Abaxis, Inc. v. Cepheid
Filing
196
ORDER Granting in Part and Denying in Part Plaintiff's Motion to Exclude Expert Testimony. Signed by Judge Lucy H. Koh on 7/19/2012. (lhklc1, COURT STAFF) (Filed on 7/19/2012)
1
2
3
4
5
6
7
UNITED STATES DISTRICT COURT
8
NORTHERN DISTRICT OF CALIFORNIA
9
SAN JOSE DIVISION
United States District Court
For the Northern District of California
10
11
12
13
ABAXIS, INC.,
Plaintiff-Counterdefendant,
v.
CEPHEID,
14
Defendant-Counterclaimant.
15
)
)
)
)
)
)
)
)
)
Case No. 10-CV-02840-LHK
ORDER GRANTING IN PART AND
DENYING IN PART PLAINTIFF’S
MOTION TO EXCLUDE EXPERT
TESTIMONY
16
Plaintiff-Counterclaimant Abaxis, Inc. (“Abaxis”) moves to exclude the testimony of
17
Defendant-Counterclaimant Cepheid’s (“Cepheid”) technical expert, Dr. Philip Williams. Pursuant
18
to Civil Local Rule 7-1(b), the Court finds the motion appropriate for determination without oral
19
argument. Having considered the submissions of the parties and the relevant law, the Court
20
GRANTS IN PART and DENIES IN PART Abaxis’s motion to exclude.
21
I.
22
Federal Rule of Evidence 702 allows admission of “scientific, technical, or other
LEGAL STANDARD
23
specialized knowledge” by a qualified expert if it will “help the trier of fact to understand the
24
evidence or to determine a fact in issue.” Expert testimony is admissible pursuant to Rule 702 if it
25
is both relevant and reliable. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993). A
26
district court’s decision to admit expert testimony under Daubert in a patent case follows the law of
27
the regional circuit. Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003).
28
1
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
When considering expert testimony offered pursuant to Federal Rule of Evidence 702, a district
2
court acts as a “gatekeeper” by “making a preliminary determination that the expert’s testimony is
3
reliable.” Elsayed Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053, 1063 (9th Cir. 2002); see
4
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147-48 (1999); Gen. Elec. Co. v. Joiner, 522 U.S.
5
136, 142 (1997); Daubert, 509 U.S. at 589-90. An expert witness may provide opinion testimony
6
if: (1) the testimony is based upon sufficient facts or data; (2) the testimony is the product of
7
reliable principles and methods; and (3) the expert has reliably applied the principles and methods
8
to the facts of the case. Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd.,
9
550 F.3d 1356, 1360 (Fed. Cir. 2008). Under Daubert, “a court should consider (1) whether a
United States District Court
For the Northern District of California
10
theory or technique ‘can be (and has been) tested;’ (2) ‘whether the theory or technique has been
11
subjected to peer review and publication;’ (3) ‘the known or potential rate of error;’ and (4)
12
whether it is generally accepted in the scientific community.” Wagner v. Cnty. of Maricopa, 673
13
F.3d 977, 989 (9th Cir. 2012) (quoting Daubert, 509 U.S. at 593-94).
14
The inquiry into admissibility of expert opinion is a “flexible one,” where “[s]haky but
15
admissible evidence is to be attacked by cross examination, contrary evidence, and attention to the
16
burden of proof, not exclusion.” Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010) (citing
17
Daubert, 509 U.S. at 594, 596). “Under Daubert, the district judge is ‘a gatekeeper, not a fact
18
finder.’ When an expert meets the threshold established by Rule 702 as explained in Daubert, the
19
expert may testify and the jury decides how much weight to give that testimony.” Id. (quoting
20
United States v. Sandoval-Mendoza, 472 F.3d 645, 654 (9th Cir. 2006)).
21
22
23
II.
