Factory Direct Wholesale, LLC v. Office Kick, Inc. et al

Filing 187

ORDER granting in part Defendants' 145 Motion to Strike and denying Plaintiff's 146 Motion to Exclude Certain Expert Opinions. Signed by Magistrate Judge Christopher L. Ray on 3/7/2025. (amd)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF GEORGIA
SAVANNAH DIVISION
FACTORY DIRECT
WHOLESALE, LLC,

)
)
)
)
)
)
)
)
)
)
)

Plaintiff,
v.
OFFICE KICK, INC., and
CKNAPP SALES, INC.,
Defendants.

CV421-368

OFFICE KICK, INC., and
CKNAPP SALES, INC.,

)
)
)
Counterclaim Plaintiffs, )
)
v.
)
)
FACTORY DIRECT
)
WHOLESALE, LLC, DEFU USA, )
LLC, and HANPING LIU,
)
)
Counterclaim Defendants. )
ORDER
Defendants Office Kick, Inc. and CKnapp Sales, Inc. (collectively
“Defendants”) seek to exclude certain opinions of Plaintiff’s experts Dr.
Craig Forest and Lisa Miller.

Doc. 145.

Plaintiff Factory Direct

Wholesale, LLC (“FDW”) and Counterclaim Defendants Defu USA, LLC

(“Defu”) and Hanping Liu responded in opposition, doc. 158, and
Defendants replied, doc. 170. Meanwhile, FDW, Defu, and Liu seek to
exclude certain testimony and opinions of Defendants’ experts Dr. Mark
Benden and Mr. David Duski. Doc. 146-17. Defendants responded, doc.
157, and FDW, Defu, and Liu replied, doc. 171. These motions have been
referred to the undersigned and are ripe for review.
Background
Plaintiff FDW sells adjustable standing desk converter units which
allow users to either stand or sit while using the work surface. Doc. 15
at 5 (First Amended Complaint). It has sold various desk converter
models on Amazon.com. Id. at 6, 29-30. Defendant CKNAPP Sales, Inc.,
also known as “Vivo,” is a parent company of Defendant Office Kick, Inc.
(“Office Kick”). Id. at 3. Vivo and Office Kick are competitors of FDW,
and they sell desk converters on their own websites. Id. at 4.
According to United States Patent Office (“USPO”) records, Office
Kick holds three desk converter patents: (1) Patent No. 11,134,773 (the
“773 Patent”), (2) Patent No. 11,134,774 (the “774 Patent”), and (3)
Patent No. 10,575,630 (the “630 Patent,” and, collectively with the 773
and 774 Patents, the “Patents”). Doc. 15 at 7-8, 22, 25; see also doc. 15-1
2

(773 Patent); doc. 15-5 (774 Patent); doc. 15-6 (630 Patent). FDW alleges
that Defendants’ counsel wrote to Amazon demanding that it remove two
of FDW’s models because they infringed the 773 Patent; Amazon
subsequently removed the models. Doc. 15 at 6-9. Amazon eventually
removed more of FDW’s models at Defendants’ request because they
purportedly infringed one of the Patents. Id. at 19-30.
FDW brought this action against Defendants asserting a claim for
tortious interference with prospective and existing contractual and
business relationships and seeking declaratory judgment of noninfringement of the Patents and declaratory judgment of invalidity of the
Patents. See doc. 15 at 30-43. 1 Defendants filed an Answer, doc. 81, and
asserted Counterclaims against FDW, Defu, and Lui for Infringement of
the 773 Patent, Infringement of the 774 Patent, Infringement of the 630
Patent and Fraud, and against FDW for Violation of Georgia’s Uniform
Deceptive Trade Practices Act, id. at 18-51.2
Between December 1, 2022, and August 21, 2023, the parties
participated in the claim construction process, see, e.g., docs. 55, 71, 73,
1 FDW asserted a claim for civil conspiracy in its Amended Complaint, doc. 15 at 41-

43, but later amended its pleading to withdraw the claim, doc. 141 at 1.

2 The District Judge’s Order on Defu and Lui’s Motions to Dismiss narrowed the scope

of the Counterclaims against those Counterclaim Defendants. See generally doc. 121.
3

1.f

“platform pivot
point”

Claims 1, 13, 14, 19 &
24, 630 Patent

Plain and ordinary
meaning

Claim 1, 773 Patent
1

2

3

4

Claim 1, 774 Patent
“a set[s] of [pivot] Claims 1, 13, 14, 19, 24,
arms that connect and 29, 630 Patent
at a scissoring
point[s] creating a Claim 1, 773 Patent
scissoring motion”
Claim 1, 774 Patent

“an element that
connects the two
sets of arms to one
another”
The phrase
“directly attached”
in the following
language: “a gas
spring directly
attached to one of
the set of pivot
arms through an
arm pivot point”

Claims 1, 13, 14 & 19,
630 Patent

“keyboard tray
mechanism is
configured to
allow the
keyboard platform
to be stored under
the work station
platform and to
extend out in the
protruding
Position”

Claims 11 & 22, 630
Patent

Claims 1 & 4, 773 Patent
Claim 1, 774 Patent

Claim 10, 773 Patent

5

. . . a set[s] of pivot arms
that connect at a
scissoring pivot point
creating a scissoring
motion, wherein the
scissoring pivot point is
located on the arms
between each arm’s
sliding mechanism and
base or platform pivot
point . . .
“an element that directly
or indirectly connects the
two sets of arms to one
another”
“directly attached” [in
the relevant claims]
means the gas spring is
attached to the set of
pivot arms through an
arm pivot point without
an intermediate
component other than
the arm pivot point.
“A keyboard tray
mechanism that allows
the keyboard tray to
have at least two
positions, including one
for being stored
underneath the work
station platform and one
that allows the keyboard
tray to extend out in the
protruding position.”

