A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Expert

No, You Can't Do That—Court Rejects Attempt to Offer Expert Testimony Regarding Strength of Own Prior Defenses

Andrew E. Russell, Jan. 17, 2024
Expert Witness Expert Testimony

"What do you mean, attorney argument! This is unbiased expert testimony about how awesome our positions are." Braydon Anderson, Unsplash

Well, this is a new one for me. In Wirtgen America, Inc. v. Caterpillar, Inc., C.A. No. 17-770-JDW-MPT (D. Del. Jan. 16, 2024), the plaintiff had previously brought an action in the ITC against the defendant, and won—achieving an exclusion order that stood up (in part) on appeal.

Now, in a District of Delaware action on the same patents, plaintiff argues willfulness based in part on the previous ITC ruling. Defendant tried to offer an expert who would testify about how great its defenses were at the ITC:

Caterpillar offers Mr. Bartkowski to opine on how …
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Defendant Narrowly Escapes Motion to Exclude After Flippant Remark by Expert at Deposition

Andrew E. Russell, Sept. 6, 2021
Depositions Expert Witness

Judge Burke last month addressed a motion to strike portions of an expert report regarding commercial acceptability of a non-infringing alternative.

As set forth in the report, an expert may rely on experience in the industry, but must explain "how that experience leads to the conclusions reached." Here, the expert opined that an alternative was commercially acceptable, but did not set forth why.

Then, when asked for more detail at his deposition, he responded with a snide comment:

[D]uring his deposition, [the expert] very ill−advisedly made things worse when he responded to a question on this subject by flippantly suggesting that he had "no backing" for the conclusion, and had simply "put [it] in on purpose" because Plaintiffs' expert similarly …
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Expert's On-the-Stand Admission That He Changed Opinion after Speaking to Attorneys, Resulting in $444,000+ in Fees, Insufficient to Render Case Exceptional

Andrew E. Russell, July 26, 2021
§ 285 Trial

"Oh god. What did our expert just say?" Jamie Haughton, Unsplash

More and more NPE cases have moved to Delaware over the last few years, following TC Heartland. Defendants often try to deal with NPE cases by threatening fees under 35 U.S.C. § 285, with varying degrees of success.

A § 285 fees opinion today by Judge Stark offers an interesting data point as to what kind of conduct is not sufficient to render a case as a whole exceptional under § 285, as well as a lesson on how to best to pursue a fees motion.

In Intellectual Ventures I LLC v. Trend Micro Inc., C.A. No. 12-1581-LPS (D. Del.), the patentee's …

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Summary Judgment Granted Where Doctrine of Equivalents Analysis Merely "Repackaged" Literal Infringement Analysis

Andrew E. Russell, Oct. 30, 2020
DOE SJ

Chief Judge Stark this week granted a motion of non-infringement under the doctrine of equivalents due to the slim DOE analysis relied on by the patentee's expert.

Interestingly, the expert had offered some testimony framed in terms of the usual function-way-result DOE test:

[T]he Accused Products perform substantially the same function (producing densitometry/densitometric models for use in assessing bone density), in substantially the same way (determining linear attenuation coefficients of an object in several tomographic scans and combining this information using the Feldkamp algorithm to determine the grayscale values of voxels and the corresponding HU units thereof of a 3D CBCT volume of the object), to achieve substantially the same result (3D volumes that include information for depicting quantitative differences …
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Judge Fallon Rejects Expert Declaration, Recommends Grant of § 101 Motion at Pleading Stage

Andrew E. Russell, July 23, 2020
MTD Expert

Cell Tower
Cell Tower Ben Vaughn, Unsplash

In an R&R this week, Judge Fallon recommended granting a § 101 12(b)(6) motion to dismiss.

She rejected a proffered expert declaration regarding novelty of the invention, because "the court declines to consider matters outside the pleadings on a Rule 12 motion to dismiss."

She noted that "[t]he law is now well-established that patent eligibility is a threshold issue." So far she has recommended granting three § 101 motions to dismiss this year, out of four that she has addressed.

The § 101 issues addressed here were not unusual. The patent, originally held by LG and now by NPE Aegis 11 S.A., sets forth an algorithm for using random numbers to authenticate mobile …

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