Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1585

OBJECTIONS to re Exhibits To Be Used with Winer, Van Liere, Poret, and Balakrishnan by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # 1 Declaration Decl of Ketan Patel, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G)(Maroulis, Victoria) (Filed on 8/6/2012)

EXHIBIT C

Page 1

ABAXIS, INC., Plaintiff-Counterdefendant, v. CEPHEID,
Defendant-Counterclaimant.
Case No. 10-CV-02840-LHK
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA, SAN JOSE DIVISION
2012 U.S. Dist. LEXIS 100530

July 19, 2012, Decided
July 19, 2012, Filed
PRIOR HISTORY: Abaxis, Inc. v. Cepheid, 2012 U.S.
Dist. LEXIS 49748 (N.D. Cal., Apr. 9, 2012)
COUNSEL: [*1] For Abaxis, Inc., Plaintiff: Ricardo
Rodriguez, LEAD ATTORNEY, Cooley Godward
Kronish LLP, Palo Alto, CA; Bryan John Boyle, Lam
Khanh Nguyen, Cooley LLP, Palo Alto, CA.
For Cepheid, Defendant: Carolyn Chang, Ryan Aftel Tyz,
Lynn Harold Pasahow, Fenwick & West LLP, Mountain
View, CA; David James Miclean, Miclean Gleason LLP,
Redwood Shores, CA; Jonathan Elliot Singer, Fish &
Richardson, P. C., P.A., Minneapolis, MN; Limin Zheng,
Rebecca Charnas Grant, Steven C. Carlson, Fish &
Richardson P.C., Redwood City, CA; Rebecca L. Shult,
PRO HAC VICE, Fish & Richardson P.C., Minneapolis,
MN.

For Cepheid, Counter-claimant: Carolyn Chang, Ryan
Aftel Tyz, Lynn Harold Pasahow, Fenwick & West LLP,
Mountain View, CA; Limin Zheng, Steven C. Carlson,
Fish & Richardson [*2] P.C., Redwood City, CA;
Rebecca L. Shult, PRO HAC VICE, Fish & Richardson
P.C., Minneapolis, MN.
For Cepheid, Counter-claimant: Carolyn Chang, Ryan
Aftel Tyz, Lynn Harold Pasahow, Fenwick & West LLP,
Mountain View, CA; Limin Zheng, Rebecca Charnas
Grant, Steven C. Carlson, Fish & Richardson P.C.,
Redwood City, CA; Rebecca L. Shult, Fish & Richardson
P.C., Minneapolis, MN.
JUDGES: LUCY H. KOH, United States District Judge.
OPINION BY: LUCY H. KOH

For Cepheid, Counter-claimant: David James Miclean,
Miclean Gleason LLP, Redwood Shores, CA; Rebecca
Charnas Grant, Fish & Richardson P.C., Redwood City,
CA; Rebecca L. Shult, PRO HAC VICE, Fish &
Richardson P.C., Minneapolis, MN; Lynn Harold
Pasahow, Fenwick & West LLP, Mountain View, CA.

OPINION

For Abaxis, Inc., Counter-defendant: Ricardo Rodriguez,
LEAD ATTORNEY, Cooley Godward Kronish LLP,
Palo Alto, CA; Lam Khanh Nguyen, Cooley LLP, Palo
Alto, CA.

Plaintiff-Counterclaimant Abaxis, Inc. ("Abaxis")
moves
to
exclude
the
testimony
of
Defendant-Counterclaimant
Cepheid's
("Cepheid")
technical expert, Dr. Philip Williams. Pursuant to Civil

ORDER GRANTING IN PART AND DENYING IN
PART PLAINTIFF'S MOTION TO EXCLUDE
EXPERT TESTIMONY

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2012 U.S. Dist. LEXIS 100530, *2

Local Rule 7-1(b), the Court finds the motion appropriate
for determination without oral argument. Having
considered the submissions of the parties and the relevant
law, the Court GRANTS IN PART and DENIES IN
PART Abaxis's motion to exclude.

the district judge is 'a gatekeeper, not a fact finder.' When
an expert meets the threshold established by Rule 702 as
explained in Daubert, the expert may testify and the jury
decides how much weight to give that testimony." Id.
(quoting United States v. Sandoval-Mendoza, 472 F.3d
645, 654 (9th Cir. 2006)).

