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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) ) ) )

POLAROID CORPORATION

Plaintiff, v. HEWLETT-PACKARD COMPANY,

C.A. No. 06-738 (SLR) REDACTED ­ PUBLIC VERSION

Defendant.

POLAROID'S ANSWERING BRIEF IN OPPOSITION TO HEWLETT-PACKARD COMPANY'S MOTION TO PRECLUDE CERTAIN TESTIMONY OF POLAROID'S EXPERT DR. PEGGY AGOURIS Jack B. Blumenfeld (#1014) Julie Heaney (#3052) Morris, Nichols, Arsht & Tunnell LLP 1201 N. Market Street Wilmington, Delaware 19801 [email protected] [email protected] (302) 658-9200 Attorneys for Plaintiff Polaroid Corporation 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 Original Filing Date: June 12, 2008 Redacted Filing Date: June 26, 2008

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TABLE OF CONTENTS Page TABLE OF AUTHORITIES .......................................................................................................... ii I. II. III. IV. NATURE AND STAGE OF THE PROCEEDINGS ..........................................................1 SUMMARY OF ARGUMENT ...........................................................................................1 STATEMENT OF FACTS ..................................................................................................1 ARGUMENT......................................................................Error! Bookmark not defined. A. B. C. D. V. Dr. Agouris's Testimony Meets Rule 702 Requirements........................................5 Dr. Agouris's Testimony Meets Rule 703 Requirements........................................8 Polaroid Properly Disclosed Mr. Wroblewski During Discovery, And HP Chose Not To Depose Him. ...................................................................................13 Dr. Agouris's Testimony Meets Rule 705 Requirements......................................15

CONCLUSION..................................................................................................................15

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TABLE OF AUTHORITIES Page(s) Cases Bouygues Telecom, S.A. v. Tekelec, 472 F. Supp. 2d. 722 (E.D.N.C. 2007).............................................................................. 11 Dura Auto. Sys. of Ind., Inc. v. CTS Corp., 285 F.3d 609 (7th Cir. 2002) ........................................................................ 8, 9, 12, 13, 14 Eaton Corp. v. Parker-Hannifin Corp., 292 F. Supp. 2d 555 (D. Del. 2003).................................................................................... 5 Elcock v. Kmart Corp., 233 F.3d 734 (3d Cir. 2000)................................................................................................ 5 In re Sulfuric Acid Antitrust Litig., 235 F.R.D. 646 (N.D. Ill. 2006).................................................................... 8, 9, 12, 13, 14 Izumi Prods. Co. v. Koninklijke Philips Elecs N.V., 315 F. Supp. 2d 589 (D. Del. 2004).................................................................................... 5 Lewis v. Rego Co., 757 F.2d 66 (3d Cir. 1985)............................................................................................ 8, 15 LML Patent Corp. v. Telecheck Servs., Inc., No. Civ. 04-858 (SLR), 2006 WL 839377, at * 1 (D. Del. Mar. 6, 2006) ......................... 9 Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007)............................................................................... 11 McReynolds v. Sodexho Marriott Servs, Inc., 349 F. Supp. 2d 30 (D.D.C. 2004) ................................................................................... 12 Ries v. CSX Transp., Inc., No. Civ. A. 96-3325, 2000 WL 377509, at *2 (E.D. Pa. Mar. 29, 2000)..................... 8, 15 Titan Stone, Tile & Masonry, Inc. v. Hunt Const. Group, 2007 WL 1659056, at *4 (D.N.J. June 5, 2007) ............................................................... 10 United States v. Mathis, 264 F.3d 321 (3d Cir. 2001)................................................................................................ 5 Waldorf v. Shuta, 142 F.3d 601 (3d Cir. 1998)................................................................................................ 5

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Walker v. Soo Line R.R., 208 F.3d 581 (7th Cir. 2000) ............................................................................................ 12 Westfield Ins. Co. v. Harris, 134 F.3d 608 (4th Cir. 1998) .............................................................................................. 8 Rules Fed. R. Civ. P. 26(a)(2)............................................................................................................. 9, 13 Fed. R. Civ. P. 26(c) ............................................................................................................... 13, 14 Fed. R. Evid. 702 ............................................................................................................................ 5 Fed. R. Evid. 703 ...................................................................................................................... 8, 14 Fed. R. Evid. 705 .......................................................................................................................... 15 Fed. R. Evid. 801(c)...................................................................................................................... 11

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I.

