# Opposition Brief — Anascape, Ltd. v. Nintendo of America, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2425%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 2010 - **Citation:** 562 U.S. 1004 ## Text Supreme Coun, US ] FILED | [WZ (2) | SEP 24 2619 | No. 10-301 OFFICE OF THE CLERK IN THE Supreme Court of the United States ANASCAPE, LTD., Petitioner, Vv. NINTENDO OF AMERICA ING., Respondent. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT BRIEF IN OPPOSITION ROBERT J. GUNTHER, JR. WILLIAM F. LEE WILMER CUTLER PICKERING Counsel of Record HALE AND DORR LLP MARK C. FLEMING 399 Park Avenue LAUREN B. FLETCHER New York, NY 10022 WILMER CUTLER PICKERING (212) 230-8800 HALE AND DORR LLP 60 State Street Boston, MA 02109 (617) 526-6000 william.lee@wilmerhale.com | | QUESTION PRESENTED Whether a court of appeals reviewing a denial of a motion for judgment as a matter of law under Rule 50 of the Federal Rules of Civil Procedure may determine that expert testimony, like any other testimony, does not provide substantial evidence supporting a jury ver- dict. (i) CORPORATE DISCLOSURE STATEMENT Pursuant to this Court’s Rule 29.6, Respondent Nintendo of America Ine. states that its parent corpo- ration is Nintendo Company, Ltd. The stock of Nin- tendo Company, Ltd. is publicly traded in Japan. (11) TABLE OF CONTENTS Page RF ee A SUPEe EPO M MOEN BMD sesscescscacscdcssvesessccosaconccconanesees af CORPORATE DISCLOSURE STATEMENT.............. ii re PE FA FERRE BED cecscssscovsiscisscscvesiccsesecassaseres iv ee IE WENO sosissacesanesdcersyasssceecctoosvesieenssenun’ mensaaton 1 oss omit ed aided nn eabnbamaadansetbesseaoe 2 Bi, BCR TORCH OCIA osc ccccccecesccscecsssessnscsssesenseccnecens 2 B. Proceedings In The District Court..................... 6 C. Proceedings In The Court Of Appeals............... 8 REASONS FOR DENYING THE PETITION.......... 11 I. THIS COURT HAS REPEATEDLY RECOG- NIZED THAT ADMITTED EXPERT TESTI- MONY MAY BE INSUFFICIENT TO SUPPORT Rp ARERR PERO pe CCP E RE yam OER eT 1] hc “EMME 18 NO CIRCUIT BRUIT ccisissinscnccessessrencveensceses 14 III. ANASCAPE’S REMAINING ARGUMENTS PROVIDE NO BASIS FOR CERTIORARI ..........2...2.e000 19 SIRS PENEIIIET assis cssexcalascediaueasssnctovaneudomnracnunes reeves (111) lV TABLE OF AUTHORITIES CASES Page(s) Alevromagiros v. Hechinger Co., 993 F.2d 417 Ry ER a AER NA Net PEN See 16 Anascape Ltd. v. Microsoft Corp., No. 9:06-CV- 158, 2008 WL 160546 (E.D. Tex. Jan. 11, PE isis sucealdiclaniennsimdanadiachigiiaanbesisbiaemennsssmoaeddoaxseceees 6 Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., BUS F.3d 1S36 (Wed. Cir. ZOIO) .ovcccccseccsvescsccsssosccvssesss 1] Bailey v. Allgas, Inc., 284 F.3d 1237 (11th Cir. EE sentence biiienisuitadindedaccreticcale Noite espeinaices st 15 Brock v. Merrell Dow Pharmaceuticals, Inc., Ee © ee re Ce Gr RD wick cekawhscccsttnelashcnkhaesesedees 13 Brooke Group Ltd. v. Brown & Williamson To- bacco Corp., 509 U.S. 209 (1998)......... 1,11, 12, 14, 22 C.B. Fleet Co. v. SmithKline Beecham Con- sumer Healthcare, L.P., 131 F.3d 480 (4th FIs IE Pbaiesscissicssiatan cescncaatcesniain aioe tata os 18 Calhoun v. Honda Motor Co., 738 F.2d 126 (6th RPE, BON i ibaiiisnsnccdauincninseansninsthishadadsaniseedaaieeaksaaibines 16 Christopher v. Cutter Laboratories, 53 F.3d Re ee ts BI Piiitieaicatadincacinanetddedetn is daviecccninlas 17 Daubert v. Merrell Dow Pharmaceuticals, Inc., I Sr elis UW IED nscttnnsancencsaniceseceessucasdseinasusbiiens 12,13 Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371 (Fed. Cir. 2009), cert. denied, 130 S. Ae Ris aibiictactcnccevancctantuuessth imac naeauieiipiertanietns 14 General Electric Co. v. Joiner, 522 U.S. 136 EPNUUITE scicasptiac pssisicscabinstrasleaicklaihasnagiha edateaiuaceuienaigabdickieddes eemanaeaec 20 Vv TABLE OF AUTHORITIES—Continued Page(s) Guinn v. AstraZeneca Pharmaceuticals LP, GOS F'.SG 13466 CLIC Cie. BOD) vcssccccsececccccsosesvessenacns 16 In re Baby Food Antitrust Litigation, 166 F.3d SAF (Ee CAP. TOG) vcivisrscnisioseserscicinceamaaaaee 15 In re Citric Acid Litigation, 191 F.3d 1090 (9th COED, FE sscvcesicnicscesstcseecuacoecotaccaneicceiuaaaaaneenanaen 15 In re Joint Kastern & Southern District Asbes- tos Litigation, 52 F.3d 1124 (2d Cir. 1995).............. 19 Kinser v. Gehl Co., 184 F.3d 1259 (10th Cir. BGO) vicciccascssicocicvexsecncoteséutasnsneei ae 17 Lockwood v. American Airlines, Inc., 107 F.3d 1566 CF OG. CaP. FORT F iccisscscoxssencecseecceeneaee 5 Marbled Murrelet v. Babbitt, 88 F.3d 1060 (9th CORP. BEG) vssccc cis arcncindnctiliacsvabwusoussanseraraas ae 18 Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574 (1986).............eeeeeeeee 12, 14 Pace v. Capobianco, 283 F.3d 1275 (11th Cir. SIIEE) sinsiccccsicesvissesieecsnipomerentenda ee eee 16 PowerOasis, Inc. v. T-Mobile USA, Inc., 622 F'.30 1299 (Fed. Cir. ZOOB) ......ccscccsrcsscsescecsecseses 4,9 Questar Pipeline Co. v. Grynberg, 201 F.3d Be CRORE CA, Be iicsksccstisassacassacsassantemedtananaeae 17 Rebel Oil Co. v. Atlantic Richfield Co., 51 F.3d 1423 Cth UP. TS icncnncnanennn 15, 16 Reeves v. Sanderson Plumbing Products, Inc., GSO 1.3. FEB Ge) sistissiscascecssete are 19, 20, 22 vl TABLE OF AUTHORITIES—Continued Page(s) SCFC ILC, Inc. v. Visa USA, Inc., 36 F.3d 958 BED ccsvssseneccssssccnvssnsveresosnesccnnsszesscscncssesescoss 16 Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (ed. Cir, 2008) ..........cccccccceseeeeeseeeeeees 1] Turpin v. Merrell Dow Pharmaceuticals, Inc., DJOFE’.2G 1349 (6th Cir. 19BZ) .........ccscrccsccccssssesesecees 13 United States v. City of Miami, 115 F.3d 870 TT nas cccccncavensheevncsaseonnnsescosnesonensosasevenincss 15 United States v. Gaskin, 364 F.3d 488 (2d Cir. isc ca ns cans ddescececandonesensnssstsebeseeosseseness 18 Virgin Atlantic Airways Lid. v. British Air- ways Ple, 257 F.3d 256 (2d Cir. 2001)..................00. L5 Vollrath Co. v. Sammi Corp., 9 F.8d 1455 (9th Taro coe csccshevcestceendcesborsnosecnenscessenenensanenneseassis 16 Washington v. United States, 214 F.2d 33 (9th MTRMEMED «cc cccaconeconcevascseccccsvscovonssceveceanccesscccesonccnsccesens 16 Waterman v. Batton, 393 F.3d 471 (4th Cir. Nee sas ssacaapcthsennavnsdurevebectossbonedsesaenes 15 Weisgram v. Marley Co., 528 U.S. 440 (2000)......... 