Speedfit LLC et al v. Woodway USA, Inc. et al

Filing 241

ORDER granting 211 Daubert Motion. For the reasons discussed in the attached Memorandum & Order, defendant's motion is GRANTED. Whelan's opinion as to enablement as expressed in the Report is precluded. His and Blair's opini ons as to derivation and Oblamski's status as an inventor of the patents-in-suit is likewise precluded. Having resolved the parties' expert evidentiary disputes, the parties are ordered to confer and schedule a conference to update the court as to the prospect for settlement of this matter, or to discuss dispositive motion practice or setting a trial date. Ordered by Judge Kiyo A. Matsumoto on 3/29/2019. (Mazzurco, Vincent)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------X
SPEEDFIT LLC and AUREL A.
ASTILEAN,
Plaintiffs,
-against-

MEMORANDUM & ORDER
13-CV-1276 (KAM)(AKT)

WOODWAY USA, INC.,
Defendant.
----------------------------------X
MATSUMOTO, United States District Judge:
Plaintiffs Speedfit LLC (“Speedfit”) and Aurel A.
Astilean (“Astilean”) (collectively, “plaintiffs”) commenced the
instant action against Woodway USA, Inc. (“Woodway” or
“defendant”), alleging that Woodway wrongfully infringed upon
United States Patent No. 8,308,619 (“the ‘619 Patent”) and
United States Patent No. 8,343,016 (“the ‘016 Patent” and
together with the ‘619 Patent, the “patents-in-suit”), both of
which are owned by Speedfit and relate to a manually-powered
treadmill involving a closed-loop treadmill belt designed to
maintain a concave running surface and taut lower portion.

(ECF

No. 150, Supplemental Complaint (“Supp. Compl.”) ¶¶ 18-21.)
Before the court is Woodway’s Daubert motion seeking to preclude
the expert testimony offered by James Whelan, plaintiffs’
technical expert, concerning Provisional Patent Application No.
61/280,265 (the “‘265 provisional”).

(ECF No. 211, Def. Mem.)

The court has already granted in part and denied in part
Woodway’s concurrently filed Daubert motion challenging
plaintiffs’ damages expert, David Wanetick.

(See ECF No. 240.)

BACKGROUND
The court assumes familiarity with the factual
background and procedural history of this case as set forth in,
most recently, the court’s Order deciding defendant’s Daubert
motion against Wanetick, and the several other decisions in this
matter.

See Speedfit LLC, et. al. v. Woodway USA, Inc., 53 F.

Supp. 3d 561 (E.D.N.Y. 2014) (denying Woodway’s motion to
dismiss and motion to transfer); Speedfit LLC, et. al. v.
Woodway USA, Inc., No. 13-CV-1276, 2015 WL 6143697 (E.D.N.Y.
Oct. 19, 2015) (granting leave to file a Third Amended
Complaint); Speedfit LLC, et. al. v. Woodway USA, Inc., 226 F.
Supp. 3d 149 (E.D.N.Y. 2016) (granting in part and denying in
part Woodway’s motion to dismiss Third Amended Complaint);
Speedfit LLC, et. al. v. Woodway USA, Inc., No. 13-CV-1276, 2017
WL 5633113 (E.D.N.Y. Nov. 20, 2017) (construing claim term
“means for slackening”).
Defendant moves against Whelan’s opinions as disclosed
in his report dated July 27, 2015 (the “Report”).
1, Expert Report of James Whelan (“Rept.”).)

(ECF No. 212-

The 62-page Report

addresses Whelan’s assignment “to determine if the invention as
described in the [‘265] provisional patent application was
2

sufficient to allow one to make the invention as claimed in [the
patents-in-suit].”

(Id. at 3.)

Whelan approached his assignment by “construct[ing]
test fixtures and [testing] the inventions disclosed in the
provisional patent application and claimed in the [patents-insuit],” and by then comparing the performance of these test
fixtures.

(Id.)

The Report begins with a list of materials

Whelan reviewed in forming his opinions, including: the patentsin-suit and the ‘265 provisional; 275 digital photographs of the
leg-powered treadmill; seven colored drawings of the leg-powered
treadmill; 49 colored photocopied drawings and photographs of
the leg-powered treadmill and unspecified additional images; and
the Second Amended Complaint in this action.

(Id.)

As

enclosures, the Report includes the ‘265 provisional patent
application and both of the issued patents-in-suit.

(See Rept.

