Emerson Electric Co. v. Suzhou Cleva Electric Applicance Co., Ltd. et al

Filing 320

MEMORANDUM AND ORDER re: 279 MOTION to Exclude Testimony of Plaintiff's Proffered Expert Dr. Bryce Rutter filed by Defendant Suzhou Cleva Electric Applicance Co., Ltd., Defendant Cleva North America, Inc., Defendant Cleva Ho ng Kong Limited, Defendant Sears Roebuck & Co., IS DENIED. 288 MOTION to Exclude Testimony of Plaintiff's Proffered Expert Mr. David Bowen filed by Defendant Suzhou Cleva Electric Applicance Co., Ltd., Defendant Cleva North America, Inc., Defendant Cleva Hong Kong Limited, Defendant Sears Roebuck & Co. IS DENIED.. Signed by Magistrate Judge Shirley P. Mensah on 9/30/15. (LGK)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

EMERSON ELECTRIC CO.,
Plaintiff,
vs.
SUZHOU CLEVA ELECTRIC
APPLIANCE CO., LTD.,
CLEVA HONG KONG LIMITED,
CLEVA NORTH AMERICA, INC., and
SEARS, ROEBUCK AND CO.,
Defendants.

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Case No. 4:13-CV-1043-SPM

MEMORANDUM AND ORDER
This case is before the Court on Defendants’ Motion to Exclude Plaintiff’s Expert Bryce
Rutter (Doc. 279) and Defendants’ Motion to Exclude Plaintiff’s Expert David Bowen (Doc.
288).
I.

BACKGROUND

This case involves Plaintiff’s contentions that Defendants have infringed six of
Emerson’s patents, and Defendants’ contentions that those patents are invalid. To support their
arguments with regard to infringement and invalidity, Plaintiff intend to rely at trial on the
testimony of Dr. Bryce Rutter and Mr. David Bowen. Defendants move to exclude some or all of
their opinions as unreliable under Rule 702 of the Federal Rules of Evidence.
The Court recently granted in part Defendants’ motion for summary judgment of noninfringement of several of the patents at issue and granted in part Plaintiff’s motion for summary

judgment on several of Defendants’ invalidity contentions. As discussed below, that ruling
rendered moot several of Defendants’ challenges to the admissibility of Dr. Rutter’s and Mr.
Bowen’s opinions.
II.

LEGAL STANDARDS

The admissibility of expert testimony in federal court is governed by Rule 702 of the
Federal Rules of Evidence. Rule 702 states, “A witness who is qualified as an expert by
knowledge, skill, experience, training, or education may testify in the form of an opinion or
otherwise if: (a) the 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; (b) the testimony is based
on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.” This rule
imposes a “gatekeeping” responsibility on the district court, in which the court must ensure that
expert testimony is both relevant and reliable. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S.
137, 147-48 (1999) (citing Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993)).
“The proponent of the expert testimony bears the burden to prove its admissibility.” Menz v. New
Holland N. Am., Inc., 507 F.3d 1107, 1114 (8th Cir. 2007). “Decisions concerning the admission
of expert testimony lie within the broad discretion of the trial court.” Anderson v. Raymond
Corp., 340 F.3d 520, 523 (8th Cir. 2003) (quotation marks omitted).
“Rule 702 favors admissibility if the testimony will assist the trier of fact, and doubts
regarding whether an expert’s testimony will be useful should generally be resolved in favor of
admissibility.” Clark v. Heidrick, 150 F.3d 912, 915 (8th Cir. 1998) (quotation marks and
citations omitted). “‘[T]he rejection of expert testimony is the exception rather than the rule.”
Robinson v. GEICO Gen. Ins. Co., 447 F.3d 1096, 1101 (8th Cir. 2006) (quoting Fed. R. Evid.

702 advisory committee’s note). “‘Vigorous cross-examination, presentation of contrary
evidence, and careful instruction on the burden of proof are the traditional and appropriate means
of attacking shaky but admissible evidence.’” Id. (quoting Daubert, 509 U.S. at 595). However,
“[w]here ‘opinion evidence . . . is connected to existing data only by the ipse dixit of the expert,’
a district court ‘may conclude that there is simply too great an analytical gap between the data
and the opinion proffered.’” Smith v. Cangieter, 462 F.3d 920, 924 (8th Cir. 2006) (quoting Gen.
Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997)).
III.

