex. 3. To exclude the Agouris declaration regarding the Okada reference would reward HP for delaying disclosure of that reference in violation of this Court's scheduling orders. II. THE AGOURIS AND WROBLEWSKI DECLARATIONS REGARDING SOURCE CODE PROPERLY RESPOND TO HP'S DAUBERT MOTION. This Court should not exclude the declarations of Dr. Agouris and Wroblewski, which timely respond to HP's contentions regarding the scope of Dr. Agouris' expertise. D.I. 219, Exs. 2 and 4. HP's claims that these declarations contradict Dr. Agouris' deposition testimony regarding her expertise in computer software and computer hardware are baseless, as explained in earlier briefing. Compare D.I. 267 at 5, 18 with D.I. 219. Consistent with Dr. Agouris' deposition testimony,2 these declarations explain the circumstances surrounding her analysis of the accused products in response to HP's mischaracterization of her knowledge and analysis. D.I. 219, Exs. 2 and 4. HP does not claim that the declarations contain new opinions, and they could not have been submitted before HP filed its Daubert motion. III. DR. AGOURIS PROVIDED DEPOSITION TESTIMONY ON MARKING AT THE APPROPRIATE TIME. In accordance with this Court's Amended Scheduling Order, and in response to HP's contentions regarding marking, Polaroid's technical expert appropriately provided testimony at her deposition.3 Dr. Agouris submitted an initial expert report on marking in which she

addressed all of the claims in the '381 patent, including Claim 7. See D.I. 151, J.A. Ex. B, Agouris Rpt. at 95­96. For example, regarding the '381 patent's method claims (that include

2

Even assuming HP were correct in its statements that the declarations are inconsistent with Dr. Agouris's deposition testimony -- which it is not -- preclusion is unwarranted as HP can explore these alleged inconsistencies on cross-examination at trial. The parties have already briefed this issue. See, e.g., D.I. 221 at 4­5.

3

3

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 7 of 10

Claim 7), Dr. Agouris stated, "Because Polaroid's [dodge and burn/adaptive sharpening] technology does not embody any apparatus claim of the '381 patent, it also does not embody the method claims of the '381 patent which are directed at the use of the apparatus claims." Id. HP's expert Dr. Dan Schonfeld responded to Dr. Agouris' expert report by filing his own report, focusing exclusively on Claim 7. DI. 268, HP Ex. D. As this Court's schedule did not permit rebuttal reports, Dr. Agouris properly responded to Dr. Schonfeld's contention during her deposition testimony. See D.I. 51, Am. Scheduling Order at Section 3(c)(1); 2/11/08 Order. Because Dr. Agouris could not have disclosed her rebuttal contention until after Dr. Schonfeld submitted his report, her timely testimony on marking should not be excluded. IV. THE MCCULLOUGH DECLARATION PROPERLY RESPONDS TO HP'S DAUBERT MOTION. The declaration of McCullough did not provide any new expert opinion, but rather summarized McCullough's deposition testimony and responded to allegations in HP's McCullough Daubert motion. D.I. 218, Ex. 2. It should not be excluded. HP's claim that McCullough "expand[ed] upon his alleged qualifications" is factually inaccurate. D.I. 267 at 4. Only two paragraphs of McCullough's declaration discussed his qualifications. See D.I. 218, Ex. 2 at ¶ 3 (listing professional associations to which McCullough and his company belong) and ¶ 6 (detailing the number and types of surveys McCullough has conducted over 40 years). McCullough provided this same information in response to HP's questioning at his deposition, as evidenced by Polaroid's citation of both his testimony and his declaration in its opposition to HP's Daubert motion. See D.I. 218 at 2, 18­19. HP's contention that McCullough "state[ed] opinions that attempt to justify various aspects of his survey methodology" is similarly inaccurate. D.I. 267 at 4. McCullough did not provide any additional opinions on his methodology, but rather explained the process of 4

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 8 of 10

designing his surveys in response to HP's Daubert contentions. D.I. 218, Ex. 2 at ¶¶ 4­5, 7­14. McCullough's statements regarding the knowledge attributable to a survey expert and the information such an expert would consider also appropriately addressed issues raised in HP's Daubert motion. Compare D.I. 165 at 13­14, 17­18 with D.I. 218 at 14, 17­18. There is no basis to preclude Polaroid from reliance on McCullough's declaration as it does not contain untimely disclosed opinions. V. THE BEAUDOIN DECLARATION FALLS SQUARELY WITHIN THE SUBJECTS POLAROID IDENTIFIED FOR BEAUDOIN IN ITS FIRST AMENDED INITIAL DISCLOSURES AND PROPERLY ADDRESSES HP'S LACHES SUMMARY JUDGMENT MOTION. HP's contention that Polaroid did not identify its then-current President, Chief Operating Officer, and Chief Financial Officer, Beaudoin, as a person "likely to have discoverable information regarding the issues or laches or equitable estoppel," distorts the facts. D.I. 267 at 20. On November 29, 2007 -- months before the close of fact discovery -- Polaroid disclosed Beaudoin in its amended initial disclosures as a person likely to have information about Polaroid's corporate history, which is the only subject discussed in Beaudoin's declaration. D.I. 268, Ex. E at 3; D.I. 195, Ex. 3. HP demanded Beaudoin's deposition during fact discovery, but shortly before the deposition was to commence, HP unilaterally cancelled his deposition with no explanation. Polaroid Ex. A, Beaudoin Deposition Notice; Polaroid Ex. B, 1/21/08 and 1/29/08 Coburn Emails. HP's strategic choice not to depose Beaudoin during fact discovery after Polaroid timely disclosed him as knowledgeable on Polaroid's corporate history does not support preclusion of his declaration on that topic. CONCLUSION For the reasons set forth herein, HP's Cross-Motion should be denied. 5

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 9 of 10

MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Julia Heaney
OF COUNSEL: Russell E. Levine, P.C. G. Courtney Holohan Michelle W. Skinner David W. Higer Maria A. Meginnes KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, IL 60601 (312) 861-2000 July 28, 2008
2428110

Jack B. Blumenfeld (#1014) Julia Heaney (#3052) 1201 N. Market Street Wilmington, Delaware 19801 (302) 658-9200 [email protected] Attorneys for Plaintiff, Polaroid Corporation

6

Case 1:06-cv-00738-SLR

Document 273

Filed 07/28/2008

Page 10 of 10

CERTIFICATE OF SERVICE I, the undersigned, hereby certify that on July 28, 2008, I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: William J. Marsden, Jr. FISH & RICHARDSON P.C. I also certify that copies were caused to be served on July 28, 2008 upon the following in the manner indicated: BY E-MAIL William J. Marsden, Jr. FISH & RICHARDSON P.C. 919 N. Market Street, Suite 1100 Wilmington, DE 19801 Matthew Bernstein John E. Giust MINTZ LEVIN COHN FERRIS GLOVSKY POPEO PC 3580 Carmel Mountain Road, Suite 300 San Diego, CA 92130 Bradley Coburn FISH & RICHARDSON P.C. One Congress Plaza, Suite 810 111 Congress Avenue Austin, TX 78701 Daniel Winston CHOATE HALL & STEWART, LLP Two International Place Boston, MA 02110

AND

/s/ Julia Heaney
Julia Heaney (#3052)

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 1 of 7

Exhibit A

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 2 of 7

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 3 of 7

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 4 of 7

Exhibit B

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 5 of 7

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 6 of 7

Case 1:06-cv-00738-SLR

Document 273-2

Filed 07/28/2008

Page 7 of 7