App. A-C.)
The Report also excerpts the ‘265 provisional, which
discloses a method for holding the treadmill’s lower belt
portion taut: “Springs (not shown) exert spring urgency in
opposite directions holding taut the length of the lower belt
portion in a dimension of approximately twenty-three inches.”
(Rept. at 4.)

The Report also summarizes and excerpts the

relevant claims of both patents-in-suit, (id. at 6-10), and then
describes the six test structures Whelan created for his
3

assignment, (id. at 10-21).

The test structures include one

control model with no “method of keeping the lower belt portion
taut,” (id. at 20-21), two models “constructed to be consistent
with the description of the [‘265 provisional],” (id. at 10-14),
and three models “constructed to be consistent with what was
claimed and contained in the description of [the patents-insuit],” (id. at 14-20).

Whelan loaded each of these test

structures with a weight and noted whether the upper belt
portion retained concavity and whether the lower belt portion
was taut; he made similar observations of each model in an
unloaded state.

(See, e.g., id. at 16-17.)

All the test models

included a frame representing the treadmill’s two-sided frame,
and a closed loop belt supported by two end rollers.

(Id. at

10-11; id. at 11 fig.5.)
The first model Whelan built to conform to the
disclosures in the ‘265 provisional used a “spring loaded in
tension, such that the resultant load was in opposite directions
at the spring’s end (sic) and held taut the lower belt portion.”
(Id. at 11 fig.5.)

The second model used a “leaf spring loaded

in bending, such that the resultant load was in opposite
directions at the spring’s end and midpoint, [and] held taut the
lower belt portion.”

(Id. at 12 figs.7 & 8.)

As depicted in

the Report’s Figures 7 and 8, a leaf spring appears to be a thin
rectangular length of metal.
4

The three models Whelan built to conform to the
patents-in-suit generally track the specifications of the ‘016
Patent, (see ECF No. 220-3, Ex. C, ‘016 Patent, col.4 l.61),
which describe the patents’ “means-for-slackening.”

See

Speedfit, 2017 WL 5633113, at *7 (construing “means-forslackening” as “limited to only those structures specifically
disclosed in [‘016 Patent’s] specification, namely, Figures 2,
3, and 4”).

For the first of these three models, depicted in

figures 10 and 11, Whelan used a so-called timing belt attached
to the end rollers to maintain synchronous motion between the
belts and rollers such that the upper portion maintained
concavity.

(Rept. at 14-15 figs.10 & 11.)

Another model used a

“flat support belt,” side-pulleys, and springs to keep the
support belt taut and in contact with the lower portion of the
closed loop belt.

(Id. at 16-17 figs.13 & 14.)

The flat

support belt thus supported the lower portion of the closed loop
belt and “prevent[ed] it from drooping down.”

(Id. at 16.)

And

a third model used two bearings to “physically support the
closed loop treadmill belt lower portion preventing drooping.”
(Id. at 18-19 figs.17 & 18.)

Whelan loaded each of these models

with a small plate to simulate a user’s weight.

In both the

loaded and unloaded states, Whelan observed whether the upper
belt portion maintained concavity and whether the lower belt
portion remained taut.

(See, e.g., id. at 17-19.)
5

Whelan concluded that: (1) the ‘265 provisional
“disclosed and [the patents-in-suit] claimed common elements;”
(2) the ‘265 provisional disclosed “different methods for
keeping the [treadmill’s] lower belt portion taut” than the
[patents-in-suit] did; and (3) the different methods claimed in
the patents-in-suit “were mechanical and performed similar[ly]
as to the method disclosed in the [‘265 provisional].”

(Id. at

25.)
Whelan also completed a Rebuttal report (the
“Rebuttal”), and on August 26, 2015, plaintiffs served this
Rebuttal on defendant.
Report (“Rebuttal”).)

(See ECF No. 212-2, Whelan Rebuttal
Among other contentions, Whelan’s

Rebuttal specifically responds to the report of defendant’s
technical expert, Dr. Kim Blair, which concluded, inter alia,
that the patents-in-suit are invalid as anticipated.

(Id. at

12; see also ECF No. 214, Report of Dr. Kim Blair (“Blair
Rept.”) at 2, 32, 35-37.)

Dr. Blair’s report further concluded

that Nicholas Oblamski, Woodway’s engineer, “is an inventor of
certain of the subject matter of the [patents-in-suit]” and that
“clear and convincing evidence” establishes that Oblamski
“conceived of and reduced to practice a synchronous belt” system
without any contribution from Astilean or Bostan.
12; Blair Rept. at 3, 33.)

