Fleming v. Escort Inc. et al

Filing 238

MEMORANDUM DECISION AND ORDER granting 188 Plaintiff's First Daubert Motion. Signed by Judge B. Lynn Winmill. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (cjm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
HOYT A. FLEMING,
Plaintiff,

Case No. 1:CV 09-105-BLW

v.

MEMORANDUM DECISION AND
ORDER

ESCORT, INC. and BELTRONICS
USA, INC.,
Defendants.

INTRODUCTION
The Court has before it Fleming’s motion to strike certain paragraphs of the report of
Escort’s expert, Dr. John Grindon. The motion is fully briefed and at issue. For the reasons
explained below, the Court will grant the motion.
ANALYSIS
Fleming seeks to preclude Dr. Grindon from testifying as to certain opinions contained in
his expert report, specifically those opinions at paragraphs 21 to 50 and 53 to 108. These
paragraphs cover separate topics, and the Court will group them together by topic for purposes of
analysis.
Paragraphs 21 through 42
One of Escort’s defenses to Fleming’s charge of infringement is that Escort’s devices
lock out false signals by using a process different from that described in Fleming’s patents.
Escort alleges that false signals are locked out of Fleming’s invention when the device reaches a
predetermined distance from the predetermined position of a false signal, but with Escort’s
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devices, “the distance from a lockout varies.” See Supplemental Report of Dr. Grindon (Dkt. No.
188-1) at p. 8.1
Escort’s expert, Dr. Grindon, concluded, among other things, that “the asserted claims of
the ‘038 patent are not infringed” by Escort’s devices. Id. at pp. 1-8. In his claim-by-claim
analysis set forth in that Supplemental Report – at paragraphs 21 through 42 – he concludes that
Escort’s products do not infringe claims 1, 3, 5, 6, 7, 8, 23, 25, 26, and 27 of the ‘038 patent
because those claims describe a device that locks out an alert if the device is a predetermined
distance from a predetermined false signal, while with the Escort products, “the distance from a
lockout varies.” Id.
Dr. Grindon never explains how the Escort products lock out false signals. In its brief,
Escort claims that Dr. Grindon – in his Supplemental Report and through that Report’s
incorporation of Interrogatory Answers – has identified the lines of source code that perform the
function of locking out false signals on Escort devices, and that by identifying the source code,
has explained how the Escort products function so that “the distance from a lockout varies.” But
there is no such explanation in Dr. Grindon’s Supplemental Report. It is true that his
Supplemental Report refers in a very general sense to Interrogatory Answers. That reference is
as follows:
In addition . . . Escort’s Supplemental Responses to Fleming Revised Seventh Set of
Interrogatories sets forth in detail the relevant portions of source code in the accused
devices which support my opinions about the missing elements in the asserted
claims. Those citations to the source code are to be considered a part of this report
and Exhibit C.
1

Escort had earlier filed the Initial Report of Dr. Grindon. His Initial Report and his
Supplemental Report are largely identical, the only difference being that his Supplemental Report
responds to Fleming’s Supplemental Report regarding the Passport iQ. For ease of reference, the Court
will cite to portions of Dr. Grindon’s Supplemental Report in the body of this decision.
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Id. at p. 8. Dr. Grindon says nothing further that might reveal how that source code supports his
opinions. When the Interrogatory Answers themselves are examined, they are equally opaque.
The Interrogatories Dr. Grindon is referring to asked Escort to “identify (by page and line
number) the portion of [Escort’s] source code for each Accused Infringing Product that
corresponds to the claim element.” See Exhibit A (Dkt. No. 195-1) at p. 3. Escort’s typical
answer looks like this:
Claim 1 – generating an alert if the position of the device is not within a
predetermined distance of a predetermined position (the ‘038 patent)
Lines: 1901-1918
Lines: 3621-3627
Lines: 3665-3715
Lines: 4719-4899
Lines: 4924-4982
Lines: 8453-8474
Lines: 9979-10026
Lines: 10030-10047
See Exhibit A (Dkt. No. 195-1). By listing these lines of source code under a quote from a
portion of claim 1 (relating to claim 1(c)), Escort is merely representing, in response to the
Interrogatory query, that they “correspond to that claim element” – that is, that they
“correspond” to claim 1(c) of the ‘038 patent. There is no specific representation in the
Interrogatory Answers – or in Dr. Grindon’s expert report – that these particular lines of source
code allow Escort products to function so that “the distance from a lockout varies.” In other
words, the connection between that specific opinion of Dr. Grindon and the above list is so
vague as to be nonexistent.
But even assuming that these are the lines of code ensuring that “the distance from a
lockout varies,” Dr. Grindon fails to explain how these lines of code perform that function. That
failure is significant: The source code itself is like a strange foreign language to a lay person,
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and its connection to Dr. Grindon’s opinions must be explained by an expert to make any sense.
See Caro v. Calderon, 165 F.3d 1223, 1227 (9th Cir.1999) (noting the need for expert testimony
to explain a possible causal connection between the defendant's exposure to toxic pesticides and
aggressive behavior because an understanding of that kind of link is not within the common
knowledge of lay persons).
Escort intends to have Dr. Grindon provide this explanation at trial: “Furthermore, should
the Court permit Dr. Grindon to testify at trial, his testimony regarding the details of his noninfringement opinion, especially his review of the source code on which he relies, will
undoubtedly assist the jury in determining the issue of infringement.” See Escort Brief (Dkt. No.
195) at p. 10. But Dr. Grindon cannot be allowed at trial to “review” the source code when he
failed to do so in his expert report. See Case Management Order (Dkt. No. 64) (stating that
“[p]ursuant to Local Rule 26.2(b), expert witnesses will not be allowed to offer any opinion not
disclosed in the mandatory Rule 26 disclosures, supplementation, or deposition”); see also
Fed.R.Civ.P. 26(a)(2), advisory committee’s note, 1993 amendments (stating that Rule 37(c)(1)
“provides an incentive for full disclosure; namely , that a party will not ordinarily be permitted to
use on direct examination any expert testimony not so disclosed”).
Because Dr. Grindon is precluded at trial from explaining how the source code performs
the lockout function, his testimony that the source code supports his opinions – without that
explanation – will not “help the trier of fact to understand the evidence or to determine a fact in
issue.” See Federal Rule of Evidence 702. Just at the moment the jury most needs his help – to
explain how the source code works – Dr. Grindon will have nothing to say.
Moreover, the test for reliability under Rule 702 is “the soundness of the [expert’s]