ANALYSIS
A. Dr. Williams’s Technical Opinions
Abaxis does not dispute Dr. Williams’s qualifications as an expert. Rather, Abaxis contends
24
that Dr. Williams has no personal experience with the designing or making of freeze-dried
25
materials and lyophilization, rendering his opinions on these topics inadmissible under Rule 702
26
due to lack of proper foundation. Mot. 1, 3. According to Abaxis, Dr. Williams’s deposition
27
revealed that he was so inexperienced in these matters that his testimony on such subjects would be
28
2
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
unreliable. Id. at 3. Thus, Abaxis argues, any opinions of Dr. Williams that require knowledge of
2
the design or manufacture of freeze-dried materials and lyophilization, including his technical
3
evaluation of lyophilization or whether the prior art is enabling, are inadmissible under Daubert.
4
Id.
5
Similarly, Abaxis argues that Dr. Williams should be precluded from offering any opinion
6
relating to knowledge of precision pumps, including IVEK brand pumps, due to lack of experience
7
with this particular brand of pump. Id. at 3. Abaxis takes particular issue with Dr. Williams’s
8
opinions that persons of ordinary skill in the art would have known about IVEK pumps, that the
9
pumps were “well known,” and that they were known in pharmaceutical companies. Id. at 3-4.
United States District Court
For the Northern District of California
10
Abaxis argues that Dr. Williams is unqualified to opine on IVEK pumps because Dr. Williams first
11
became familiar with IVEK pumps during this litigation. Id. at 3. Moreover, Dr. Williams’s
12
opinions about the popularity of IVEK pumps is based solely on: (1) IVEK advertisements; (2) the
13
testimony of a former employee of a company that used IVEK pumps (who now works at
14
Cepheid); and (3) the availability of IVEK pumps in a supply ordering catalog. Id. Accordingly,
15
Abaxis argues that Dr. Williams’s opinions regarding IVEK pumps, as well as all other precision
16
pumps, should be barred. Id.
17
The Court is not persuaded by Abaxis’s arguments, all of which argue, in some form or
18
another, that Dr. Williams’s lack of personal knowledge renders his testimony inadmissible. While
19
Abaxis is correct that Dr. Williams never personally executed a freeze-drying or lyophilization
20
procedure, the record indicates that Dr. Williams was, indeed, familiar with such procedures. In
21
fact, the record makes clear that Dr. Williams’s research group had experience with freeze-drying
22
and lyophilization procedures and that Dr. Williams has directed students in his laboratory who
23
have conducted these procedures. See Carlson Decl. Ex. H, at ¶ 12; Williams Dep. 18:9-12, 19:5-6.
24
This experience, combined with Dr. Williams’s extensive training in the field of pharmacy, is
25
sufficient to render his opinions on freeze-drying and lyophilization admissible under Rule 702.
26
See Carlson Decl. Ex. H, at ¶¶ 3-7.
27
28
3
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
Dr. Williams’s opinions regarding precision pumps, including IVEK pumps, are similarly
2
admissible. It is true that Dr. Williams admitted that he was unfamiliar with IVEK pumps prior to
3
his involvement in the instant case. Williams Dep. 57:7-15. However, Dr. Williams also testified
4
that he is familiar with a number of highly-precise pumps including syringe-driven, peristaltic, and
5
impeller-driven pumps. Id. at 56:7-10. Moreover, since becoming involved with this case, Dr.
6
Williams has been exposed to evidence in the record that he has used, in combination with his prior
7
experience with other similar pumps, to form his current opinion on IVEK pumps. See Rodriguez
8
Decl. Ex. 3, at ¶¶ 107, 122-23, 125-27. While Abaxis may dispute the credibility, reliability, or
9
sufficiency of the evidence that Dr. Williams used to form his opinions, there is a sufficient factual
United States District Court
For the Northern District of California
10
basis in the record for Dr. William’s opinion. Sundance, Inc., 550 F.3d at 1360. Thus, Dr.