I. LEGAL STANDARD
II. ANALYSIS
Federal Rule of Evidence 702 allows admission of
"scientific, technical, or other specialized knowledge" by
a qualified expert if it will "help the trier of fact to
understand the evidence or to determine a fact in issue."
Expert testimony [*3] is admissible pursuant to Rule 702
if it is both relevant and reliable. Daubert v. Merrell Dow
Pharms., Inc., 509 U.S. 579, 589, 113 S. Ct. 2786, 125 L.
Ed. 2d 469 (1993). A district court's decision to admit
expert testimony under Daubert in a patent case follows
the law of the regional circuit. Micro Chem., Inc. v.
Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003).
When considering expert testimony offered pursuant to
Federal Rule of Evidence 702, a district court acts as a
"gatekeeper" by "making a preliminary determination that
the expert's testimony is reliable." Elsayed Mukhtar v.
Cal. State Univ., Hayward, 299 F.3d 1053, 1063 (9th Cir.
2002); see Kumho Tire Co. v. Carmichael, 526 U.S. 137,
147-48, 119 S. Ct. 1167, 143 L. Ed. 2d 238 (1999); Gen.
Elec. Co. v. Joiner, 522 U.S. 136, 142, 118 S. Ct. 512,
139 L. Ed. 2d 508 (1997); Daubert, 509 U.S. at 589-90.
An expert witness may provide opinion testimony if: (1)
the testimony is based upon sufficient facts or data; (2)
the testimony is the product of reliable principles and
methods; and (3) the expert has reliably applied the
principles and methods to the facts of the case. Fed. R.
Evid. 702; see also Sundance, Inc. v. DeMonte
Fabricating Ltd., 550 F.3d 1356, 1360 (Fed. Cir. 2008).
Under Daubert, "a court should consider (1) whether
[*4] a theory or technique 'can be (and has been) tested;'
(2) 'whether the theory or technique has been subjected to
peer review and publication;' (3) 'the known or potential
rate of error;' and (4) whether it is generally accepted in
the scientific community." Wagner v. Cnty. of Maricopa,
673 F.3d 977, 989 (9th Cir. 2012) (quoting Daubert, 509
U.S. at 593-94).
The inquiry into admissibility of expert opinion is a
"flexible one," where "[s]haky but admissible evidence is
to be attacked by cross examination, contrary evidence,
and attention to the burden of proof, not exclusion."
Primiano v. Cook, 598 F.3d 558, 564 (9th Cir. 2010)
(citing Daubert, 509 U.S. at 594, 596). "Under Daubert,

A. Dr. Williams's Technical Opinions
Abaxis does not dispute Dr. Williams's qualifications
as an expert. Rather, Abaxis contends that Dr. Williams
has no personal experience with the designing [*5] or
making of freeze-dried materials and lyophilization,
rendering his opinions on these topics inadmissible under
Rule 702 due to lack of proper foundation. Mot. 1, 3.
According to Abaxis, Dr. Williams's deposition revealed
that he was so inexperienced in these matters that his
testimony on such subjects would be unreliable. Id. at 3.
Thus, Abaxis argues, any opinions of Dr. Williams that
require knowledge of the design or manufacture of
freeze-dried materials and lyophilization, including his
technical evaluation of lyophilization or whether the prior
art is enabling, are inadmissible under Daubert. Id.
Similarly, Abaxis argues that Dr. Williams should be
precluded from offering any opinion relating to
knowledge of precision pumps, including IVEK brand
pumps, due to lack of experience with this particular
brand of pump. Id. at 3. Abaxis takes particular issue with
Dr. Williams's opinions that persons of ordinary skill in
the art would have known about IVEK pumps, that the
pumps were "well known," and that they were known in
pharmaceutical companies. Id. at 3-4. Abaxis argues that
Dr. Williams is unqualified to opine on IVEK pumps
because Dr. Williams first became familiar with IVEK
[*6] pumps during this litigation. Id. at 3. Moreover, Dr.
Williams's opinions about the popularity of IVEK pumps
is based solely on: (1) IVEK advertisements; (2) the
testimony of a former employee of a company that used
IVEK pumps (who now works at Cepheid); and (3) the
availability of IVEK pumps in a supply ordering catalog.
Id. Accordingly, Abaxis argues that Dr. Williams's
opinions regarding IVEK pumps, as well as all other
precision pumps, should be barred. Id.
The Court is not persuaded by Abaxis's arguments,
all of which argue, in some form or another, that Dr.
Williams's lack of personal knowledge renders his
testimony inadmissible. While Abaxis is correct that Dr.