DISCUSSION
A. Defendants’ Motion to Exclude Plaintiff’s Expert, Dr. Bryce G. Rutter

Plaintiff has offered the opinions of Dr. Bryce Rutter regarding infringement and validity
of the ‘769, ‘300, and ‘165 patents, which relate to improved vacuum cleaner designs that permit
users to use the vacuum cleaners more easily. Defendants move to exclude his testimony on the
ground that he is not qualified as one of ordinary skill in the pertinent art. 1
In a patent case, an expert must at least be one of ordinary skill in the pertinent art. See
Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1363-64 (Fed. Cir. 2008). The
Federal Circuit has held that in a patent case, “it is an abuse of discretion to permit a witness to
testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified
as an expert in the pertinent art.” Id. at 1363. As the Court noted in its Markman Order, the
parties do not dispute that one of ordinary skill in the art is someone with a bachelor’s degree in
mechanical engineering or equivalent technical experience. See Markman Order, Doc. 146, at p.
1

Defendants also argue that Dr. Rutter’s opinions on infringement and invalidity of the ‘769
Patent should be excluded because they are not reliable. However, the Court has found that
Defendants are entitled to summary judgment of non-infringement of the ‘769 Patent even when
Dr. Rutter’s opinions are considered and has dismissed the invalidity counterclaims for the ’769
Patent. Thus, Dr. Rutter’s opinions with regard to that patent are no longer relevant to the case,
and the Court need not reach the question of the admissibility of those opinions.

6. 2 Defendants argue that Dr. Rutter does not qualify as one of ordinary skill in the art because
he does not hold a bachelor’s degree in mechanical engineering and because “nothing in his
experience remotely equates to the math and engineering curriculum required for a bachelor’s
degree in mechanical engineering.” Defs.’ Mot. To Exclude, Doc. 279, at 4. Plaintiff
acknowledges that Dr. Rutter does not have a bachelor’s degree in mechanical engineering, but
argues that his education and experience give him “equivalent technical experience.”
The Court agrees with Plaintiff and finds that Dr. Rutter is qualified as one of ordinary
skill in the art. Defendants’ narrow focus on the fact that Dr. Rutter does not have a mechanical
engineering degree is misplaced. See United States v. Roach, 644 F.3d 763, 764 (8th Cir. 2011)
(“Rule 702 does not rank academic training over demonstrated practical experience”). Dr.
Rutter’s extensive experience with appliance design and consumer vacuum appliances, combined
with his educational background in industrial design and kinesiology, gives him the “equivalent
technical experience” needed to qualify him as of ordinary skill in the art. Dr. Rutter has been
working in the field of industrial design for nearly thirty-five years and has experience in
research and development related to vacuum cleaners and products such as power tools, manual
tools, and automotive vacuum gages. He is a named inventor on more than 100 patents, including
at least one patent for an invention related to ergonomic improvements to vacuum cleaners. See
Doc. 295-1, U.S. Patent No. 6,079,080 (“Upright Floor Cleaner”); Expert Report of Dr. Bryce
Rutter (“Rutter Report”), Doc. 237, at pp. 1-3 & Ex. A. He has taught design studios, design
methodologies, and materials and manufacturing courses at the University of Illinois. He also has
a bachelor’s degree and a master’s degree in Industrial Design and a Ph.D. in Kinesiology. This
2

Although both parties state that the Court “determined” these to be the qualifications of a
person of ordinary skill in the art, See Doc. 279, at 3; Doc. 295, at 2, the Court has never been
presented with any dispute regarding the necessary qualifications; it has simply accepted the
parties’ undisputed description of those qualifications.

