M Edge Accessories LLC v. Amazon.Com Inc.

Filing 171

MEMORANDUM AND ORDER granting in part and denying in part 126 Defendant Amazon.com, Inc.'s Motion for Summary Judgment; denying 108 Plaintiff's Motion in Limine; and granting in part and denying in part 117 M-Edge's Motion in Limine. Signed by Judge Marvin J. Garbis on 1/29/2015. (bmhs, Deputy Clerk)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND

M-EDGE ACCESSORIES LLC

*

Plaintiff

*

vs.

*

AMAZON.COM INC.

*

Defendant
*

*

CIVIL ACTION NO. MJG-11-3332

*

*
*

*

*

*

*

*

MEMORANDUM AND ORDER
The Court has before it the following:


Defendant Amazon.com, Inc.'s Motion for Summary
Judgment ("MSJ") [Document 126];



Plaintiff's Motion in Limine to Bar Testimony of
Amazon's "Consumer Electronics Industry Expert," Bruce
Koenigsberg, and to Strike His Report ("Koenigsberg
MIL") [Document 108];



M-Edge's Motion in Limine to Bar Certain Testimony of
Amazon's Damage Expert, Allyn Strickland, and to
Strike the Corresponding Portions of His Report
[Document 117]; and



The materials submitted relating thereto.

The Court has held a hearing and had the benefit of the
arguments of counsel.

I.

BACKGROUND
In 2007, Defendant Amazon.com Inc. ("Amazon") launched its

Kindle Device.

Shortly thereafter, Plaintiff M-Edge Accessories

LLC ("M-Edge") began to sell Kindle accessories, including
ereader covers.

The Amazon – M-Edge relationship began well

but, by about 2011, began to sour, eventually deteriorating to
the extent that M-Edge filed the instant lawsuit.

M-Edge

asserts patent infringement and tort claims in the pending
Second Amended Complaint ("SAC") [Document 33].

A.

Patent Claims (Count I)
1.
2.

B.

Amazon's Type I ("Shasta") Device
Amazon's Type II ("Tequila") Device

Tort Claims (Count II)
3.

Unfair competition

4.

Tortious interference

5.

False advertising (Lanham Act)

By the instant motions, Amazon seeks summary judgment on
all claims, and M-Edge seeks to exclude the testimony of two
Amazon expert witnesses.

II.

STANDARD FOR SUMMARY JUDGMENT
A motion for summary judgment shall be granted if the

pleadings and supporting documents "show that there is no
genuine issue as to any material fact and that the movant is

2

entitled to judgment as a matter of law."

Fed. R. Civ. P.

56(c)(2).
The well-established principles pertinent to summary
judgment motions can be distilled to a simple statement:

The

Court may look at the evidence presented in regard to a motion
for summary judgment through the non-movant's rose-colored
glasses, but must view it realistically.

After so doing, the

essential question is whether a reasonable fact finder could
return a verdict for the non-movant or whether the movant would,
at trial, be entitled to judgment as a matter of law.

See,

e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986);
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Shealy v.
Winston, 929 F.2d 1009, 1012 (4th Cir. 1991).

Thus, in order to

defeat a motion for summary judgment, "the party opposing the
motion must present evidence of specific facts from which the
finder of fact could reasonably find for him or her."

Mackey v.

Shalala, 43 F. Supp. 2d 559, 564 (D. Md. 1999).
When evaluating a motion for summary judgment, the Court
must bear in mind that the "summary judgment procedure is
properly regarded not as a disfavored procedural shortcut, but
rather as an integral part of the Federal Rules as a whole,
which are designed 'to secure the just, speedy and inexpensive

3

determ
mination of every action.'"
y

Celo
otex, 477 U.S. at 327
7
t

(quoting Rule 1 of the Federal Rules o Civil Procedur
e
l
of
re).

III. DISCUSSIO
D
ON
A.
A

PATE
ENT INFRI
INGEMENT CLAIMS

M-Edge is the own
M
ner of Pa
atent No. 8,047,6
670 ("the '670
e
Patent"), enti
itled "Bo
ooklight for a Pr
rotective Cover o an
e
of
Ereader."

As illustra
ated by Figures1 2 and 3A,
F
2A

in essence,2 th '670 Patent di
he
P
iscloses a cover for an ereader
r
with a pocket slot (12
20) into which fi
its a pla
anar base (20) so
e
o
that a light assembly housing (40) can be mani
a
n
ipulated by a use
er
to illuminate a page being rea
b
ad.
M-Edge asserts in
M
nfringeme
ent claim agains Amazon
ms
st
n's Type I
Shasta covers and Type II Tequ
a
e
uila cove
ers.3

1

M-Edge ass
serts

All figure re
f
eferences herein are to t
s
the '670 Patent.
For a more co
omplete descripti
d
ion of th '670 Patent, see the
he
Memora
andum and Order Re: Claim Constru
d
R
m
uction [D
Document 95].
3
M-Edg seems to be as
ge
sserting infringe
ement claims aga
ainst
Amazon
n's Whitn
ney cover as well as the Tequila cover si
r
l
ince it
alleged that the two devices have the same mat
t
d
h
terial
2

4

infringement of independent claims 1, 6, and 8, the broadest of
which is Claim 8, stating:
A cover and light assembly, the cover and light
assembly comprising: a protective cover including, a
first and second cover each including an exterior
surface and an interior surface, and an axis around
which the interior surfaces of the first and second
covers are bendable, and a pocket formed between the
exterior surface and at least a portion of the
interior surface of one of the first and second
covers, the pocket not traversing the axis and having
an opening formed at an edge of the interior surface;
and a light including, a planar base disposed within
the pocket and having a slot, a movable base with a
protrusion that is received by the slot of the planar
base so that the movable base is movably coupled to
the planar base, a neck extending from the movable
base, and a light housing disposed at a distal end of
the neck.
'670 Patent, Claim 8.
1.

The Type I Shasta Cover

M-Edge accuses the Amazon Shasta cover of infringing the
'670 patent.

The Shasta cover includes a light at the end of a

component that slides in and out of the top right corner of the
open ereader:

characteristics. "Both Whitney . . . and Tequila . . . involve
the same structures – the same swiveling light located in the
same pocket along the same place in the top edge of the back
cover." MSJ Opp. 57-58. See id. at 54 (stating that "the
Whitney or the Tequila . . . are also referred to as the Type II
product"); id. at 57.

5

MSJ Op
pp. 54 [D
Document 143].
Amazon se
A
eeks summ
mary judg
gment by virtue o the ab
of
bsence in
n
the Sh
hasta cov
ver of:


A "slot" in the plan
nar base of the a
assembly that
rece
eived a "protrusi
ion."



A "p
pocket" formed be
f
etween th covers that re
he
s
eceives t
the
plan
nar base of the assembly.
a

a.

"Sl
lot" in the Plana Base R
t
ar
Receiving a Protr
g
rusion

Independe
ent Claim 8, 1, and 6 of the '67 Patent require
ms
f
70
t
e
a pl
lanar bas 4 dispos
se
sed withi the p
in
pocket an
nd
havi
ing a slo
ot, [and] a movab
ble base with a
prot
trusion that is received by the s
t
r
slot of
the planar base . . .
b
'670 Patent, Claim 8.
M-Edge ha presen
M
as
nted expe
ert witne
ess testi
imony tha
at, as
illustrated by the fol
y
llowing photograp
p
ph, indic
cates the
ere are
protru
usions on the mov
n
vable bas
se.
4

Indep
pendent claims 1 and 6 in
c
nclude es
ssentially the s
same
limita
ations, with the term "su
w
ubstantia
ally flat portion used i
t
n"
in
place of "plan
nar base."

