Manufacturing Resources International, Inc. v. Civiq Smartscapes, LLC et al
Filing
290
MEMORANDUM OPINION. Signed by Judge Richard G. Andrews on 9/4/2019. (nms)
Case 1:17-cv-00269-RGA Document 290 Filed 09/04/19 Page 1 of 15 PageID #: 25779
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MANUFACTURING RESOURCES
INTERNATIONAL, INC.,
Plaintiff;
Civil Action No. 17-269-RGA
V.
CIVIQ SMARTSCAPES, LLC, et al. ,
Defendants.
MEMORANDUM OPINION
Arthur G. Connolly III, Ryan P. Newell, and Kyle Evans Gay, CONNOLLY GALLAGHER
LLP, Wilmington, DE; Jeffrey S. Standley, James Lee Kwak (argued), and F. Michael Speed, Jr.
(argued), STANDLEY LAW GROUP LLP, Dublin, OH, attorneys for Plaintiff.
John W. Shaw (argued), Karen E. Keller, David M. Fry, and Nathan R. Hoeschen, SHAW
KELLER LLP, Wilmington, DE; Douglas J. Kline (argued), Srikanth K. Reddy (argued), and
Molly R. Grammel, GOODWIN PROCTER LLP, Boston, MA; Naomi L. Birbach, GOODWIN
PROCTER LLP, New York, NY; Yuval H. Marcus, Cameron S. Reuber, Matthew L. Kaufman,
and Lori L. Cooper, LEASON ELLIS LLP, White Plains, NY, attorneys for Defendants.
September
!L ,
2019
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Currently pending before the Court are Plaintiff's Daubert Motion (D.I. 207) and
Defendants' Daubert Motion. (D.I. 202). The parties have fully briefed the issues. (D.I. 203,
212,239, 240, 247,252). I heard helpful oral argument on August 22, 2019. (Hr' g Tr.).
I.
BACKGROUND
Plaintiff Manufacturing Resources International, Inc. filed suit against Defendants Civiq
Holdings, Civiq Smartscapes, Comark Holdings, and Comark on March 14, 2017 alleging
infringement of seventeen patents. 1 (D.I. 1 ,r 144). Defendants counterclaimed. (D.I. 18). Both
parties have amended their claims. (D.I. 84, 101). The parties completed fact discovery on
November 30, 2018 and expert discovery on April 5, 2019. (D.I. 163). Trial is scheduled to begin
on September 9, 2019. (D.I. 26).
The disputed patent claims remainirtg in the case are claim 1 of U.S. Patent No. 8,854,595
("the ' 595 Patent"), claims 8, 11 , and 14-15 of U.S Patent No. 8,854,572 ("the ' 572 Patent"),
claims 2 and 6 of U.S. Patent No. 8,773 ,633 ("the ' 633 patent"), claim 18 of U.S. Patent No.
9,629,287 ("the ' 287 patent"). (D.I. 212 at 3; D.I. 264). I have granted summary judgment of
infringement as to claims 1 and 2 of the U.S . Patent No. 9,173 ,325 ("the ' 325 patent"). (D.I. 282
at 9; D.I. 283).
Plaintiff moves to exclude the opinions of Mr. Eichmann, Defendants' damages expert,
relating to forward citation analysis and reasonable royalty calculations.
(D.I. 21 2 at 3).
Defendants move to exclude ( 1) all damages opinions from Plaintiff's damages expert, Ms. Bennis;
(2) both Dr. Silzars' and Ms. Bennis' opinions regarding non-infringing alternatives; and (3) Dr.
1
U. S. Patent Nos. 8,854,595 , 9,173,322, 8,767,165, 8,274,622, 8,482,695, 8,854,572, 9,089,079, 8,3 73 ,84 1,
8,351 ,014, 9,030,129, 9,167,655, 8,125,163, 8,829,815 , 9,3 13 ,91 7, 8,497,972, 8,016,452, and 9,448,569 . (D.I. 1
1 144).
