Innovatier, Inc. v. CardXX, Inc.

Filing 333

ORDER denying in part and granting in part 207 CardXX's Motion to Preclude Innovatier from Presenting Opinion Testimony by Lay Witnesses Relating to Scientific, Technical, or Other Specialized Knowledge. Mr. Singleton may testify as to topics #1, #3, #5, #6, #7, and #8 as listed in Docket No. 230 at 7. CardXX's motion is granted as to topics #2, #4, and #9. By Judge Philip A. Brimmer on 9/29/11.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 08-cv-00273-PAB-KLM
INNOVATIER, INC.,
Plaintiff/Counterclaim Defendant,
v.
CARDXX, INC.,
Defendant/Counterclaimant,
v.
ROBERT SINGLETON,
Counterclaim Defendant.
_____________________________________________________________________
ORDER REGARDING CARDXX’S MOTION TO
PRECLUDE LAY OPINION TESTIMONY
_____________________________________________________________________
This matter is before the Court on the Motion to Preclude Innovatier from
Presenting Opinion Testimony by Lay Witnesses Relating to Scientific, Technical, or
Other Specialized Knowledge [Docket No. 207] of Defendant-Counterclaimant CardXX,
Inc. (“CardXX”) 1, and the supplemental briefs submitted by the parties discussing how
the Tenth Circuit’s opinion in James River Ins. Co. v. Rapid Funding, LLC, 648 F.3d
1134, 2011 WL 3211505 (10th Cir. July 29, 2011), affects the admissibility of Mr.
Singleton’s proposed testimony [Docket Nos. 322, 323]. The Court has original
jurisdiction over this action based on diversity jurisdiction under 28 U.S.C. § 1332.
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CardXX stated in its Reply that the parties have resolved their dispute
concerning the testimony of Mr. Keim. Docket No. 236 at 2. As such, the Court will
limit its consideration of CardXX’s objections to the testimony of Mr. Singleton.

I. BACKGROUND
CardXX specializes in the development and manufacturing of ultra-thin cards
with embedded electronic components called “smart cards.” Docket No. 235 at 2, ¶ 7.
CardXX has been assigned several patents in connection with its Reaction Assisted
Molded Process (“RAMP”) technology used in these smart cards. Docket No. 235 at 23, ¶ 9. On May 19, 2004, CardXX explored the possibility of sub-licensing the RAMP
technology to Solicore, Inc. Docket No. 235 at 4, ¶ 13. Solicore’s representative in the
negotiations with CardXX was its employee Robert Singleton. As a result of these
negotiations, CardXX entered into a Mutual Non-Disclosure Agreement with Solicore.
Id. Afterwards, Mr. Singleton toured CardXX’s facilities in Englewood, Colorado.
Docket No. 145 at 3, ¶ 10. In July 2004, Mr. Singleton left Solicore and founded
Innovatier, Inc. (“Innovatier”). Docket No. 145 at 4, ¶ 13. Subsequently, CardXX and
Innovatier executed a Mutual Non-Disclosure Agreement (“Innovatier MNDA”) on July
13, 2004. Docket No. 235 at 4, ¶¶ 14-15.
After signing the Innovatier MNDA, CardXX and Innovatier exchanged trade
secrets, signed a License Agreement, and attempted to make commercially acceptable
smart cards on a mass scale. Docket No. 145 at 4-5, ¶¶ 15-17. Within a short period
of time, the business relationship between CardXX and Innovatier deteriorated and this
lawsuit followed. Docket No. 145 at 9, ¶ 35. The parties have filed cross claims for
misappropriation of trade secrets, breach of a License Agreement and MNDAs, unfair
competition, and tortious interference with business relationships. Docket No. 145, at
Counts I-IV, X-XIII; Docket No. 235 at Countercl. Nos. 1-7.

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During discovery, CardXX deposed Mr. Singleton in his individual capacity and
as a Fed. R. Civ. P. 30(b)(6) designee for Innovatier. Docket No. 207 at 4. Based on
Mr. Singleton’s deposition testimony, CardXX believes that Innovatier will attempt to
elicit expert testimony from him. Id. Accordingly, CardXX filed a motion to exclude Mr.
Singleton’s testimony because he was not designated as an expert witness [Docket No.