17, 2] STATUTES AND RULES 35 U.S.C. ETE: 5 | ssc upovedecebssnccsssdvevesceseseseanevcossuchacske 4 a HOA a 4 esos dsnsspnevesennsendcceasnsiecacasoessensnsecsaasats 5 EE, BP, OO cccacsscncacscensccccescvccsescesszccoscnnces i, 1,2, 14, 20 OA OY | 2 vil TABLE OF AUTHORITIES—Continued Pagel OTHER AUTHORITIES Manual of Patent EHxamining and Procedure (Sth rev. ed. 2010) § 201.07 : § 201.11 l IN THE Supreme Court of the United States No. 10-30] Petitioney NINTENDO OF AMERICA IN hee noni nil / ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT BRIEF IN OPPOSITION INTRODUCTION “When an expert opinion is not supported by suffi cient facts to validate it in the eyes of the law, or when indisputable record facts contradict or otherwise ren der the opinion unreasonable, it cannot support a jury’: verdict.” Brooke Group Ltd. v. Brown & Williamson Tobacco Corp., 509 U.S. 209, 242 (1993). In this case, the Federal Circuit concluded that indisputable record facts—the specifications of the two patents at issue did not permit a reasonable jury to rule in favor of Anascape and accordingly directed judgment as a mat ter of law under Rule 50 of the Federal Rules of Civil Procedure. Anascape asserts error based solely on the ya fact that Anascape’s expert gave conclusory testimony that, on its face, matched Anascape’s litigation posi tion--even though the Federal Circuit ruled that the testimony was “not supported by any evidence at all, and cannot override the objective content of the pat- ent documents. Pet. App. 14. Anascape’s vaunted “circuit split” is in fact a phan tom. Anasecape did not mention any split in its petition for rehearing below, and it identifies no decision ac knowledging any disagreement regarding the applica tion of Rule 50. Numerous decisions in the very circuits Anascape identifies grant summary judgment of «dy ment as a matter of law in the face of expert testimony that, while admissible under Federal Rule of Evidence 702, is insufficient to support a jury verdict. The cases Anasecape cites are distinguishable and, moreover, do not purport to differ from the approach of any other circuit, let alone from this Court’s approach in Brooke Group. ‘The fact that expert testimony satisfies the threshold requirements for admissibility under I’edera! Rule of Evidence 702 is not a reason to exempt it from the ordinary operation of Rule 50. The Federal Cir cuit’s decision is nothing but a factbound—and cor rect—application of settled Rule 50 doctrine to the par ticular evidentiary record in this case. STATEMENT A. Factual Background Nintendo is a leading manufacturer of video game systems, including video game controllers. Anuascupe, a company that makes no products and does not compete in the video game market, sued Nintendo for patent in frinzement in the U.S. District Court for the HKastern District of Texas, accusing yame controllers for two of 3 Nintendo’s innovative video game systems, the yameCube and the Wii. A video game controller operates by converting “the movement of the user’s hand or finger into an elec- trical impulse that controls the image on a display, such as a screen.” Pet. App. 25. Controllers typically em- ploy one or more “input members,” such as a joystick, handle, trackball, buttons, or other elements that per- mit the controller to sense the user’s hand actions, which are in turn translated electronically into linear and rotational movements on the screen. /d. at 2-3. Hand inputs can move images in any of six “degrees of freedom” (DOF): along three linear axes (for- ward/backward, left/right, or up/down) and around three rotational axes (roll, pitch, or yaw). /d. at 3. Two U.S. patents are relevant here. U.S. Patent No. 6,222,525, which issued from an application filed on July 5, 1996 (the ’525 patent), was filed by Anascape’s founder, Brad Armstrong. In an order Anascape did not appeal, the district court construed the asserted claims of the ’525 patent in a way that precluded a find- ing of infringement. Pet. App. 18 & n.3. Accordingly, the parties stipulated that the accused Nintendo con- trollers do not infringe the ’525 patent. Jd. The second patent at issue resulted from an appli- cation filed after Mr. Armstrong founded Anascape, a company formed to license, enforce, or otherwise monetize Mr. Armstrong’s patents and patent applica- tions. C.A.J.A. 4372, 6815. In August 2000, after searching for information about Nintendo’s forthcoming GameCube product, Mr. Armstrong learned that the GameCube controller would have multiple input mem- bers—two joysticks and a_ four-pointed “cross 4 switch’—none of which would be movable in all six DOF. 7d. at 8713-8716. On November 16, 2000, Mr. Armstrong filed a “con- tinuation-in-part” application of the ’525 patent; the ap- plication eventually issued as U.S. Patent No. 6,906,700 (the ’700 patent).' The ’700 patent claimed controllers with multiple input members that together operate in six degrees of freedom. Pet. App. 5. As construed