2
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Silzars' testimony regarding secondary considerations and infringement by Hyundai products.
(D.I. 203 at 1-2).
II.
LEGAL STANDARD
Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and
states:
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of an
opinion or otherwise if: (a) the expert' s scientific, technical, or other
specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based
on sufficient facts or data; (c) the testimony is the product of reliable
principles and methods; and (d) the expert has reliably applied the
principles and methods to the facts of the case.
Fed. R. Evid. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert testimony:
qualification, reliability and fit.
Qualification refers to the
requirement that the witness possess specialized expertise. We have
interpreted this requirement liberally, holding that a broad range of
knowledge, skills, and training qualify an expert. Secondly, the
testimony must be reliable; it must be based on the "methods and
procedures of science" rather than on "subjective belief or
unsupported speculation"; the expert must have "good grounds" for
his or her belief. In sum, Daubert holds that an inquiry into the
reliability of scientific evidence under Rule 702 requires a
determination as to its scientific validity. Finally, Rule 702 requires
that the expert testimony must fit the issues in the case. In other
words, the expert' s testimony must be relevant for the purposes of
the case and must assist the trier of fact. The Supreme Court
explained in Daubert that Rule 702 ' s 'helpfulness' standard requires
a valid scientific connection to the pertinent inquiry as a
precondition to admissibility.
By means of a so-called "Daubert hearing," the district court acts as
a gatekeeper, preventing opinion testimony that does not meet the
requirements of qualification, reliability and fit from reaching the
jury. See Daubert ("Faced with a proffer of expert scientific
testimony, then, the trial judge must determine at the outset,
pursuant to Rule 104(a) of the Federal Rules of Evidence whether
the expert is proposing to testify to (1 ) scientific knowledge that (2)
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will assist the trier of fact to understand or determine a fact in
issue.").
Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (cleaned
up).1
III.
DISCUSSION
A. Mr. Eichmann's Forward Citation Analysis
Plaintiff moves to exclude the portion of Mr. Eichmann's opnnons relating to the
calculation of a reasonable royalty due to Mr. Eichmann's reliance on a forward citation analysis.
(D.I. 212 at 36). Plaintiff argues that Mr. Eichmann's forward citation analysis is not a reliable
principle or method. (Id.) . Defendants argue that forward citation analysis has been accepted as
a reliable method by multiple courts and Plaintiff's objections go to weight and credibility, not
admissibility. (D.I. 239 at 34-40).
Forward citation analysis is a method of estimating the value of a particular patent based
on the number of times the patent is cited by later patents. (D.I. 212 at 36). Mr. Eichmann's
forward citation analysis begins with a license agreement between Plaintiff and OnDIGitech in
2009, which licensed the ' 064 application (the parent provisional of all asserted patents in this
case), as well as another provisional application, for a lump sum of $500,000 and a royalty of 6%
on gross sales of licensed products. (Id. at 37). Mr. Eichmann's opinion uses a forward citation
analysis to calculate the relative value of the asserted patents, using the 6% royalty in the
OnDIGitech license as the value for all granted patents originating from the two applications. (D.I.
210, Ex. 32 ,r,r 133-38).
1
The Court of Appeals wrote under an earlier version of Rule 702, but the recent amendments to it were not
intended to make any substantive change.
4
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"[D]amages models are fact-dependent. " Commonwealth Sci. & Indus. Research Org. v.