6

MSJ Opp. 55.
The expert witness further opined that there is a slot that
"assists the protrusions in preventing the base from coming all
the way out" and "provid[es] electrical contact so the light
will come on."

MSJ Ex. 38 at 242:11-14.

The witness further

stated that "the slot is formed between those springs and a
piece that goes on top" and "squeezes down."
243:3-4.

Id. at 242:15-16,

The following photograph shows the space between the

two surfaces of a cover showing the bottom and the top of the
structure the expert opines constitutes a slot.

7

MSJ Opp. 56.
A reasonable jury could agree with the expert witness'
opinion.

Thus, the Court finds this testimony adequate to

permit – but, by no means to require – a reasonable jury to find
that the Shasta cover has a slot and a movable base with a
protrusion that is received by the slot of the planar base.
Amazon contends that M-Edge is impermissibly amending its
original infringement contentions because M-Edge's original
infringement contentions made no mention of a "piece that goes
on top" to form a part of either the slot or the planar base.
MSJ Reply 33 [Document 149].

According to Amazon, to allow M-

Edge to make this argument would be to endorse the "shifting
sands" approach to infringement contentions that the Federal
Circuit has rejected.

See Genentech, Inc. v. Amgen, Inc., 289

F.3d 761, 774 (Fed. Cir. 2002).

However, the Court finds no

impermissible "shifting of the sands" here because it is readily

8

apparent, upon examining the split inside of the Shasta cover,
that what M-Edge contends to be the planar base had a top that
had fit on it before the cover was split.

Hence, the contention

that there was a "piece on top" was implicit in the original
infringement contention.

b.

"Pocket" Between the Covers

Independent Claims 8, 1, and 6 of the '670 Patent require
"a pocket formed between the exterior surface and at least a
portion of the interior surface of one of the first and second
covers, the pocket not traversing the axis and having an opening
formed at an edge of the interior surface."
8.

'670 Patent, Claim

This Court construed the term "pocket" to mean "a receptacle

in which is received the portion of the base that is referred to
as the 'substantially flat portion' in Claims 1 and 6 and as the
'planar base' in Claims 8 and 17"; "formed between" to mean
"located between"; and "having an opening formed at an edge of
the interior surface" to mean "that the pocket opening must be
formed at an edge of an interior surface – but not necessarily
adjacent to the spine."

Memorandum and Order: Claim

Construction 29-30 [Document 95].

9

The Court finds that the following photograph of the inside
of a split cover of the Shasta cover shows a structure that may
be found to meet the instant limitation.5

There is a defined area between the inside and outside of
the cover into which what M-Edge contends is the planar base
will fit.

That area has an opening at the edge of an interior

surface.

c.

Summary Judgment Denied

As discussed herein, the Court finds that there are genuine
issues of material fact that prevent a grant of summary judgment

5

The Court finds it unnecessary to address, for summary judgment
purposes, M-Edge's additional contentions regarding the "pocket"
limitation.

10

with regard to M-Edge's infrin
r
o
ngement c
claims ag
gainst th Shasta
he
a
cover.

2.

The Typ II Teq
pe
quila Cov
ver

M-Edge ac
M
ccuses th Amazon Type II "Tequil 6 cove of
he
n
I
la"
er
infrin
nging the '670 Pa
e
atent.

The Tequi
T
ila cover has a r
r
rotating

arm with a lig
ght at th end th
he
hat is at
ttached a the to of the
at
op
e
device:

MSJ Op
pp. 57.
The claim at iss
ms
sue inclu
ude the l
limitatio
ons that there be
e
a po
ocket for
rmed betw
ween the exterior surface
r
e
and at least a porti
t
ion of th interi
he
ior
surf
face of one of th first and seco
o
he
ond
cove
ers, [and
d]
a pl
lanar bas dispos
se
sed withi the po
in
ocket . . .
'670 Patent, Claim 8.
P
C
As discussed here
A
ein, Amaz
zon is en
ntitled t summar judgme
to
ry
ent
with regard to infring
r
o
gement cl
laims aga
ainst the Tequila cover d
e
a
due
6

And, it seems the Wh
s,
hitney co
over as w
well.

11

to the absence of "a planar ba
e
p
ase dispo
osed with
hin or re
eceived b
by
the pocket."7
M-Edge co
M
ontends that the Tequila device h
t
has "a pl
lanar bas
se
disposed withi the po
in
ocket" as illustr
s
rated by the foll
lowing
photog
graph.

Resp. Suppl. 8 [Docume
ent 164].
However, the evid
H
dence est
tablishes that wh
s
hat M-Edg conten
ge
nds
is a planar ba
p
ase (the flat pie
ece of ha
ard plast
tic in th
he
purpor
rted pock
ket) is not a "su
n
ubstantia
ally flat portion of the
t
n"
e
assemb
bly.

Rat
ther, it is a par of the tip of a large piece of
rt
e
f

plastic that extends to both sides of the bott
e
t
s
tom of th ereade
he
er.

7

The Court not
C
tes, but need not address Amazo
t
s,
on's appa
arently
meritorious co
ontention that th
n
here is a absenc of evi
an
ce
idence
adequa
ate to pr
revent su
ummary ju
udgment w
with rega
ard to th
he
existence of a "pocket in the Tequila cover.
t"
e
a

12

Suppl. Br. 5 [Document 161].

Thus, the surface identified by M-Edge as the "planar base"
is but the tip of a structure that constitutes the tub for
receiving the Kindle.

It is by no means a substantially flat

portion of the assembly.

13

Accordingly, due to the absence of evidence adequate to
permit a reasonable jury to find that the Tequila cover contains
a planar base disposed within the pocket – if it would be
determined that there was a pocket – Amazon is entitled to
summary judgment with regard to the Tequila cover.

B.

Tort Claims

In addition to the patent infringement claims, M-Edge
asserts tort claims against Amazon in three Counts.
Count II -

Unfair Competition

Count III – Intentional Interference with Contracts
and Economic Relations
Count IV - Lanham Act – False Advertising
These Counts shall be addressed in turn.

1.

Unfair Competition (Count II)

"[T]he general principle" of unfair competition law is
"that all dealings must be done on the basis of common honesty
and fairness, without taint of fraud or deception."
Bedding Corp. v. Moses, 34 A.2d 338, 342 (1943).

Baltimore

"The essential

element of unfair competition is deception—either actual or
probable deception."

Victor Stanley, Inc. v. Creative Pipe,

Inc., CIV.A. MJG-06-2662, 2011 WL 4596043 at *8 (D. Md. Sept.
30, 2011), aff'd, 499 F. App'x 971 (Fed. Cir. 2013) (internal

14

citations omitted).

"[N]o one . . . is justified in damaging or

jeopardizing another's business by fraud, deceit, trickery or
unfair methods of any sort."

Baltimore Bedding, 34 A.2d at 342.

To prevail on an unfair competition claim, a plaintiff must
prove that the alleged misconduct "damaged or jeopardized" their
business.

Berlyn Inc. v. The Gazette Newspapers, Inc., 73 F.

App'x 576, 585 (4th Cir. 2003) [hereinafter Berlyn II].
This tort is broad but not boundless.8

Unfair competition

law exists "to protect the public by healthy competition, [but]
not . . . to protect individual plaintiffs."

Grempler v.

Multiple Listing Bureau of Harford Cnty., Inc., 266 A.2d 1, 7
(1970).

This means that "mere competition by a business rival

is not a tortious act."

Id. at 4.

