Zest IP Holdings, LLC et al v. Implant Direct MFG. LLC et al

Filing 80

ORDER denying without prejudice 56 Motion to Exclude Testimony of Dr. Gerald Niznick. Dr. Niznick may testify on February 15, 2012, and Zest may advance any of the arguments it advances now in favor of the Court disregarding his testimony. Signed by Judge Larry Alan Burns on 1/10/12. (All non-registered users served via U.S. Mail Service)(kaj)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10
11

ZEST IP HOLDINGS, LLC, a Delaware
limited liability company; et al.,

CASE NO. 10cv0541-LAB (WVG)

12

ORDER DENYING MOTION TO
EXCLUDE TESTIMONY OF DR.
GERALD NIZNICK

Plaintiffs,
13

vs.

14
15

IMPLANT DIRECT MFG., LLC, a Nevada
limited liability company; et al.,

16

Defendants.

17
18

There is a Markman hearing in this case on February 15, 2012. The parties’ claim

19

construction briefs are in, along with responses to one another’s briefs. There is one matter

20

to settle, though, before the hearing begins: whether to allow Defendant Implant Direct to call

21

Dr. Gerald Niznick as a witness to explain how a person of “ordinary skill in the art” would

22

construe the claims of the patents-in-suit. (Related to this, Zest asks the Court to exclude

23

a declaration from Dr. Niznick that Implant Direct submitted with its claim construction brief.)

24

As the parties well know, in construing claim terms the Court must give them their

25

ordinary and customary meaning, which is the meaning the terms would have “to a person

26

of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415

27

F.3d 1303, 1313 (Fed. Cir. 2005). Sometimes this meaning is readily apparent, but when

28

it’s not the Court can consider intrinsic and extrinsic evidence. Id. at 1314. Intrinsic
-1-

10cv0541

1

evidence, which the Court must consider first, includes the words of the claims themselves,

2

the patent specification, and the prosecution history. Id. at 1314. Extrinsic evidence

3

“consists of all evidence external to the patent and prosecution history, including expert and

4

inventor testimony, dictionaries, and learned treatises.” Markman v. Westview Instruments,

5

Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). The Court should only consider extrinsic evidence

6

if the intrinsic evidence is indeterminate and fails to resolve the ambiguity in a disputed claim

7

term. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).

8

The Court has read and considered the parties’ briefs concerning the admissibility of

9

Dr. Niznick’s testimony. It has two options. One is to exclude Dr. Niznick’s testimony

10

categorically, for any of the many different reasons that Zest offers. The other is to allow Dr.

11

Niznick to testify, listen to what he has to say on direct and cross-examination, and decide

12

then what use, if any, to make of his testimony. The latter option seems the most sensible.

13

Zest gives the Court many reasons to discount Niznick’s testimony, but not all of those

14

reasons—for example, his potential bias, or the inferiority of extrinsic versus intrinsic

15

evidence—require that Dr. Niznick not even be heard. Indeed, the case on which Zest

16

principally (or at least heavily) relies, Vitronics Corp., criticized a district court’s reliance on

17

extrinsic evidence, not the mere fact that the court heard the evidence. 90 F.3d at 1584

18

(“Moreover, even if the judge permissibly decided to hear all the possible evidence before

19

construing the claim, the expert testimony, which was inconsistent with the specification and

20

file history, should have been accorded no weight.”).

21

There is also a pragmatic consideration. This matter is somewhat over-argued in the

22

briefs submitted by the parties. The parties say more than they need to, they cite more

23

caselaw than the Court can reasonably be expected to process, and the Court has the sense

24

that they are both engaged in a selective and opportunistic reading of the caselaw.

25

Overwhelming, it’s the Court’s experience that counsel bring only their best arguments to an

26

actual hearing, and they bring them in a far more focused and less partisan manner. The

27

//

28

//
-2-

10cv0541

1

Court would rather resolve the fate of Dr. Niznick’s testimony under those conditions. Zest’s

2

motion to exclude Dr. Niznick’s testimony is therefore DENIED WITHOUT PREJUDICE. Dr.

3

Niznick may testify on February 15, 2012, and Zest may advance any of the arguments it

4

advances now in favor of the Court disregarding his testimony.

5
6
7

IT IS SO ORDERED.
DATED: January 10, 2012

8
9

HONORABLE LARRY ALAN BURNS
United States District Judge

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-3-

10cv0541