Cisco Sys., Inc. , 809 F.3d 1295, 1301 (Fed. Cir. 2015). To that end, "there may be more than
one reliable method for estimating a reasonable royalty." See Apple v. Motorola, Inc., 757 F.3d
1286, 1315 (Fed. Cir. 2014), overruled on other grounds by Williamson v. Citrix Online, LLC,
792 F.3d 1339 (Fed. Cir. 2015). Multiple courts have found forward citation analyses to be
reliable. See Comcast Cable Comm 'ns, LLC v. Sprint Comm 'ns Co. , LP, 218 F. Supp. 3d 375,
383-84 (E.D. Pa. 2016); Intel Corp. v. Future Link Sys., 2017 WL 2482881 , at *4 (D. Del. June
1, 2017); Evolved Wireless, LLC v. Apple Inc., 2019 WL 1178517, at *3-4 (D. Del. Mar. 13 ,
2019). Forward citation analysis has an academic pedigree that supports it as a reliable
methodology. See Comcast, 218 F. Supp. 3d at 383 nn. 8-9 (citing Dietmar Harhoff, Frederic
Scherer, and Katrin Vopel, Citation, family size, opposition and the value ofpatent rights,
Research Policy, 1596 (2002); Bronwyn H . Hall, Adam Jaffe, and Manuel Trajtenberg, Market
Value and Patent Citations, RAND Journal of Economics 36 (1 ) (Spring 2005); Manuel
Trajtenberg, A Penny for Your Quotes: Patent Citations and the Value of Innovations, RAND
Journal of Economics 21 (1 ) (Spring 1990); Adam B. Jaffe and Gaetan de Rassenfosse, Patent
Citation Data in Social Science Research: Overview and Best Practices, Nat'l Bureau of Econ.
Research Working Paper Series (2016), available athttp://www.nber.org/papers/w21868.) Even
in Finjan, Inc. v. Blue Coat Sys., Inc., 2015 WL 4272870, at *7-8 (N.D. Cal. July 14, 2015),
upon which Plaintiff relies, the expert' s forward citation analysis was only unreliable because the
expert had not tied the forward citation analysis to the facts of the case. Thus, the correct inquiry
is whether Mr. Eichmann' s forward citation analysis fails to take into consideration the specific
facts of this case such that it is unreliable.
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Plaintiff asserts that Mr. Eichmann' s forward citation analysis does not consider the context
of the technology that the accused infringer actually wanted---critical technology for a viable
outdoor display. (D.I. 212 at 40). But Mr. Eichmann ties his forward citation analysis to a specific
comparable license between Plaintiff and OnDIGitech. (D.I. 210, Ex. 32
,r,r 134-35).
Plaintiffs
disagreement with Mr. Eichmann' s conclusions about the value of its patent is an issue of weight
rather than admissibility. "At base, ' the question of whether the expert is credible or the opinion
is correct is generally a question for the fact finder, not the court."' Bayer HealthCare LLC v.
Baxa/ta Inc., 2019 WL 330149, at *1 (D. Del. Jan. 25, 2019) (quoting Summit 6, LLC v. Samsung
Elecs. Co., Ltd. , 802 F.3d 1283, 1296 (Fed. Cir. 2015)). Forward citation analysis can be a reliable
method to decide the relative value of patents and to assist in determining a reasonable royalty.
Mr. Eichmann sufficiently ties his analysis to the facts of this case. Plaintiffs arguments thus go
to the weight and credibility of Mr. Eichmann' s testimony, which can be addressed on crossexamination. Thus, I will deny Plaintiffs Daubert motion.
B. Ms. Bennis' Damages Opinion
Defendants ask the Court to exclude the entirety of Ms. Bennis' damages op1mons.
Defendants assert that Ms. Bennis' lost profits opinion is flawed because (1) Ms. Bennis
improperly relies on information exchanged during confidential settlement communications,
(2) improperly concludes without support that Defendants would have purchased the entire Link
Kiosk from Plaintiff rather than the claimed display assembly and paid the entirety of the price
Defendants charge their own customers, and (3) improperly concludes that demand exists for the
patented product without any support of reliable evidence. (D.I. 203 at 17-18). Defendants also
assert that Ms. Bennis' reasonable royalty opinion should be excluded because (1) the royalty rate
was derived based on two independent arbitrary calculations unsupported by the evidence, and (2)
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her opinion that the entire market value rule applies is unsupported by any evidence that the
patented features drive demand for the accused products. (Id. at 18).