This Court has held that a

claim of collusion "to build up advertising revenues for
[plaintiff newspaper], only later to steal that business away
and to assign it to [defendant newspaper]" did not constitute a
claim of unfair competition.

Berlyn Inc. v. Gazette Newspapers,

Inc., 223 F. Supp. 2d 718, 738 (D. Md. 2002) [hereinafter Berlyn
I], aff'd sub nom. Berlyn II.

This was because plaintiffs

8

S. Volkswagen, Inc. v. Centrix Fin., LLC, 357 F. Supp. 2d 837,
852 (D. Md. 2005) ("[T]his Court has consistently delineated the
parameters of this tort in a very broad manner."). See also
Baltimore Bedding, 34 A.2d at 342 ("Each case is a law unto
itself" and "[w]hat constitutes unfair competition in a given
case is governed by its own particular facts and
circumstances.").

15

"failed to show that the defendants' actions in this case were
anticompetitive, or that each complained-of action was not taken
with some independent and legitimate business purpose."

Id. at

739.
M-Edge bases its unfair competition claims on seven
"categories of conduct," each of which, it alleges,
independently supports a claim of unfair competition:
1)

Amazon's creation and use of the MfK program.

2)

Amazon's effort to instruct and assist Marware.

3)

Amazon's use of confidential information products.

4)

Amazon's use of unlawful pricing strategies to harm MEdge.

5)

Amazon's use of search path strategies to harm M-Edge.

6)

Amazon's use of threats.

7)

Amazon's use of deceit.

MSJ Opp. 34-44.
These shall be addressed in turn.

1) The Made for Kindle Program
In 2009, M-Edge became a member of the "Kindle Compatible
Vendor" program, which, among other things, allowed M-Edge to
label its products as "Kindle Compatible" and sell them online
through Amazon.com.

MSJ 4.

By the end of that year, "M-Edge

16

was Amazon's largest third-party Kindle accessories seller."
MSJ Opp. 5.
Amazon found that it had under-estimated the market for
Kindle accessories.

Hr’g Tr. 130:13-14 [Document 160].

As a

way to increase its margin on sales by third-party vendors such
as M-Edge, Amazon initiated the "Made for Kindle" (MfK) program
in the early part of 2011.

Under this program, Amazon-selected

members whose products met Amazon's standard for quality would
be given special benefits.

These benefits included being sold

in the Kindle Store area of Amazon.com, permission to use the
"Made for Kindle" trademark, pre-launch access to new Kindle
products, and inclusion on Amazon's list of "Made for Kindle"
vendors.

Id. at 5-6.

MfK members, in return, would pay Amazon

a royalty on their sales of Kindle-related products.
M-Edge rejected Amazon's offer to take part in the MfK
program.

Id. at 7.

This decision was at least partially

motivated by what M-Edge considered to be the high royalty rates
that it would have to pay on sales of its Kindle-related
products.

Id. at 7-9.

M-Edge has failed to produce evidence adequate to permit a
reasonable jury to find that the MfK program constituted
actionable unfair competition on the part of Amazon.

M-Edge

indisputably was given the opportunity to participate in the

17

invitation-only program and made an informed business decision
not to participate.

Id. at 7-8.

Any "harm" sustained by non-

participation in the MfK program was caused by M-Edge's decision
that the benefit of participating would be outweighed by the
cost.
Moreover, the evidence establishes the existence of valid
business reasons for the MfK program – having nothing to do with
any unfair competition vis-à-vis M-Edge.

See Berlyn I, 223 F.

Supp. 2d at 739 (holding that non-anticompetitive activity
performed for a legitimate business purpose did not constitute
unfair competition).

Certainly, Amazon was justified in seeking

to promote the quality of merchandise that would be used
together with its Kindle ereaders.

Nor was there anything even

arguably wrong with Amazon's charging a royalty to manufacturers
who benefitted from the use of Amazon's "endorsement."

2) Amazon's Assistance of Marware
Marware, an M-Edge competitor, is a participant in the MfK
program.

Amazon assisted Marware to sell its Kindle-related

products, some of which were competitive with M-Edge products.
As Amazon acknowledges, Marware was "a very small player and a
largely unknown brand until we put muscle behind them."
Opp. Ex. 33.

18

MSJ

Amazon's assistance involved helping Marware and
encouraging Marware to adopt features of other successful
products, including M-Edge ereader accessories.

MSJ Opp. 34-36.

There is no evidence that Amazon's actions were improper.

For

example, there is no evidence that would establish that any
copied features of M-Edge products were legally protected.
Amazon's assistance of Marware – so as to generate Marware sales
on which royalties would be paid Amazon – did not constitute
unfair competition.

Of course, Amazon can be viewed as, in

effect, acting as a competitor of M-Edge in regard to Marware's
sales.

However, "mere competition by a business rival is not a

tortious act."

Grempler, 266 A.2d at 4.

3) Amazon's Use of Confidential Information
There is evidence that Amazon used information that it had
regarding M-Edge sales to design its own Kindle accessories.
MSJ Opp. 1.

Specifically, Amazon copied M-Edge's best-selling

colors, id. at 8, and gave M-Edge's sales information to
Marware, id. at 16-17.

M-Edge contends that the sales data was

confidential, and Amazon's use constituted unfair competition.
The sales information in question was, however, not M-Edge's
internal data but Amazon's records of its own sales of M-Edge
products.

Hr’g Tr. 84-85.

The information was not

19

"confidential" information over which M-Edge had any exclusive
rights vis-à-vis Amazon.

M-Edge's former Vice President of

Sales corroborated this concept: "[M]y assessment is that we
were a partner with them, so they had the [sales] data.
didn't steal it from anywhere."

They

MSJ Opp. Ex. 25 at 334.

M-Edge alleges that Amazon used confidential M-Edge
prototypes to launch its own products.

MSJ 8.

The only

"evidence" is a general declaration of M-Edge's chief technology
officer.

MSJ Ex. 16 at ¶ 2.

M-Edge never states what

prototypes were submitted to Amazon or what features, other than
color, were copied.

The evidence is insufficient to present a

viable unfair competition claim.
M-Edge presented evidence that a former Best Buy executive
gave Amazon the offline margin that M-Edge and two other vendors
had with Best Buy.

MSJ Opp. 29-30 (quoting Exs. 83-84).

An offline margin is used "to understand what other vendors
pay to offline retailers."

MSJ Opp. Ex. 56 at 129.

If a

vendor, for example, sells a $100 product with a 68% margin, the
wholesale cost is $32 and the profit is $68.

Id. at 126.

M-

Edge argues that possession of this information constitutes a
misuse of confidential information.

MSJ Opp. 29-30.

During

deposition, an Amazon employee claimed that this information was
used as a "benchmark" to determine "if the retail margin that

20

the vendors are offering to Amazon as a retailer is a fair and
equitable margin relative to . . . other retailers."

MSJ Opp.

Ex. 56 at 129.
M-Edge presents no evidence to establish that Amazon's
possession or use of the offline margins "damaged or
jeopardized" their business.

See Berlyn II, 73 F. App'x at 585

("To prove unfair competition under Maryland law, a plaintiff
must show that a defendant damaged or jeopardized his or her
business . . . .").

4) Amazon's Pricing Strategies
M-Edge contends that Amazon's use of below-cost pricing
constituted unfair competition.

MSJ Opp. 40-42 (citing MD. CODE

ANN., Com. Law § 11-404(a)).
M-Edge produced evidence that Amazon offered discounts and
sold related products as bundles amounting to below-cost
pricing.

M-Edge has not, however, presented evidence adequate

to permit a reasonable jury to find that Amazon acted with the
intent to harm them.