by the district court, the asserted claims of the ’700 patent were not limited to a single input member operable in six degrees of freedom. Id. at 4; C.A.J.A. 44-50. Anascape conceded below that controllers with multiple input members were sold or otherwise known in the art prior to the filing of the ’700 patent, including a Sony controller sold in 1998, a patent application pub- lished in 1998, and a second Sony controller sold in Oc- tober 2000. Pet. App. 4; see 35 U.S.C. § 102(a), (z)(2). Anascape also conceded that the prior art invalidated the ’700 patent claims unless the claims were entitled to the ’525 patent’s earlier priority date of July 5, 1996. Pet. App. 4. ' Mr. Armstrong later improperly changed the application’s designation to a “continuation” application. In a continuation ap- plication, “the disclosure presented in the continuation must be the same as that of the original application.” Manual of Patent Exam- ining and Procedure § 201.07 (8th rev. ed. 2010). A continuation- in-part, by contrast, may include new matter not contained in the parent application, but claims to that new matter will not be enti- tled to the earlier filing date. Jd. § 201.11; PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). As is dis- cussed below, the disclosure of the ’700 patent differed signifi- cantly from that of the ’525 patent, so its proper designation was as a continuation-in-part. Pet. App. 11 & n.2. 5 In order for a patent application to be entitled to the priority date of an earlier application, the earlier application, as originally filed, must contain a written description of the invention that supports the claims of the later application ““‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’”” Pet. App. 4 (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)); see also 35 U.S.C. § 120. In this case, the question of prior- ity turned on whether the ’525 patent sufficiently de- scribed the “full scope of the inventions recited in each asserted claim of the ’700 patent.” Pet. App. 4-5, 29. All of the claims in the ’525 patent as originally filed recite a single input member, not multiple input mem- bers. Pet. App. 5. As Nintendo pointed out below— and Anascape’s petition for certiorari does not deny— the ’525 specification contains “over twenty explicit statements that the invention is directed to a single in- put member that is operable in six degrees of freedom.” Id. at 8. The ’525 patent’s drawings “all show a single input member ... capable of operating in six degrees of freedom.” /d. at 7. The ’525 patent also disparaged a prior patent with multiple input members (U.S. Patent No. 5,298,919 to Chang), stating that “the lack of a hand operable single input member operable in six degrees of freedom has many significant disadvantages.” /d. at 9 (quoting ’525 patent, col. 3, 1. 30 to col. 4, 1. 380). In preparing the application for the ’700 patent, Mr. Armstrong removed important disclaimers and limita tions from the ’525 patent and added significant broad- ening language. Every occurrence of the phrase “hand operable single input member” was replaced with “hand operable input member(s),” and 16 of 17 refer- ences to “single input member” were changed to “at 6 least One input member.” Pet. App. 11-12. Mr. Arm- strong also deleted the ’525 patent’s criticism of the Chang patent and its use of multiple input members. Id. at 12. B. Proceedings In The District Court In a pretrial claim construction order, the U.S. Dis- trict Court for the Eastern District of Texas recognized that the inventor of the 7525 patent “clearly expected the inventions to be used with a single input member (such as a joystick) that moved in 6 DOF to control an image appearing to move in three dimensions.” Pet. App. 5 (quoting 2008 WL 160546, at *8) (emphasis added). Nonetheless, Anascape argued that the ’525 patent sufficiently described the devices with multiple input members later claimed in the ’700 patent. Anaseape based its argument on the testimony of its expert witness, Dr. Robert Howe. At trial, Dr. Howe testified that a statement in the 525 patent that “(t]he input member of the joystick-type controller may be manipulable or operable in wp to 6 degrees of free- dom” meant that “it could be less” than six degrees. Pet. App. 57-58. He also testified that Figure 9 of the 625 patent showed “a lot of different input modes.” /d. at 59. Dr. Howe also referred to other “words” and “text” in the 525 patent that, he contended, meant that “you could interpret or sense the motion on all 6 de- grees of freedom there, but you don’t have to.” Jd. at 61-62. Dr. Howe’s overall conclusion was that the ’525 patent “talks about many ideas,” that “the material in the patent is broader than a single input 6-degree-of- freedom device,” and that “this supports the claims ... from the ’700 patent.” Jd. at 54-55. 