5

“gas spring, set of
pivot arms, base
pivot point, and
the platform pivot
point align side by
side . . . in a fully
lowered position
such that the
desktop
workspace adjusts
vertically”

Claim 13, 630 Patent

Plain and ordinary
meaning

Claim 6, 773 Patent
Claim 5, 774 Patent

Doc. 117 at 17-19.
After the District Judge entered the final Markman Order, the
parties proceeded to conduct expert witness discovery. See doc. 120 at 2.
Relevant to the motions before the Court, FDW identified Dr. Craig
Forest as a technical expert, see docs. 145-1 (Forest Expert Report); 1453 (Forest Rebuttal Report); 145-5 (Forest Second Rebuttal Report), and
Lisa Miller as a damages expert, see docs. 145-11 (Sealed Miller Report);
145-12 (Sealed Miller Rebuttal Report); 145-13 (Redacted Miller Report);
145-14 (Redacted Miller Rebuttal Report). Defendants identified Dr.
Mark Benden as a technical expert, see docs. 157-1 (Benden Report); 1461 (Benden Rebuttal Report), and David Duski as a damages expert, see
docs. 146-12 (Sealed Duski Report); 146-16 (Redacted Duski Report). The
Court will address each expert, and the opposing party’s challenges to
each expert, in its analysis below.

6

Legal Standard
Federal Rule of Evidence 702 compels the Court to act as a
“gatekeeper” for expert evidence. United States v. Frazier, 387 F.3d 1244,
1260 (11th Cir. 2004) (citing Daubert v. Merrell Dow Pharms., Inc., 509
U.S. 579, 589 n. 7, 597 (1993)). 4 In performing this task, the Court must
consider whether the party offering the evidence has shown:
(1) the expert is qualified to testify competently regarding the
matters he intends to address; (2) the methodology by which
the expert reaches his conclusions is sufficiently reliable as
determined by the sort of inquiry mandated in Daubert; and
(3) the testimony assists the trier of fact, through the
application of scientific, technical, or specialized expertise, to
understand the evidence or to determine a fact in issue.
Frazier, 387 F.3d at 1260 (quoting City of Tuscaloosa v. Harcros Chems.,
Inc., 158 F.3d 548, 562 (11th Cir.1998)). The proponent of the expert
opinion bears the burden of establishing qualification, reliability, and
helpfulness by a preponderance of the evidence. Allison v. McGhan Med.
Corp., 184 F.3d 1300, 1306 (11th Cir. 1999) (citing Daubert, 509 U.S. at
592 n.10).

The Court must apply the law of the Federal Circuit to substantive patent issues,
and the law of the Eleventh Circuit to procedural nonpatent issues. See In re
Cambridge Biotech Corp., 186 F.3d 1356, 1368 (Fed. Cir. 1999). “Whether proffered
evidence is admissible at trial is a procedural issue not unique to patent law,” Summit
6, LLC v. Samsung Elects. Co., Ltd., 802 F.3d 1283, 1294 (Fed. Cir. 2015), so the Court
applies Eleventh Circuit law to these expert admissibility issues.

4

7

Under the first prong, “experts may be qualified in various ways.
While scientific training or education may provide possible means to
qualify, experience in a field may offer another path to expert status.”
Frazier, 387 F.3d at 1260–61; see also Fed. R. Evid. 702 (a witness may
be qualified as an expert by “knowledge, skill, experience, training, or
education[.]”).

But, “[w]hen an expert witness relies mainly on

experience to show he is qualified to testify, ‘the witness must explain
how that experience leads to the conclusion reached, why that experience
is a sufficient basis for the opinion, and how that experience is reliably
applied to the facts.’ ” Payne v. C.R. Bard, Inc., 606 F. App'x 940, 942-43
(11th Cir. 2015.) (quoting Frazier, 387 F.3d at 1261).
As to the second prong, the reliability “criterion remains a discrete,
independent, and important requirement for admissibility.” Frazier, 387
F.3d at 1261. “The Supreme Court in Daubert set out a list of ‘general
observations’ for determining whether expert testimony is sufficiently
reliable to be admitted under Rule 702.” United States v. Brown, 415
F.3d 1257, 1267 (11th Cir. 2005) (citation omitted). These factors, or
observations, inquire into the expert's “theory or technique” and are: “(1)
whether it can be (and has been) tested; (2) whether it has been subjected
8

to peer review and publication; (3) what its known or potential rate of
error is, and whether standards controlling its operation exist; and (4)
whether it is generally accepted in the field.” Id. (citation omitted).
“Sometimes the specific Daubert factors will aid in determining
reliability; sometimes other questions may be more useful.” Frazier, 387
F.3d at 1262.
Lastly, expert testimony must assist the trier of fact. Frazier, 387
F.3d at 1262. “By this requirement, expert testimony is admissible if it
concerns matters that are beyond the understanding of the average lay
person.” Id. (citation omitted). This inquiry is commonly called the
“helpfulness” inquiry. Prosper v. Martin, 989 F.3d 1242, 1249 (11th Cir.
2021) (citing Frazier, 387 F.3d at 1260). “Expert testimony which does
not relate to any issue in the case is not relevant and, ergo, non-helpful.”
Id. (quoting Daubert, 509 U.S. at 591). Expert testimony does not help
the trier of fact if it fails to “fit” with the facts of the case. McDowell v.
Brown, 392 F.3d 1283, 1299 (11th Cir. 2004); see also FP Augusta II, LLC
v. Core Constr. Servs., LLC, 2022 WL 626783, at *4 (S.D. Ga. Mar. 3,
2022) (quoting Korsing v. United States, 2017 WL 7794276, at *3 (S.D.
Fla. Aug. 24, 2011)) (“Under [the helpfulness] requirement, which is
9