NATURE AND STAGE OF THE PROCEEDINGS On May 23, 2008, HP filed a Motion To Preclude Certain Testimony Of Polaroid's

Expert Dr. Peggy Agouris based upon "an interpretation of source code". This is Polaroid's answering brief in opposition to that motion. II. SUMMARY OF ARGUMENT HP's request to exclude particular portions of Dr. Agouris's testimony -- based on the unsupported premise that Dr. Agouris is not a source code expert -- should be denied. There is no dispute about the content or operation of the source code at issue and HP has no legal or factual support to the contrary. Dr. Agouris is highly qualified in the relevant field of digital image processing and is easily able to recognize and read source code. Under well-established case law, Dr. Agouris, in forming her opinions, appropriately obtained factual information from a programming specialist, Joseph Wroblewski. Dr. Agouris supervised Mr. Wroblewski's work, and he simply translated the LACE source code language -- a precise factual process -- and provided her with the resultant mathematical, factual data. Mr. Wroblewski's translation is of the type on which experts in the digital imaging field ordinarily and routinely base their opinions. Particularly where HP has the ability to highlight any alleged deficiencies in Dr. Agouris's analysis during cross examination, there is no ground on which to exclude any portion of Dr. Agouris's testimony. HP's motion should be denied. III. STATEMENT OF FACTS The parties agree that the relevant field of the patent-in-suit is digital image processing. D.I. 151, Ex. C, Rebuttal Expert Report of Dr. Peggy Agouris Regarding U.S. Patent No. 4,829,381 at 32; D.I. 190, Ex. A, Expert Report of Dr. Rangaraj Rangayan at ¶ 122. Dr. Agouris is an expert in digital image processing:

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· ·

Dr. Agouris has worked in the specific field of digital image processing and analysis for twenty years. Dr. Agouris is a tenured full professor in the College of Science at George Mason University, specializing in digital image processing and analysis. She has taught graduate and undergraduate level courses in digital image processing and analysis. As both an academic advisor and committee chair, Dr. Agouris supervises doctoral dissertations and Master's theses in the field of digital image processing and analysis, and has graduated several Ph.D. students who are now professors. Dr. Agouris has written more than 75 relevant articles in or related to the field of digital image processing and analysis. Dr. Agouris has edited books and journal articles in the field of digital image processing and analysis. Because of her expertise, Dr. Agouris has served as a reviewer of manuscripts, scientific papers and research proposals for various national and international organizations related to the field of digital image processing. Dr. Agouris is regularly asked to speak as an expert in the field of digital image processing and to chair related conferences.

·

·

See D.I. 151, Ex. B, Expert Report of Dr. Peggy Agouris Regarding U.S. Patent No. 4,829,381 at 4. HP does not -- and cannot -- dispute Dr. Agouris's expertise in digital image processing. Contrary to HP's assertions, Dr. Agouris also has been formally trained to read -- and is able to recognize and read -- C++ source code language. Ex. 1, P. Agouris Dep. Tr. at p. 56, line 21­p. 57, line 5; Ex. 2, P. Agouris Declaration ("P. Agouris Decl.") at ¶ 4. Dr. Agouris has experience programming in C language and has repeatedly done so. Ex. 1, P. Agouris Dep. Tr. at p. 56, line 21­p.57, line 2; p. 59, lines 5­15. During her deposition, Dr. Agouris specifically demonstrated her source code knowledge and skill in correctly identifying source code for HP's counsel as C++. Ex. 1, P. Agouris Dep. Tr. at p. 51, lines 14­21. After establishing her ability to easily recognize and read source code, Dr. Agouris modestly testified at her deposition that she does not technically consider herself to be an expert in source code precisely because she has been focused on more complex, higher level, digital image processing research and analysis: "I have been focusing more on higher 2