MD. CODE ANN., Com. Law § 11-404(a)

requires that the seller act "with intent to injure a competitor
or to destroy competition."

Id.

M-Edge has not presented evidence adequate to permit a
reasonable jury to find that Amazon had any intent "to destroy

21

competition."

There is no evidence that Amazon lacked a

legitimate business purpose for its discounted sales.
also Berlyn I, 223 F. Supp. 2d at 739.

Id.; see

At the motions hearing,

Amazon pointed out that the specifically-referenced promotions
were undertaken to get rid of excess inventory, some of which
were related to an obsolete product. Hr’g Tr. 153-55.

Such

behavior is permissible under Maryland law, which permits belowcost sales where "the merchandise . . . [m]ust be sold promptly
in order to prevent loss."

MD. CODE ANN., Com. Law § 11-402(8).

5) Amazon's Use of Search Path Strategies
M-Edge also contends that Amazon's use of search path
strategies provides a basis for an unfair competition claim.
proffers two items of evidence in support of this contention.
One such item is a non-authenticated printout of an
internet page.

MSJ Opp. Ex. 86.

This is purported to be a

printout of search results for the term "M-Edge" on the Wall
Street Journal's website.

The first search result reads in

part:
M Edge TM – Official Site . . . Kindle.Amazon.com
Buy Kindle or Kindle DX at Amazon. . . .
M-Edge claims that the advertisement of "Amazon.com" as the
"Official Site" for M-Edge constitutes unfair competition.

22

It

First, without authentication, this printout is
inadmissible hearsay inadequate to support an opposition to
summary judgment.

Greensboro Prof'l Fire Fighters Ass'n, Local

3157 v. City of Greensboro, 64 F.3d 962, 967 (4th Cir. 1995).
Indeed, several courts have held that printouts of third-party
websites are inherently non-trustworthy without authentication.9
Authentication of such documents requires testimony of
"someone with knowledge of the accuracy of the [document's]
contents."

McReynolds v. Lowe's Cos., Inc., No. 08-CV-0335,

2008 WL 5234047, at *7 (D. Id. Dec. 12, 2008).

It is not enough

for one party to say that the printout was obtained from a
particular website.

Id.

M-Edge's internet evidence, then, is

insufficient to support an opposition to summary judgment
because the evidence has not been authenticated.
Even if the printout were authenticated, M-Edge has not
presented evidence that would establish that the alleged conduct

9

St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 8:06
CV223TMSS, 2006 WL 1320242, *2 (M.D. Fla. May 12, 2006) ("Websites are not self-authenticating."); In re Homestore.com Inc.,
347 F. Supp. 2d 769, 782 (C.D. Cal. 2004) ("Printouts from a web
site do not bear the indicia of reliability demanded for other
self-authenticating documents under Fed. R. Evid. 902."); St.
Clair v. Johnny's Oyster & Shrimp, Inc., 76 F. Supp. 2d 773, 775
(S.D. Tex. 1999) ("Anyone can put anything on the Internet. No
web-site is monitored for accuracy and nothing contained therein
is under oath or even subject to independent verification absent
underlying documentation.").

23

"damaged or jeopardized" M-Edge's business.

Berlyn II, 73 F.

App'x at 585.
M-Edge also seeks to rely upon two e-mails in which Amazon
officials discuss setting up internet search terms using the
keyword "M-Edge."

In one, Mr. Vasen (Amazon) tells several

Amazon employees to "[s]how Marware equivalent products for
specific M-Edge searches."

MSJ Opp. Ex. 87.

In another, an

Amazon employee acknowledges "creat[ing] a sparkle specifically
for M-Edge keywords that also directs to Accessories homepage."
MSJ Opp. Ex. 91.

In the context of this e-mail, a "sparkle" is

a link displayed alongside search results for an M-Edge product
that directs a user to another company's related product.
Amazon has admitted to bidding for searches based on the M-Edge
keyword.

MSJ Ex. 22 ¶¶ 2-3.

M-Edge engages in the same

practice with its competitors' keywords.

MSJ Ex. 28.

Amazon presents legal authority supporting the
permissibility of such practice.

See 1-800 Contacts, Inc. v.

Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013); Network
Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137
(9th Cir. 2011).

Therefore, this conduct cannot serve as a

basis for a claim of unfair competition.

24

6) Amazon's "Threats"
M-Edge seeks to characterize as "threats" statements made
in the course of contract negotiations.
M-Edge entered into its first contract with Amazon in
February 2009.

MSJ 4.

Difficulties began in early 2010, when

the parties began to renegotiate a third-party merchant
contract.

At one point, Amazon "demanded" that M-Edge pay

Amazon an increased rate and retroactively pay a large amount in
back fees.

MSJ Opp. 5.

An Amazon employee later admitted that

he "didn't have a legal leg to stand on" in his requests.
at 6.

Id.

M-Edge eventually signed a renewal of the licensing

contract on July 20, 2010, reluctantly agreeing to an increased
royalty payment to Amazon.

MSJ 4-5, Ex. 8.

There is no

indication that M-Edge was ever required to pay the requested
back fees.

M-Edge also states that Amazon submitted several new

demands in December 2010 and January 2011.

MSJ Opp. 11.

M-Edge and Amazon negotiations, then, were contentious by
2011, when Amazon first approached M-Edge with an offer to be a
part of the MfK Program.

When M-Edge indicated that it would

not participate, an Amazon employee allegedly told M-Edge's Vice
President of Sales: "That's a path you really don't want to go
down, because we are going to be putting pressure on retail to
use the preferred partners.

It will cause damage to you if

25

you're not part of the program."
Exhibit 25 at 40).

MSJ Opp. 36-37 (quoting

The M-Edge executive interpreted this as a

threat and claimed that the Amazon employee used the word
"pressure."

Id.

Amazon had a valid reason to discourage M-Edge from
rejecting the MfK program since M-Edge was a successful and
popular third-party merchant.

At one point, "M-Edge was

Amazon's largest third-party Kindle accessories seller."
Opp. 5.

MSJ

At least one Amazon executive described M-Edge as his

"favorite brand."

Id. at 25.

Another believed that M-Edge made

"great products, high quality products."

Id. at 5.

Amazon,

then, had a legitimate business purpose to try to persuade MEdge to be part of the MfK program. See Berlyn I, 223 F. Supp.
2d at 739.
The Court finds the evidence inadequate to permit a
reasonable jury to find that Amazon's statements in the course
of negotiations to constitute actionable "threats" or otherwise
to constitute unfair competition.10

10

There is nothing indicating that Amazon had any intent to
undertake illegal action. Nor, most certainly, is there any
evidence of deceit. "[T]he essential element of unfair
competition is deception." Victor Stanley, 2011 WL 4596043 at
*8.

26

7) Amazon's "Deceit"
M-Edge contends that Amazon practiced deceit by not
fulfilling its promise to provide M-Edge with pre-launch access
to Amazon's third-generation Kindle (also called Kindle 3 or
"Shasta").

MSJ Opp. 43.

However, M-Edge does not refer to any

contract provision obligating Amazon to do so.

MSJ 5 n.5.

M-Edge proffers evidence that, it contends, establishes
that Amazon promised to provide pre-launch access to the Kindle
3.

In a deposition of M-Edge's CFO, where after being

questioned about "what value [he saw] in being part of the
Kindle Store," he replied, "[t]hat we would get to be there at
launch of a new device."

MSJ Opp. Ex. 9 at 162.

In a

deposition, an Amazon employee admitted discussing pre-launch
access with M-Edge, but never admitted that it was a part of
their agreement.

MSJ Opp. Ex. 8 at 34-35.

