Daneshvar v. Kipke et al

Filing 105

ORDER granting in part and denying in part 81 Motion to Strike--Signed by Magistrate Judge Anthony P. Patti. (MWil) (Main Document 105 replaced on 11/25/2015) (MWil).

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
EUGENE D. DANESHVAR,
Plaintiff,
v.

Case No. 2:13-cv-13096
Judge Stephen J. Murphy, III
Magistrate Judge Anthony P. Patti

DARYL R. KIPKE and
NEURONEXUS
TECHNOLOGIES, INC.,
Defendants.
_________________________/
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANTS’ MOTION TO STRIKE EXPERT TESTIMONY OF
EUGENE D. DANESHVAR (DE 81)
Currently before the Court is Defendants’ September 30, 2015 motion to
strike the expert testimony of Eugene D. Daneshvar. (DE 81; see also DE 82.)
Plaintiff has filed a response, and Defendants have filed a reply. (DEs 90, 95.)1
Judge Murphy has referred this motion to me for hearing and determination.
(DE 93.) A hearing was noticed for November 24, 2015 and held on that date.
(DE 102.) For reasons stated on the record, which are hereby incorporated by this
reference as though re-stated herein, Defendants’ motion to strike (DE 81) is
GRANTED IN PART and DENIED IN PART as follows:

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 The

Court sought and received a supplemental statement of compliance with E.D.
Mich. LR 7.1(a). (See DEs 97, 98.) 

1.

Daneshvar is not be precluded from testifying as an expert
pursuant to Fed. R. Evid. 403, as:
a.

b.

the Court is not convinced that Daneshvar's dual role as a
fact witness and expert witness is unduly prejudicial and
will confuse the jury, and any such concerns can be
addressed with an appropriate jury instruction;

c.

any potential bias by Daneshvar goes to the weight of his
testimony, not its admissibility;

d.

Defendant’s concerns regarding the possibility that
Plaintiff will make improper emotional appeals or engage
in inappropriate drama before the trier of fact may be
dealt with by other means, such as trial objections,
motions to strike, motions in limine, etc.; and

e.

2.

the Court is not convinced that Daneshvar's dual role as a
party to the litigation and as an expert witness is unduly
prejudicial and will confuse the jury;

an inventor “is a competent witness to explain the
invention and what was intended to be conveyed by the
specification and covered by the claims. The testimony
of the inventor may also provide background
information, including explanation of the problems that
existed at the time the invention was made and the
inventor's solution to these problems.” Voice Techs.
Grp., Inc. v. VMC Sys., Inc., 164 F.3d 605, 615 (Fed. Cir.
1999).

Daneshvar is not precluded from testifying as an expert
pursuant to Fed. R. Evid. 702, in accordance with the
following parameters and limitations, subject to laying a
proper foundation at trial, and consistent with the case law
cited herein:
a.

Daneshvar may testify as a “technical expert” in order to
“help the trier of fact to understand the evidence [or the
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technology] or to determine a fact in issue . . .” under
Fed. R. Evid. 702;
b.

Consistent with the Court’s questioning of Plaintiff’s
counsel and his responses thereto, Daneshvar may testify
as to the “subject matter of the claims at issue,” but may
not testify as to what “he considers [to be] his
inventions”– since, standing alone, these are not relevant
– unless they are “within the claims” of the’894 patent
(DE 95 at 3);2

c.

Consistent with the statement made in his brief that he
“obviously cannot, and will not, explicitly testify at trial
as to the ultimate legal conclusion of inventorship—i.e.,
whether the legal standard for inventorship has been
satisfied— given [that] the jury will decide that issue[,]”
(DE 90 at 17-18, Pg ID 4914-4915), Daneshvar may not
testify at trial as to the ultimate legal conclusion of
inventorship, and may not offer the opinion, as stated in
his Designation of Expert Witness, Part C, that “he is an
inventor of the ‘894 patent.” (DE 81-4 at 3, Pg ID 4594);

d.

As to the expectation that Daneshvar will testify that
certain claims of the ‘894 patent comprise subject matter
invented by him (DE 81-4(C)(3)), he may not provide
such testimony as to Claim 12, because it is not listed in
Daneshvar’s response to Interrogatory No. 11 (DE 81-5);

e.

Based upon the record presented to the Court in support
of this motion, Defendants’ assertions that Plaintiff
should be precluded from testifying that his inventive or
innovative work pre-dated that of the defendants, and
their further argument that Plaintiff’s testimony as to
what he invented is not adequately corroborated by

2

Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998).
In this regard, the Court notes that “the critical question for joint conception is who
conceived, as that term is used in the patent law, the subject matter of the claims at
issue.” Id.

 See,

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admissible evidence, have not convinced the Court that
Daneshvar should be precluded from testifying as an
expert; however, these arguments, if properly supported,
may be addressed in dispositive motion practice and/or
may go to the weight of the evidence or be pursued by
way of impeachment at trial.

IT IS SO ORDERED.
Dated: November 25, 2015

s/Anthony P. Patti
Anthony P. Patti
UNITED STATES MAGISTRATE JUDGE

I hereby certify that a copy of the foregoing document was sent to parties of record
on November 25, 2015, electronically and/or by U.S. Mail.
s/Michael Williams
Case Manager for the
Honorable Anthony P. Patti

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