education and technical experience makes Dr. Rutter qualified as one of ordinary skill in the art.
To the extent that there may be some gaps in Dr. Rutter’s relevant qualifications, those gaps go
to the weight of his testimony rather than its admissibility. See Robinson, 447 F.3d at 1100
(“Gaps in an expert witness’s qualifications or knowledge generally go to the weight of the
witness’s testimony, not its admissibility”) (quotation marks omitted).
Defendants rely on Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351 (Fed. Cir. 2006), and
Khoury v. Philips Med. Sys., 614 F.3d 888 (8th Cir. 2010), to support their position. In Flex-Rest,
the technology at issue involved computer keyboard positioning systems that enabled a keyboard
to be positioned at various angles. Id. at 1354. The district court determined that one skilled in
the art of the invention was a keyboard designer, and it precluded an ergonomics expert from
testifying as an expert regarding the design of keyboard systems and the prior art at the time of
the invention. Id. at 1360. The Federal Circuit affirmed, finding “no indication that the district
court abused its discretion” in concluding that the expert was “not one of ordinary skill in the art
at the time of the invention.” Id. at 1363. See also Khoury, 614 F.3d at 891, 893 (finding district
court did not abuse its discretion in precluding an ergonomics expert from opining about
defectively designed lab equipment because he was not “trained, experienced, or educated in the
design of medical devices or laboratories”).
Both cases are distinguishable. In Flex-Rest and Khoury, there was no indication that the
experts at issue had any technical experience in product design or any experience with the type
of technology at issue; they were described only as experts in “ergonomics.” Here, in contrast,
Dr. Rutter has extensive experience in product design, including experience with consumer
vacuum cleaner design. Moreover, given the lack of discussion of reasons and the abuse of

discretion standard used in Flex-Rest and Khoury, those cases provides little guidance for the
Court.
For all of the above reasons, the Court finds that Dr. Rutter is qualified as one of ordinary
skill in the pertinent art, and Defendants’ motion to exclude his opinions will be denied.
B. Defendants’ Motion to Exclude Testimony of Plaintiff’s Expert David
Bowen (Doc. 288)
Defendants move to exclude the testimony of Plaintiff’s proffered expert, Mr. David
Bowen, regarding infringement of the ‘170 Patent and infringement of certain asserted claims of
the ‘485 Patent. 3
1. Mr. Bowen’s Opinions Regarding the ‘170 Patent Are Admissible
Defendants argue that Mr. Bowen’s opinions regarding the ‘170 Patent are irrelevant and
unreliable because he failed to apply a reliable methodology before concluding that the Accused
Products infringe the ‘170 Patent.
Each claim of the ‘170 Patent requires “said canister being constructed of a material
capable of being collapsed under vacuum loads.” Doc. 13-3, ‘170 Patent. This Court has
construed the term “material capable of being collapsed under vacuum loads” to mean material
such as “injection molded plastic or the like.” Markman Order, Doc. 146, at 20-22. Mr. Bowen
noted this construction in his Expert Report. He stated that all of the ‘170 Accused Products have
canisters that are made of molded plastic and that his investigation (through a visual inspection)
showed that the canisters were formed through an injection molding process. See Expert Report

3

Defendants also argue that Mr. Bowen’s opinions on infringement and invalidity of the ‘083
Patent should be excluded because he applied an incorrect construction of the term “spiral” in
rendering his opinions. However, as with the ‘769 Patent, the Court need not reach this argument
because even when those opinions are considered, Defendants are entitled to summary judgment
on the ‘083 Patent, and the ‘083 invalidity counterclaims have been dismissed.