concerned primarily with relevance, the Court must consider whether the
expert testimony ‘is sufficiently tied to the facts of the case that it will
aid the [factfinder] in resolving a factual dispute.’ ”).
Analysis
1.

Dr. Craig Forest

FDW identified Dr. Craig Forest as a retained mechanical engineer
expert witness. See generally doc. 145-1. His initial report summarizes
his five opinions:
Opinion 1: Based on my analysis of the specification and file
history of the ’630 patent, my opinion is that a person of
ordinary skill in the art (“POSITA”) at the times the various
applications and amendments were filed would not have
understood that the inventor possessed and described an
adjustable desk riser that incorporated a gas spring for the
purpose of assisting the elevation of the adjustable desk riser
prior to December 15, 2019. . . .
Opinion 2: Based on my analysis of the specification and file
history of the ’773 and ’774 patents, my opinion is that a
POSITA at the times the various applications and
amendments were filed would not have understood that the
inventor possessed and described an adjustable desk riser
that incorporated “a gas spring … to provide a force to assist
in elevation of the work surface platform” (as recited in claims
1 and 8 of the ’773 patent and 1, 8 and 12 of the ’774 patent)
prior to December 15, 2019. . . .
Opinion 3: Based on my analysis of the specification and file
history of the ’773 and ’774 patents, my opinion is that a
POSITA at the times the various applications and
amendments were filed would not have understood that the
10

inventor possessed and described an adjustable desk riser
that incorporated “a gas spring directly attached to one of the
set of pivot arms through an arm pivot point” (as recited in
claims 1 and 8 of the ’773 patent and 1, 8 and 12 of the ’774
patent) prior to May 3, 2021. Therefore, the earliest priority
date that can be claimed for claims 1 and 8 of the ’773 patent
and claims 1, 8 and 12 of the ’774 patent is May 3, 2021. . . .
Opinion 4: Based on my analysis of the specification and file
history of the ’774 patent, my opinion is that a POSITA at the
times the various applications and amendments were filed
would not have understood that the inventor possessed and
described an adjustable desk riser that incorporated three
arms that “connect at a scissoring pivot point.” . . .
Opinion 5: Based on my analysis of the prior art and claim
charts set forth in Plaintiff Factory Direct Wholesale, LLC’s
Third Supplemental Invalidity Contentions, the claims of the
’773 and ’774 patents are either anticipated or rendered
obvious, as discussed therein. . . .
Doc. 145-1 at 7-9.
In his rebuttal report, Forest offered three additional opinions
related to the alleged infringement:
Opinion 6: I have been asked to consider Dr. Benden’s opinion
that FDW’s SD-52 model desk riser includes “two sets of arms
that connect at scissoring pivot points.” I disagree; FDW’s SD52 lacks this limitation. Therefore, the SD-52 cannot infringe
any of the claims of the ‘630 patent. . . .
Opinion 7: I have been asked to consider Dr. Benden’s opinion
that FDW’s SD-8060 model desk riser includes “a set of pivot
arms that connect at a scissoring pivot point(s).” I disagree;
FDW’s SD-8060 lacks this limitation. Therefore, the SD-8060
cannot infringe independent claims 1 at 11 of the ‘773 (or any

11

claims dependent thereon) or any of the claims of the ‘774
patents. . . .
Opinion 8: I have been asked to consider Dr. Benden’s opinion
that FDW’s SD-8060 model desk riser includes “gas spring
directly attached to one of the set of pivot arms through an
arm pivot point.” I disagree; FDW’s SD-8060 lacks this
limitation. Therefore, the SD-8060 cannot infringe any of the
claims of the ‘773 or ‘774 patents. . . .
Doc. 145-3 at 3. Additionally, Forest’s rebuttal report responded to Office
Kick’s financial expert’s opinion that “no non-infringing alternatives
existed for the products accused of infringing the patents-in-suit.” Id.
Forest’s Opinion 9 is that “[a]t all pertinent times, alternative designs
were readily available that would not even arguably infringe any of the
claims of any of the patents-in-suit, without any loss of functionality.” Id.
Defendants seek to exclude Forest’s Opinions 4, 6, and 7 because
they rely on interpretations of terms that are inconsistent with the
Court’s claim construction. Doc. 145 at 12-17. “Once a district court has
construed the relevant claim terms, and unless altered by the district
court, then that legal determination governs for purposes of trial. No
party may contradict the court's construction to a jury.” Exergen Corp. v.
Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009). An expert’s
opinion that is based on an impermissible claim construction is
appropriately excluded, whether as irrelevant, see Liquid Dynamics
12

Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1224 n.2 (Fed. Cir. 2006),
unreliable or unhelpful, see Personalized User Model, L.L.P. v. Google
Inc., 2014 WL 807736, at *1 (D. Del. Feb. 27, 2014). Ultimately, where
“the courts claim construction and related decisions are inconsistent with
the opinions expressed in [an expert’s report], such opinions will not be
admitted at trial.” LP Matthews LLC v. Bath & Body Works, Inc., 458 F.
Supp. 2d 198, 210 (D. Del. 2006).
Defendants begin with their critique of Opinion 6. Doc. 145 at 13.
First, they argue, somewhat inexplicably, that Forest’s understanding of
the Court’s construction of Term 1 is incorrect. Id. The Court’s Markman
Order provided the following construction for Term 1:
1

“a set[s] of [pivot] Claims 1, 13, 14, 19, 24,
arms that connect and 29, 630 Patent
at a scissoring
point[s] creating a Claim 1, 773 Patent
scissoring motion”
Claim 1, 774 Patent

. . . a set[s] of pivot arms
that connect at a
scissoring pivot point
creating a scissoring
motion, wherein the
scissoring pivot point is
located on the arms
between each arm’s
sliding mechanism and
base or platform pivot
point . . .

Doc. 117 at 18. Defendants contend that the construction somehow does
not include “wherein the scissoring pivot points is located on the arms
between each arm’s sliding mechanism and base or platform pivot point.”
13

Doc. 145 at 13. This argument is foreclosed by the face of the District
Judge’s Markman Order. Doc. 117 at 18. Forest’s understanding of Term
1’s construction appears to be consistent with the Court’s construction.
See doc. 145-3 at 4 (identifying the Court’s construction as “a set[s] of
pivot arms that connect at a scissoring pivot point creating a scissoring
motion, wherein the scissoring pivot point is located on the arms between
each arm’s sliding mechanism and base or platform pivot point.”). Next,
Defendants argue that Forest is incorrect in saying the “arms in a given
set must connect, either directly or indirectly, to each other at a scissoring
pivot point.” Doc. 145 at 13-14 (quoting doc. 145-3 at 4 (internal emphasis
and quotations omitted)). A reading of the Markman Order shows that
Forest’s summary is consistent with the Court’s construction. See doc.
117 at 18 (construing “a set[s] of pivot arms that connect at a scissoring
pivot point” and construing “connects” as “directly or indirectly connects”)
(emphasis added)). Defendants’ first two arguments against Opinion 6
are, therefore, unavailing.
Defendants next take issue with Forest’s use of a new term, “pin
joint,” to explain the term “pivot point” in the patents-in-suit. Doc. 145
at 15 (citing doc. 145-3 at 5, ¶ 11). The Markman Order did not construe
14

the term “pivot point,” instead construing the more specific terms “arm
pivot point,” “scissoring pivot point,” “base pivot point,” and “platform
pivot point.” Doc. 117 at 17-18; see also doc. 158 at 7 (“The parties did
not focus on the meaning of ‘pivot point’ itself; they were focused on the
location or function of the pivot points: arm, scissoring, base, and
platform.”). FDW contends the Court should allow its expert to express
his opinion on the meaning of pivot point, or, alternatively, should
“conduct a supplemental claim construction of the term ‘pivot point.’”
Doc. 158 at 8-9. They point to authority that authorizes the Court to
“revisit[ ] and alter[ ] its interpretation of the claim terms as its
understanding of the technology evolves.”

Id. at 9 n.1 (quoting

POWERbahn, LLC v. Foundation Fitness, LLC, 2021 WL 2599663, at *7
(N.D. Ga. Mar. 26, 2021) (internal quotations omitted)). But that is not
what FDW asks the Court to do. Instead, they ask the Court to interpret,
for the first time, a term that the parties did not raise during the
extensive claim construction process. Defendants are correct, FDW has
waived any argument on the meaning of “pivot point” by failing to raise
it during claim construction. Central Admixture Pharm. Servs., Inc. v.
Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007)
15

(approving of the district court’s determination that a party waived
argument on the meaning of a term by failing to raise it during the claim
construction phase).
Defendants’ final challenge to Opinion 6 focuses on Forest’s
discussion of the word “connected.”

Doc. 145 at 15-16.

In Forest’s

analysis of an allegedly infringing product, identified as SD-52, he
observes that “none of the arms are connected to each other at the axle,”
and that “[a] connection (i.e., a connect[ion] at a scissoring pivot point) on
the axle would, at a minimum . . . impose lateral constraint upon the
arms with respect to the axle (i.e., prevent the arms’ lateral motion in the
axial direction).” Doc. 145-3 at 7-8. Defendants argue this amounts to
Forest “creat[ing] his own limitations,” which “impermissibly narrow[s]
the meaning of the word “connection.” Doc 145 at 15-16. A review of the
portion of Forest’s Opinion 6 highlighted by Defendants does not show
any anticipated testimony that contradicts the Court’s construction of the
term “connects.” See, e.g., doc. 117 at 18. His anticipated testimony
about the allegedly infringing product is not the same as FDW’s proposed
claim construction of the word “connects,” that it must mean “that the
connection is direct and that no intermediate components exist,” which
16

the Court rejected as too narrow. Doc. 103 at 42-44. This is not reason
to exclude Forest’s Opinion 6.