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2012 U.S. Dist. LEXIS 100530, *6

Williams never personally executed a freeze-drying or
lyophilization procedure, the record indicates that Dr.
Williams was, indeed, familiar with such procedures. In
fact, the record makes clear that Dr. Williams's research
group had experience with freeze-drying and
lyophilization procedures and that Dr. Williams has
directed students in his laboratory who have conducted
these procedures. See Carlson Decl. Ex. H, at ¶ 12;
Williams Dep. 18:9-12, 19:5-6. This experience,
combined with Dr. Williams's extensive training in [*7]
the field of pharmacy, is sufficient to render his opinions
on freeze-drying and lyophilization admissible under
Rule 702. See Carlson Decl. Ex. H, at ¶¶ 3-7.

the case at hand, disputes about the degree or relevance
or accuracy (above this minimum threshold) may go to
the testimony's weight, but not its admissibility."). Thus,
Cepheid's objections to the credibility of Dr. Williams's
testimony must be resolved on cross-examination, not by
wholesale exclusion of his testimony. See DSU Med.
Corp. v. JMS Co., Ltd., 296 F. Supp. 2d 1140, 1156 (N.D.
Cal. 2003).

Dr. Williams's opinions regarding precision pumps,
including IVEK pumps, are similarly admissible. It is
true that Dr. Williams admitted that he was unfamiliar
with IVEK pumps prior to his involvement in the instant
case. Williams Dep. 57:7-15. However, Dr. Williams also
testified that he is familiar with a number of
highly-precise
pumps
including
syringe-driven,
peristaltic, and impeller-driven pumps. Id. at 56:7-10.
Moreover, since becoming involved with this case, Dr.
Williams has been exposed to evidence in the record that
he has used, in combination with his prior experience
with other similar pumps, to form his current opinion on
IVEK pumps. See Rodriguez Decl. Ex. 3, at ¶¶ 107,
122-23, 125-27. While Abaxis may dispute the
credibility, reliability, or sufficiency of the evidence that
Dr. Williams used to form his opinions, there is a
sufficient factual basis in the record for Dr. William's
opinion. Sundance, Inc., 550 F.3d at 1360. Thus, Dr.
Williams' testimony regarding IVEK pumps is admissible
as well.

1. Dr. Williams's Legal Opinions

Contrary to Abaxis's [*8] arguments, Rule 702
imposes no requirement that experts have personal
experience in an area to offer admissible testimony
relating to that area. See Daubert, 509 U.S. at 592
("Unlike an ordinary witness, . . . an expert is permitted
wide latitude to offer opinions, including those that are
not based on firsthand knowledge or observation.")
(citing Fed. R. Evid. 702, 703). Dr. Williams's knowledge
of freeze-drying procedures and IVEK pumps, although
indirect, is sufficient to satisfy Daubert's minimum
threshold of relevance and accuracy. See Mformation
Techs., Inc. v. Research in Motion Ltd., 08-CV-04990
JW, 2012 U.S. Dist. LEXIS 56784, 2012 WL 1142537, at
*3 (N.D. Cal. Mar. 29, 2012) ("When the methodology is
sound, and the evidence relied upon sufficiently related to

The Court agrees with Abaxis that Dr. Williams
cannot offer his opinion on purely legal matters. Cf.
McHugh v. United Serv. Auto. Ass'n, 164 F.3d 451, 454
(9th Cir. 1999) [*10] ("[Expert] testimony cannot be
used to provide legal meaning . . . ."). Accordingly,
Abaxis's motion to exclude Dr. Williams's opinions on
legal matters is GRANTED. This grant is narrow,
however, and only bars Dr. Williams from offering his
opinion on legal conclusions, such as the legal rights or
obligations of various parties or the legal effects of
particular agreements. It does not preclude Dr. Williams
from testifying about technical matters related to the
various agreements mentioned above. As Cepheid rightly
points out, Dr. Williams's opinion as to whether the
products in the above agreements embodied the asserted

Accordingly, Abaxis's motion to exclude the
technical [*9] opinions of Dr. Williams is DENIED.
B. Dr. Williams's Non-Technical Opinions

Abaxis objects to what it alleges are Dr. Williams's
legal opinions in paragraphs 157-60 and 182-87 of his
expert report. Mot. 4. In particular, Abaxis argues that Dr.
Williams improperly opines that an agreement between
Pfizer and R.P. Scherer, as well as various agreements
between Abaxis and Teramecs, constituted "offer[s] for
sale." Id. Such opinions, according to Abaxis, are
inadmissible under Rule 702 as they are relevant only to
conclusions of law rather than questions of fact. Id.
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 offering his opinion as to
whether the products that were the subjects of the various
agreements actually embodied the asserted patent claims.
Id. at 10. Because this is a proper subject of expert
testimony, Cepheid argues, Dr. Williams's opinions on
such matters are admissible. Id.