7 Dr. Howe’s direct testimony did not address the multiple instances of broadening language and dele- tions of limitations that differentiate the disclosure of the ’700 patent from that of the 525 patent. And he admitted on cross-examination that he did not address the 525 patent’s disparagement of the Chang refer- ence, which employed multiple input members. See C.A.J.A. 4693. Dr. Howe also admitted that the ’525 patent does not disclose the feature—claimed in the "700 patent—of combining three or more input mem- bers to achieve control in six DOF: Q. Just to confirm, though, you can’t point to anything in the 1996 application where there’s three input members that can each be touched by the user and each be moved bi-directionally to provide 6 degrees of freedom, can you? A. No. Id. At the close of Anascape’s case, Nintendo moved for judgment as a matter of law under Rule 50, con- tending that there was “no legally sufficient eviden- tiary basis for a reasonable jury to find for Anascape on the issue of priority/earlier effective filing date.” Def. Nintendo of Am.’s Mot. for Judgment as a Matter of Law 9 (Dkt. 316) (May 9, 2008). At the close of all evidence, Nintendo renewed its Rule 50 motion, pointing out in detail that every em- bodiment disclosed in the 7525 patent involved a single input member movable in six DOF, that the ’525 patent disparaged the Chang reference for its use of multiple input members, and that no reasonable jury could find that the 525 patent supported the claims of the ’700 patent. Def. Nintendo of Am.’s Mot. for Judgment as a 8 Matter of Law 9-12 (Dkt. 317) (May 13, 2008). The dis- trict court denied the motion, ruling that Dr. Howe’s testimony was “sufficient evidence for this to go to a jury.” Trial Tr. 1523-1524 (May 138, 2008). The jury found that three of Nintendo’s four ac- cused controllers infringed the ”700 patent and awarded $21 million in damages. Pet. App. 26. Nintendo re- newed its motion for judgment as a matter of law and, in the alternative, sought a new trial. Among other ar- guments, Nintendo pointed out Dr. Howe’s admission that the ’525 patent failed to support the full breadth of the ’700 patent claims. See Def. Nintendo of Am.’s Re- newed Mot. for Judgment as a Matter of Law or, in the Alternative, a New Trial 9 (Dkt. 356) (July 2, 2008). The district court denied the motion, ruling that Dr. Howe had “provided extensive testimony” about how the ’525 patent specification supported the asserted claims in the ’700 patent. Pet. App. 29-30.? C. Proceedings In The Court Of Appeals The U.S. Court of Appeals for the Federal Circuit reversed, concluding that “a reasonable jury would not have a legally sufficient evidentiary basis to find” that the ’525 patent sufficiently described the invention claimed in the ’700 patent. Pet. App. 19 (internal quota- tion marks omitted). * The district court also ruled that testimony of Nintendo en gineer Kazunori Koshiishi supported the jury’s verdict. Pet. App. 30-31. The Federal Circuit ruled that Anascape’s argument in this regard rested on “a misstatement of Mr. Koshiishi’s testimony.” Pet. App. 15. Anascape does not challenge that ruling in its peti- tion for certiorari. Dr. Howe’s testimony rested in part on Anascape’s misapprehension of Mr. Koshiishi’s testimony. C.A.J.A. 4684. 9 The Federal Circuit carefully analyzed the objec- tive evidence of record. First, the court noted the nu- merous instances in which the 525 patent described the invention as a device with a “single input member” movable in six DOF. Pet. App. 6. The court also re- jected Anascape’s argument based on the figures in the 625 patent, because the specification itself and the in- ventor’s testimony confirmed that each of the figures showed a single input member operating in 6 DOF. /d. at 7-8. Similarly, the court observed that the sentence in the ’525 patent stating that a joystick “may be” oper- able in 6 DOF—on which Dr. Howe relied at trial not a description of the ’525 invention; it is a description of prior art joysticks as generally used in video games. Id. at 8. The Federal Circuit separately noted the ’525 patent’s disparagement of the Chang reference for its use of multiple input controllers. Jd. at 8-9. The Fed- eral Circuit also rejected Anascape’s efforts to rely on material in the 525 specification that was added in Au- gust 2000, long after the original application was filed. Id. _ 10 (citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 13806 (Fed. Cir. 2008)). The Federal Circuit then itemized the numerous ways in which Mr. Armstrong had modified the ’525 specification in preparing the later application that be- came the ’700 patent. Pet. App. 11-12. Mr. Armstrong replaced references to a “single input member” with references to “at least one input member” and “deleted all mention of the prior art Chang controller and its de- ficiencies.” Jd. at 12. These changes were “extensive and substantive” and gave the ’700 patent “commensu- rately broadened scope.” /d. at 13. The Federal Circuit found Anascape’s argument that the 525 patent “did not disclaim the broader scope of the ’700 claims” to be off-point, because “the question 10 is whether the ’525 specification sufficiently describes the later-claimed subject matter.” Pet. App. 13 (em- phasis added). As the court noted, a patentee is not “presumed to support variants that are not described.” Id. at 14. The Federal Circuit then ruled that Dr. Howe’s evidence “cannot override the objective content of these documents,” namely the ’525 and ’700 patents, noting that his conclusion that the ’525 patent sup- ported the ’700 patent claiins was “not supported by any evidence at all.” Pet. App. 14. The court concluded that “the only reasonable reading of the ’525 specifica- tion is that it is directed to and describes only a control- ler having a single input member operable in six de- grees of freedom.” /d. at 17. As a result, the ’700 pat- ent claims were not entitled to an earlier priority date and—by Anascape’s concession—were invalidated by prior art. The Court ruled that “judgment as a matter of law is appropriate” and reversed the district court’s denial of Nintendo’s Rule 50 motion. /d. at 19. Anascape petitioned fer panel rehearing and re- hearing en bane. Anascape’s request for panel rehear- ing asserted that the panel had “declined to consider Dr. Howe’s analysis” and argued that the panel should have “deferr[ed] to record expert evidence.” Pet. for Reh’g 6. Anascape urged the panel to rehear the case to consider the expert evidence under the standard “re- quired by the law of the regional circuit (here, the Fifth Circuit).” Jd. at 7. Anascape did not suggest that the Fifth Circuit’s approach to the treatment of expert tes- 3 _ Judge Gajarsa filed a separate concurrence that does not bear on the issue presented in Anascape’s petition for certiorari. Pet. App. 20-23. 