Kraft Foods Group Brands LLC v. TC Heartland LLC et al

Filing 435

MEMORANDUM ORDER re 320 MOTION to Exclude the Damages Opinions of Heartland's Offered Expert Dr. Bradford Cornell is DENIED; 316 MOTION to Exclude the Non-Infringement Opinions of Heartland's Offered Expert Dr. Robert Kimmel is GRANTED. Signed by Judge Leonard P. Stark on 1/12/17. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

KRAFT FOODS GROUP BRANDS
LLC,
Plaintiff,

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C.A. No.14-28-LPS

v.

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TC HEARTLAND, LLC d/b/a
HEARTLAND FOOD PRODUCTS
GROUP and HEARTLAND
PACKAGING CORPORATION,
Defendant.

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MEMORANDUM ORDER

I.

BACKGROUND
OnJuly 6, 2016, Plaintiff Kraft Foods Group Brands LLC ("Kraft" or "Plaintiff') filed

two Daubert Motions to Exclude the testimony of experts retained by Defendants TC Heartland,
LLC and Heartland Packaging Corporation ("Heartland" or "Defendants"). (See D.I. 316, 320)
The Court heard argument on these and other motions on August 30, 2016. (SeeD.I. 416 ("Tr."))
II.

LEGAL STANDARDS
In Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (1993), the Supreme Court

explained that Federal Rule of Evidence 702 creates "a gatekeeping role for the [trial] judge" in
order to "ensur[e] that an expert's testimony both rests on a reliable foundation and is relevant to
the task at hand." Rule 702(a) requires that expert testimony "help the trier of fact to understand
the evidence or to determine a fact in issue." Expert testimony is admissible only if ''the
testimony is based on sufficient facts or data," "the testimony is the product of reliable principles

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and methods," and "the expert has reliably applied the principles and methods to the facts of the
case." Fed. R. Civ. P. 702(b)-(d). There arethree distinct requirements for proper expert
·testimony: (1) the expert must be qualified; (2) the opinion must be reliable; and (3) the expert's
opinion must relate to the facts. See Elcock_v. Kmart Corp., 233 F.3d 734, 741 (3d Cir. 2000).

III.

DISCUSSION
A.

Motion to Exclude Robert Kimmel's Testimony

Kraft seeks to exclude Dr. RobertKimmel's non-infringement opinions concerning the
asserted claims' packaging limitations. Kraft argues that Dr. Kimmel's testimony regarding the
packaging limitations should be excluded because it is unreliable. (See D.I. 316 at 3) More
specifically, Kraft contends that Dr. Kimmel's testimony is built on the view that Kraft's claims
are limited flavored beverage concentrates that are packaged in containers that are "approx:imate
copies" of those depicted in the '472 and '557 patent specifications. According to Kraft, this
testimony violates the claim construction order, in which the Court rejected Heartland's position
that the packaging claims of the '472 and '557 patents should be construed as encompassing only
"approximate copies" of the embodiments disclosed in the specification. (See D.I. 198 at 23-26)
Further, Kraft argues, this "approximate copies" approach is not the correct legal test for
assessing infringement.
In his deposition, Dr. Kimmel stated that Heartland's counsel instructed him to conduct

his infringement analysis by not only comparing the accused products to each of the claim
elements, but "in addition in this case because of the crowded nature of this field" to consider "an
additional restriction to the specific embodiments that are ... clearly delineated in the patents,"
i.e., the figures. (D.I. 316 at 5-6) Heartland does not dispute that it so instructed Dr. Kimmel.
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(See D.I. 363 at 2-5)
At oral argument, counsel for Heartland stated that "even if ... literal infringement is
shown ... , it is a defense that the accused containers are not equivalent." (Tr. at 16) In support
of this "reverse doctrine of equivalents," Heartland refers the Court to SRI International v.
Matsushita Electric Corporation ofAmerica, 775 F.2d 1107 (Fed. Cir. 1985), and Holland
Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 250 (1928). (Tr. at 16-17) Kraft responds that
the reverse doctrine of equivalents has never been asserted as an infringement defense in this
case and, further, that Heartland is attempting to use the term to "cloak an existing argument in
some different disguise." (Tr. at 20)
"Infringement occurs when a properly construed claim_ of an issued patent covers an
accused device." DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1.342, 1346 (Fed. Cir. 2008). Thus,
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"infringement is to be determined by comparing the asserted claim to the accused device, not by
comparing the accused device to the figures of the asserted patent." Catalina Lighting, Inc. v.
Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). The reverse doctrine of equivalents is
"an equitable doctrine designed to prevent unwarranted extension of the claims beyond a fair
scope of the patentee's invention." Roche Palo Alto LLC v. Apotex, Inc., 531F.3d1372, 1377
(Fed. Cir. 2008) (internal quotation marks omitted). Its application is limited to circumstances
"where a device is so far changed in principle from a patented article that it performs the same or
similar function in a substantially d{fferent way, but nevertheless falls within the literal words of
the claim." Id. (emphasis original) (quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
339 U.S. 605, 608-609 (1950)).
In its claim construction order, the Court rejected Heartland's legal argument that the

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claims asserted in this case are limited to the embodiments specifically disclosed in the
specification. (D.I. 198 at 23-26) Heartland has not presented to the Court any new claim
construction arguments that justify reevaluation of tha,t position. 1 Even assuming that assertion
of the reverse doctrine of equivalents defense would be appropriate and timely, the law does not
permit Heartland to import limitations from the specification into the claims through expert
testimony.
Because expert testimonythat is inconsistent with the Court's claim construction is
.unreliable and unhelpful to the finder of fact, Dr. Kimmel' s infringement opinions regarding the
packaging.limitations of the asserted patents are STRICKEN, and Kraft's motion (D.I. 316) is
GRANTED.