of David Bowen, Doc. 236-5, at 13; Deposition of David L. Bowen (Jan. 21, 2015) (“Bowen
Dep.”), Doc. 252-8, at 116:2-4. He opined that all of the ‘170 Accused Products have a canister
constructed of a material capable of being collapsed under vacuum loads.
Defendants argue that Mr. Bowen did not follow the methodology he testified would be
required to determine infringement, because he did not measure the thickness of the canisters in
the Accused Products. Defendants emphasize that Mr. Bowen testified that the thickness of
injection molded plastic forming a canister “would be a consideration in determining whether the
canister would collapse,” Bowen Dep., Doc. 252-8, at 112:2-5, yet he admitted that he did not
measure the thickness of the canisters in the Accused Products, id. at 115:25-116:4. This
argument is without merit. The question of whether the claim limitation is met does not turn on
“whether the canister would collapse” in the Accused Products, but rather on whether the
canister was constructed of a “material capable of being collapsed” under vacuum loads. Mr.
Bowen’s testimony makes it clear that he determined that the canisters in the Accused Products
were constructed of a “material capable of being collapsed” because he found that they were
made of injection molded plastic. He also offered testimony suggesting that although a canister
made of injection-molded plastic could “in a hypothetical case” be made thick enough to avoid
collapse, it would not be commercially viable to do so in a vacuum cleaner, suggesting that
obtaining thickness measurements in the Accused Products. Bowen Dep., Doc. 252-8, 112:1622. Defendants present nothing from Mr. Bowen’s testimony or elsewhere to suggest that one
must measure the thickness of a canister in order to determine whether it the canister is
constructed of a “material capable of being collapsed.”
Moreover, assuming arguendo that the thickness of the injection-molded plastic is a
necessary consideration in assessing whether it is a material capable of being collapsed, Mr.

Bowen did have the opportunity to observe the thickness of the canister in the Accused Products
before concluding that the canister was constructed of a material capable of being collapsed. If
Defendants contend that he should have acquired precise measurements of the thickness of the
canister before drawing that conclusion, that is a challenge to the factual basis for Mr. Bowen’s
conclusions and goes to the weight of his testimony rather than its admissibility. See Sphere
Drake Ins. PLC v. Trisko, 226 F.3d 951, 955 (8th Cir. 2000) (“Attacks on the foundation for an
expert’s opinion, as well as the expert's conclusions, go to the weight rather than the
admissibility of the expert's testimony.”).
Mr. Bowen’s report shows that he used a reliable methodology in forming his opinions
when he considered the Court’s claim construction, inspected the Accused Products, and applied
that claim construction to those Accused Products. There are no gaps in his analysis.
2. Mr. Bowen’s Opinions Regarding the ‘485 Patent Are Admissible
Defendants argue that Mr. Bowen failed to apply the actual claim language of the ‘485
Patent to the Accused Products to evaluate infringement. Claims 1 and 36 of the ‘485 Patent
recite “a cap having first and second ends, the first end defining a tapered outlet.” Defendants
argue that in his expert report, Mr. Bowen provided the opinion that the Accused Products have a
tapered cap rather than a tapered outlet. Bowen Report, Doc. 236-5, at 25.
Defendants appear to mischaracterize Mr. Bowen’s report, in which he plainly states his
opinion that “All of the ‘485 Accused Products have ‘a cap having first and second ends, the first
end defining a tapered outlet.’” Id. (emphasis added). Although he discusses his opinion that the
“cap” is tapered, he also specifically labels a diagram as having a “[t]apered outlet.” Id. This
shows that Mr. Bowen did compare the actual claim language to the Accused Products in
conducting his analysis.

Defendants also argue that the rectangular opening that Mr. Bowen labeled as a “tapered
outlet” in the Accused Products cannot be “tapered” because it does not have a decreasing crosssection along any length. However, that appears to be a concern about the correctness of Mr.
Bowen’s conclusions, and it goes to the weight to be afforded his opinion, not its admissibility.
See Sphere Drake Ins. PLC, 226 F.3d at 955. Defendants’ motion to exclude Mr. Bowen’s
opinions with regard to the ‘485 Patent will be denied.
IV.

CONCLUSION

For all of the above reasons,
IT IS HEREBY ORDERED that Defendants’ Motion to Exclude Plaintiff’s Expert
Bryce Rutter (Doc. 279) is DENIED.
IT IS FURTHER ORDERED that Defendants’ Motion to Exclude Plaintiff’s Expert
David Bowen (Doc. 288) is DENIED.

/s/Shirley Padmore Mensah
SHIRLEY PADMORE MENSAH
UNITED STATES MAGISTRATE JUDGE

Dated this 30th day of September, 2015.