Hitachi Koki Co., Ltd. v. Kyocera Senco Industrial Tools, Inc.

Filing 182

MEMORANDUM ORDER granting in part and denying in part 139 MOTION to Exclude Certain Opinions of Mr. Keven Miller Signed by Judge Colm F. Connolly on 9/21/2020. (nmf)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
KOKI HOLDINGS CO., LTD.,

Plaintiff,

v.

Civil Action No. 18-313-CFC

KYOCERA SENCO INDUSTRIAL
TOOLS, INC.,

Defendant.

MEMORANDUM ORDER

PlaintiffKoki Holdings Co., Ltd has sued Defendant Kyocera Senco
Industrial Tools, Inc. for patent infringement. D.I. 1. Before me is Koki's motion
to exclude "certain opinions of [Kyocera's] expert, Mr. Keven Miller, that rely on
an incorrect legal standard for assessing non-infringement of the asserted claims of
U.S. Patent No. RE42,987 [the #987 patent]." D.I. 139.
I.

BACKGROUND

The #987 patent is directed to "a nail gun that can accurately drive nails into
a desired device position." #987 patent at 1:23-24.
The asserted claims of the #987 patent recite a "push portion." Id. at claim
14 (10:57), claim 18 (11:20), claim 19 (11:43). I construed the term "push
portion" in my claim construction order as a means-plus-function limitation

governed by 35 U.S.C. § 112 ,r 6. D.I. 53 at 1. And I construed the corresponding
structure and function for that term as follows:
Structure: "safety portion 12 that is mechanically coupled
to trigger 11, the safety portion 12 consisting of upper
safety portion 20, cam member 21, and lower safety
portion 22"
Function: "operation of the trigger switch is enabled
when the end of the push portion is prevented from
moving downward"
D.I. 53 at 1.
Koki's expert, Glenn Vallee, Ph.D, opined in his opening report on
infringement that Kyocera's JoistPro 150XP Nailer infringes all elements of claims
14-19 of the #987 patent, including the "push portion" element recited in those
claims. D.I. 138-2, Ex. C ,r,r 5(b), 133-38. Kyocera's expert, Mr. Miller, offered
the following opinion in his rebuttal report:
Dr. Vallee points, without much explanation, to various
structures on the JoistPro' s safety mechanism as
allegedly meeting the required structure of the claimed
"push portion:" the upper safety portion 20, cam member
21, and lower safety portion 22. However, Dr. Vallee
fails to explain how his identified upper safety portion
20, cam member 21, and lower safety portion 22 work
together to achieve the function of the claimed "push
portion:" "operation of the trigger switch is enabled when
the end of the push portion is prevented from moving
downward." This is because these components do not
perform the claimed function because the JoistPro 's
safety mechanism also requires additional pneumatic
components and a pressurized air supply to operate.
D.I. 138-2, Ex. E

,r 39 (emphasis added).

Mr. Miller essentially repeated this
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opinion in paragraphs 44, 47(1) and 48 of his report. Id.

II.

1144, 47(1) and 48.

LEGAL STANDARD
Federal Rule of Evidence 702 governs testimony by experts, and requires

that expert testimony "help the trier of fact to understand the evidence or to
determine a fact in issue." Fed. R. Evid. 702. Rule 702 also requires that expert
testimony be (1) "based upon sufficient facts or data," (2) "the product of reliable
principles and methods," and (3) the "reliabl[e] appli[cation of] those principles
and methods to the facts of the case." Id.

III.

DISCUSSION
At issue is Mr. Miller's opinion that the JoistPro 150XP does not infringe

claims 14-19 of the #987 patent because its safety mechanism has pneumatic
components and a pressurized air supply in addition to the components of the
corresponding structure identified in my claim construction of the "push portion"
means-plus-function limitation. That opinion is contrary to Federal Circuit law
and therefore not admissible under Rule 702. See Hebert v. Lisle Corp., 99 F.3d
1109, 1117 (Fed. Cir. 1996) ("Incorrect statements of law are no more admissible
through 'experts' than are falsifiable scientific theories."); see also United States v.

Cunningham, 679 F.3d 355, 380 (6th Cir. 2012) (approving district court's
exclusion of expert analysis that conflicted with the court's rulings and applicable
law); Southard v. United Reg'l Health Care Sys., Inc., 2008 WL 4489692, at *2
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(N.D. Tex. Aug. 5, 2008) ("[W]here as here, the expert's opinion is based on an
erroneous legal premise, it is appropriate to exclude such testimony."); Loeffel
Steel Prods., Inc. v. Delta Brands, Inc., 387 F. Supp. 2d 794, 806 (N.D. Ill. 2005)

("Expert opinions that are contrary to law are inadmissible." (citations omitted)).

Mr. Miller's opinion is contrary to the well-established patent law principle
that "the presence of additional structure ... in the accused [product] will not
exclude a finding of infringement" of a means-plus-function limitation. Bernard
Dalsin Mfg. Co. v. RMR Prods., Inc., 10 F. App'x 882,888 (Fed. Cir. 2001)

(citations omitted); see also Vulcan Eng 'g Co. v. Fata Aluminium, Inc., 278 F .3d
1366 (Fed. Cir. 2002) ("[W]hen all of the claimed features are present in the
accused system, the use of additional features does not avoid infringement."
(citations omitted)). I therefore agree with Koki that Mr. Miller's noninfringement
opinion is not admissible under Rule 702 to the extent that opinion is based on the
absence of additional components in the corresponding structure identified in my
claim construction order.
In the proposed order Koki submitted with its motion, however, Koki asks
me to find that Mr. Miller's "opinions regarding infringement are legally flawed to
the extent that they assert non-infringement based on unclaimed elements found in
the accused products." D.I. 139-1 at 1. That language seems to be broader than is
necessary to address the objectionable opinions of Mr. Miller and I fear it might

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lead to unintended and perhaps undesirable consequences. Accordingly, I will
deny Koki's motion insofar as it seeks entry ofKoki's proposed order.
NOW THEREFORE, at Wilmington this 21st day of September in 2020, IT

IS HEREBY ORDERED that:
1. Plaintiffs Motion to Exclude Certain Opinions of Mr. Keven Miller (D.I.
139) is GRANTED IN PART AND DENIED IN PART.
2. Mr. Miller is precluded from offering at trial the opinion that, because the
JoistPro 150 XP's safety mechanism has additional components not
identified in the Court's construction of the corresponding structure for
the "push portion" limitation in claims 14-19 of the #987 patent, the
JoistPro 150XP does not infringe those claims.
3. Paragraphs 39, 44, 47(1) and 48 of Mr. Miller's Rebuttal Report
Regarding Non-Infringement are STRUCK.

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