1. Lost Profits Opinion
Defendants challenge Ms. Bennis' lost profits opinion on three bases: (1) improper reliance
on information received during confidential settlement negotiations, (2) insufficient facts
supporting her conclusion that in the "but-for" world, Defendants would have purchased an entire
kiosk from Plaintiff rather than the smaller display assembly component, and (3) insufficient facts
to support a finding that demand exists for the patented product. (Id. at 17-18).
Defendants assert that Ms. Bennis' lost profits opinion improperly relies on incremental
cost and other calculations provided by Defendants in confidential settlement communications
protected by both Federal Rule of Evidence 408 and a Non-Disclosure Agreement. (Id. at 18).
I agree. Under Rule 408, "settlement offers and negotiations offered to prove the amount
of damages owed on a claim" are not permitted. LaserDynamics, Inc. v. Quanta Comput. , Inc. ,
694 F.3d 51 , 77 (Fed. Cir. 2012). "Evidence of prior settlement negotiations in a pending patent
infringement matter is generally forbidden under [Rule] 408." Inline Connection Corp. v. AOL
Time Warner Inc., 470 F. Supp. 2d 435 , 444 (D. Del. 2007). In this case, financial information
provided by Defendant to Plaintiff was also protected by agreement.
The Nondisclosure
Agreement between the parties provides that if relevant information is disclosed as part of
settlement negotiations, "the litigation part[y] seeking discovery must obtain the production via
the discovery process and not via the exchange of any information hereunder." (D.I. 209, Ex. 20
at 2 (emphasis added)). The parties disagree as to the meaning of this statement. While both
parties agree that the information disclosed in settlement discussions is not inherently protected
from disclosure or use, Defendants argue that the information must be separately disclosed in
7
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discovery to be usable. (D.I. 203 at 19-20). Plaintiff argues that as long as the information
disclosed was responsive to a discovery request, it is permissible to use it, regardless of whether a
separate disclosure occurred.
(D.I. 240 at 14).
Defendants have the better reading of the
Nondisclosure Agreement. It explicitly states the parties "must obtain the production via the
discovery process." (D.I. 209, Ex. 20 at 2).
Defendants have identified multiple pages of Ms. Bennis' report where she purportedly
uses information solely provided by Defendants in connection with the settlement meetings. (D.I.
203 at 20). Ms. Bennis in her report relies upon calculations from Plaintiffs CEO, Mr. Stoeffler,
which were done using information provided by Defendants to Plaintiff pursuant to the
Nondisclosure Agreement as part of the settlement negotiations. (D.I. 209, Ex. 15 at 44). Plaintiff
seems to argue that it is not improper for Ms. Bennis to rely on this information because it came
from Mr. Stoeffler rather than from the Defendants. However, the calculations provided by Mr.
Stoeffler relied on information that was solely disclosed by Defendants in the settlement
negotiations. 2 Thus, Ms. Bennis' opinion relies on information received from Defendants, not via
the discovery process, but through the settlement negotiations.
Nor does Plaintiffs own
production of Mr. Stoeffler' s calculations in discovery make reliance on the information proper. 3
As Ms. Bennis' opinion improperly relies on information from the settlement negotiations,
I must determine the extent to which her lost profits opinion should be excluded or struck.
Defendants assert that the entirety of Ms. Bennis' lost profits opinion should be excluded because
she has admitted that without Mr. Stoeffler' s calculations, her opinion would not be reliable. (D.I.
2
Defendants note that Mr. Stoeffler was not permitted under the Protective Order to have access to Defendants '
financial information provided in discovery. (Hr'g Tr. at 65 :4-7). Plaintiff agreed. (Id. at 65: 13-1 4).
3
Plaintiff suggests that Defendants have waived this objection by not previously objecting to the disclosure of Mr.