1] timony on a Rule 50 motion was incorrect, nor did it suggest that the Fifth Circuit’s approach conflicted with that of other circuits. Anascape’s petition did not seek a remand for a new trial or indicate that it could have proffered any additional evidence to avoid judg. ment as a matter of law." The Federal Circuit denied rehearing and rehear- ing en bane. Anascape petitioned for certiorari. REASONS FOR DENYING THE PETITION I THIS COURT HAS REPEATEDLY RECOGNIZED THAT ADMITTED EXPERT TESTIMONY MAY BE INSUFFICIENT TO SUPPORT A VERDICT This Court has engaged in the very reasoning for which Anascape faults the Federal Circuit here. In Brooke Group Ltd. v. Brown & Williamson Tobacco Corp., 509 U.S. 209 (1993), a jury had found that re- spondent Brown & Williamson “had engaged in price discrimination that had a reasonable possibility of injur- ing competition in the domestic cigarette market as a whole.” /d. at 218. The Court acknowledged that peti- tioner Liggett had proffered an economic expert who “explained Liggett’s theory of predatory price dis- crimination and testified that he believed it created a reasonable possibility that Brown & Williamson could injure competition in the Umted States cigarette mar- ket as a whole.” /d. at 242. The Court nonetheless af- firmed the grant of judgment as a matter of law, ruling Anascape also sought rehearing en banc on the theory that the panel’s decision conflicted with the Federal Circuit’s decisions in Ariad Pharmaceuticals, Inc. v. Ela Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en bane), and Sundance, Inc. v. DeMonte Favbri- cating Ltd., 550 F.3d 1356 (Fed. Cir. 2008). 12 that the record “does not provide an adequate basis for a finding of liability.” /d. at 230. The Court explained the insufficiency of the expert testimony as follows: When an expert opinion is not supported by sufficient facts to validate it in the eyes of the law, or when indisputable record facts contra- dict or otherwise render the opinion unreason- able, it cannot support a jury’s verdict. Expert testimony is useful as a guide to interpreting market facts, but it is not a substitute for them. Id. at 242 (citation omitted). In support, the Court cited and reaffirmed similar reasoning in Matsushita Electric Industrial Co. v. Ze- nith Radio Corp., 475 U.S. 574 (1986). There, the Court accepted as final a determination that the plaintiffs’ ex- pert evidence was admissible. /d. at 580. Nonetheless, the Court affirmed the district court’s conclusion tha the report was “implausible and inconsistent with re cord evidence,” had “little probative value,” and accord- ingly could not overcome summary judgment. /d. at 594 n.19 (cited in Brooke Group, 509 U.S. at 242). Furthermore, in Daubert v. Merrell Dow Pharma- ceuticals, Inc., 509 U.S. 579 (1998)—decided only a week after Brooke Group—this Court took pains to emphasize the difference between a determination that expert testimony is admissible and a determination that it suffices to support a reasonable jury verdict. Responding to the concern that Daubert’s more per- missive approach to admission of expert evidence might “result in a ‘free-for-all’ in which befuddled juries are confounded by absurd and irrational pseudoscientific assertions,” this Court reaffirmed the authority of fed- eral courts to resolve cases as a matter of law under ls Rule 50, even in the face of admissible expert testi mony: [I]n the event the trial court concludes that the scintilla of evidence presented supporting a po sition is insufficient to allow a reasonable juror to conclude that the position more likely than not is true, the court remains free to direct a judgment, F'ed.Rule Civ.Proc. 50(a), and like wise to grant summary judgment, Fed.Rule Civ.Proc. 56. Daubert, 509 U.S. at 595-596. The Court cited with ap proval two cases that had ruled, as a matter of law, that admitted expert testimony was insufficient to support a jury verdict. See id. at 596 (citing Turpin v. Merrell Dow Pharms., Inc., 959 F.2d 1349 (6th Cir. 1992), and Brock v. Merrell Dow Pharms., Inc., 874 F.2d 307 (5th Cir. 1989)).° The Federal Circuit’s analysis of Dr. Howe’s testi mony was no different from this Court’s analysis of similar testimony in Brooke Group and Matsushita. Just as this Court rejected expert testimony that had “little probative value in comparison with the economic : Although the Sixth Circuit’s decision in Turpin ruled in the alternative that expert testimony was inadmissible (see 959 F.2d at 1360), its primary conclusion was one of insufficiency of the evi dence. See id. at 1350 (“Taken in the light most favorable to the plaintiffs, the scientific evidence that provides the foundation for the expert opinion on causation in this case is not sufficient to al low a jury to find that it is more probable than not that Bendectin caused the minor plaintiff's injury.”); see also Daubert, 509 U.S. at 596 (summarizing Turpin as “holding that scientific evidence that provided foundation for expert testimony, viewed in the light most favorable to plaintiffs, was not sufficient to allow a jury to find it more probable than not that defendant caused plaintiff's injury’’). 