11
Williams’ testimony regarding IVEK pumps is admissible as well.
12
Contrary to Abaxis’s arguments, Rule 702 imposes no requirement that experts have
13
personal experience in an area to offer admissible testimony relating to that area. See Daubert, 509
14
U.S. at 592 (“Unlike an ordinary witness, . . . an expert is permitted wide latitude to offer opinions,
15
including those that are not based on firsthand knowledge or observation.”) (citing Fed. R. Evid.
16
702, 703). Dr. Williams’s knowledge of freeze-drying procedures and IVEK pumps, although
17
indirect, is sufficient to satisfy Daubert’s minimum threshold of relevance and accuracy. See
18
Mformation Techs., Inc. v. Research in Motion Ltd., 08-CV-04990, JW2012 WL 1142537, at *3
19
(N.D. Cal. Mar. 29 2012) (“When the methodology is sound, and the evidence relied upon
20
sufficiently related to the case at hand, disputes about the degree or relevance or accuracy (above
21
this minimum threshold) may go to the testimony’s weight, but not its admissibility.”). Thus,
22
Cepheid’s objections to the credibility of Dr. Williams’s testimony must be resolved on cross-
23
examination, not by wholesale exclusion of his testimony. See DSU Med. Corp. v. JMS Co., Ltd.,
24
296 F. Supp. 2d 1140, 1156 (N.D. Cal. 2003).
25
26
27
28
Accordingly, Abaxis’s motion to exclude the technical opinions of Dr. Williams is
DENIED.
B. Dr. Williams’s Non-Technical Opinions
4
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
2
1. Dr. Williams’s Legal Opinions
Abaxis objects to what it alleges are Dr. Williams’s legal opinions in paragraphs 157-60 and
3
182-87 of his expert report. Mot. 4. In particular, Abaxis argues that Dr. Williams improperly
4
opines that an agreement between Pfizer and R.P. Scherer, as well as various agreements between
5
Abaxis and Teramecs, constituted “offer[s] for sale.” Id. Such opinions, according to Abaxis, are
6
inadmissible under Rule 702 as they are relevant only to conclusions of law rather than questions
7
of fact. Id.
8
9
Cepheid, however, maintains that Dr. Williams explicitly and repeatedly disavowed that he
was offering a legal opinion. Opp’n 9-10. Instead, Cepheid contends that Dr. Williams was only
United States District Court
For the Northern District of California
10
offering his opinion as to whether the products that were the subjects of the various agreements
11
actually embodied the asserted patent claims. Id. at 10. Because this is a proper subject of expert
12
testimony, Cepheid argues, Dr. Williams’s opinions on such matters are admissible. Id.
13
The Court agrees with Abaxis that Dr. Williams cannot offer his opinion on purely legal
14
matters. Cf. McHugh v. United Serv. Auto. Ass’n, 164 F.3d 451, 454 (9th Cir. 1999) (“[Expert]
15
testimony cannot be used to provide legal meaning . . . .”). Accordingly, Abaxis’s motion to
16
exclude Dr. Williams’s opinions on legal matters is GRANTED. This grant is narrow, however,
17
and only bars Dr. Williams from offering his opinion on legal conclusions, such as the legal rights
18
or obligations of various parties or the legal effects of particular agreements. It does not preclude
19
Dr. Williams from testifying about technical matters related to the various agreements mentioned
20
above. As Cepheid rightly points out, Dr. Williams’s opinion as to whether the products in the
21
above agreements embodied the asserted claims is admissible. See Fed. R. Evid. 704(a) (“An
22
opinion is not objectionable just because it embraces an ultimate issue.”). Nevertheless, any legal
23
conclusions Dr. Williams might have, such as whether a particular agreement constitutes an “offer
24
for sale” is hereby excluded.
25
2. Dr. Williams’s Opinions on “Commercial Success”
26
Abaxis also seeks to exclude Dr. Williams’s opinions on the commercial success of
27
products containing the patented technologies. Mot. 5. In particular, Abaxis wishes to exclude Dr.