For the above reasons, Defendants’

requests to exclude portions of Opinion 6 are GRANTED, in part, and
DENIED, in part. Doc. 145, in part. The portion of Forest’s Opinion 6
that offers a new meaning of the term “pivot point,” including his
discussion of the term “pin joint,” is EXCLUDED.
Defendants’ challenge to Opinion 7 mirrors their challenge to
Opinion 6, in that they contend Forest “wrongly alleges that . . . all claims
of the ‘773 patent recite that the set of arms must connect to each other
at a scissoring pivot point . . . and . . . misapplies the Court’s construction
of the term ‘connect.’” Doc. 145 at 16. For the same reasons those
arguments were unsuccessful to exclude those portions of Opinion 6, they
are unsuccessful as challenges to Opinion 7. The request to exclude any
portion of Opinion 7 is, therefore, DENIED. Doc. 145, in part.
Defendant also argues that Forest’s Opinion 4 contradicts the
Court’s construction of the term “set of arms.” Doc. 145 at 16-17. Forest
opines that “[a] POSITA, would not interpret the phrase ‘at least one set
of two arms’ as meaning ‘a set of at least two arms.’” Doc. 145-1 at 43, ¶
60.

Defendants point to the Court’s Markman Opinion, where the
17

District Judge declined to adopt the recommended construction of “set”
and instead afforded the term its “plain and ordinary meaning,” which is
“a group of two or more.” Doc. 117 at 15. Any opinion that contradicts
this construction, i.e., any opinion about what a POSITA might
understand the term “set” to mean, is inappropriate and therefore
excluded. The request to exclude the portion of Opinion 4 related to the
POSITA’s understanding of the word “set” is GRANTED. Doc. 145, in
part.
Defendants next challenge Opinions 1, 2, 3, 4, and 8 because they
rely on new proposed constructions that were not raised during the claim
construction process and are inconsistent with the intrinsic record. Doc.
145 at 17-22. They take issue with Forest’s opinions that “introduce[ ]
new constructions, without permission from the Court, for the claim
terms ‘gas spring’ and ‘height adjustment mechanism’ that only now
require[ ] each term to provide both a ‘pushing and pulling force.’” Id. at
7.

However, Defendants’ arguments appear to merely express their

disagreement with Forest’s opinions, and do not point to specific portions
of his opinion that either contradict the Court’s claim construction or
would qualify as an attempt to end-run the claim construction process.
18

See id. at 17-22; see also doc. 158 at 14-15. Instead, they point to over 20
pages of Forest’s report. Doc. 145 at 17. This attempt to litigate the
merits of FDW’s substantive arguments is not the purpose of a Daubert
challenge. The requests to exclude Forest’s Opinions 1, 2, 3, 4, and 8
related to the “height adjustment mechanism” or “gas spring” are,
therefore, DENIED. Doc. 145, in part.
Forest’s Opinion 5 relates to FDW’s Third Supplemental Invalidity
Contentions, “which pertain to the validity of the ‘773 and ‘774 patents.”
Doc. 145-1 at 44. His opinion is based on his review and consideration of
“the claim charts and the prior art references identified therein.” Id. He
opines that, after his review of the Supplemental Invalidity Contentions,
he “agree[s] that the claim charts for the ‘773 and ‘774 patents accurately
identify the corresponding features that are disclosed and taught in the
identified prior art references.” Id. at 47. He then offers “additional
comments”

regarding

the

Chinese

Patent

Application

No.

CN105124920A (“Li”). Id. at 47-48. He concludes that the “claim charts
demonstrates that each limitation of each claim of the ‘773 and ‘774
patents are disclosed in the prior art references disclosed therein.” Id. at
48. Defendants argue Opinion 5 is inadmissible because Forest merely
19

incorporates by reference FDW’s attorney’s claim charts and provides no
independent invalidity analysis. Doc. 145 at 22-24.
Defendants identified several cases where courts have excluded an
expert’s

report

for

merely

incorporating

the

party’s

invalidity

contentions. See doc. 145 at 23-24 (citing Changzhou Kaidi Electrical
Co., Ltd. v. Okin America, Inc., 112 F. Supp. 3d 330, 338-39 (D. Md. 2015);
Nat’l Prods., Inc. v. Proclip USA, Inc., 2022 WL 2304114, at *2 (W.D.
Wisc. June 27, 2022); Avnet, Inc. v. Motio, Inc., 2016 WL 927194, at *5
(N.D. Ill. Mar. 4, 2016)). The case they contend is most directly on point,
Changzhou Kaidi Electrical Co., relies on Federal Rules of Civil
Procedure 26(a)(2)(B)(i) to determine the sufficiency of the expert’s
report, and Rule 37(c)(1) to determine the appropriate sanction for the
insufficient report. See 112 F. Supp. 3d at 339; see also Avnet, 2016 WL
927194, at *6 (analyzing exclusion of an insufficient expert report under
Rule 37). Even if Defendants are correct, and Forest’s report is deficient
under Rule 26(a)(2)(B)(i) for merely referring to the invalidity
contentions, Defendants do not engage with Rule 37(c)(1) to explain why
exclusion is appropriate in this case.

