A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Daubert

Can a "Patent Law Expert" Testify at Trial? Sometimes.

Andrew E. Russell, June 13, 2022
Expert Witness Exclusion

The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial...
The Federal Judicial Center patent video. I find it exciting to watch, for a moment, because it reminds me the start of a jury trial... Federal Judicial Center

Every once in a while, parties will offer a "patent law expert" with opinions about patent office proceedings, such as patent prosecution. Often, smart opposing counsel will move to exclude that testimony, and it's not unusual for the Court to grant those motions.

A decision last week reminded of this issue. Late last week, Judge Burke granted a motion to preclude some expert testimony about patent prosecution, and excluded expert testimony regarding the patent examiner and plaintiffs' state of mind:

ORAL ORDER: The Court, having reviewed the portion of Plaintiffs' Daubert motion …
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Update: After Testimony, Judge Andrews Permits Damages Theory Capturing 100% of Difference in Net Profit

Andrew E. Russell, June 2, 2022
Damages Daubert

Red Phone
Miryam León, Unsplash

We wrote back in February of an uncommon Daubert opinion from Judge Andrews where he asked for a hearing with testimony from the expert, and for an additional round of briefing on Daubert.

Judge Andrews' concerns stemmed from an apparent lack of apportionment in the damages analysis—something that often trips up damages experts:

No one would sell the [accused] product without its numerous necessary parts. But it does not follow that the value of each necessary part is the same as the value of the whole. And yet that is what it appears that Dr. Mangum is doing.

After hearing testimony from the expert, however, Judge Andrews today issued an opinion finding that is not …

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The Risk of Daubert Motions in Bench Trials

Andrew E. Russell, May 17, 2022
Bench Trial Daubert

Open Gate
Stephen O'Donnell, Unsplash

Yesterday, the Court denied three Daubert motions in a short pretrial order in the lead up to a bench trial in a patent action, citing the Third Circuit's conclusion that Daubert motions in a bench trial may waste judicial time, and also noting that the issues are better addressed the judge in context at trial:

WHEREAS, “[w]hen the role of the gatekeeper to admit or exclude evidence (the judge) and the role of the factfinder to assess and weigh the evidence . . . (the jury) are one and the same, the judge who becomes the factfinder as well as the gatekeeper . . . should not be required to waste judicial time.” In re Unisys, 173 F.3d 145, 155–58 (3d Cir. 1999).
WHEREAS, having reviewed the motions to preclude, the Court has determined that it can better address the issues in context at trial when the Court can hear testimony and better understand the bases for the experts’ opinions;
. . .
THEREFORE, IT IS HEREBY ORDERED that
1) the motions to preclude (D.I. 222, 223, 224) are DENIED with leave to renew during trial to the extent appropriate. . . .

The Court also suggested that the parties could present their evidence at trial and then, potentially, ...

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Judge Andrews: 25-Reference Obviousness Analysis Without Specific Combinations Is Not a Daubert Problem

Andrew E. Russell, April 20, 2022
Expert Witness Obviousness

"Pick a card, any card . . . that's our secondary obviousness reference." Aditya Chinchure, Unsplash

Judge Andrews issued a short memorandum order today denying two Daubert motions based on an obviousness analysis where an expert identified a main reference and 24 additional references, without listing specific combinations.

The analysis apparently sorted the prior art into categories:

The main point of both motions is the assertion that Dr. Lepore has not identified specific combinations of prior art for his obviousness analysis. Defendants have referred to a portion of Dr. Lepore’s report where he lists categories of references. . . . [T]he expert has one reference as the “lead compound.” The expert has three additional categories of references: (1) four that show “c-Met’s role in various Cancers,” (2) six references “related to selecting a lead compound,” and (3) fourteen references “related to modifying the lead compound.”

As the Court explained, a usual case may involve a multiple-reference "state of the art" or motivation to combine analysis, so this is not a Daubert issue:

My view is that, in the usual case, an obviousness combination requires the identification of two or sometimes three references that disclose the requisite claim elements, and (usually) additional references, which can be ...
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Always Leave the Court Enough Time Between SJ/Daubert Briefing and the Pretrial Conference

Andrew E. Russell, March 21, 2022
Stipulation KB

Caution Tape
Hiroshi Kimura, Unsplash

A reader helpfully flagged a stipulation denial by Judge Noreika last week (thank you!). The parties had a pretrial conference scheduled for July 18, 2022, and stipulated to move a number of deadlines, including for Daubert briefing. They moved the Daubert motion reply deadline from May 20, 2022 (52 days before the PTC) to June 10, 2022 (38 days before the PTC).