M-Edge complains that, when Kindle 3 was released on July
28, 2010, it only received access to the device the day before.
MSJ Opp. 7-8 (quoting Ex. 13 at 28-29).

However, M-Edge had

only renewed its third-party merchant contract on July 20, 2010.
MSJ Ex. 8.

Therefore, even if M-Edge acquired a contractual

right to prelaunch specifications, it would have only obtained
such information one week earlier than it did.

27

M-Edge has not

presented evidence of any injury resulting from such a one-week
delay.
M-Edge presents evidence of a 2011 meeting in Seattle just
prior to the launch of Kindle Fire.

M-Edge states that at this

meeting, Amazon "pump[ed] M-Edge for product information" even
though it had already decided "to dramatically cut M-Edge's
online sales and exclude M-Edge from the launch of the Kindle
Fire."

MSJ Opp. 43; see id. at 15.

But asking a competitor who

has agreed to meet with you about their products is not deceit.
Absent proof of any obligation of Amazon to provide prelaunch access, there can be no deceit in its declining to do so.

2.

Tortious Interference (Count III)
1) Legal Principles

In Maryland law, to establish a claim for tortious
interference, a plaintiff must prove:
1. Intentional and willful acts;
2. Calculated to cause damage to the plaintiffs in their
lawful business;
3. Done with the unlawful purpose to cause such damage
and loss, without right or justifiable cause on the
part of the defendants (which constitutes malice); and
4. Actual damage and loss resulting.
Alexander & Alexander Inc. v. B. Dixon Evander & Associates,
Inc., 650 A.2d 260, 269 (Md. 1994).

28

Regarding the third (unlawful purpose) element, Maryland
requires that a plaintiff must provide "proof that the
defendant's conduct in interfering with contract or business
relations was accomplished through improper means" by conduct
that is "independently wrongful or unlawful."

Lyon v. Campbell,

707 A.2d 850, 860 (Md. Ct. Spec. App. 1998) (quoting Alexander,
650 A.2d at 271).

Examples of such conduct include "violence or

intimidation, defamation, injurious falsehood or other fraud,
violation of the criminal law, and the institution or threat of
groundless civil suits or criminal prosecutions in bad faith."
Spengler v. Sears, Roebuck & Co., 878 A.2d 628, 642 (Md. Ct.
Spec. App. 2005) (quoting K & K Mgmt., Inc. v. Lee, 557 A.2d
965, 979 (Md. 1989)).

However, "improper or wrongful conduct is

incapable of precise definition" and can be "quite subtle."
Macklin v. Robert Logan Assoc., 639 A.2d 112, 119 (Md. 1994).
To establish the fourth (causation) element, the plaintiff
must provide "evidence to show that, more likely than not, the
defendant's wrongful conduct caused the injury alleged."

Lyon,

707 A.2d at 860.
M-Edge's tortious interference claim rests upon its
allegations that Amazon:


made misrepresentations about M-Edge's status as an
Amazon-approved vendor; and

29



performed "unlawful acts of coercion against
retailers."

MSJ Opp. 47.
M-Edge has not presented evidence adequate to permit a
reasonable jury to find that either of these allegations has
been established.

Nor has M-Edge presented evidence to

establish that the alleged Amazon actions caused it cognizable
injury.11

2) Misrepresentations
M-Edge contends that Amazon used the MfK Program to make
misrepresentations regarding the quality and trustworthiness of
M-Edge products.

Specifically, M-Edge contends that "Amazon

directed its representatives to spread false messages that only
MfK vendors had 'High quality products: Amazon approved and
tested,' and that only MfK vendors were 'highly capable, honest,
and trusted.'"

MSJ Opp. 46 (quoting Ex. 64)(emphasis added).

11

See, e.g., Med. Mut. Liab. Soc. of Maryland v. B. Dixon
Evander & Associates, Inc., 660 A.2d 433 (Md. 1995) (finding
inadequate evidence of causation of customer loss by derogatory
statements, and stating that plaintiff presented no evidence
that a customer's decision to leave [Plaintiff] Evander, Inc.
was prompted by a perception that Mr. Evander was 'inadequate,'
rather than by a desire to remain insured by [Defendant] Medical
Mutual." Id. at 440-41. M-Edge asserts that it lost sales to
eight companies after creation of the MfK program, asserting
that it lost $3,000,000 of sales to Best Buy. MSJ Opp. 48-49.
However, M-Edge presents no evidence this loss of sales was
caused by any misrepresentation by Amazon.

30

M-Edge presents an Amazon email providing selling points to
vendors.

The e-mail does not include the word "only" or

otherwise state that only MfK vendors' product were of high
quality, and it does not contain any misrepresentation regarding
M-Edge.

MSJ Opp. Ex. 64.

Regarding "non-preferred vendors,"

the e-mail states: "retailers should direct them back to Amazon
to join the [MfK] program."

Id.

There is no false statement

about the quality or trustworthiness of M-Edge products or any
instructions to its employees to make such statements.
While the instant decision is based upon the absence of
evidence supporting M-Edge, the Court must note that there is
ample evidence of communications indicating that Amazon did not
deliberately disparage non-MfK vendors.

For example, in an e-

mail to the third-party retailer HMS Host, Amazon makes five
positive assertions about MfK vendors, but does not state
anything regarding the quality or trustworthiness of non-MfK
vendors.

MSJ Opp. Ex. 62.

In that same exhibit, another Amazon

employee describes responding to an accessory buyer's question
about M-Edge as follows: "I stuck to the script and focused on
our partners abilities, leaving risk on M-Edge."

Id.

Amazon

emphasized "our partners (sic) abilities" rather than berating
non-MfK companies.

31

3) Coercion
M-Edge contends that Amazon committed acts of coercion that
prevented other vendors from buying from M-Edge.
48.

MSJ Opp. 47-

"Specifically, Amazon contacted each major retailer and

stated that M-Edge is not an approved Amazon vendor, and
therefore M-Edge's products should not be purchased; Amazon also
warned of repercussions if its directive was not followed . . .
."

Second Am. Compl. ¶ 36.
M-Edge presents, as purported evidence of this alleged

coercion, four emails from Amazon. Three of these do not even
mention M-Edge.

MSJ Opp. Exs. 70, 72, and 75.

Only one of

these emails refers to M-Edge12 [MSJ Opp. Ex. 60].

M-Edge

presents a truncated quote from the email in its opposition to
the instant Motion for Summary Judgment:

12

The email states:
Peter, I'm headed on vacation. I support pushing
the MFK program. I also support pushing our
retailers to not allow other accessory providers
like M-Edge to use our Kindle brand in their
advertising or packaging (e.g., referencing
Kindle compatible). I don't think we can block
them from selling accessories using the generic
e-reader reference, though.
Have we made any progress getting a deal with MEdge? They are still my favorite brand, and I
understand why some retailers want their product.

MSJ Opp. Ex. 60.

32

Amazon's campaign against M-Edge's retail
sales also included unlawful acts of
coercion against retailers. Amazon had
contracts with various retailers that
predated MfK, and some had provisions
relating to Kindle Compatible accessories .
. .
These contracts did not prohibit
buying from M-Edge, because M-Edge had been,
and still was, an Amazon-approved Kindle
Compatible vendor. Amazon knew this was a
wrongful assertion of contract rights. When
asked to support the contract coercion,
Amazon's Dave Zimmer replied: "I don't think
we can block them [M-Edge] from selling
accessories..." (Ex. 60).
MSJ Opp. 47 (emphasis added).

However, the full final sentence

of the quote from Mr. Zimmer's statement is: "I don't think we
can block [M-Edge] from selling accessories using the generic ereader reference."