20

“If a party fails to provide information or identify a witness as
required by Rule 26(a) or (e), the party is not allowed to use that
information or witness to supply evidence on a motion, at a hearing, or
at a trial, unless the failure was substantially justified or is harmless.”
Fed. R. Civ. P. 37(c)(1); see also Guevara v. NCL (Bahamas) Ltd., 920
F.3d 710, 718 (11th Cir. 2019). As the arguably nondisclosing party,
FDW bears the burden of establishing substantial justification or
harmlessness. Mitchell v. Ford Motor Co., 318 Fed. App'x 821, 824 (11th
Cir. 2009). As to the issue of harm, “[a] failure to timely make the
required disclosures is harmless when there is no prejudice to the party
entitled to the disclosure.” Hewitt v Liberty Mut. Grp., Inc., 268 F.R.D.
681, 683 (M.D. Fla. 2010). FDW argues Defendants “have suffered no
prejudice,” hanging their hat on the harmlessness of the disclosure. Doc.
158 at 21.
To determine harmlessness, courts, including this one, apply a fivefactor test: (1) the surprise to the party against whom the evidence would
be offered; (2) the ability of that party to cure the surprise; (3) the extent
to which allowing the evidence would disrupt the trial;(4) the importance
of the evidence; and (5) the nondisclosing party's explanation for its
21

failure to disclose the evidence. See Abdulla v. Klosinski, 898 F. Supp.
2d 1348, 1359 (S.D. Ga. 2012); Rangel v. Anderson, 202 F. Supp. 3d 1361,
1366 (S.D. Ga. 2016) (citing Cambridge Univ. Press v. Becker, 2010 WL
6067575, at *3 (N.D. Ga. Sept. 21, 2010)); Kraese v. Jialiang Qi, 2021 WL
640826, at *4-*5 (S.D. Ga. Feb. 18, 2021). On balance, the harmlessness
factors weigh in favor of permitting Forest to testify about his Opinion 5.
As FDW explains, albeit succinctly, Forest’s opinions on invalidity were
provided with his opening expert report, the Defendants’ expert
responded to those opinions, and Defendants had a full opportunity to
depose Forest. Doc. 158 at 21. Defendants did not raise—at least with
the Court—any issue with the deficiency of Forest’s report until its
Daubert motion, so it had plenty of time to cure any deficiency and chose
not to take advantage of that time. For these reasons, the request to
exclude Opinion 5 is DENIED. Doc. 145, in part.
Finally, Defendants argue Forest’s Opinion 9 should be excluded as
untimely, since it was not included in his original report. Doc. 145 at 2425. The dispute around Opinion 9 centers on who carries the burden of
proof on non-infringing alternatives. Compare doc. 145 at 24-25 with doc.
158 at 21-25.

Defendants contend the “non-infringing alternative
22

analysis acts more like an affirmative defense,” and therefore FDW
should have included the opinion in the expert’s opening report. Doc. 145
at 25. FDW disagrees, arguing that “Federal Circuit law makes clear
that it is the patentees (Defendants in the present case) which bear the
burden of proof.” Doc. 158 at 21.
The Federal Circuit has explained that where a patent is infringed,
the patentee is entitled to damages adequate to compensate for that
infringement. Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10,
26 (Fed. Cir. 2012). One category of infringement compensation is the
reasonable royalty the patentee would have received through armslength bargaining. Id. Courts use the 15 factors identified in GeorgiaPacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y.
1970) to “provide a reasoned economic framework for a hypothetical
negotiation, which attempts to ascertain the royalty upon which the
parties would have agreed had they successfully negotiated an
agreement just before infringement began.” Whitserve, 694 F.3d at 2627 (internal quotations, citation, and alterations omitted). Consideration
of non-infringing alternatives is part of this analysis. See VLSI Tech.
LLC v. Intel Corp., 87 F.4th 1332, 1346 (Fed. Cir. 2023). The patentee
23

bears the burden of proving damages. Whitserve, 694 F.3d at 26; see also
ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 (Fed. Cir. 2010) (“[I]t
was [the patentee’s] burden, not [the opposing party’s], to persuade the
court with legally sufficient evidence regarding an appropriate
reasonable royalty. [Cit.] As a matter of simple procedure, [opposing
party] had no obligation to rebut until [patentee] met its burden with
reliable and sufficient evidence.”).
Because Defendants bear the burden of proving their damages for
any infringement, FDW’s expert’s opinion regarding non-infringing
alternatives, which is a factor to be considered in the reasonable royalty
analysis, was appropriately presented in his rebuttal report. Moreover,
Defendants have not pointed to any authority that would support their
drastic request to strike the opinion, even if it were untimely. See doc.
145 at 25.

As FDW rightly observes, Defendants’ experts had an

opportunity to review and respond substantively to Forest’s Opinion 9.
Doc. 158 at 24.

Therefore, Defendants’ request to exclude Forest’s

Opinion 9 as untimely is DENIED. Doc. 145, in part.

24

2.

Lisa Miller

FDW also identified Lisa Miller as an expert retained to “evaluate
damages suffered by FDW due to the actions of Office Kick and Vivo
alleged in the lawsuit.” Doc. 145-13 at 4. In her initial Report, Miller
offered her opinion of the appropriate calculation of FDW’s lost profits,
including the calculation of those damages reduced to present value. Id.
at 5-6. Relevant to Defendants’ challenge, in her rebuttal report, Miller
offered

additional

opinions

related

to

“available

non-infringing

alternatives,” in response to Office Kick’s expert’s opinions related to the
same. Doc. 145-14 at 20-26. As with Forest’s Opinion 9, Defendants
argue these additional opinions should be excluded as untimely, since
they should have been included in her original report. Doc. 145 at 2, 2425. For the same reasons articulated above regarding Forest’s Opinion
9, Miller’s opinions regarding available non-infringing alternatives were
appropriately presented in her rebuttal report, and Defendants’ request
to strike those opinions as untimely is DENIED. Doc. 145, in part.
3.