207].
In response, Innovatier argues that Mr. Singleton’s proposed testimony is not
based on scientific or specialized knowledge. Rather, Innovatier asserts that Singleton
will base his testimony on personal observations and experiences as an inventor.
Docket No. 230 at 7. Innovatier claims that Mr. Singleton will testify about nine different
topics: (1) his development of the Innovatier process; (2) Mr. Singleton’s understanding
of CardXX’s RAMP process; (3) when and how CardXX’s RAMP process was
communicated to him; (4) how the parties’ processes differ; (5) his knowledge of
CardXX’s RAMP process prior to CardXX’s disclosures to Innovatier; (6) how he
acquired such knowledge from publicly available information; (7) his prior experience
using the components that CardXX claims are confidential or trade secrets; (8) the
various patents that he filed concerning the process Innovatier developed; and (9) his
review of CardXX’s patents prior to filing patents for Innovatier. Docket No. 230 at 7.
In a previous Order [Docket No. 242], the Court reserved ruling on the motion
and ordered Innovatier to file a supplemental brief regarding Mr. Singleton’s testimony
as it relates to issues #2, #4, and #9. Docket No. 242 at 5. The Tenth Circuit later
issued its opinion in James River, analyzing the relationship between Rule 701 and
Rule 702 of the Federal Rules of Evidence. The Court ordered [Docket No. 318] the
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parties to file supplemental briefs discussing James River’s effect on the admissibility of
Mr. Singleton’s testimony.
In their supplemental briefs, both parties assert that James River supports their
earlier positions. See Docket Nos. 322, 323. Innovatier argues that Mr. Singleton’s
proffered testimony is admissible because it does not rely on any “sort of sophisticated
economic model[s] or calculations” as he will testify simply to “what he observed [of] the
RAMP technology.” Docket No. 323 at. 4. On the other hand, CardXX argues that Mr.
Singleton’s testimony falls within Rule 701's prohibition because it relies on his technical
judgments and professional experience. Docket No. 322 at 3.
II. ANALYSIS
A. Rule 701 and James River
Rule 701 states as follows:
If the witness is not testifying as an expert, the witness’ testimony in
the form of opinions or inferences is limited to those opinions or
inferences which are (1) rationally based on the perception of the witness,
(b) helpful to a clear understanding of the witness’ testimony or the
determination of a fact in issue, and (c) not based on scientific, technical,
or other specialized knowledge within the scope of Rule 702.
In James River, the Tenth Circuit held that land valuation testimony of a property
owner was inadmissible under Rule 701 because it relied on technical or specialized
knowledge. James River, 2011 WL 3211505, at *7. The property that was being
valued was a dilapidated building owned by Rapid Funding, LLC and insured by James
River, an Ohio based insurance company. Id. at *2. This building was destroyed by an
arson-caused fire. After James River denied Rapid Funding’s insurance claim, Rapid
Funding filed suit seeking a declaratory judgment. Id.
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In the district court, James River objected to proposed testimony of Rapid
Funding’s principal, Andrew Miller. See James River Ins. Co. v. Rapid Funding, LLC,
No. 07-cv-01146-CMA-BNB, 2009 WL 481688, at *7 (D. Colo. Feb. 24, 2009). Mr.
Miller estimated the pre-fire value of the destroyed property based on the building’s
depreciation and the cost of rehabilitation. Id. at *8. The district court found that Mr.
Miller’s testimony was inadmissible as expert testimony under Rule 702 because it was
unreliable. Id. at *9-12. Nevertheless, the district court allowed Mr. Miller’s testimony,
subject to a limiting instruction, as lay opinion under Rule 701. James River, 2011 WL
3211505, at *4.
The Tenth Circuit reversed, holding that Mr. Miller’s testimony was “expert
opinion testimony based on technical or specialized knowledge and therefore
inadmissible under Rule 701(c).” Id. at *7. The Tenth Circuit based this ruling on four
conclusions: (1) Mr. Miller’s opinions and the judgments he used to make them
required professional experience beyond the scope of a lay opinion; (2) Mr. Miller’s
previous professional experience in real estate placed his testimony in the realm of
expert opinion because he was better situated to calculate depreciation compared to
other property owners; (3) the testimony relied on the extensive analysis and
conclusions of a 1,525-page report compiled by an outside expert; and (4) the Federal
Rules of Evidence generally consider landowner valuation testimony to be expert
opinion. Id.