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level analysis and algorithms and research related to this, and that's why I do not feel that I am an expert and have to reply to any such questions." Id. at p. 57, lines 2­5. One of Dr. Agouris's roles in this case was to determine whether HP infringed the patentin-suit. One of her steps in this process was to identify and analyze the algorithms embodied in the LACE source code: "[m]y work in this case was to see if the algorithm used in LACE and the algorithm included in the patent were the same thing, were actually really doing the same thing, including the same things." Id. at p. 55, lines 6­10. HP does not -- and again, cannot -- dispute that this case is about LACE algorithms implemented in source code, and not the source code by itself: It's a different thing writing things in code and a different thing explaining things in an algorithm or a patent or on a paper where you have to express all the steps that are in between. So, in my discussion [in my report], I tried to reconstruct the steps that led to this expression, the one that is included in the code, because the code itself has no purpose of presenting all the intermediate steps. Its focus is on doing the job. Id. at p. 56, lines 9­17.

There is no question that the algorithms identified, analyzed and explained by Dr. Agouris in the context of the field of digital image processing -- and not the source code's programmatic representation of the algorithm -- is what is at issue here. Ex. 1, P. Agouris Dep. Tr., at p. 122, lines 5­12. Although Dr. Agouris is qualified to perform a source code translation on her own, here, at Dr. Agouris's direction, Joseph Wroblewski performed the routine function of translating the source code representation of the LACE algorithms into mathematical data representations. Ex. 2, P. Agouris Decl. at ¶¶ 10, 14; Ex. 4, J. Wroblewski Decl. at ¶ 4. These mathematical 3

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representations are factual and easily verifiable by others as the process is a straightforward and mechanical one. Ex. 4, J. Wroblewski Decl. at ¶ 7. Mr. Wroblewski provided these basic

mathematical data representations from the code language to Dr. Agouris, who in turn considered and transformed them into mathematical representations of the algorithms. Ex. 2, P. Agouris Decl. at ¶¶ 7­8; Ex. 4, J. Wroblewski Decl. at ¶ 4. Mr. Wroblewski was qualified to serve as Dr. Agouris's translator. Ex. 4, J. Wroblewski Decl. at ¶ 2 and Exhibit 1 thereto. He is a software engineer/architect with over twenty-four years of experience. Id. He is an expert developer in numerous languages, including C++. Id. Moreover, Mr. Wroblewski has consulted for many major corporations, designing software in C++, including multi-threaded C++ applications, among other related tasks. Id. Dr. Agouris's use of Mr. Wroblewski's translations (which she supervised) was simply as an additional data point to confirm her own translations. Ex. 2, P. Agouris Decl. at ¶ 10; Ex. 4, J. Wroblewski Decl. at ¶ 4. For example, meetings between Dr. Agouris and Mr. Wroblewski were generally face-to-face, during which times Dr. Agouris would first explain to Mr. Wroblewski her initial translation of the relevant pieces of source code (such as operative algorithms) and Mr. Wroblewski would confirm that he agreed with her translation. Ex. 2, P. Agouris Decl. at ¶ 11; Ex. 4, J. Wroblewski Decl. at ¶ 4. Mr. Wroblewski would provide Dr. Agouris the basic code context into which the algorithms she had identified fit in a more overarching way. Ex. 2, P. Agouris Decl. at ¶ 12; Ex. 4, J. Wroblewski Decl. at ¶ 6.1 Through this process of Mr.

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In contrast to HP's apparent quibble with the irrelevant semantics of the word "analysis," used by Dr. Agouris during her deposition, Mr. Wroblewski's role was not to analyze any aspects of the code with respect to infringement, but simply to provide the more routine function of data translation. Ex. 2, P. Agouris Decl. at ¶¶ 9, 13; Ex. 4, J. Wroblewski Decl. at ¶¶ 7, 9.

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Wroblewski systematically providing basic factual and mathematical translation data at Dr. Agouris's direction, Dr. Agouris was able to focus her primary efforts on the real issue -- analyzing the algorithms. IV. ARGUMENT A. Dr. Agouris's Testimony Meets Rule 702 Requirements.