Dr. Mark Benden

Defendants identified Dr. Mark Benden as a retained technical
expert in the fields of “engineering mechanical design, bioengineering,
25

ergonomics, and product design.” Doc. 157-1 at 11. FDW only challenges
his opinions “regarding secondary considerations of nonobviousness.”5
Doc. 146-17 at 1. They seek exclusion of his opinions in his rebuttal
report regarding the existence of “a long felt but unsolved need,” “the
failure of others,” “praise by others,” “copying of the invention by
competitors,” and “commercial success.” Doc. 146-1 at 11-28; see also doc.
146-17 at 3-14. They first challenge the opinions as outside the realm of
Benden’s qualifications and experience and within the understanding of
an average layperson. Id. at 4.

5 As the Federal Circuit has explained:

A patent claim is invalid “if the differences between the claimed
invention and the prior art are such that the claimed invention as a
whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which
the claimed invention pertains.” 35 U.S.C. § 103 (2012). Obviousness
“is a question of law based on underlying findings of fact.” In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Those underlying
findings of fact include: (1) “the scope and content of the prior art,” (2)
“differences between the prior art and the claims at issue,” (3) “the level
of ordinary skill in the pertinent art,” and (4) the presence of evidence of
secondary considerations, such “as commercial success, long felt but
unsolved needs, failure of others,” and unexpected results. Graham v.
John Deere Co. of Kan. City, 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545
(1966); see United States v. Adams, 383 U.S. 39, 50–52, 86 S.Ct. 708, 15
L.Ed.2d 572 (1966).
Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019).
26

Defendants, who bear the burden of demonstrating Benden is
qualified and his opinions are reliable and helpful, see Allison, 184 F.3d
at 1306, argue that “Dr. Benden’s opinions are not merely the
understanding of an average layperson, but are based on being able to
understand the disclosure of the Asserted Patents based on years of
education and training in engineering, and understanding of the market
forces in the ergonomic product market based on decades of experience
working for, founding, and running ergonomic product companies, and
personal experiences at the Las Vegas Ergonomics Conference &
Ergoexpo (NECE) on November 15, 2016.” Doc. 157 at 6. They recount
his educational background and detail his experience in the relevant
fields. Id. at 6-9; see also doc. 146-2 (Benden CV). Defendants are correct
that Benden’s extensive training and experience provide sufficient
qualifications for him to offer his secondary considerations opinions, and
those opinions are, generally speaking, “beyond the understanding of the
average lay person.” Frazier, 387 F.3d at 1262-63.
Next, the parties dispute whether Benden’s opinions on secondary
considerations are impermissible legal conclusions, or, alternatively,
underlying facts to which Benden may appropriately testify. Compare
27

doc. 146-17 at 4-5 with doc. 157 at 9-10. FDW is correct that an expert
may not “testify to the legal implications of conduct.” Doc. 146-17 at 5
(quoting Montgomery v. Aetna Cas. & Sur. Co., 898 F.2d 1537, 1541 (11th
Cir. 1990)) (internal quotations omitted).

However, Defendants also

correctly cite to the same case for the proposition that an expert may offer
his opinion on an ultimate issue of fact.

Doc. 157 at 9-10 (citing

Montgomery, 898 F.2d at 1541). “[T]he distinction between whether
challenged testimony is either an admissible factual opinion or an
inadmissible legal conclusion is not always easy to perceive.” Hanson v.
Waller, 888 F.2d 806, 811 (11th Cir. 1989). Although “obviousness” is a
question of law, it is based on underlying findings of fact, including
whether there is evidence of secondary considerations. Fox Factory, 944
F.3d at 1372. Therefore, while Benden may not testify as to what the law
is, or the legal implications of the secondary considerations, he may
testify as to his opinion of the existence of those secondary considerations.
Montgomery, 898 F.3d at 1541; cf. Specht v. Jensen, 853 F.2d 805, 808
(10th Cir. 1988). If Benden’s testimony begins to run afoul of this line
during trial, FDW may object, but wholesale exclusion of his opinions is
not required.
28

FDW also argues for exclusion of all of Benden’s secondary
considerations opinions because they do not have a proper “nexus” to the
patented inventions. Doc. 146-17 at 5-7. “In order to accord substantial
weight to secondary considerations in an obviousness analysis, ‘the
evidence of secondary considerations must have a nexus to the claims,
i.e., there must be a legally and factually sufficient connection between
the evidence and the patented invention.’” Fox Factory, 944 F.3d at 1373
(quoting Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed.
Cir. 2019) (internal citation and quotations omitted)). FDW argues that
nexus is missing in Benden’s testimony, because, in their view, Benden
asserts the existence of the requisite nexus “based upon a single feature
of the claimed inventions in the patents-in-suit.”

Doc. 146-17 at 6.

Defendants, however, identify additional portions of Benden’s report that
discuss other unique characteristics of the claimed invention. Doc. 157
at 10-11 (citing doc. 146-1 at 15-20).
Because FDW’s challenge rests on an oversimplification of Benden’s
opinions, it is not persuasive and does not support exclusion of his
secondary-considerations opinions.

