Commercial Litigation and Arbitration

YouTube Video Admissible Based on Contents + Testimony a YouTube Video Was Made — Hearsay: Offering a Product for Sale Is a Verbal Act — Experts/Daubert: Judge Not Factfinder, Credibility Assessor (Good Quotes) — Survey Admissibility

Carucel Invs. LP v. Novatel Wireless, Inc., 2017 U.S. Dist. LEXIS 50855 (S.D. Cal. April 3, 2017):



On May 27, 2015, Plaintiff Carucel Investments, L.P. filed a complaint for patent infringement in the United States District Court for the Southern District of Florida against Defendants Novatel Wireless, Inc., AT&T Mobility LLC, Verizon Communications, Inc., and TigerDirect, Inc., alleging infringement of U.S. Patent No. 7,221,904, U.S. Patent No. 7,848,701, U.S. Patent No. 7,979,023, U.S. Patent No. 8,463,177, U.S. Patent No. 8,718,543, and U.S. Patent No. 8,849,191.1 (Doc. No. 1, Compl.) Specifically, Plaintiff alleges that Defendants' mobile broadband hotspot devices, their MiFi devices, infringe the patents-in-suit. (Id. ¶¶ 28-29.)

1   The '177 and '191 patents are no longer asserted in this action. (Doc. No. 198; Doc. No. 277 at 3, 5.)

On September 15, 2015, Carucel dismissed its claims against Defendant TigerDirect, Inc. with prejudice. (Doc. No. 11.) On December 16, 2015, Carucel filed a first amended complaint [*4]  alleging infringement of the same six patents and adding as a new Defendant Cellco Partnership d/b/a Verizon Wireless. (Doc. No. 58.)

On January 15, 2016, the action was transferred to the Southern District of California. (Doc. Nos. 69-70.) On September 19, 2016, the Court issued a claim construction order construing the disputed terms in the patents-in-suit. (Doc. No. 131.) On December 9, 2016, the Court dismissed Defendant AT&T with prejudice. (Doc. No. 139.) On March 2, 2017, the Court denied Defendants' motion for summary judgment. (Doc. No. 226.)

The patents-in-suit are all entitled "Mobile Communication System with Moving Base Station" and share an essentially identical specification. (See Doc. No. 1, Compl. Exs. A-C, E-F.) The invention disclosed in the patents-in-suit "relates to cellular telephone systems in which a mobile unit communicates by wireless communication to a base station connection to the wire telephone network and more particularly to cellular telephone systems adapted for use with fast-moving mobile units." '904 Patent at 1:16-19. The specification details the problems that prior art telecommunications systems have with fast-moving mobile units, particularly the problem [*5]  of dealing with transfers of fast-moving mobile units between stationary cell sites as the mobile units move through the cellular network. See id. at 1:22-2:61. The specification provides the following summary of the invention:

   These and other problems of the prior art are overcome in accordance with this invention by means of a moving base station which is interposed between a moving mobile telephone unit and a fixed base station. In accordance with this invention, a movable base station moves with the traffic at a rate of speed which is comparable to the speed of the traffic and communicates with a moving mobile telephone unit via standard mobile radio transmission. The movable base station further communicates by radio signals with a plurality of fixed antennas spaced along the path of travel of the mobile base station. The several fixed antennas are connected to a telephone wire line network via a telephone gateway office in a standard fashion. In accordance with this invention, the fixed radio ports are synchronized and the interface between the moving base station and the fixed radio ports is a time division multiplexed (TDM)-direct-sequence, spread-spectrum CDMA.

Id. at 3:18-34. [*6]  Figure 1 of the '904 patent displays an embodiment of the claimed system:

As an example of the claimed invention, Claim 22 of the '904 Patent provides:

   An apparatus adapted to move in accordance with a movement of a mobile unit moving relative to a plurality of fixed radio ports, the apparatus comprising:

a receiver adapted to receive a plurality of signals, each of the plurality of signals transmitted from each of the plurality of fixed radio ports within a frequency band having a lower limit greater than 300 megahertz;

a transmitter adapted to transmit, within the frequency band, a resultant signal to the mobile unit in accordance with at least one of the plurality of signals; and

a processor adapted to maximize an amount of transferred information to the mobile unit by evaluating a quality of each of the plurality of signals transmitted from the plurality of fixed radio ports.