Two other Tenth Circuit cases have a potential bearing on this case and were
discussed in James River. In Bryant v. Farmers Ins. Exchange, 432 F.3d 1114 (10th

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Cir. 2005), the Tenth Circuit held that, under Rule 701(c), a witness could testify about
the result of a simple mathematical equation because anyone with a grade-school
education could understand the testimony. Id. at 1124.
By contrast, in LifeWise Master Funding v. Telebank, 374 F.3d 917 (10th Cir.
2004), the Tenth Circuit held that, under Rule 701, the CEO of plaintiff could not testify
about an economic damages model that utilized S-curves, rolling averages, and
compounded growth rates. Id. at 929-30. After noting that the witness was not an
expert in any of these subjects under Rule 702, the court stated “a person may testify
as a lay witness only if his opinions or inferences do not require any specialized
knowledge and could be reached by any ordinary person.” Id. at 929 (quoting Doddy v.
Oxy USA, Inc., 101 F.3d 448, 460 (5th Cir. 1996)). Because the CEO’s testimony
involved “technical, specialized subjects,” Rule 701 precluded it.
Thus, regardless of whether Mr. Singleton has personal knowledge under Rule
701(a), his proposed testimony must be excluded if it involves opinions or inferences
about “scientific, technical, or other specialized knowledge” under Rule 701(c).
B. Mr. Singleton’s Proposed Testimony
Neither Innovatier nor Mr. Singleton has designated Mr. Singleton as an expert
witness, and Mr. Singleton has not submitted an expert report. Since Mr. Singleton was
not disclosed as an expert, any testimony of Mr. Singleton falling within the ambit of
Rule 702 must be excluded. The dispute, therefore, centers upon whether Mr.
Singleton’s testimony is lay opinion testimony, expert testimony, or a combination of
both.

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The Court will first review those topics for which the Court ordered supplemental
briefing by Innovatier, namely, topic #2 – Mr. Singleton’s understanding of CardXX’s
RAMP process; topic #4 – how the CardXX and Innovatier processes differ; and topic
#9 – Mr. Singleton’s review of CardXX’s patents prior to filing patents for Innovatier.
1. Topic #2: Mr. Singleton’s Understanding of CardXX’s
RAMP Process
Mr. Singleton’s testimony regarding the CardXX RAMP process is two-pronged.
First, he proposes to testify about the process through knowledge acquired during
conversations with Paul Meyer, a former CardXX employee. Docket No. 245 at 2.
Based on these conversations, Mr. Singleton proffers that the RAMP process is a
method of packaging electronics “in small form factors wherein the electronics are
placed on glue-dot pedestals between two graphic overlays . . . encapsulated by a
polymeric material injected . . . using a reaction injection molding process.” Docket No.
245 at 1. Second, Mr. Singleton offers testimony that is centered around his visit to
CardXX’s Colorado facilities, where he was shown “only a hodge-podge of standard,
off-the-shelf, antiquated equipment that did not appear to be customized or specially
designed in any way.” Id. at 2.
The Court concludes that testimony about Mr. Singleton’s understanding of
CardXX’s RAMP is inadmissible under Rule 701. First, the subject matter of this
testimony is clearly “scientific, technical, or other specialized knowledge,” Fed. R. Evid.
701(c), that is not understandable by an ordinary person. Morever, Mr. Singleton’s
“understanding” of the RAMP process is not proposed as merely recounting Mr.
Meyer’s statements to him, which in some circumstances may be admissible, but rather
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will consist of inferences and opinions of the RAMP process that Mr. Singleton formed
after talking to Mr. Meyer.