Any critiques they may have

regarding his assertion of a nexus are appropriate for vigorous cross29

examination. “[I]t is not the role of the district court to make ultimate
conclusions as to the persuasiveness of the proffered evidence. . . . Quite
the contrary, vigorous cross-examination, presentation of contrary
evidence, and careful instruction on the burden of proof are the
traditional and appropriate means of attacking [arguably] shaky but
admissible evidence.” Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd.,
326 F.3d 1333, 1341 (11th Cir. 2003) (internal citations, quotations, and
alterations omitted).
FDW also offers specific attacks on Benden’s opinions related to
“long felt but unsolved need,” and “failure of others,” doc. 146-17 at 7-8,
“praise by others,” id. at 8-10, “copying,” id. at 10-12, and “commercial
success,” id. at 12-14. They argue for exclusion of his testimony regarding
long felt but unsolved need and alleged failure of others because, in
addition to the unsuccessful challenge to the nexus requirement, Benden
“points to no evidence that shows any time period at all, much less, a
‘long’ period, over which this need supposedly existed.” Id. at 7. This
critique goes not to the admissibility of Benden’s expert testimony, but to
whether Defendants, as the patentee, can ultimately meet their burden
on the obviousness analysis.

See Fox Factory, 944 F.3d at 1373.
30

Tellingly, the cases they cite do not analyze the admissibility of expert
testimony, but instead analyze the merits of the underlying claims. See,
e.g., Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1327
(Fed. Cir. 2009) (reviewing the district court’s grant of summary
judgment on obviousness).
FDW similarly attacks Benden’s opinions regarding “praise by
others,” “copying,” and “alleged commercial success” by challenging the
sufficiency of the evidence supporting those opinions. See doc. 146-17 at
8-14. Whether Defendants are able to present sufficient evidence to meet
their burden is not a question that must be resolved in order to determine
the admissibility of Benden’s opinion testimony; instead, for now, they
must meet their burden of demonstrating Benden’s qualifications, his
opinions’ reliability, and their helpfulness. See, e.g., Frazier, 387 F.3d at
1260. They have done so. The request to exclude his opinions about
secondary considerations is, therefore, DENIED. Doc. 146, in part.
4.

David Duski

The remaining expert at issue is Defendant’s damages expert David
Duski. Doc. 146-17 at 14-22. Duski offers an opinion of patent damages
consisting of a “running royalty” within a calculated range. Doc. 146-16
31

at 18-19. FDW seeks exclusion of his opinions relating to damages for
alleged patent infringement because he failed to apportion those alleged
damages between the patented and unpatented features. Doc. 146-17 at
16-20.
The parties seem to agree that damages in patent cases are often
calculated using a reasonable royalty approach. See doc. 146-17 at 1516; doc. 157 at 16-17; see also 35 U.S.C. § 284 (statutory entitlement to
“damages adequate to compensate for the infringement, but in no event
less than a reasonable royalty for the use made of the invention by the
infringer.”).

A method to calculate a reasonable royalty rate is the

“hypothetical negotiation,” under which a party tries to “ascertain the
royalty upon which the parties would have agreed had they successfully
negotiated an agreement just before the infringement began.” Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009).
Duski offers his opinion as to the range of reasonable royalties in
this case. Doc. 146-16 at 18-19. FDW critiques the analysis because
“where multi-component products are involved, the governing rule is that
the ultimate combination of royalty base and royalty rate must reflect
the value attributable to the infringing features of the product, and no
32

more.” Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir.
2014).

They argue Duski’s opinion does not apportion the alleged

damages between the patented features and the unpatented features.
Doc. 146-17 at 16-20. Defendants respond that Duski relies on a different
path to apportionment, relying on “sufficiently comparable licenses,
namely, other licenses granted by OKI to infringers of the patents-in-suit
and related patents in the same patent family . . . .” Doc. 157 at 16-17.
In reply, FDW disputes that the licenses are “sufficiently comparable.”
Doc. 171 at 8-9.
“In determining a reasonable royalty, parties frequently rely on
comparable license agreements.” Bio-Rad Lab’ys, Inc. v. 10X Genomics
Inc., 967 F.3d 1353, 1372 (Fed. Cir. 2020). “Assessing the comparability
of licenses requires a consideration of whether the license at issue
involves comparable technology, is economically comparable, and arises
under comparable circumstances as the hypothetical negotiation.” Id. at
1372–73. The Federal Circuit has observed that it “has often excluded
licenses that are technologically or economically non-comparable.” Id. at
1373.

However, the court further observed that “the issue of

comparability is often one of sufficiency of the evidence, not
33

admissibility.” Id. (citing cases). Applying the persuasive reasoning of
the Federal Circuit, the issues raised by FDW are best addressed by cross
examination and not by exclusion of Duski’s testimony. See Quiet Tech.
DC-8, 326 F.3d at 1341. The request to exclude Duski’s testimony about
Defendant’s damages is, therefore, DENIED. Doc. 146, in part.
Conclusion
For the foregoing reasons, Defendants’ Motion to Strike Certain
Opinions and Portions Thereof of Dr. Craig Forest, Ph.D., P.E. and Lisa
Miller is GRANTED, in part. Doc. 145. Any portion of Forest’s Opinion
4 about what a POSITA might understand the term “set” to mean is
EXCLUDED.

The portion of Forest’s Opinion 6 that offers a new

meaning of the term “pivot point,” including his discussion of the term
“pin joint,” is EXCLUDED. The remainder of Defendant’s requests for
exclusion are DENIED, in part. Doc. 145, in part.
Plaintiff Factory Direct Wholesale, LLC’s Motion to Exclude
Certain Expert Opinions is DENIED. Doc. 146.
SO ORDERED, this 7th day off March, 2025.
_______________________________
_____________________________
CHRISTOPHER
RIST
TOP
O H
HE
ER L. RAY
UNITED
ITED STATES MAGISTRATE JUDGE
SOUTHERN DISTRICT OF GEORGIA
34