Potter Voice v. Microsoft: Microsoft's Request to Exclude Expert Declaration for Claim Construction Denied Where Microsoft's Arguments Went to Weight and Credibility, Not to Admissibility

by Jeffer Mangels Butler & Mitchell LLP

In this patent infringement action, Potter Voice submitted an expert declaration of David Klausner for the purpose of claim construction. Microsoft moved to exclude the declaration under Fed.R.Evid. 702.

The district court explained the background of the patent as follows: In 1998, United States patent number 5,729,659 (the '659 patent) was issued to Jerry L. Potter. Plaintiff, Potter voice Technologies LLC, now owns the '659 patent. The '659 patent describes a method and apparatus for controlling a digital computer using oral input. The patent infringement claims alleged in Potter's complaint are based on four distinct software products: (1) BlackBerry Voice Commands; (2) Google Voice Search; (3) Google Voice Actions; and (4) Windows Speech Commands. Potter alleges that the defendants infringe the '659 patent when these software products are used on mobile phones.

The defendants challenged the '659 patent on the ground that means-plus-function claims in the patent do not describe a sufficient structure to accomplish the stated function. "For means-plus-function limitations where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under 35 U.S.C. § 112 ¶ 6. The patentee may express this algorithm in any understandable manner, including as a flowchart, so long as sufficient structure is disclosed." In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (citations omitted). In this context, "(s)ufficient structure must simply permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation so that he may perceive the bounds of the invention." Id. at 1298 (citation and internal quotation omitted).

As explained by the district court, "in support of its claim construction brief [#269], Potter submitted the declaration of David Klausner [#269-1]. In his declaration, Mr. Klausner opines that a person of ordinary skill in the art at the time of the patent would have understood algorithms specified in the patent to be the structures associated with the means-plus-function claims at issue. Microsoft contends that certain opinions of Mr. Klausner must be stricken because he is not qualified to give opinions in the area of associative computing and because some of his opinions are conclusory."

The district court disagreed, finding that the expert did have sufficient, relevant expertise. "I have reviewed the qualifications of Mr. Klausner as summarized in his resume [#269-2] and in his deposition testimony, cited in the response [#315] of Potter to the motion to exclude. For the purpose of Rule 702, I find and conclude that Mr. Klausner has ample specialized knowledge, skill, experience, training, and education in the area of computer science generally and in the area of associative computing specifically. To the extent there are deficiencies or other flaws in the relevant qualifications of Mr. Klausner, those evidential issues affect weight, not admissibility."

The district court also rejected Microsoft's argument that the declaration was conclusory. "In a means-plus-function claim in which the disclosed structure is a computer programmed to implement an algorithm, a patentee may express the "algorithm in any understandable manner, including as a flowchart, so long as sufficient structure is disclosed." In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (citations omitted). Mr. Klausner opines that the algorithms in the '659 patent permit a person of ordinary skill in the art to understand these algorithms and to see them as the structures associated with the functions described in the patent. Mr. Klausner does not just state such conclusions. Rather, as shown in the example above, he cites particular language in the patent and figures in the patent as specifying the algorithms. Such conclusions are sufficiently reasoned and specific for purposes of Rule 702 and are not merely conclusory. To the extent there are hiatuses or other flaws in the analysis and conclusions of Mr. Klausner, those gaps or flaws go to the weight and credibility."

Accordingly, the district court permitted the declaration, determining that Microsoft's arguments went to the weight and credibility of the opinion and not to admissibility.

Potter voice Technologies LLC v. Google, Inc., et al., Case No. 12-cv-01096-REB-CBS (D. Col. March 19, 2014)

Written by:

Jeffer Mangels Butler & Mitchell LLP

Jeffer Mangels Butler & Mitchell LLP on:

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