For admissibility under Federal Rule of Evidence 702, an expert's testimony must be: (1) supported by "skill or knowledge greater than the average layman"; (2) reliable, "based on the `methods and procedures of science' rather than on `subjective belief or unsupported speculation'"; and (3) relevant and helpful to the trier of fact. See, e.g., Izumi Prods. Co. v. Koninklijke Philips Elecs N.V., 315 F. Supp. 2d 589, 600 (D. Del. 2004) (citing Elcock v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000)) (finding the proffered expert sufficiently qualified to render an opinion); Eaton Corp. v. Parker-Hannifin Corp., 292 F. Supp. 2d 555, 567-68 (D. Del. 2003) (denying motion to strike expert testimony); Waldorf v. Shuta, 142 F.3d 601, 625-27 (3d Cir. 1998) (holding the district court did not abuse its discretion in qualifying expert witness); See United States v. Mathis, 264 F.3d 321, 335­38 (3d Cir. 2001) finding disputed testimony sufficiently relevant for purposes of Rule 702. As discussed more fully below, Dr. Agouris's testimony meets these requirements of relevance, skill and reliability. First, her testimony is relevant: Polaroid has proffered her as an expert in the field of digital image processing, the field pertinent to the patent-in-suit, and she will address issues of infringement from such a perspective. Likewise, Dr. Agouris is highly skilled in this field. She has years of pertinent education, leadership, experience, teaching and research. Finally, Dr. Agouris's testimony is sufficiently reliable. She has relied only on those sources upon which one in her field would ordinarily rely and she performed her analysis using accepted practices. Thus, there exists no basis to exclude Dr. Agouris's testimony. 5

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HP does not -- and cannot -- contend that the content and operation of the actual code language utilized in HP's software is in dispute. To the contrary, HP's own expert identified, translated and interpreted the operation of all applicable code language in the same way as Dr. Agouris. Compare D.I. 151, Ex. B at 15­20 with D.I. 185, Affidavit of Dr. Robert L. Stevenson at ¶¶ 23­26.

D.I. 137 at 19, ¶ 34; see also D.I. 185 at ¶ 24. This representation is precisely the same

representation that Dr. Agouris identified in HP's source code as the infringing algorithm. D.I. 151, Ex. B at 29. HP's contentions that Dr. Agouris declined to answer certain source code-based questions during her deposition and that she testified she does not intend to discuss source code at trial are make weight. Dr. Agouris is not planning to testify about source code at trial. Dr. Agouris's expert analysis hinges not on the code language, per se, but properly on the algorithms that she has identified as being represented therein. As she explained in her deposition, it is these algorithms -- represented in a manner that reflects what is actually occurring in a way consistent with image science -- that are the "more true representation" of ... "what is happening [in LACE] and why it is happening," as compared with the source code itself. Ex. 1, P. Agouris Dep. Tr. at p. 122, lines 5­12. Thus, it is these algorithms that form the basis of Dr. Agouris's opinions and there is no question that her testimony is relevant. There also is no question that Dr. Agouris is fully qualified under Daubert to identify and/or analyze these algorithms in the context of the'381 patent. See D.I. 151, Ex. B, at 4. Dr. Agouris has twenty years of experience in the field and has written a wealth of relevant scholarly