14 factors” in the record, Matsushita, 475 U.S. at 594 n.19; see also Brooke Group, 509 U.S. at 243, the Federal Circuit rejected expert testimony that sought to “over- ride the objective content of’ the two patent specifica- tions at issue (Pet. App. 14). The Federal Circuit did not make any credibility determinations or weigh the evidence, any more’ than this Court had; rather, it sim- ply concluded under accepted Rule 50 standards that Dr. Howe’s opinion was incapable of supporting a jury verdict. Anascape’s contrary account of the Federal Circuit’s opinion is indistinguishable from the position that Justice White expressed in dissent—a_ position that this Court rejected in Matsushita and again in Brooke Group. See Matsushita, 475 U.S. at 606 (White, J., dissenting) (contending that the weaknesses in plaintiffs’ expert’s analysis were “arguments that a factfinder should consider’’). I]. THERE IS NO CIRCUIT SPLIT In its petition for rehearing below, Anascape ac- cused the Federal Circuit of misapplying the rulings of the Fifth Circuit, which is the regional circuit govern- ing non-patent issues in this patent case. Pet. for Reh’g 7; see Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 13879 (l’ed. Cir. 2009) (Federal Circuit reviews de- nials of Rule 50 motions under the law of the regional circuit), cert. denied, 130 S. Ct. 1739 (2010). Reversing course, Anascape now contends that the Federal Cir- cuit correctly applied Fifth Circuit law, but that the Federal and Fifth Circuits’ approach to Rule 50 pre- sents a “sharp contrast” to that of other circuits, impli- cating a “longstanding and entrenched” circuit conflict. Pet. 12, 16. Anascape did not identify any such conflict in its petition for rehearing below, and for good reason: none exists. Ll) Anascape identifies no court of appeals decision a knowledging its perceived circuit split. On the con trary, numerous courts of appeals, including those cu cuits Anascape invokes, have followed this Court’ analysis in Matsushita and Brooke Group by directing summary judgment or judgment as a matter of law notwithstanding expert testimony that, though adm) sible, is deemed insufficient to support a jury verdict See, e.g., Waterman v. Batton, 393 F.3d 471, 478 & n& (4th Cir. 2005) (reversing denial of summary judgment where the record showed that officers’ conduct wa reasonable, notwithstanding expert testimony to the contrary); Bailey v. Allgas, Inc., 254 F.3d 1287, 1257 (lith Cir. 2002) (‘Regardless of whether the testimony of the Baileys’ expert is admissible, we conclude the testimony is insufficient to establish a violation of the Robinson-Patman Act.”); Virgin Atl. Arrways Ltd British Arrways Ple, 257 F.3d 256, 267-268 (2d On 2001) (affirming grant of summary judgment notwith standing expert testimony, citing Ksrooke Group); In re Citric Acid Latig., 191 F.8d 1090, 1102 (9th Cir. 1999) (“Because there is no evidence in the record establish ing that Cargill’s market share was constant betwee! 1993 and 1995, any inference founded upon that factual assertion—even one drawn by an economic expert—1 necessarily unrea wnable.” (citing Brooke Group) (foot note omitted)); In re Baby Food Antitrust Litig., 166 I3d 112, 135 (3d Cir. 1999) (affirming summary judg ment where expert opinion, even “assuminy [its] ad missibility,” offered “meayer evidence of defendant behavior contrary to self interest and of motivation to conspire”); United States v. City of Miami, 115 F.3d 870, $73 (Lith Cir. 1997) (directing dissolution of con sent decree where city’s expert testimony “lacked pro bative value as a matter of law”); Peebel Oil Co. v. Al lf) lantic Richfield Co., 51 F.8d 1421, 1486 (9th Cir. 1095) (“Our independent review of Rebel’s expert affidavits compels the conclusion that it would be unreasonable for a juror to infer from those affidavits that full serve sales of gasoline should be excluded from the relevant market.”); SCRC ILC, Inc. v. Visa USA, Inc., 36 F.3d 958, 969 (Oth Cir. 1994) (reversing denial of Rule 50 motion where “the evidence cited by the district court” in support of the jury verdict, including expert testi mony, “is insufficient as a matter of law”); Vollrath Co 9 id 1455, 1462 (9th Cir. 1998) Caf firming grant of judgment notwithstanding the verdict where plaintiffs “expert testimony was not based upon v. Sami Corp sufficient evidence adduced at trial’); Alevromagiros v Hechinger Co., 998 F.2d 417, 422 (4th Cir. 1998) Caffirm ing directed verdict where expert testimony was “un supported by any evidence”); Calhoun v. Honda Motor Co., 738 F.2d 126, 131 (6th Cir. 1984) (affirming grant of judgment notwithstanding the verdict where “lalithough plaintiffs expert opined that the brakes were wet at the time of the accident, the evidence does not support his conclusion’); Washington v. United States, 214 F.2d 33, 43 (9th Cir. 1954) (affirming di rected verdict, ruling that opinion testimony, including expert opinion, “without any support in the demonstra tion and physical facts, is nol substantial evidence”); see also Guinn v. AstraZeneca Pharms. LI’, 602 F.3d 1245, 1256-1257 (lith Cir. 2010) (affirmings summary judy ment where, even if expert testimony had been admis sible, it would not have permitted a reasonable juror to , rule in plaintiffs favor); Pace v. Capobianco, 243 F.3d 127, 1241 nil (Lith Cir. 2002) (Opinions, be they ex pert or lay, are only as yood as the evidence upon which they are based.’’). 