Stoeffler' s calculations in discovery. (D.1. 240 at 17). However, disclosing information in discovery does not
necessarily indicate an intent to rely upon that information at trial. Thus, Defendants did not waive their objection
by failing to note an objection at an earlier stage of this litigation.
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203 at 21 (citing D.I. 210, Ex. 23 at 173:1-11)).
Plaintiff asserts that the same or similar
information upon which Ms. Bennis relies was disclosed by Defendants in discovery. (Hr'g Tr. at
46:5-11). At oral argument, I asked Plaintiff to file a letter explaining how the appropriate numbers
could be reached from sources that were not products of the settlement negotiations. (Hr' g Tr. at
68:17-22). Plaintiff has done so, and Defendants have responded. (D.I. 278; D.I. 285).
After reviewing the letters, I agree with Plaintiff. Ms. Bennis has identified sources from
which she could have conducted a similar incremental cost analysis with other properly discovered
information. (D.1. 278). I believe it would be possible for Ms. Bennis to supplement her expert
report to provide a lost profits analysis without reliance on the confidential settlement discussions
or information improperly obtained thereunder.
Defendants also assert that Ms. Bennis' lost profits opinions improperly conclude without
sufficient support that Defendants would have bought the entire Link Kiosk from Plaintiff rather
than solely the claimed display assembly. (D.I. 203 at 22-23). I agree with Defendants.
The Federal Circuit has held that "demand for [an] entire apparatus is, m most
circumstances, not interchangeable with demand for a patented component of the larger
apparatus." Calico Brand, Inc. v. Ameritek Imports, Inc., 527 F. App'x 987, 996 (Fed. Cir. 2013)
(citing Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1320 (Fed. Cir. 2011)). Here, Ms.
Bennis has not explained why demand for an outdoor display is interchangeable with demand for
a kiosk that includes an outdoor display. Additionally, Ms. Bennis has provided no evidence to
support her opinion that Defendants would have purchased the entire kiosk from Plaintiff, other
than restating the belief of Plaintiff's CEO, Mr. Dunn. Ms. Bennis' only support for providing a
lost profits opinion based upon a kiosk rather than the smaller patented display assembly is the
following:
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•
"I understand MRI believes that "but-for" Civiq's infringement, MRI would have
sold its products to Civiq for purposes of fulfilling the LinkNYC contract." (D.I.
209, Ex. 25 at 26-27).
•
Evidence regarding demand for digital signage, but without reference to kiosks.
(Id. at 30-32)
•
Civiq' s interest in acquiring MRI, but without tying this interest to supply of the
kiosks instead of display assembly. (Id. at 34).
•
"I understand from my discussion with Mr. Dunn that MRI would have supplied
the entire digital display to Civiq and that part of MRI' s business is to customize a
product to meet the specification requirements of the customer." (D.I. 209, Ex. 26
at 10).
These opinions either restate Plaintiff MRI' s belief with no further supporting evidence or cite
evidence that is not sufficiently tied to the facts . This is impermissible "unfiltered regurgitation"
of another' s opinion. XpertUniverse, Inc. v. Cisco Sys. , Inc., 2013 WL 865974, at *3 (D. Del. Mar.
7, 2013).
These errors are compounded by Ms. Bennis' failure to support her opinion that Plaintiff's
lost profits would have been equal to Defendants' profits from its sales of the accused Link product
with economic evidence. Specifically, Plaintiff and Ms. Bennis put forward a theory oflost profits
where Defendants are the customer, rather than the traditional lost profits case where a plaintiff
asserts it would have made its lost sales in place of the sales defendant made. Ms. Bennis' opinion
at no point explains why Defendants, in the "but-for" world, would act as a middleman where the
cost of goods sold equaled Defendants' gross revenues. (D.I. 209, Ex. 25 at 43-46). Defendants
would lose money on every sale of the accused kiosk to the NYC Link project. Thus, Ms. Bennis
does not rely on sufficient facts or reliable principles for her lost profits opinion.