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writings. Id. She is a tenured full professor, specializing in digital image processing and analysis. Id. She teaches and advises in the area of digital image processing in addition to serving as a reviewer of manuscripts, scientific papers and research proposals related to the field. Id. Moreover, she is routinely invited to speak as an expert in the field of digital image processing and chair related conferences. Id. That Dr. Agouris is well qualified to analyze the claims of infringement in this case is also underscored by the parties' respective assertions relating to the relevant level of ordinary skill in the art related to the '381 patent. In her rebuttal expert report, Dr. Agouris contends the appropriate level of skill is a "college degree in a technical field with one to two years experience with digital image enhancement." D.I. 151, Ex. C at 32. HP's technical expert, meanwhile, suggested a similar level of skill: "a Bachelor's degree in electrical engineering and two years of coursework or practical experience directed to digital signal or image processing." D.I. 190, Ex. A at ¶ 122. HP's unsupported suggestion now that source code expertise, rather than digital image processing expertise, is required is factually inaccurate and contrary to HP's position during discovery. HP's similar contention that Dr. Agouris should be precluded from opining that hardware and software are equivalent as means to perform the function stated in claims 1­3 of the '381 patent because Dr. Agouris allegedly "cannot read, does not understand, and has not analyzed LACE software" is equally unpersuasive. D.I. 168, at 8-9. Dr. Agouris is capable of reading source code, can understand source code, and has spent hours upon hours analyzing LACE software. Ex. 2, P. Agouris Decl. at ¶¶ 4, 6. Dr. Agouris possesses digital image processing expertise that spans across various media, including hardware and software, and that is what qualifies her to provide expert opinions in this case. Id. at ¶ 3.

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B.

Dr. Agouris's Testimony Meets Rule 703 Requirements.

Pursuant to Federal Rule of Evidence 703, an expert is entitled to rely on facts or data that are of a type reasonably relied upon by experts in the particular field. FED. R. EVID. 703. Federal Rule of Evidence 703 also expressly authorizes an expert to base her opinion on interviews and reports prepared by non-testifying third parties if they are "of a type reasonably relied upon by experts in the particular field." See, e.g., In re Sulfuric Acid Antitrust Litig., 235 F.R.D. 646, 654 (N.D. Ill. 2006); Westfield Ins. Co. v. Harris, 134 F.3d 608, 613 (4th Cir. 1998) (reversing district court exclusion of expert report where expert's reliance on another investigator's work was of the type reasonably relied upon by experts in the field); Ries v. CSX Transp., Inc., No. Civ. A. 96-3325, 2000 WL 377509, at *2 (E.D. Pa. Mar. 29, 2000) (citing Lewis v. Rego Co., 757 F.2d 66, 74 (3d Cir. 1985)) (finding judge did not err in permitting expert to offer testimony based, in part, on the opinions of a deceased expert and to disclose that opinion in order to explain the basis for his own conclusions). As HP's own cited case law makes clear, "it is common in technical fields for an expert to base an opinion in part on what a different expert believes on the basis of expert knowledge not possessed by the first expert." See e.g., D.I. 168 at 5 (citing Dura Auto. Sys. of Ind., Inc. v. CTS Corp., 285 F.3d 609, 613 (7th Cir. 2002)). Furthermore, "it is apparent from the wording of Rule 703 that there is no general requirement that the other expert testify as well." Id. (emphasis omitted). Experts can base their opinions on the opinions of non-testifying experts as long as they "bring to bear [their] own expertise on the underlying data." Sulfuric Acid, 235 F.R.D. at 657­58 (allowing expert to testify to opinion that was based on survey conducted by nontestifying expert, when testifying expert understood generally how the surveys were conducted). In such cases, the testifying expert is more than just a mere "mouthpiece" for the non-testifying expert. Id. at 657; see also Dura Auto., 285 F. Supp. at 614. When a testifying expert has relied 8

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on a non-testifying expert in a way that comports with this standard, the non-testifying expert need not be disclosed as an expert witness under Federal Rule of Civil Procedure 26(a)(2). Sulfuric Acid, 235 F.R.D. at 658; see also Fed. R. Civ. P. 26(a)(2). This court has found Daubert motions to be "frivolous" when made based on the argument that an expert witness must rely only on her own personal knowledge. See LML Patent Corp. v. Telecheck Servs., Inc., No. Civ. 04-858 (SLR), 2006 WL 839377, at * 1 (D. Del. Mar. 28, 2006) (stating that "[c]ounsel for plaintiff may test, on cross examination, the reliability of the sources of information"). Because Dr. Agouris simply relied on Mr. Wroblewski to provide the sorts of information that others in her field would likewise obtain in a similar fashion, and because HP's counsel can test the reliability of her sources on cross-examination, Dr. Agouris should be allowed to testify regarding her objected to opinions. See Sulfuric Acid, 235 F.R.D. at 653. Mr. Wroblewski's translation in this case is of a type reasonably relied upon by digital imaging experts and thus constitutes a permissible basis for Dr. Agouris's opinions pursuant to Rule 703. The translation performed by Mr. Wroblewski was not an activity that required judgment or discretion; rather, it is a precise factual process that can be verified by others.2 Ex. 2, P. Agouris Decl. at ¶ 9; Ex. 4, J. Wroblewski Decl. at ¶¶ 7­8; see Dura Auto., 285 F.3d at 614­15 (considering favorable implications of "cut and dried procedures" as opposed to exercise of judgment or discretion when evaluating others' inputs into an expert's analysis). Mr.