Second, such testimony falls within the scope of Rule 702 because such
testimony necessarily entails opinions and inferences derived from Mr. Singleton’s
specialized experience. Innovatier admits that “Mr. Singleton’s understanding of the
CardXX RAMP Process was also formed through Mr. Singleton’s extensive experience
in all aspects of the packaging industry.” Docket No. 245 at 2. Mr. Singleton does not
claim any personal or particularized knowledge of the RAMP process prior to his
discussions with Mr. Meyer. See Compania Administradora de Recuperacion de
Activos Administradora de Fondos de Inversion Sociedad Anonima v. Titan Int’l, Inc.,
533 F.3d 555, 561 (7th Cir. 2008) (“Taylor’s valuation attempt was based on his special
experience in the tire industry, not on his personal knowledge of the goods in question;
therefore, it falls within the purview of Rule 702.”). Moreover, Mr. Singleton does not
suggest that he conducted an independent review of this information; instead, he
asserts that the testimony will reflect what he “learned from Paul Meyer.” Docket No.
245 at 2. While experts are allowed to give testimony outside of their personal
experiences and observations, lay witnesses are not. Von der Ruhr v. Immtech Int’l
Inc., 570 F.3d 858, 864 (7th Cir. 2009). Because Mr. Singleton’s proffered testimony is
not based on his personal knowledge of the CardXX process, he will necessarily have
to rely on his professional experience to make judgments about Mr. Meyer’s
statements. However, any “knowledge derived from previous professional experience
falls squarely within the scope of Rule 702 and thus by definition outside of Rule 701.”
James River, 2011 WL 3211505, at *8 (quoting United States v. Smith, 640 F.3d 358,
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365 (D.C. Cir. 2011)). Since Mr. Singleton was not endorsed as an expert, this
testimony is excluded.
2. Topic #4: How the CardXX and Innovatier Processes Differ
Innovatier’s supplemental brief sets out Mr. Singleton’s description of the
differences between Innovatier’s process and the CardXX RAMP process. See Docket
No. 245 at 3-4. Mr. Singleton describes a manufacturing process that would not be
understandable or obvious to an ordinary person. For example, Innovatier’s
supplemental brief describes part of its process as follows: “the reaction injection
molding unit engages the specially designed nozzle and discharges a pre-determined
quantity of Innovatier’s own proprietary chemical polyol/isocyante formulation
(polyurethane), which is directed through the specially-designed nozzle and in between
the two overlays.” Id. at 3. Of course, to the extent that Mr. Singleton describes
Innovatier’s manufacturing process, based on his personal knowledge of it, his
testimony would not appear to consist of opinions or inferences. However, his
proposed comparison of the CardXX RAMP process to the Innovatier process
necessarily entails opinion testimony involving specialized knowledge. Thus, Mr.
Singleton’s testimony is excluded under Rule 701 and because he was not endorsed as
an expert.
3. Topic #9: Mr. Singleton’s Review of the CardXX Patents
Prior to Filing the Innovatier Patents
Mr. Singleton seeks to testify about his review of the CardXX patents after his
initial discussion with Paul Meyer. Docket No. 245 at 4. Mr. Singleton’s proffered
testimony explains how he reviewed the prior art in order to determine the scope of the
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CardXX patents. Id. For example, Innovatier’s supplemental brief states that “[b]ased
on [his prior art research] and the review of the CardXX patents, Mr. Singleton
concluded that CardXX could not own the entire process. . . .” Docket No. 245 at 4.
Like the testimony discussed under topic #2, Mr. Singleton’s comparison of CardXX’s
patents to the prior art consists of his opinions about scientific, technical, and
specialized knowledge that is excluded by Rule 701(c).
As noted in the Court’s previous order [Docket No. 242], topics #1, #3, #5, #6,
#7, and #8 appear to involve Mr. Singleton’s description of facts as opposed to his
statement of opinions or inferences. Assuming this is true, it is admissible as being
outside of either Rule 701 or Rule 702. However, to the extent Mr. Singleton attempts
to offer opinions or inferences based upon his specialized knowledge, it is subject to
exclusion as discussed earlier in this order.
III. CONCLUSION
Accordingly, it is
ORDERED that CardXX’s Motion to Preclude Innovatier from Presenting Opinion
Testimony by Lay Witnesses Relating to Scientific, Technical, or Other Specialized
Knowledge [Docket No. 207] is DENIED in part and GRANTED in part. Mr. Singleton
may testify as to topics #1, #3, #5, #6, #7, and #8 as listed in Docket No. 230 at 7.
CardXX’s motion is granted as to topics #2, #4, and #9.
DATED September 29, 2011.
BY THE COURT:
s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge
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