Therefore, I will exclude Ms. Bennis' lost profits opinion under Federal Rule of Evidence
702.
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2. Reasonable Royalty Opinion
Defendants also move to strike Ms. Bennis' reasonable royalty opinion for (1) failure to
support her opinion that the entire market value rule applies and (2) failure to support her opinions
with reliable evidence. (D.I. 203 at 27, 31).
Ms. Bennis offers an opinion that the royalty base should be the entire market value of the
accused product because "an LCD screen and other electrical components would be valueless
when simply placed outdoors if not for the protection provided by the patented thermal
management technology." (D.I. 209, Ex. 25 at 53). However, this is contrary to Federal Circuit
precedent. For multi-component products, the royalty base may only include the products' entire
value where the expert shows "that the patented feature alone cause customers to purchase the
accused products." AVMTech., LLC v. Intel Corp., 2013 WL 126233, at *2 (D. Del. Jan 4, 2013).
" It is not enough to merely show that the [patented technology] is viewed as valuable, important
or even essential to the use of the" product. LaserDynamics, 694 F.3d at 68. Neither does Ms.
Bennis explain why the LCD screen and other electrical components "are simply generic and/or
conventional and hence of little distinguishing character [such that] it may be appropriate to use
the entire value of the product because the patented feature accounts for almost all of the value of
the product as a whole." Power Integrations, Inc. v. Fairchild Semiconductor Int 'l, Inc., 904 F.3d
965, 978 (Fed. Cir. 2018).
Ms. Bennis' reasonable royalty opinion is not saved by the use of the comparable license
between Plaintiff and OnDIGitech. The comparable OnDIGitech license was for "flat panel
display" products. (D.I. 209, Ex. 25 at 64). Ms. Bennis does not explain why the apportionment
inherent in the license' s royalty rate for a "flat panel display" would apply to a larger kiosk product
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that includes multiple technological components including a "flat panel display." 4 (Id. ). Thus,
Ms. Bennis has failed to provide sufficient facts or reliable evidence that the proper apportionment
of the value of the patented invention was inherent in the OnDIGitech license.
Thus, I agree with Defendants that Ms. Bennis' reasonable royalty opinion does not
conduct a reliable apportionment analysis. Therefore, I will grant Defendants' motion to exclude
Ms. Bennis' reasonable royalty opinion.
C. Dr. Silzars' and Ms. Bennis' Noninfringing Alternatives Opinions
Defendants argue that both Dr. Silzars' and Ms. Bennis' opinions regarding non-infringing
alternatives should be excluded because (1) they are based solely on personal beliefs and
speculation and (2) they rely on the incorrect legal standard for "availability." (D.I. 203 at 34-37).
1. Acceptability
Defendants argue that both experts ' opinions on the acceptability of potential alternatives
should be excluded because they rely solely on "unsubstantiated beliefs" of Plaintiff's CEO. (D.I.
203 at 34).
I disagree. First, Ms. Bennis' opinion regarding the acceptability of potential alternatives
relies on more than solely discussion with Mr. Dunn. For example, Ms. Bennis cites to the
expectations of the LinkNYC project (D.I. 209, Ex. 25 at 35-36) and deposition testimony from
both Mr. Kaszycki and Mr. D ' Amelio regarding other competitor' s kiosks and panels (id. at 3638). To the extent that Defendants disagree with Ms. Bennis' opinions regarding the lack of
noninfringing alternatives, that is an issue of the weight and credibility her opinion should be
given, not its admissibility.
4
It seems obvious that no sensible explanation is possible.
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Second, Dr. Silzars' opinion also relies on sufficient facts to support his opinion regarding
the acceptability of purported noninfringing alternatives.
Dr. Silzars looks to the technical
requirements for the LinkNYC project as a proxy for what Defendants would have accepted if they
had not made their own infringing product. (See D.I. 210, Ex. 31 at ,r,r 15, 18-19, 24, 29).