28
5
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
Williams’s opinion that some of the Abaxis products are not commercially successful, arguing that
2
such an opinion is not based on any technical knowledge and is therefore beyond the scope of Rule
3
702. Id. Cepheid contends, however, that Dr. Williams is not offering his opinion as to the
4
ultimate question of commercial success, but only to the limited question as to whether Abaxis’s
5
commercial success (assuming it exists) is attributable to the patented invention. Opp’n 10-11.
6
The Court is persuaded by Abaxis’s arguments and agrees that Dr. Williams’s opinion on
7
whether or why any product enjoys commercial success is inadmissible. Nothing in Dr. Williams’s
8
qualifications indicates that he is qualified to testify as an expert on such topics. Dr. Williams is an
9
expert in pharmacy, not in sales, marketing, or consumer preferences and demand. See Rodriguez
United States District Court
For the Northern District of California
10
Decl. Ex. 3, at ¶¶ 8-10. Accordingly, Abaxis’s motion to exclude Dr. Williams’s opinions on
11
commercial success is GRANTED. Dr. Williams may not speculate as to what he believes is
12
responsible for the commercial success of Abaxis’s process and beads. However, Dr. Williams may
13
educate the jury on whether Abaxis’s process and beads contain technology in the prior art or other
14
features not claimed in the patents-in-suit. The jurors are free to draw their own conclusions as to
15
whether the evidence establishes that the patented features, rather than other features, drive the sale
16
of Abaxis’s process and beads. See Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed.
17
Cir. 2006) (“Evidence of commercial success . . . is only significant if there is a nexus between the
18
claimed invention and the commercial success.”).
19
20
3. Dr. Williams’s Opinions on Copying
Abaxis finally objects to Dr. Williams’s opinion that the patented inventions were not
21
copied by Cepheid. Mot. 5. Such a conclusion, Abaxis argues, is only based on deposition
22
testimony and does not draw at all upon Dr. Williams’s technical background. Id. Accordingly,
23
Abaxis argues that Dr. Williams is simply acting as a layperson in giving this opinion, thereby
24
rendering it inadmissible under Rule 702. Id. Cepheid argues, however, that Dr. Williams has no
25
intention of offering his opinion on the ultimate question of copying, but instead only intends to
26
offer his analysis regarding a comparison of the two parties’ technologies, how Cepheid’s process
27
28
6
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
1
was developed, and which parts of the technologies were well known in the art. Opp’n 11-12.
2
Such subjects, Cepheid contends, are proper subjects of expert testimony. Id.
3
Dr. Williams is not entitled to offer his opinion as to the ultimate question of whether
4
Cepheid copied Abaxis. Accordingly, insofar as Abaxis’s motion objects to such an opinion, it is
5
GRANTED. Nevertheless, Dr. Williams will be allowed to give his opinion regarding the
6
comparison of the technologies of the parties, the development of Cepheid’s process, and whether
7
the parties’ technologies were well-known in the art. Such subjects are beyond the scope of a
8
layperson’s experience and within Dr. Williams’s expertise. Dr. Williams’s testimony on these
9
subjects is therefore proper, and to the extent Abaxis’s motion seeks to exclude such testimony, it is
United States District Court
For the Northern District of California
10
11
12
DENIED.
III.
CONCLUSION
For all of the foregoing reasons, Plaintiff’s motion to exclude Dr. Williams’s testimony is
13
GRANTED IN PART and DENIED IN PART as set forth above.
14
IT IS SO ORDERED.
15
16
Dated: July 19, 2011
_________________________________
LUCY H. KOH
United States District Judge
17
18
19
20
21
22
23
24
25
26
27
28
7
Case No.: 10-CV-02840-LHK
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S MOTION TO EXLUDE EXPERT
TESTIMONY
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?