Wroblewski provided no opinions to Dr. Agouris relating to the LACE source code, but simply

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HP refers to Mr. Wroblewski as "more than [a] mere data-collector," but fails to provide any basis for this characterization. D.I. 168 at 5.

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provided basic translation data inputs for Dr. Agouris's further work. Ex. 2, P. Agouris Decl. at ¶¶ 9, 13; Ex. 4, J. Wroblewski Decl. at ¶ 9. It is undisputed that Mr. Wroblewski's translation is accurate and reliable. HP does not -- and cannot -- contend that Mr. Wroblewski's code translation was in error in any way. Moreover, this type of translation input is often considered by experts, such as Dr. Agouris, allowing the expert to more efficiently focus her time on the digital image processing analysis in question, rather than on the mechanical translation function. Ex. 2, P. Agouris Decl. at ¶¶ 16­18; see Titan Stone, Tile & Masonry, Inc. v. Hunt Const. Group, 2007 WL 1659056, at *4 (D.N.J. June 5, 2007) (finding expert's reliance on third party's work permissible when third party "merely extracted and presented raw data to [expert] in format that was more user-friendly and manageable"). A good analogy for the exchange of information between Dr. Agouris and Mr. Wroblewski in this case is the relationship between a doctor attempting to decipher medical records in another language and a translator he hires to help him do so. Although the medical translator explains what the words mean from a linguistic perspective, he or she offers no insights into the medical meaning of the words. In much the same way, Mr. Wroblewski did not provide insights into the meaning of the code, but instead simply translated the code language itself. HP broadly asserts that "any testimony by Dr. Agouris about the LACE source code will also constitute hearsay evidence." D.I. 168, at 9. Even if Dr. Agouris were planning to testify about the LACE source code, this argument goes too far. First of all, testimony from Dr. Agouris regarding her independent translation of any elements of the source code is not hearsay at all, as it is not an out-of-court statement. Likewise, the fact that she may have, in certain

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situations, discussed or verified her own translation with Mr. Wroblewski does not make her own translation hearsay; rather, only testimony about her conversations with Mr. Wroblewski would potentially fall within the purview of Federal Rule of Evidence 801(c). Even then, however, testimony from Dr. Agouris regarding her specific interactions with Mr. Wroblewski would not be offered for the truth of the matter asserted (i.e. the contents of the source code) but rather to establish the general methodology by which she arrived at her algorithms. Thus, by definition, the testimony would be non-hearsay. See FED. R. EVID. 801(c). C.f. D.I. 168, at 9 (citing Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 664­66 (S.D.N.Y. 2007) (considering situation where out-of-court statements of second expert would be offered by first expert for the truth of the other expert's opinion)). Moreover, in further contrast to HP's case law, Dr. Agouris is not attempting to offer opinions in areas wholly outside her area of expertise or adopt the opinions of another as her own. See D.I. 168, at 5 (citing Malletier, 525 F. Supp. 2d at 664­66 (excluding first proffered expert who attempted to center his testimony around a regression analysis, conducted by a second non-testifying expert, where first expert was "not qualified to conduct or interpret statistical analyses."); Bouygues Telecom, S.A. v. Tekelec, 472 F. Supp. 2d. 722, 729-730 (E.D.N.C. 2007) (excluding portions of expert reports that adopted wholescale the opinion of withdrawn experts verbatim and distinguishing situation where a first expert relied on another expert's analysis and first expert had the opportunity to "review for error and independently verify the analysis." (internal citations omitted))). Contrary to HP's assertion that Dr. Agouris "could not" supervise Mr. Wrobrewski's translation in this case, Dr. Agouris's training and experience reading and writing source code programming enabled her to review his translation for accuracy as the two proceeded, especially as they were working closely together during this