Id. at 12:65-13:11. Currently, Plaintiff asserts that Defendants' accused products (the MiFi 5510L, MiFi 6620, MiFi 4510L, MiFi 4620, and MiFi 2200) literally infringe claims 22 and 30 of the '904 patent; claims 10 and 15 of the '701 patent; claims 11 and 23 of the '023 patent; and claim 10 of the '543 patent. (Doc. No. 198; Doc. No. 277 at 5-6.) By the present motions, the parties [*7]  move to exclude certain opinions, arguments, testimony and evidence from the trial.


I. Daubert Motions

A. Legal Standards for Daubert Motions

A district court's decision to admit expert testimony under Daubert in a patent case is governed by the law of the regional circuit. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed. Cir. 2015). When considering expert testimony offered pursuant to Rule 702, the trial court acts as a "gatekeeper" by "making a preliminary determination of whether the expert's testimony is reliable." Elsayed Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053, 1063 (9th Cir. 2002); see Kumho Tire Co. v. Carmichael, 526 U.S. 137, 150 (1999); Daubert, 509 U.S. at 597. Under Rule 702 of the Federal Rules of Evidence, a court may permit opinion testimony from an expert only if "(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case."

The test for reliability of expert testimony is flexible and depends on the particular circumstances of the case. Alaska Rent-A-Car, Inc. v. Avis Budget Grp., Inc., 738 F.3d 960, 969 (9th Cir. 2013). "To aid courts in exercising [their] gatekeeping role, the Supreme Court has suggested a non-exclusive and flexible list of factors that a court may consider when [*8]  determining the reliability of expert testimony, including: (1) whether a theory or technique can be tested; (2) whether it has been subjected to peer review and publication; (3) the known or potential error rate of the theory or technique; and (4) whether the theory or technique enjoys general acceptance within the relevant scientific community." Messick v. Novartis Pharm. Corp., 747 F.3d 1193, 1197 (9th Cir. 2014); Estate of Barabin v. AstenJohnson, Inc., 740 F.3d 457, 463 (9th Cir. 2014) (en banc). The Ninth Circuit has stressed that this list of factors is meant to be helpful, not definitive. Alaska Rent-A-Car, 738 F.3d at 969.

"Under Daubert, the district judge is 'a gatekeeper, not a fact finder.' When an expert meets the threshold established by Rule 702 as explained in Daubert, the expert may testify and the jury decides how much weight to give that testimony." Primiano v. Cook, 598 F.3d 558, 564-65 (9th Cir. 2010). "'[T]he test under Daubert is not the correctness of the expert's conclusions but the soundness of his methodology.'" Primiano, 598 F.3d at 564. "Shaky but admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the burden of proof, not exclusion." Id. (citing Daubert, 509 U.S. at 594, 596); accord Summit 6, 802 F.3d at 1296. "Basically, the judge is supposed to screen the jury from unreliable nonsense opinions, but not exclude opinions merely because they are impeachable." Alaska Rent-A-Car, 738 F.3d at 969. Further, the Ninth Circuit has explained that "Rule 702 should be [*9]  applied with a 'liberal thrust' favoring admission." Messick, 747 F.3d at 1196.

Whether to admit or exclude expert testimony lies within the trial court's discretion. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141-42 (1997); United States v. Verduzco, 373 F.3d 1022, 1032 (9th Cir. 2004) ("We . . . have stressed that the 'trial court has broad discretion to admit or exclude expert testimony'."). The Ninth Circuit has explained that "[a] trial court not only has broad latitude in determining whether an expert's testimony is reliable, but also in deciding how to determine the testimony's reliability." Ellis v. Costco Wholesale Corp., 657 F.3d 970, 982 (9th Cir. 2011).