B.

~otion

1.

to Exclude Bradford Cornell's Testimony

Availability .and Cost of Non-Infringing Alternative

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Kraft moves to exclude Dr. Cornell's testimony regarding the availability of noninfringing alternative and the cost of producing such an alternative, arguing that neither is based
on a reliable factual foundation. (See D.I. 323 at 3-4) Kraft takes particular issue with what it
characterizes as Dr. Cornell's reliance on Heartland employees' unsubstantiated opinions about
the availabil~ty and cost of such an alternative. (See id. at 4-5) At times, in Kraft's view, "the
testimony of Heartland's own witnesses establish[ es] that the facts upon which Dr. Cornell relied ·
are in error." (D.I. 323 at 2; see also Tr. at 9) Kraft asserts that Dr. Cornell "undertook no
investigation to ensure the accuracy or reliability of the facts Heartland provided." (D.I. 323 at 5)

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Since the Court found at claim construction that Heartland's legal arguments contradict
binding precedent (see D.I. 198 at 23-26), Heartland's new contentions (D.I. 363) in support of
its untenable theory are not helpful to its case.
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Kraft finds in deposition testimony evidence that Heartland's employees answered Dr. Cornell's
questions casually and without background research or detailed context. (See D.I. 323 at 6)
Kraft contends that Dr. Cornell relied upon unreliable information that was given off-the-cuff, is
based on the wrong time period, or does not reflect an acceptable alternative. (See id. at 6-7)
Heartland responds that Dr. Cornell appropriately relied on input from knowledgeable
Heartland employees. (See D.I. 362 at 1-2) Heartland notes that each of these individuals was
identified by Dr. Cornell in his report and was deposed by Kraft. (See id. at 2) Heartland
characterizes Kraft's "challenges to the non-infringing alternatives' cost estimates, feasibility,
and commercial acceptability" as having "no impact on admissibility, but are instead points for
cross examination and presentation of contrary evidence" - particularly because the lay witnesses
upon. whose statements Dr. Cornell relied are available to testify at trial. (Id. at 2-3)
Courts exercise their discretionary gatekeeping role on a case-by-case basis and their
decisions tum on the particular circumstances presented. See generally Elcock, 233 F.3d at 745.
Kraft's objections to Dr. Cornell's report are grounds for cross-examination; they go to the
weight to be accorded to Dr. Cornell's testimony rather than its admissibility. As Heartland
observes and represents, the individuals Dr. Cornell relies on have been deposed and will be
available to testify at trial. (See, e.g., D.I. 362 at 2; Tr. at 13 ("The financial economist talks to
the executives of the company, and they have all testified at trial. So if it doesn't prove out at
trial, well, then the noninfringing alternative may not be accepted.")) Kraft's motion is therefore
DENIED.

2.

Mr. McGavock's Damages Calculation

Kraft argues that Dr. Cornell's criticism of Mr. McGavock's opinions should be excluded

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because Dr. Cornell's report does not provide the calculations that form the basis of his critique.

(See D.I. 323 at 9-11) Heartland responds that its production of Dr~ Cornell's working papers
upon Kraft's request cures any deficiency. Although Kraft complains that Heartland did not
produce the working papers until after Dr Cornell's deposition, Kraft did not request the papers
until that time - despite having Dr. Cornell's expert report in hand. (See D .I. 3 62 at 4) The
Court is not persuaded that Heartland's failure to produce these documents earlier turned out to
be unfairly prejudicial to Kraft. With regard to the purported error in Dr. Cornell's· royalty rate
calculation, his use of a flawed spreadsheet, and his purported "rel[iance] on nothing more than
his intuition," the Court believes these issues go to weight rather than admissibility. (D.I. 323 at
10)
Kraft also argues that Dr. Cornell's critique should.be precluded because Dr. Cornell
failed to perform an original market analysis. (See D.I. 323 at 10 ("Dr. Cornell does not set forth
an opinion as to what the relevant market should be, and he.admits that he made no effort to
determine the relevant market or perform his own market analysis.")) However, as Heartland
notes, Dr. Cornell's criticisms ofMcGavock's report center on McGavock's methodology and
whether McG-avock's conclusions deserve any weight. (See D.I. 362 at 5 ("Dr. Cornell simply
criticizes Mr. McGavock for failing to show that Kraft would have made any additional sales but

for Heartland's allegedjnfringement ...."(emphasis original))) Given that the burden of
proving lost profit damages is on Kraft, it is not necessary that Dr. Cornell provide an alternative
market analysis of his own. ,Again, this critique goes to weight and not admissibility
For these reasons, Kraft's motion to exclude Dr. Cornell's critique ofMcGavock's
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testimony is DENIED.

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IV.

CONCLUSION
For the reasons stated above, IT IS HEREBY ORDERED THAT:
1. Kraft's Daubert motion to exclude testimony of Dr. Kimmel (D .I. 316) is GRANTED.
-2. Kraft's Daubert motion to exclude testimony of Dr. Cornell (D.I. 320) is DENIED.

January 12, 2017
Wilmington, Delaware

HON. L NARD P. STA
UNITED STATES DISTRICT COURT

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