Id. (emphasis added).

M-Edge has not produced evidence adequate to permit a
reasonable jury to find that Amazon coerced retailers to cease
doing business with M-Edge.

3.

False Advertising (Count IV)

To establish a false advertising claim under the Lanham
Act, 15 U.S.C. § 1051 et. seq., a plaintiff must prove that:
1.

The defendant made a false or misleading
description of fact or representation of fact in
a commercial advertisement about his own or
another's product;

2.

The misrepresentation is material, in that it is
likely to influence the purchasing decision;

33

3.

The misrepresentation actually deceives or has
the tendency to deceive a substantial segment of
its audience;

4.

The defendant placed the false or misleading
statement in interstate commerce; and

5.

The plaintiff has been or is likely to be injured
as a result of the misrepresentation, either by
direct diversion of sales or by a lessening of
goodwill associated with its products.

Scotts Co. v. United Indus. Corp., 315 F.3d 264, 272 (4th Cir.
2002).
Evidence of actual confusion may be required to prevail on
a claim of false advertising.

"Where the advertisement is

literally false, a violation may be established without evidence
of consumer deception."

Id. at 273 (quoting Cashmere & Camel

Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311 (1st Cir.
2002)).

For advertisements that are only impliedly false, the

"plaintiff must demonstrate, by extrinsic evidence, that the
challenged [advertisements] tend to mislead or confuse
consumers."

Scotts, 315 F.3d at 273 (quoting Johnson & Johnson

* Merck Consumer Pharm. Co. v. Smithkline Beecham Corp., 960
F.2d 294, 297 (2d Cir. 1992)).

This requires a showing that "a

substantial portion of the audience for that advertisement was
actually misled."

Scotts, 315 F.3d at 276 (quoting Clorox Co.

Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24, 36
(1st Cir. 2000)).

34

M-Edge cites three purportedly bad acts by Amazon as bases
of this claim:
1.

The use of advertisements based on third-party
search engines that resulted in Amazon
advertising Amazon.com as the "official site" of
M-Edge;

2.

Statements on [Amazon.com] that M-Edge's products
are "no longer available"; and

3.

Amazon's use of the approved vendor list in
connection with the MfK program.

MSJ Opp. 50-53.

1) Third-Party Search Terms
M-Edge seeks to support its false advertising claim related
to third-party search engines by proffering the unauthenticated
printout of an internet search page, discussed and deemed
inadmissible herein with reference to its unfair competition
claim.
As discussed herein, in the context of M-Edge's unfair
competition claim, Amazon used what it referred to as "sparkles"
to direct consumers using M-Edge keywords to the Amazon
accessories page.

M-Edge contends that this practice is a false

or misleading description of fact or misrepresentation of fact.
As stated in Playboy Enters., Inc. v. Netscape Comms. Corp., 354
F.3d 1020, 1035 (9th Cir. 2004) (Berzon, J., concurring):

35

If I went to Macy's website and did a search for a
Calvin Klein shirt, would Macy's violate Calvin
Klein's trademark if it responded (as does Amazon.com,
for example) with the requested shirt and pictures of
other shirts I might like to consider as well? I very
much doubt it.
See also Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp.
2d 734 (E.D. Mich. 2003) (holding no likelihood of confusion for
pop-up advertisements for non-Wells Fargo vendors displayed in
response to "Wells Fargo" keyword); U-Haul Int'l, Inc. v.
WhenU.com, Inc., 279 F. Supp. 2d 723, 728 (E.D. Va. 2003).
Since Amazon's use of "sparkles" would not constitute a
literally false statement, M-Edge would have had to produce
extrinsic evidence of consumer confusion by virtue of their use.
Scotts, 315 F.3d at 273.

M-Edge has not done so.

2) Product Availability
M-Edge contends that Amazon engaged in false advertising by
referring to M-Edge products as "no longer available" on its
website.

MSJ Opp. 51.

M-Edge presents, as evidence, an e-mail

from a "Beth Weston" sent to "kindle-feedback."

MSJ Opp. Ex.

88:
I recently purchased a Kindle keyboard
3G and WiFi. To be honest, I still like
reading an actual book. However, I do like
the convenience of being able to take my
Kindle "book" to places where I will have
time to read. I also like the feature that
lets me sample books. There was an

36

advertising card for the "e-luminator
light" when I bought my M-Edge cover. But
the website now says they are no longer
available.
M-Edge acknowledges that it "may be literally true that MEdge products are 'no longer available' on Amazon."
51.

MSJ Opp.

Nevertheless, according to M-Edge, the "no longer

available" falsely "convey[s] the message that the M-Edge
products have been discontinued, and cannot be found elsewhere;
rather than the truth which is that Amazon has simply refused to
sell them."

Id.

However, this email does not prove that "the defendant made
a false [statement]."

Scotts, 315 F.3d at 273.

Amazon was at

one point under contract to sell M-Edge products on its website,
but the contract had ended.

MSJ 4-5.

So the "no longer

available statement" – as acknowledged by M-Edge – may be
literally true.
Moreover, in the modern world, with ready availability of
eBay and numerous sources for products discontinued by a
manufacturer, a consumer would not reasonably conclude that a
message of unavailability on Amazon.com would constitute a
statement that a product was not available from any other
source.

M-Edge has not shown that the alleged

"misrepresentation is material, in that it is likely to

37

influence the purchasing decision."

Id. at 272.

Certainly, Ms.

Weston's email does not compel such a conclusion.
The "no longer available" evidence, then, fails to
establish a claim of false advertising.

3) Approved Vendor List
M-Edge contends that Amazon engaged in false advertising by
"approach[ing] M-Edge's existing and prospected offline retail
customers with a list of 'approved' vendors and messages about
the MfK program."

MSJ Opp. 53.

This behavior allegedly

constitutes false advertising because it gave the "literally
false" message that M-Edge was not an "approved" vendor.

Id.

According to M-Edge, Amazon's message that M-Edge was not an
"approved" vendor was "literally false" because "[w]hen Amazon
contrived the [MfK] program, M-Edge was already an Amazonapproved vendor of Kindle covers."

Id. at 44 (emphasis added).

See also id. at 25 ("The MfK list itself was misleading because
its very existence suggested that Amazon's approval was required
for M-Edge to sell Kindle accessories.").
In stating that it was an "approved" vendor before creation
of the MfK program, M-Edge appears to refer to its status under
the "Kindle-Compatible Vendor" program, which M-Edge joined in
2009.

MSJ 4.

As an "approved" member of this program, M-Edge

38

was allowed to label its products as "Kindle Compatible" and
sell them online through Amazon.com.

Id.

Amazon admits that M-

Edge was an "approved" vendor under the earlier "KindleCompatible Vendor" program:
Q [M-Edge]:
And as of June 20, 2011, [after
creation of the MfK program,] M-Edge was an
approved Kindle compatible vendor; correct?
A [Amazon]:
Yes. Under our previous iteration of
the contract.
MSJ Opp. Ex. 56 at 104.
The fact is that Amazon's statements regarding M-Edge's
status as a non-MfK-approved vendor were not literally false.
The MfK "approved list" and the earlier "Kindle-Compatible
Vendor" programs were separate programs.

Because M-Edge was not

an MfK-approved vendor, it was not wrong for Amazon to say so.
M-Edge, therefore, fails to establish the first element of a
claim for false advertising.
Accordingly, the Court shall grant Amazon's motion for
summary judgment related to false advertising.

IV.

MOTIONS IN LIMINE
By the instant motions in limine, M-Edge seeks to have the

Court:
1.

Bar the testimony of Amazon's "consumer electronics
industry expert," Bruce Koenigsberg, and striking his
report from the record.