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2012 U.S. Dist. LEXIS 100530, *10

claims is admissible. See Fed. R. Evid. 704(a) ("An
opinion is not objectionable just because it embraces an
ultimate issue."). Nevertheless, any legal conclusions Dr.
Williams might have, such as whether a particular
agreement constitutes an "offer for sale" is hereby
excluded.
2. Dr. Williams's Opinions on "Commercial Success"
Abaxis also seeks to exclude Dr. Williams's opinions
on the commercial success of products containing the
patented technologies. Mot. 5. In particular, Abaxis
wishes to exclude Dr. Williams's opinion that some of the
Abaxis products are not commercially [*11] successful,
arguing that such an opinion is not based on any technical
knowledge and is therefore beyond the scope of Rule 702.
Id. Cepheid contends, however, that Dr. Williams is not
offering his opinion as to the ultimate question of
commercial success, but only to the limited question as to
whether Abaxis's commercial success (assuming it exists)
is attributable to the patented invention. Opp'n 10-11.
The Court is persuaded by Abaxis's arguments and
agrees that Dr. Williams's opinion on whether or why any
product enjoys commercial success is inadmissible.
Nothing in Dr. Williams's qualifications indicates that he
is qualified to testify as an expert on such topics. Dr.
Williams is an expert in pharmacy, not in sales,
marketing, or consumer preferences and demand. See
Rodriguez Decl. Ex. 3, at ¶¶ 8-10. Accordingly, Abaxis's
motion to exclude Dr. Williams's opinions on commercial
success is GRANTED. Dr. Williams may not speculate as
to what he believes is responsible for the commercial
success of Abaxis's process and beads. However, Dr.
Williams may educate the jury on whether Abaxis's
process and beads contain technology in the prior art or
other features not claimed in the patents-in-suit. [*12]
The jurors are free to draw their own conclusions as to
whether the evidence establishes that the patented
features, rather than other features, drive the sale of
Abaxis's process and beads. See Ormco Corp. v. Align
Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006)
("Evidence of commercial success . . . is only significant
if there is a nexus between the claimed invention and the
commercial success.").
3. Dr. Williams's Opinions on Copying

Abaxis finally objects to Dr. Williams's opinion that
the patented inventions were not copied by Cepheid. Mot.
5. Such a conclusion, Abaxis argues, is only based on
deposition testimony and does not draw at all upon Dr.
Williams's technical background. Id. Accordingly,
Abaxis argues that Dr. Williams is simply acting as a
layperson in giving this opinion, thereby rendering it
inadmissible under Rule 702. Id. Cepheid argues,
however, that Dr. Williams has no intention of offering
his opinion on the ultimate question of copying, but
instead only intends to offer his analysis regarding a
comparison of the two parties' technologies, how
Cepheid's process was developed, and which parts of the
technologies were well known in the art. Opp'n 11-12.
Such [*13] subjects, Cepheid contends, are proper
subjects of expert testimony. Id.
Dr. Williams is not entitled to offer his opinion as to
the ultimate question of whether Cepheid copied Abaxis.
Accordingly, insofar as Abaxis's motion objects to such
an opinion, it is GRANTED. Nevertheless, Dr. Williams
will be allowed to give his opinion regarding the
comparison of the technologies of the parties, the
development of Cepheid's process, and whether the
parties' technologies were well-known in the art. Such
subjects are beyond the scope of a layperson's experience
and within Dr. Williams's expertise. Dr. Williams's
testimony on these subjects is therefore proper, and to the
extent Abaxis's motion seeks to exclude such testimony,
it is DENIED.
III. CONCLUSION
For all of the foregoing reasons, Plaintiff's motion to
exclude Dr. Williams's testimony is GRANTED IN
PART and DENIED IN PA RT as set forth above.
IT IS SO ORDERED.
Dated: July 19, 2011
/s/ Lucy H. Koh
LUCY H. KOH
United States District Judge