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process. D.I. 168 at 1; Ex. 2, P. Agouris Decl. at ¶ 15; see McReynolds v. Sodexho Marriott Servs, Inc., 349 F. Supp. 2d 30, 37 (D.D.C. 2004) (finding expert's testimony sufficiently reliable to be admitted, due to extensive "hand-in-glove" collaboration between expert and assistant who ran the programming analysis). Because Mr. Wroblewski was not exercising professional judgment or any expertise that went beyond Dr. Agouris's ken, there is no basis for his translation to be challenged at this juncture. See Dura Auto., 285 F.3d at 613. Even if Mr. Wroblewski's translations in this case are said to rise to the level of expert work and is found to constitute provision of opinions rather than mere facts or data, Dr. Agouris is nonetheless permitted under the case law to rely on his translations of the LACE code. Unlike cases where testifying experts have been precluded from acting as a "mouthpiece" for nontestifying experts, including cases cited by HP in its brief, Dr. Agouris's opinions are based on her own undisputed expertise in digital image processing. In cases such as this one, courts have allowed one expert to incidentally rely on another where the real analysis at issue is done by the testifying expert. See, e.g., In re Sulfuric Acid Antitrust Litig., 235 F.R.D. 646, 657­58 (N.D. Ill. 2006). Indeed, as Dr. Agouris explained, she does not even intend to discuss the underlying code translated by Mr. Wroblewski because it simply is not germane to the question of infringement. Ex. 1, P. Agouris Dep. Tr. at p. 57, line 25­p. 58, line 3; see Sulfuric Acid, 235 F.R.D. at 657 (differentiating situation therein from cases where experts were excluded because situation therein did not require expert to present third party's opinions at trial) Courts have further acknowledged that "the leader of a clinical medical team [need not] be qualified as an expert in every individual discipline encompassed by the team in order to testify as to the team's conclusions." Walker v. Soo Line R.R., 208 F.3d 581, 589 (7th Cir. 2000); Dura Auto, 285 F.3d at 613.

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Because Dr. Agouris simply relied on Mr. Wroblewski to provide information that others in her field would likewise obtain in a similar fashion, and because HP's counsel can test the reliability of her sources on cross-examination, Dr. Agouris should be allowed to testify regarding her objected to opinions. C. Polaroid Properly Disclosed Mr. Wroblewski During Discovery, And HP Chose Not To Depose Him.

HP's contention that portions of Dr. Agouris's opinions must be excluded because Mr. Wroblewski was not disclosed is legally and factually unsupportable. See, e.g., D.I. 168 at 1, 3 (stating that Mr. Wroblewski's "qualifications as an expert, his potential bias, his methodology, his actual opinions and the reasons for his opinions are entirely unknown."). First, Polaroid is not proffering Mr. Wroblewski as an expert, and there is no legal requirement that a third party considered or relied upon by an expert must also himself testify or be disclosed as an expert witness. Dura Auto., 285 F.3d at 613; Sulfuric Acid, 235 F.R.D. at 658; see also Fed. R. Civ. Pro. 26(a)(2). Indeed, even the case law cited by HP for its argument that Mr. Wroblewski should have provided an expert report specifically holds to the contrary. Sulfuric Acid, 235 F.R.D. at 657-59 (holding plaintiffs did not improperly fail to disclose under Federal Rule of Civil Procedure 26(c) multiple witnesses who supplied data used in formulating expert reports). In Dura Automotive, also cited by HP for this proposition, a proffered expert relied on assistants who "did not merely collect data for him to massage or apply concededly appropriate techniques in a concededly appropriate manner"; rather, they made discretionary choices and applied techniques that the expert could not verify were appropriately chosen and applied. Dura Auto., 285 F.3d at 615. Thus, the court determined the assistants were offering expert opinions that should have been disclosed. Id. However, the court also explained the general rule in this regard: "[a]n expert witness is permitted to use assistants in formulating his 13