The Court's role is not to make credibility decisions in deciding a Daubert issue. See Primiano, 598 F.3d at 564-65. The patent's benefit to the user is a recognized factor under Georgia-Pacific. As a result, the proper apportionment, if any, based on use goes to the weight of the damages expert's testimony, [*13]  not its admissibility.3 See Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 4272870, at *6 (N.D. Cal. July 14, 2015). The Ninth Circuit has explained that "[s]haky but admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the burden of proof, not exclusion." Primiano, 598 F.3d at 564; accord Summit 6, 802 F.3d at 1296. Accordingly, the Court declines to exclude Dr. McDuff's use apportionment at this time.

3   The Court reserves the right, upon further development of the record at trial, to exclude Dr. McDuff's use apportionment.


The Ninth Circuit has "long held that survey evidence should be admitted 'as long as [it is] conducted according to accepted principles and [is] relevant.'" Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1036 (9th Cir. 2010). The Ninth Circuit has explained that:

   Treatment of surveys is a two-step process. First, is the survey admissible? That is, is there a proper foundation for admissibility, and is it relevant and conducted according to accepted principles? This threshold question may be determined by the judge. Once the survey is admitted, however, follow-on issues of methodology, survey design, reliability, the experience and reputation of the expert, critique of conclusions, and the like go to the weight of the survey rather than its admissibility. These are issues for a jury or, in a bench trial, the judge.

Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1263 (9th Cir. 2001); see also Wendt v. Host Int'l, Inc., 125 F.3d 806, 814 (9th Cir. 1997) ("Challenges to survey methodology go to the weight given the survey, not its admissibility.").


G. Defendants' Motion in Limine No. 3

In response, Plaintiff argues that it has made a sufficient showing for authentication because the video itself includes information showing Sprint as the source of the commercial, and Novatel's former CTO Dr. Souissi testified at his deposition about the existence of such a commercial. (Doc. No. 260 at 1.) In addition, Plaintiff argues that the video is not hearsay because Plaintiff will not be introducing the video at trial to prove the truth of the matters asserted in the commercial, [*54]  but rather will introduce it to simply show what representations were made to the public. (Id. at 2.) Plaintiff further argues that statements offering a product for sale are "verbal acts," not hearsay. (Id.)

"Authentication is a 'condition precedent to admissibility.'" Orr v. Bank of Am., NT & SA, 285 F.3d 764, 773 (9th Cir. 2002). Under Federal Rule of Evidence 901(a), to satisfy the requirement of authentication, "the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is." Accord Orr, 285 F.3d at 773. This rule requires the proponent of the evidence to make a prima facie showing of authenticity such that a reasonable juror could find in favor of authenticity. United States v. Yin, 935 F.2d 990, 996 (9th Cir. 1991).

Plaintiff has made a sufficient prima facie showing of authenticity as to the YouTube video. The information in the video combined with Dr. Souissi's testimony is sufficient for a reasonable jury to find in favor of authenticity.16 In addition, Plaintiff has represented that it will not seek to introduce the video at trial to prove the truth of the matters asserted in the video, but will instead introduce it to show what representations were made in the video. See Fed. R. Evid. 801(c) (defining hearsay as a statement "a party offers in evidence to prove the truth of the matter asserted in the statement"); [*55]  see also Burtscher v. Moore, No. CV1102309DMGJEMX, 2013 WL 12122230, at *10 n.5 (C.D. Cal. Feb. 7, 2013) (explaining that offering a product for sale is a "verbal act," which is not hearsay). Accordingly, the Court denies Defendants' third motion in limine without prejudice to a contemporaneous objection at trial.

16   The Court notes that in his deposition, Dr. Souissi referred to a Sprint commercial on YouTube featuring a family rather than a group of co-workers as depicted in Plaintiff's Exhibit 125. (Doc. No. 289-5, Harkins Decl. Ex. 1 at 74.) But a reasonable juror could conclude that this difference is due to an honest mistake by Dr. Souissi and that he was indeed referring to the commercial depicted in Plaintiff's Exhibit 125 during his deposition.

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