Judge Noreika denied the stipulation without comment. They smartly refiled, but without the Daubert deadline adjustment. This time it went through just fine, albeit with a comment stating that the Daubert deadlines were not moving:

SO ORDERED re 192 STIPULATION TO EXTEND TIME . . . IT IS FURTHER ORDERED that the Daubert motion/briefing schedule set by D.I. 134 shall NOT be extended ...
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Finding Parties' Daubert Briefing Insufficient, Judge Andrews Asks to Hear from the Expert Himself Regarding His Apportionment Analysis

Andrew E. Russell, Feb. 7, 2022
Daubert

Turn around.
Turn around. Jim Wilson, Unsplash

Motions to disqualify experts under Daubert come up frequently in patent cases. After all, expert work can be difficult and prone to error, and scoring the disqualification of another parties' expert can be a huge blow (although sometimes it has less of an impact than the moving party may expect).

Judges in Delaware often hold oral argument on Daubert motions, typically at the same time as they hear case dispositive motions. But it's uncommon for the Court to hear testimony directly from an expert at a Daubert hearing.

That's exactly what Judge Andrews ordered last week in Sprint Communications Co. v. Cequel Communications, LLC, C.A. No. 18-1752-RGA (D. Del.), however. There, …

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Judge Burke Rejects Challenge to Emmy-Nominated Expert in VR and Immersive Content

Jeff Castellano, Nov. 2, 2021
Daubert

In a recent Daubert ruling, Judge Burke offered some helpful reminders regarding the threshold for expert testimony under Fed. R. Evid. 702. In particular, Judge Burke's ruling highlights the principle that an expert's qualifications need not be supported by advanced degrees or decades of experience, if the other requirements of Rule 702 are met.

In 360Heroes, Inc. v. GoPro, Inc., 17-1302-LPS-CJB, a case in which Judge Burke has been assigned all pretrial matters, the plaintiff moved to exclude the defendant's expert Ryan Thomas, an Emmy-nominated video content creator. Mr. Thomas was retained by the defendant to offer opinions on products available to 360 video content creators from 2015 to the present, including commercially acceptable alternatives to the plaintiff's patented products.

filip-havlik-lP5bWEhf4nA-unsplash (1).jpg
man in black jacket wearing black helmet photo, Filip Havlik, Unsplash

The plaintiff sought to exclude Mr. Thomas' entire opinion, on two grounds - his qualifications and the reliability of his opinions - neither of which Judge Burke found persuasive.

First, the plaintiff asserted that Mr. Thomas was not qualified to serve as an expert under Rule 702 because...

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What Can a Patentee Do When the Court Excludes Its Damages Expert? Maybe Force the Other Side’s Damages Expert to Testify for the Patentee.

Andrew E. Russell, Oct. 29, 2021
Damages Experts

With this case, the hits just keep coming...
With this case, the hits just keep coming... Mitya Ivanov, Unsplash

What do you do when your expert's damages opinion gets excluded, the Court rules you cannot proceed based solely on the factual evidence, and you bear the burden of proof?

According to an opinion from Judge Andrews yesterday, one option is to call the other side’s expert—even if the other side otherwise refuses to put her on the stand.

This Case Again?

We've actually talked about this case, Shure Inc. v. ClearOne, Inc., C.A. No. 19-1343-RGA-CJB (D. Del.), quite a bit at this point, including defendant's efforts to use DJ jurisdiction to keep part of the case out of Delaware, and plaintiff's effort …

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Judge Andrews Strikes Last-Minute Damages Report

David M. Fry, Oct. 27, 2021
Damages Pennypack

When it comes to supplemental expert reports, how late is too late?

In a case that's set for trial next month, Judge Andrews recently addressed the parties' objections to a number of orders and R&Rs issued by Magistrate Judge Burke. In one of those orders, Judge Burke granted a motion to exclude some of the plaintiffs' damages calculations as erroneous and unreliable.

The plaintiffs objected, and in the meantime, they served a supplemental damages report attempting "[t]o correct the flawed analysis" excluded by Judge Burke.

Judge Andrews not only overruled the objections, but also found that the supplemental report was submitted too late:

The report was filed less than three weeks before trial. . . . This is …
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Damages Doc Daubert'ed! Defendants Delighted!

Nathan R. Hoeschen, Oct. 14, 2021
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 ...

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