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expert opinion, and normally they need not themselves testify. The opposing party can depose them in order to make sure they performed their tasks competently . . . ." Id. at 613 (emphasis and internal citations omitted). In the present case, where Mr. Wroblewski was performing routine translations that could be easily verified by Dr. Agouris, Mr. Wroblewski exercised no discretion but simply worked at Dr. Agouris's direction, and Dr. Agouris is bringing to bear her own expertise rather than relaying any opinions from Mr. Wroblewski, the general rule should apply: Mr. Wroblewski need not be disclosed under Rule 26(c). Second, Polaroid specifically disclosed Mr. Wroblewski's resume and follow-up information to HP more than a year ago. Ex. 5, March 13, 2007 letter to M. Bernstein, attaching resume; Ex. 6, March 15, 2007 letter to M. Bernstein. In response, HP stated that it "has no objections to Polaroid's disclosure of materials to Mr. Wroblewski under the terms of the Protective Order." Ex. 7, March 16, 2007 letter to G. Gerst. After Dr. Agouris disclosed her consideration of Mr. Wroblewski's source code translations in her expert report, HP chose not to depose Mr. Wroblewski or even to question Dr. Agouris about Mr. Wroblewski's translations. Dura Auto., 285 F.3d at 613 ("The opposing party can depose [an expert's assistants] to make sure they performed their tasks competently."); Sulfuric Acid, 235 F.R.D. at 658 ("Under the liberalizing thrust of Rule 703, experts are entitled to use assistance in formulating expert opinion, and the aiders need not themselves testify. The opposing party can depose them to ensure that their information gathering tasks were performed competently."). Third, even without deposing Mr. Wroblewski, HP had every opportunity to reconstruct his translations to identify any errors. See Sulfuric Acid, 235 F.R.D. at 659 (pointing out the atissue underlying data for plaintiffs' expert analysis came from defendants' files). The code that

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formed the basis of Mr. Wroblewski's translations is the property of HP itself. Ex. 2, P. Agouris Decl. at ¶ 5. D. Dr. Agouris's Testimony Meets Rule 705 Requirements.

Pursuant to Federal Rule of Evidence 705, Dr. Agouris is permitted to disclose to the fact finder during her testimony in this case that Mr. Wroblewski performed a routine code translation role to generate mathematical data inputs to her infringement analysis. See FED. R. EVID. 705. She is likewise entitled to explain that it provides nothing more than a context for her own opinions. See, e.g., Ries, 2000 WL 377509, at *2 (citing Lewis, 757 F.2d at 74) (permitting one expert to disclose another expert's opinion on which he relied to explain the basis for his opinions). Even though a lay witness might be prohibited from disclosing similar conversations or interactions he or she might have had with Mr. Wroblewski, because Dr. Agouris's interactions with Mr. Wroblewski are of the type "on which experts in the field base their opinions," an expert such as Dr. Agouris should be permitted to disclose them. See Lewis, 757 F.2d at 74. V. CONCLUSION For the foregoing reasons, Polaroid respectfully requests the Court deny HP's Motion to Preclude Certain Testimony of Polaroid's Expert Dr. Peggy Agouris.

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MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Julia Heaney
OF COUNSEL: Russell E. Levine, P.C. G. Courtney Holohan Michelle W. Jordan David W. Higer Maria A. Meginnes KIRKLAND & ELLIS LLP 200 East Randolph Drive Chicago, IL 60601 (312) 861-2000 June 12, 2008
2367589

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

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CERTIFICATE OF SERVICE I, the undersigned, hereby certify that on June 26, 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 June 26, 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 AND
POPEO PC

Bradley Coburn FISH & RICHARDSON P.C. One Congress Plaza, Suite 810 111 Congress Avenue Austin, TX 78701 Daniel Winston CHOATE HALL & STEWARD, LLP Two International Place Boston, MA 02110

5355 Mira Sorrento Place Suite 600 San Diego, CA 92121-3039 /s/ Julia Heaney __________________________ Julia Heaney (#3052)

-1-

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