A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: daubert

The case is about microphones
Godwill Gira Mude, Unsplash

We've mentioned before that its difficult to win a Daubert motion, with the clear majority of cases finding that any issues with the expert's testimony go to the weight, rather than admissibility, and are best dealt with on cross-examination.

Judge Burke bucked that trend last week, granting a motion to exclude a damages expert's reasonable royalty calculation for failing to provide a sufficient factual foundation.

The Plaintiffs' expert in Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB, D.I. 575 (D. Del. Oct. 8, 2021), based his damages calculation on the cost to the defendant of designing around the the patent in suit. He based that cost, in turn, on what the plaintiffs had spent to design around one of the defendant's patents following an earlier (and unrelated) lawsuit. In equating the costs, he had apparently relied on conversations with the plaintiffs' technical expert who had opined that the required design around here would be "more extensive," and thus, "more costly and time consuming." Id. at 2 (quoting the expert report).

Interestingly, Judge Burke took no issue with ...

Damages experts in patent infringement cases typically rely upon the Georgia-Pacific factors to guide their reasonable royalty analysis. Those factors are designed to predict the result of a hypothetical (and thus, fictional) negotiation between the parties, had the parties been willing participants in such a negotiation. But it is important to remember that the starting point for the application of the Georgia-Pacific factors must be tied to the facts of the case, like the factors themselves.

Late last week, Judge Andrews excluded a plaintiff's damages expert for his use of a 50/50 starting point for the hypothetical negotiation that was not sufficiently linked to the facts, as required by Federal Rule of Evidence 702.

The issue came to Judge Andrews...

Yesterday, visiting Judge Bataillon excluded a patentee's expert opinion where the expert tried to use the doctrine of equivalents to skirt the Court's construction of a term.

The Court had initially rejected a preliminary injunction motion by the patentee, holding that it had failed to show a likelihood of success on infringement based on its proposed claim construction.

The patentee then proposed the same construction during claim construction before the magistrate judge, who issued an R&R rejecting it.

The patentee then objected to the R&R, but the Court adopted the construction in the R&R and again rejected the patentee's proposed construction.

Specifically, the Court held that the claims required two elements that each have a different thickness and composition: …

Expert witnesses testifying in federal court are required to provide an expert report under Rule 26(a)(2). Although Rule 26 sets forth some requirements for the content of the report, it does not directly address how the report should be prepared, and in particular how much input the expert (as opposed to the party that has retained the expert, or the party's counsel) should have in preparing the report.

Some experts insist on writing their report in its entirety, while others rely heavily on counsel during the drafting and revising process. Too much reliance on others, however, can lead to a motion to exclude for violation of Rule 26's mandate that the report setting forth the expert's opinions be “prepared and signed by the witness." Judge Andrews recently resolved such a motion in TQ Delta, LLC v. 2Wire, Inc., C.A. No. 13-1835-RGA, finding that while the plaintiff's expert had contradicted some of the reports from his report during deposition, that did not justify...

In a recent Daubert ruling in CareDx, Inc. v. Natera, Inc., C.A. No. 19-662-CFC-CJB, Judge Connolly excluded the opinion of the plaintiff's expert regarding "corrective advertising damages," in part because it was based on "vague, undocumented, and back-of-the-envelope . . . estimates" by the plaintiff's CEO. The Judge granted the defendant's motion to exclude the expert's testimony under both Rule 702 and Rule 403, indicating that not only did the expert's opinion fail to satisfy the Daubert hallmarks for admissible expert testimony, it would also confuse the jury and be prejudicial because it "would essentially place the imprimatur of an expert on [the CEO] Maag's undocumented and dubious damages calculation."

This picture of a duck is unrelated to the article
Ross Sokolovski, Unsplash

Under Judge Andrews' form scheduling order, the parties are allotted a certain number of pages for both Daubert and summary judgment briefs. Given how difficult it is to win most Daubert motions in the district, it might sometimes make sense to forego filing one in order to devote more pages to briefing a seemingly stronger SJ motion.

Yesterday, Judge Andrews gave the district a reason to rethink this strategy.

The defendants in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No 14-1102-RGA-CJB, moved for summary judgment of non-infringement, relying largely on their expert's opinion that the devices did not practice a particular limitation. D.I. 213 at 3 (D. Del. Mar 31, 2021). The …

Daubert motions are as tough as they are common. It seems every case spawns at least one on each side, and the vast majority are denied with the Court finding that any deficiencies in the expert's methodologies are merely grounds for exploration on cross-examination.

One type that consistently beats these odds (at least in Delaware) is directed to damages experts that attempt to use the damages figures from prior jury verdicts as starting points for a hypothetical negotiation.

Judge Andrews in particular has held a hard line on this issue as shown in his decision on Wednesday in Sprint Communications Company L.P. v. Charter Communications, Inc, C.A. No. 17-1734-RGA, D.I. 573 (D. Del. Mar. 16, 2021). …

Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).

[UPDATE: Apparently not! This opinion was reversed on a motion for reconsideration; further update below]

Judge Connolly today struck portions of an expert report where the expert opined that the accused product did not infringe because it included extra components in addition to what was claimed in a means-plus-function claim element.

According to the Court, this is contrary to the well-established principle that additional structure does not preclude infringement of an MPF claim element, if the required structure is also there.

[UPDATE: As the Court recognized on reconsideration, that was not what was happening here. Instead, the expert was pointing out that the opposing party's expert had failed to identify the a structure that performed the function, not that the …