United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
PAYNE, UNITED STATES MAGISTRATE JUDGE.
the Court is (1) Plaintiff Music Choice's Daubert Motion
to Strike Deposition Testimony of Defendants' Expert Dr.
Michael Shamos for Presenting Untimely and Undisclosed
Opinions (“Motion to Strike”) (Dkt. No. 188) and
(2) Music Choice's Alternative Motion for Leave to Serve
the Supplemental Expert Report of Samuel Russ, Ph.D
(“Motion for Leave”) (Dkt. No. 230).
Choice raises two separate arguments within its Motion to
Strike. Music Choice first seeks to exclude Dr. Shamos'
opinion that “the Audio Engine and StillPic Generator
components of the accused Ubiquicast machine purportedly send
data between them via a shared RAM memory, which according to
Dr. Shamos, does not qualify as the ‘transmission'
of data as recited in '245 claims 10 and 15.” (Dkt.
No. 188 at 5.) Music Choice also seeks to exclude Dr.
Shamos' “invalidity opinion that Rothman made MP4
technology obvious.” (Dkt. No. 188 at 6.) Music Choice
filed its Motion for Leave seeking to file a supplemental
report to address these opinions in the event that Music
Choice's Motion to Strike is denied. (Dkt. No. 230.)
Court will first address Music Choice's argument
regarding the allegedly new infringement theory and then
address Music Choice's argument regarding the allegedly
new invalidity theory. Finally, the Court will address
whether the Motion for Leave should be granted to allow Music
Choice to supplement its reports to address both the
infringement and the invalidity theory.
INFRINGEMENT THEORY REGARDING COMMON MEMORY
10 is representative of claim 15 here, and claim 10 is
dependent upon claim 1. Claim 1 requires:
1. A method for providing a visual complement to an audio
stream, comprising: transmitting, from a first transmission
system to a second transmission system, audio data
corresponding to a selected song; and
transmitting a data packet that was generated
using an identifier identifying the selected
song, wherein the data packet includes a media
asset identifier identifying a media asset and further
includes song information associated with the selected song,
the song information comprising the title of the song and the
name of the artist who recorded the song, wherein
the step of transmitting the data packet comprises
transmitting the data packet to a receiving system that is
configured such that, in response to receiving the data
packet, the receiving system automatically generates a video
image using the information included in the data packet and
automatically outputs the generated video image such that it
is received by a display device that is operable to display
the video image to a user of the display device without the
user having to select a menu item, and
the generated video image includes the song information
comprising the title of the song and the name of the artist.
(emphasis added). Claim 10 adds the requirement that
“the video image is encoded according to a Moving
Pictures Experts Group (MPEG) standard.”
an exhibit to Dr. Shamos' expert report, Dr. Shamos
stated that “[t]he StillPic Generator and the Audio
engine are the same piece of software. Thus one does not
transmit to the other and the StillPic Generator virtual
machine cannot act as ‘receiving system' for the
Audio Engine.” (Dkt. No. 188-5 at 12 (using ECF page
number).) Elsewhere within the same report, Dr. Shamos stated
that “Mr. Lavigne testified that the StillPic Generator
and the Audio engine are the same piece of software. Thus one
does not transmit to the other and the StillPic Generator
virtual machine cannot act as ‘receiving system'
for the Audio Engine.” (Id. at 10 (using ECF
page numbers) (internal citations omitted).)
Shamos' deposition, Dr. Shamos stated that, “if the
Galaxie StillPic generator deposits data in RAM, and the
Ubiquicast audio engine retrieves it from RAM, there is no
transmission.” (Dkt. No. 188-6 at 58:1-4.) He stated
that “[s]oftware components running on the same box
can't transmit to one another . . . because there is no
transmission channel.” (Id. at 58:7- 10.) Dr.
Shamos also opined that, “[i]f I put data in RAM and
another module of the software takes it out of RAM, there is
no transmission.” (Id. at 58:15-17.)
Choice argues that the Dr. Shamos only opines in his expert
report “that there was no ‘transmission' of
data packets between the Audio Engine and StillPic Generator
because the two supposedly were ‘the same piece of
software.'” (Dkt. No. 188 at 5.) Based on Dr.
Shamos' statements during his deposition, Music Choice
argues that Dr. Shamos pivoted his non-infringement theory to
now argue that there is no transmission “because data
is purportedly sent between the StillPic Generator and Audio
Engine via shared RAM or common memory.” ...