39

2.

Bar certain testimony of Amazon's damages expert, Dr.
Allyn Strickland, and striking the corresponding
portions of his report.

A.

Legal Standard

A witness may be qualified as an expert "by knowledge,
skill, experience, training, or education."

Id.

Such a witness

"may testify in the form of an opinion or otherwise if:
1.

"[T]he 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;

2.

"[T]he testimony is based on sufficient facts or
data;

3.

"[T]he testimony is the product of reliable
principles and methods; and

4.

"[T]he expert has reliably applied the principles
and methods to the facts of the case."

Fed. R. Evid. 702.
"The witness' qualifications to render an expert opinion
are also liberally judged by Rule 702."
374, 377 (4th Cir. 1993).

Kopf v. Skyrm, 993 F.2d

The Fourth Circuit has stated that

testimony based on experience is admissible if the expert can
explain "how [his] experience leads to the conclusion reached,
why [his] experience is a sufficient basis for the opinion, and
how [his] experience is reliably applied to the facts."

United

States v. Bynum, 604 F.3d 161, 167 (4th Cir. 2010) (internal
quotations and citations omitted).

40

Maryland courts have noted

that "[n]othing in Rule 702 precludes an expert witness from
giving some context to his opinion" and that "[s]ome factual
discussion is therefore expected in an expert report."

Pulse

Med. Instruments, Inc. v. Drug Impairment Detection Servs., LLC,
858 F. Supp. 2d 505, 512 (D. Md. 2012).
The Federal Rules also allow experts to rely on otherwise
inadmissible evidence.

One situation is where "experts in the

particular field would reasonably rely on those kinds of facts
or data in forming an opinion on the subject."
703.

Fed. R. Evid.

If such facts or data would be otherwise inadmissible,

"the proponent of the opinion may disclose them to the jury only
if their probative value in helping the jury evaluate the
opinion substantially outweighs their prejudicial effect."

Id.

The Supreme Court has held that "[v]igorous crossexamination, presentation of contrary evidence, and careful
instruction on the burden of proof are the traditional and
appropriate means of attacking shaky but admissible evidence."
Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993).
From this, it follows that the proper vehicle for resolving
disputed facts is cross examination, not a motion in limine.
See Westberry v. Gislaved Gummi AB, 178 F.3d 257, 261 (4th Cir.
1999) ("As with all other admissible evidence, expert testimony
is subject to being tested by '[v]igorous cross-examination,

41

presentation of contrary evidence, and careful instruction on
the burden of proof.'") (quoting Daubert, 509 U.S. at 596).

1.

Mr. Bruce Koenigsberg (Consumer Electronics)

Amazon proffers the testimony of Mr. Keonigsberg as a
Consumer Electronics Industry Expert.

M-Edge states that the

"essence of Mr. Koenigsberg's opinion is that Amazon's conduct
comported with "industry standards", and M-Edge's conduct was
not consistent with industry "best practices." Koeningsberg MIL
Mem. 1 [Document 109].
As discussed herein, the Court shall grant summary judgment
to Amazon with regard to all claims other than its patent
infringement claim against the Shasta cover. Accordingly, the
Court is not certain of the extent to which, if at all, Mr.
Koenigsberg will testify at trial.

However, the Court shall

assume that he could provide relevant testimony.
M-Edge contends that the Court should bar his testimony
because of:
1.

Deficient qualifications.

2.

Improper methodology relating to "standards."

3.

Improper methodology in repackaging M-Edge's claims.

4.

Improper role.

Koenigsberg MIL Mem. at 1-2.

42

1) Qualifications
Although Mr. Koenigsberg "describes his business as 'an
independent consultant [who] works with vendors to help them
launch products in to retail,'" he only has one client, who is
part-time.

Koenigsberg MIL Mem. 9.

Furthermore, he admits to

having no training or education relating to "common buying
practices" or "industry standards" and states that he has never
taught or written about this subject.

Id. at 10.

Nevertheless, Mr. Koenigsberg has 37 years of experience in
the consumer electronics industry.
119].

Koenigsberg Opp. 3 [Document

In that capacity, he has represented both retailers like

Amazon and product vendors like M-Edge.

Id.

Furthermore, he

has "personally participated in thousands of negotiations of
consumer electronics program between retailers and vendors from
both [sides] and has supervised many more . . . ."

Id. at 7.

Certainly, M-Edge can debate the persuasive value of Mr.
Koenigsberg's experience,13 but he does have experience relevant

13

While Mr. Koenigsberg did spend 16 years as "a buyer for one
retail appliance chain," that job ended 20 years ago.
Koenigsberg Reply 2 [Document 131]. His current job is a
consultant "for an event business that charges vendors for space
to pitch products to retailers." Id. Amazon did note, however,
that this job involves providing notable clients such as "Best
Buy, Staples, and Target" with "what terms and conditions
retailers are requiring from vendors in order for vendors to
have their products stocked in retailers' stores." Koenigsberg
Opp. 3.

43

to the consumer electronics industry.

"[T]he text of Rule 702

expressly contemplates that an expert may be qualified on the
basis of experience."

Wilson, 484 F.3d at 274 (quoting advisory

committee's notes on Fed. R. Evid. 702).

Therefore, the Court

finds Mr. Koenigsberg's qualifications adequate to permit him to
serve as an expert witness on matters within the purview of his
experience.

2) Standard Texts
M-Edge contends that Mr. Koenigsberg's opinions are
"classic ipse dixit" in that he "point[s] to no texts, articles,
or written standards against which his conclusions could be
tested."

Koenigsberg MIL Mem. 2.

M-Edge notes that Mr.

Koenigsberg did not practice any accepted methodology in
determining "industry standards" or "buying practices."
11.

Id. at

Rather, his opinions were "just based on [his] experience."

Id. at 12.
Mr. Koenigsberg stated that he was unaware of any "written
industry standards in an article, a text, or anywhere else that
[he] could consult."

Id. at 13.

Amazon contends that "[t]here

are no textbooks, treatises, or written manuals" describing best
practices in the consumer electronics industry.
Opp. 5.

Koenigsberg

M-Edge, does not present any standard text or other

44

authority that it contends Mr. Koenigsberg should have relied
on.

The Court finds, therefore, that the only "way in which

[the] expert [could] gain meaningful knowledge about [the
matters in question] . . . is through personal experience."

Id.

3) Improper Methodologies
M-Edge contends that Mr. Koenigsberg relied upon "improper
methodology in repackaging M-Edge's claims."
Mem. 2.

Koenigsberg MIL

Specifically, M-Edge says that Mr. Koenigsberg

"impermissibly distilled M-Edge's detailed contentions about
Amazon's misconduct . . . into eight sentences . . ., carefully
omitting or sanitizing the actual misconduct."

Id. at 14.

Thus, M-Edge contends that the witness seeks to present his
"personal version of the facts."

Id. at 9.

The gravamen of M-

Edge's contention is that the witness did not rely upon the
actual facts of the case and did not consider all of the
pertinent evidence that he should have.

This contention is,

certainly, the basis for cross-examination but not for exclusion
of the testimony.
In i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831
(Fed. Cir. 2010), Microsoft argued that i4i's expert did not use
the proper data in calculating a reasonable royalty calculation.
Id. at 854.

The Federal Circuit agreed that "i4i's expert could

45

have used other data in his calculations," but nevertheless
upheld the lower court's decision to admit the expert's
testimony.

Id. at 855-56.

In so doing, the Federal Circuit

stated that "it is not the district court's role under Daubert
to evaluate the correctness of facts underlying an expert's
testimony."

Id.