7 The decisions Anascape cites do not suggest any meaningful disagreement either. Kinser v. Gehl Co., 184 F.3d 1259 (10th Cir. 1999), was abrogated by this Court’s decision in Weisgram v. Marley Co., 528 U.S. 440 (2000), which ruled (contrary to Kinser) that an ap- pellate court may direct judgment for a verdict loser in a case where “the appellate court declares inadmissible record evidence essential to the verdict winner’s case.” Id. at 454. And even if Kinser were good law, it would be inapposite here, since the Federal Circuit did not rule Dr. Howe’s testimony inadmissible; it simply ruled that the record, zncluding his testimony, was insuffi- cient to permit a verdict for Anascape. Questar Pipeline Co. v. Grynberg, 201 F.8d 1277 (10th Cir. 2000), ruled only that the district court had incorrectly stricken certain evidence. /d. at 1290. It is not even clear that the evidence at issue in Grynberg was expert testimony. See id. at 1289 (observing no in- dication “that Mr. Grynberg was actually testifying as an expert”).° And Christopher v. Cutter Labs., 53 F.3d 1184 (11th Cir. 1995), ruled that the record as a whole, including expert testimony that was valid and admissi- ble (though some other testimony was not), sufficed to support the verdict. /d. at 1192. Neither case sug- gested that expert testimony, once admitted, could never be deemed insufficient to sustain a verdict where it was “not supported by any evidence at all” and con- trary to “the objective content” of the governing docu ments. Pet. App. 14. : Although the Grynberg plaintiff offered expert testimony as well, the Tenth Circuit ruied that it was “properly stricken.” Jd. at 1288. 18 Anascape also cites three cases in which appellants relied on Daubert itself to challenge the reliability of expert testimony on appeal, despite not having raised a Daubert challenge below. In the first two, C.B. Fleet Co. v. SmithKline Beecham Consumer Healthcare, L.P., 131 F.3d 4380 (4th Cir. 1997), and Marbled Mur- relet v. Babbitt, 83 F.3d 1060 (9th Cir. 1996)—both ap- peals following bench trials—the appellate challenge was expressly based on a failure of expert testimony “to meet the standard for reliable scientific evidence under Daubert,” an argument the appellants had failed to preserve in the trial court. Marbled Murrelet, 83 F.3d at 1066; see also C.B. Fleet, 131 F.3d at 437. In the third case, United States v. Gaskin, 364 F.3d 488 (2d Cir. 2004), the appellant not only failed to raise Daubert at trial, but stipulated to the expert testimony. 7d. at 460 & n.8. The courts of appeals refused to consider ar- guments based on the Daubert admissibility standard “in the guise of an insufficiency-of-the-evidence argu- ment” where the issue had not been pressed before or passed on by the district court. Marbled Murrelet, 83 F.3d at 1067; see also C.B. Fleet, 131 F.3d at 4387 (refus- ing to perform a “first instance application of Daubert principles on a record completely inadequate for the nurpose”); Gaskin, 364 F.3d at 460 n.8. Here, by con- trast, the Federal Circuit did not rule Dr. Howe’s tes- timony inadmissible under Daubert principles; it simply held, in line with established Rule 50 jurisprudence, that the record as a whole could not reasonably support a verdict for Anascape—an argument that was both presented to and decided by the district court. Pet. App. 28-31. Anascape’s last case does not create a circuit split either. On the contrary, the Second Circuit reaffirmed that Daubert did not change settled Rule 50 doctrine, 19 but rather expressly contemplated the possibility of judgment as a matter of law notwithstanding expert testimony. /n re Joint H. & S. Dist. Asbestos Litig., 52 F.3d 1124, 11382-1133 (2d Cir. 1995) (noting that Daubert, Turpin, and Brock “did not alter the tradi- tional sufficiency standard’). Although the Second Cir- cuit did reverse the grant of a Rule 50 motion, it did so only by identifying eight serious deficiencies in the dis- trict court’s analysis of the record, including reaching scientific conclusions while citing no authority (¢d. at 1134); failing to address federal agency reports sup- porting the verdict (¢7d. at 1135-11386); and disregarding the Circuit’s prior rulings in the ease (id. at 1186). The Second Circuit’s decision did not adopt a different “ap- proach” to Rule 50; it simply applied the traditional and accepted approach to the particular case before it. linally, even if Anascape were correct that sore panels had occasionally issued decisions that differ from the analysis of Brooke Group, Matsushita, and the de- cisions cited on pages 15-16 above, this Court should await further percolation of the issue within the af- fected circuits, in addition to percolation among the cir- cults. That is particularly the case given that Anascape has not identified any decision acknowledging a sup- posed conflict. Indeed, Anascape itself did not appear to know of any conflict when it sought rehearing in the Federal Circuit four months ago. II]. ANASCAPE’S REMAINING ARGUMENTS PROVIDE NO BASIS FOR CERTIORARI The remaining arguments Anascape asserts in its petition fail. First, nothing in Feeves v. Sanderson Plumbing Products, Inc., 5380 U.S. 133 (2000), altered the accepted 20 understanding of Rule 50, much less overruled this Court’s application of it in Matsushita and Brooke Group. In Reeves, this Court reversed a court of ap- peals decision holding that an employment discrimina- tion plaintiff who proved a prima facie case of discrimi- nation and convincingly rebutted the employer’s prof- fered nondiscriminatory explanation could nonetheless never reach the jury without proffering additional evi- dence. /d. at 146. The Court made clear, however, that judgment as a matter of law might sometimes be ap- propriate in such cases: “To hold otherwise would be effectively to insulate an entire category of employ- ment discrimination cases from review under Rule 50[.]” Jd. at 148. The Federal Circuit’s consideration of the record as a whole—including the “objective con tent” of the key patent documents (Pet. App. 14)—was fully consistent with Reeves. See 5380 U.S. at 148-149 (stating that the appropriateness of judgment as a mat- ter of law “will depend on a number of factors,” includ- ing “the probative value” of the plaintiffs evidence). If anything, it is Anascape’s suggestion that expert evi- dence should be treated differently from other evidence for purposes of a Rule 50 motion that runs counter to Reeves.’ ’ The abuse-of-diseretion standard of review for admissibility decisions, see General Electric Co. v. Joiner, 522 U.S. 136 (1997), is irrelevant to this case. The Federal Circuit did not rule that Dr. Howe’s testimony was inadmissible or, in Anascape’s words, should have been “excised.” Pet. 19. Anascape elsewhere recog- nizes as much. /d. at 8. Rather, the Federal Circuit simply ruled that the evidence of record, taken as a whole including Dr. Howe's testimony, did not permit a reasonable jury to find that the ’525 patent sufficiently described the invention claimed in the '700 pat- ent. 21 Second, Anascape’s complaint of an “unfair ambush on appeal” (Pet. 20) is meritless. Nintendo repeatedly argued to the district court that the ’525 and ’700 pat- ent specifications permitted only one reasonable out- come, namely that the disclosure in the earlier patent did not support the claims of the later patent. See sz- pra pp. 7-8. Anascape was “on notice every step of the way” that Nintendo was challenging the sufficiency of its evidence, yet it “made no attempt to add or substi- tute other evidence.” Wetsgram, 528 U.S. at 456. Anascape’s claim that the Federal Circuit denied it “any opportunity to lay a better foundation” for Dr. Howe’s testimony (Pet. 21) rings hollow, given that it could have sought a new trial in its petition for rehear- ing, but did not. See Weisgram, 528 U.S. at 454-455 & n.ll. Even in its petition for certiorari, Anascape still does not explain what “better foundation” it could have provided. Third, nothing in the Federal Circuit’s ruling turns expert testimony into “‘second-class’ evidence” for Rule 50 purposes. Pet. 28. The Federal Circuit approached the record in the same way as this Court has, namely by ruling that judgment as a matter of law was war- ranted because Anascape, “in the appellate court’s judgment, failed to present sufficient evidence.” Weis- gram, 528 U.S. at 454. The Federal Circuit did not say that expert testimony, once admitted, can never pro- vide substantial support for a jury verdict, or that ex- pert testimony deserved less regard under Rule 50 than other evidence. The fact that expert testimony must satisfy “additional threshold requirements” under Daubert (Pet. 23) is a consequence of Federal Rule of Evidence 702; it is not a reason to exempt expert testi- mony from the ordinary operation of Rule 50. Indeed, it is Anascape that seeks to elevate its expert’s testi- mony into a kind of “upper-class evidence” that, once admitted, will always support a jury verdict in its pro- ponent’s favor, even if it is otherwise unsupported or contradicted by the “objective content” of governing documents. Pet. App. 14. Just as there was no reason to “insulate an entire category of employment discrimi- nation cases from review under Rule 50” (Reeves, 530 U.S. at 148), there is no reason to do so for patent cases involving expert testimony. Fourth, there was no “manifest error’ here. Pet. 18, 24. Even as Anascape faults the Federal Circuit for rejecting its expert’s conclusion, it does not deny that Dr. Howe (1) failed to account for the numerous refer- ences to “single input member’ present in the ’525 pat- ent but removed from the ’700 patent; (2) did not ad- dress the ’525 patent’s disparagement of the Chang ref- erence, which used multiple input members; and (3) admitted that the 525 patent did not disclose a device with three input members that together provided movement in six DOF, whereas the ’700 patent claimed just that. See supra p. 7. The Federal Circuit did not err, much less commit “manifest error,” in concluding that Dr. Howe’s testimony was inconsistent with the “objective content” of the patents, and that the patents must prevail in such a conflict. Pet. App. 14; see Brooke Group, 509 U.S. at 242 (“[WJhen indisputable record facts contradict or otherwise render the opinion unrea- sonable, it cannot support a jury’s verdict.”). The testimony of an expert skilled in the art is cer- tainly “relevant” to the question of priority date. Pet. 24. The testimony of this expert, however, was unsup- ported and contradicted by the central objective evi- dence in the case. The Federal Circuit did nothing more than engage in a factbound application of settled 23 Rule 50 doctrine. Anascape’s dissatisfaction with the outcome does not warrant this Court’s review. CONCLUSION The petition for a writ of certiorari should be de- nied. Respectfully submitted. ROBERT J. GUNTHER, JR. WILLIAM F.. LEE WILMER CUTLER PICKERING Counsel of Record HALE AND DORR LLP MARK C. FLEMING 399 Park Avenue ILAUREN B. FLETCHER New York, NY 10022 WILMER CUTLER PICKERING (212) 230-8800 HALE AND DORR LLP 60 State Street Boston, MA 02109 (617) 526-6000 william.lee@wilmerhale.com SEPTEMBER 2010 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2425%3A3. Public record. Not legal advice.