As to availability, Dr. Silzars' opinion does not contradict Grain Processing Corp. v.
American Maize-Prods. Co., 185 F.3d 1341 (Fed. Cir. 1999). As the Federal Circuit stated,
"Acceptable substitutes that the infringer proves were available during the accounting period can
preclude or limit lost profits; substitutes only theoretically possible will not." Grain Processing,
185 F.3d at 1353. Here, I understand Dr. Silzars will testify that certain noninfringing alternatives
were not available because the purported alternatives (1) were not in fact on the market during the
relevant period and (2) could not easily have been designed during the relevant period. (D.I. 210,
Ex. 31
,r,r 15-16, 24, 28).
This is legally acceptable testimony and will not be struck. Thus, I deny
Defendants' motion to exclude Ms. Bennis' and Dr. Silzars' opinions regarding noninfringing
alternatives.
D. Dr. Silzars' Miscellaneous Opinions
1. Secondary Considerations
Defendants argue that Dr. Silzars' opinions regarding secondary considerations of nonobviousness should be excluded because he does nothing other than uncritically repeat an
interrogatory response and the beliefs of Plaintiffs CEO. (D.I. 203 at 38). Defendants also argue
that Dr. Silzars has failed to establish a nexus between the presented evidence and the merits of
the claimed invention. (Id. at 40).
I disagree.
First, Dr. Silzars' expert report does more than simply incorporate an
interrogatory response. Dr. Silzars provides specific examples for each secondary consideration
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that he asserts supports nonobviousness. (D.I. 208, Ex. 13
,r,r
657-61). Second, experts are
permitted to rely on facts provided by employees and other experts. Fed. R. Evid. 703. Dr. Silzars
does not appear to be uncritically regurgitating the opinions of others but using the testimony of
others to provide an a
ropriate factual basis for his opinions. (D.I. 208 , Ex. 13
,r,r
657-61).
Finally, Dr. Silzar p rov1 es evidence supporting a nexus between the secondary considerations
and the merits of the claimed invention. Though Dr. Silzars does not explicitly identify the nexus,
his opinions clearly tie the evidence of secondary considerations to the claimed invention. (Id. at
,r,r 658-61).
Defendants' arguments thus go to the weight and credibility of Dr. Silzars' testimony,
which can be addressed on cross-examination. Therefore, I will deny Defendants' Daubert motion
as to Dr. Silzars' opinions on secondary considerations of non-obviousness.
2. Hyundai Infringement Opinion
Defendants ask me to exclude Dr. Silzars' opinion that the Hyundai product infringes
because his infringement analysis is insufficient. (D.I. 203 at 40). I agree. Dr. Silzars engages in
no actual analysis of the product' s features as compared to the claim limitations. (D.I. 210, Ex. 31
,r 31 ).
Therefore, this opinion is neither supported by sufficient facts nor the product of reliable
principles and methods.
Plaintiff asserts that Dr. Silzars' infringement opinion reviews more information than Mr.
Sharp' s noninfringement opinion, which also "did no analysis as to whether the Hyundai product
infringes." (D.I. 240 at 36). But Plaintiff has not challenged Mr. Sharp' s non-infringement opinion
under Daubert. An expert' s opinion that is not the product of sufficient facts or data or the product
of reliable principles and methods cannot survive simply because the opposing party' s expert also
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offers an improper opinion. Dr. Silzars' opinion is not the product of reliable principles and
methods, and therefore will be excluded under Federal Rule of Evidence 702.
IV.
CONCLUSION
For the foregoing reasons, I deny Plaintiffs motion, grant Defendants' motion as to Ms.
Bennis' lost profits and reasonable royalty opinions, and Dr. Silzars' infringement opinion on the
Hyundai product, and deny Defendants' motion as to all else.
An accompanying order will be entered.
15
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