Rather, "what facts are most relevant or

reliable to calculating a reasonable royalty are for the jury,"
which is "entitled to hear the expert testimony and decide for
itself what to accept or reject."

Id.

The Court reaches the same conclusion as the i4i court.
The "mere weaknesses in the factual basis of an expert
witness'[s] opinion bear on the weight of the evidence rather
than on its admissibility."

Basile Baumann Prost Cole &

Assocs., Inc. v. BBP & Assocs. LLC, No. CIV. WDQ-11-2478, 2012
WL 3115867, at *4 (D. Md. July 25, 2012) (quoting McLean v.
988011 Ontario, Ltd., 224 F.3d 797, 801 (6th Cir. 2000)).

As in

i4i, the reliability of the factual basis underlying Mr.
Koenigsberg's testimony is appropriately challenged by crossexamination, not a motion in limine.

i4i, 598 F.3d at 856.

also Daubert, 509 U.S. at 596; Westberry, 178 F.3d at 261.

46

See

4) Improper Role
M-Edge contends that Amazon is seeking to use Mr.
Koenigsberg "to give Amazon's spin on the evidence through the
mouth of a self-described 'consumer electronics industry
expert,' in effect making a closing argument from the witness
stand."

Koenigsberg MIL Mem. 2.

M-Edge fears that "Mr.

Koenigsberg threatens to turn Amazon's attorney argument into
evidence," thereby misleading the jury.

Id. at 17.

However, the Court does not find a realistic possibility of
misleading the jury.

Certainly, the Court would consider a

request for a cautionary instruction – addressed to all expert
witness testimony - to the effect that such witnesses may be
making assumptions about the facts that the adversary will
contest, but that it will be the jury that finds the facts, not
the expert witness.

Moreover, M-Edge will have the opportunity

to cross-examine Mr. Koenigsberg and point out that his opinion
is based upon erroneous assumptions of fact.
In sum, the Court shall not exclude testimony of Mr.
Koenigsberg to the extent, if at all, it may be relevant.

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2.

Dr. Allyn Strickland (Damages)

Amazon proffers the testimony of Dr. Allyn Strickland as a
damages expert.

M-Edge seeks exclusion of Dr. Strickland's

testimony to the extent that it includes:
1.

Testimony regarding Amazon's good corporate
character.

2.

Improper opinion regarding Amazon's liability for
unfair competition.

3.

Opinion testimony that M-Edge engaged in bad
acts.

4.

Any alternative non-patent damages claim other
than the one for $6,037.

Strickland MIL 1-2.

1) Character (Background) Testimony
Amazon seeks to offer Dr. Strickland's opinion that:


Amazon . . . seeks to be Earth's most customercentric company.



Amazon announced in October 2013 that it would be
opening a . . . fulfillment center in Baltimore
[in an area previously closed for development]
that will create more than 1,000 jobs.



Amazon's founder and CEO, Mr. Bezos, was named
Time Magazine's Person of the Year in 1999. In
2008, Mr. Bezos was named "America's Best Leader"
by the U.S. News and World Report . . . . In
2011, Jeff Bezos and Gregg Zehr won the
Economist's Innovative Award (for consumer
products) for the Kindle.

Strickland MIL 3-4.

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The Court finds a considerable degree of potential undue
prejudice – and an effort to pander to a local jury - in Dr.
Strickland's purported character or "background" evidence.
While Amazon is entitled to present some proper background
information,14 the Court finds it necessary to exercise control
over the evidence.

Accordingly, the Court will require Amazon,

at least two days prior to offering any "background" testimony
(and preferably prior to trial), to present a proffer of the
evidence for an advance ruling regarding admissibility.

2) "Bad Acts" Testimony
M-Edge seeks to have the Court bar Dr. Strickland's
opinions regarding "Amazon's liability for unfair competition"
and "M-Edge's purported bad acts."

Strickland MIL 2.

For

example, Dr. Strickland's opinions that:


14

M-Edge made a conscious business decision not to
participate in the MfK program and end its

For example, testimony to prove that:
When Amazon first began the business it was a place to
buy books because of the unique customer experience
the Web could offer book lovers. Mr. Bezos felt that
the internet was the convenience of browsing a
selection of millions of book titles in a single
sitting. Through its technical innovation, Amazon
grew to offer customers more types of products, more
conveniently, and at even lower prices.

Strickland MIL 3-4.

49

relationship with Amazon in pursuit of large
retailers and other device covers.


M-Edge concluded that they did not want to pay a
fee for the use of the Kindle logo.



Ms. McCloskey [M-Edge's damages expert] ignored
the fact that M-Edge's online sales at Amazon.com
declined in 2011 and became close to zero because
of M-Edge's own actions.



M-Edge made the conscious business decision not
to participate in the MfK program.

Id. at 5-6.
M-Edge seeks Dr. Strickland's opinions regarding M-Edge's
bad acts. For example:


M-Edge's deceptive acts toward Amazon.



Amazon believed in mid-2011 that M-Edge had
violated the NDA with Amazon when the two parties
were negotiating the MfK program.



Amazon also discovered violations of the July
2010 Agreement by M-Edge and notified M-Edge of
them in September 2011.



M-Edge continues to sell a large number of Kindle
accessories, without using the official Kindle
logo.

Id. at 10.
Inasmuch as the only claim remaining to be tried is MEdge's patent infringement claim against the Shasta cover, such
opinions are inadmissible as irrelevant.

50

3) Alternative Damages Calculations
Dr. Strickland performed only one non-patent damages
calculation – opining that there was a $6,037 loss relating to
M-Edge's delay in launching its "Shasta" ereader cover.15
Strickland MIL 12; Strickland Opp. 14 [Document 123].

Amazon

contends that much of Dr. Strickland's testimony will go to the
issue of causation in regard to the tort claims. See, e.g.,
Golden Nugget, Inc. v. Chesapeake Bay Fishing Co., L.C., 93 F.
App'x 530 (4th Cir. 2004) (holding that an expert could testify
about the cause of a fire).
Inasmuch as the Court is granting summary judgment to
Amazon on all non-patent claims, the Court finds Dr.
Strickland's non-patent damages opinions irrelevant.

V.

CONCLUSION
For the foregoing reasons:
1.

Defendant Amazon.com, Inc.'s Motion for
Summary Judgment [Document 126] is GRANTED
IN PART AND DENIED IN PART.
a.

2.

15

Amazon is granted summary judgment on
all claims other than the patent
infringement claim against the Shasta
cover in Count I.

Plaintiff's Motion in Limine to Bar
Testimony of Amazon's "Consumer Electronics

This is the M-Edge equivalent of Amazon's Type I Device.

51

Industry Expert," Bruce Koenigsberg, and to
Strike His Report [Document 108] is DENIED.
3.

M-Edge's Motion in Limine to Bar Certain
Testimony of Amazon's Damage Expert, Allyn
Strickland, and to Strike the Corresponding
Portions of His Report [Document 117] is
GRANTED IN PART AND DENIED IN PART.
a.

b.

4.

Except as otherwise provided herein,
Dr. Strickland may not testify as to
Amazon's good corporate character,
Amazon's liability for unfair
competition, M-Edge's alleged bad acts
or non-patent damages claims.
Amazon may offer "background" evidence
from any witness only to the extent it
obtains leave of Court to do so after
presenting a proffer of the evidence at
least two days prior to presenting it.

M-Edge shall arrange a telephone conference
to be held by February 20, 2015, to discuss
the scheduling of further proceedings
herein.

SO ORDERED, on Thursday, January 29, 2015.

/s/_____
_____
Marvin J. Garbis
United States District Judge

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