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methodology.” See Stilwell v. Smith & Nephew, Inc., 482 F.3d 1187, 1192 (9th Cir. 2007).
There is no way for the Court or the jury to evaluate Dr. Grindon’s methodology when he has
failed to explain how the source code works. In essence, his opinion is the classic “black box,”
asserting that the source code makes the products non-infringing because he says so. See
Domingo ex rel. Domingo v. T.K., 289 F.3d 600, 607 (9th Cir. 2002) (holding that the district
court is not required to “admit opinion evidence that is connected to existing data only by the
ipse dixit of the expert”).
Escort argues that it is unfair for Fleming to wait until just before trial to challenge Dr.
Grindon’s expert report because Fleming has had the report for over a year. If Fleming
challenged the report earlier, Escort argues, Dr. Grindon would have had time to amend his
report to add the necessary explanations. But this argument ignores the Court’s Case
Management Order, quoted above, that precludes experts from testifying to anything that is not
in their report. If the Court were to allow endless amendments upon every challenge, the Court
would also need to reopen discovery and delay all the deadlines and ultimately extend the trial
date. The Case Management Order is quite clear that such a process is unacceptable.
Escort argues that Fleming suffers no prejudice because its own expert, Dr. Bartone,
rendered an opinion on whether the lines of source code cited by Dr. Grindon support his
opinions. But Dr. Bartone was forced to assume what Dr. Grindon’s ultimate opinion would be
because Dr. Grindon has never revealed it. Neither Fleming nor Dr. Bartone has any assurance
that their assumption as to how Dr. Grindon will testify will match his actual testimony at trial.
And that is precisely what the Case Management Order seeks to avoid. Fleming is prejudiced
because the first time it will hear how the source code works from Dr. Grindon will be at trial.

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For all of these reasons, the Court will grant Fleming’s motion to preclude Dr. Grindon
from testifying to the opinions contained in paragraphs 21 through 42 of his expert report where
he concludes that Escort’s products do not infringe claims 1, 3, 5, 6, 7, 8, 23, 25, 26, and 27 of
the ‘038 patent because those claims describe a device that locks out an alert if the device is a
predetermined distance from a predetermined false signal, while with the Escort products, “the
distance from a lockout varies.” See Report of Dr. Grindon (Dkt. No. 188-1) at pp. 1-12.
Paragraphs 42 -50 and 53-108
Dr. Grindon renders other opinions on why Escort products do not infringe Fleming’s
patents in paragraphs 42 to 50 and 53 to 108 of his expert report. For example, in paragraph 45
he renders an opinion that the Escort products do not infringe claim 28 (a dependent claim of
claim 1) of Fleming’s ‘038 patent because they “do not store signal strength.” Id. at ¶ 45. Once
again, he lists lines of Escort’s source code that generally relates to claim 28, but fails to explain
how that source code works to support his opinion. Once again, Dr. Grindon testifies that the
source code supports his opinion without any explanation. The first time Fleming will hear how
the source code allows Escort products to function without storing signal strength will be at trial.
This example is representative of the other opinions set forth in these paragraphs; they all
suffer from this identical – and fatal – flaw. Accordingly, for the reasons expressed above, the
Court will preclude Dr. Grindon from testifying to the opinions contained in paragraphs 42-50
and 53-108 of his expert report.
ORDER
In accordance with the Memorandum Decision set forth above,
NOW THEREFORE IT IS HEREBY ORDERED, that Fleming’s Daubert motion

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(docket no. 188) is GRANTED, and that Dr. John Grindon will be precluded at trial from
testifying to the opinions contained in paragraphs 42 to 50 and 53 to 108 of his Supplemental
Report.

DATED: May 23, 2012

Honorable B. Lynn Winmill
Chief U. S. District Judge

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