6

(Rebuttal at

In response to Blair’s conclusion, Whelan cites the
Manual of Patent Examining Procedure’s (“MPEP”) standard for
rejection under 35 U.S.C. § 102(f).
MPEP § 2137.01.)

(Rebuttal at 13; see also

He notes that “file material” he reviewed

documented Astilean’s conception and invention of the treadmill
prototype in August 2008, and that the same prototype used an
“alternative method” for slackening.

(Rebuttal at 13.)

The

Rebuttal is unclear as to what the alternative method entails,
and to which method it should be compared.

Whelan also notes

that Oblamski and Astilean “collaborated in building the
production leg-powered treadmill” by 2009, but that Astilean had
already disclosed the need for a means for slackening earlier,
in December 2008.

(Id.)

Whelan points out that Oblamski worked

on a metal production model of the wooden prototype “starting
around December 2008 and early 2009.”

(Id.)

This metal

production model, the Speedboard 2, used a synchronous belt
system to “keep the lower belt portion taut and the upper belt
portion concave.”

(Id.)

Whelan then concludes that the

patents-in-suit “are not invalid under [§] 102(f),” and that the
“file material does not suggest that Mr. Oblamski conceived or
was developing a leg-powered treadmill with a lower belt portion
taut and the upper belt portion concave prior to working with
Mr. Astilean.”

(Id.)

Whelan finally concludes that the “file

7

material suggests” that Oblamski was neither the inventor nor
co-inventor of the leg-powered treadmill.

(Id.)

LEGAL STANDARD
I.

Expert Testimony
A.

Applicable Authority

As with the court’s Order deciding defendant’s Daubert
motion against plaintiffs’ expert Wanetick, the court applies
the law of the Federal Circuit to patent issues, and the law of
its regional circuit, the Second Circuit, to non-patent and
evidentiary issues.

In re Cambridge Biotech Corp., 186 F.3d

1356, 1368 (Fed. Cir. 1999); see also Coconut Grove Pads, Inc.
v. Mich & Mich TGR, Inc., 222 F. Supp. 3d 222, 250 n.6 (E.D.N.Y.
2016).

Thus, questions pertaining to Whelan’s patent-related

opinions are governed by Federal Circuit authority, and
questions pertaining to the admissibility of expert witness
testimony offered under Federal Rule of Evidence 702 (“FRE 702”)
or a party’s required witness disclosures under Federal Rule of
Civil Procedure 26 (“Rule 26”) are governed by Second Circuit
authority.
B.

Federal Rule of Civil Procedure 26

Before reaching the merits of defendant’s Daubert
challenge, however, the court will first address plaintiffs’
compliance with Rule 26.

Rule 26(a)(2)(B) requires parties

8

provide a report for each retained expert witness that
discloses:
(i)

a complete statement of all opinions the witness
will express and the basis and reasons for them;

(ii)

the facts or data considered by the witness in
forming them;

(iii)

any exhibits that will be used to summarize or
support them;

(iv)

the witness’s qualifications, including a list
of all publications authored in the previous 10
years;

(v)

a list of all other cases in which, during the
previous 4 years, the witness testified as an
expert at trial or by deposition; and

(vi)

a statement of the compensation to be paid for
the study and testimony in the case.

Fed. R. Civ. P. 26(a)(2)(B).

Rule 26 “guards against the

presentation of sketchy and vague expert reports that provide
little guidance to the opposing party as to an expert’s
testimony.”

Conte v. Newsday, Inc., No. 06-CV-4859, 2011 WL

2671216, at *4 (E.D.N.Y. July 7, 2011).
This disclosure requirement is designed to prevent a
party from raising unexpected or new evidence at trial.

Id.;

Harkabi v. SanDisk Corp., No. 08-CV-8203, 2012 WL 2574717, at *3
(S.D.N.Y. June 20, 2012) (“The purpose of the expert disclosure
rules is to avoid surprise or trial by ambush.” (internal
quotation marks omitted)); Ebewo v. Martinez, 309 F. Supp. 2d
600, 607 (S.D.N.Y. 2004).

Pursuant to Federal Rule of Civil
9

Procedure 37 (“Rule 37”), the court may preclude a party from
using information or an expert witness if the relevant
disclosures “are insufficiently detailed and complete to satisfy
Rule 26(a)(2).”

Conte, 2011 WL 2671216, at *4; see also Ebewo,

309 F. Supp. 2d at 606-07.
Defendant does not directly argue Whelan’s Report
should be precluded pursuant to Rules 26 or 37.

However, the

court notes that the Whelan reports submitted with the parties’
motion papers did not appear to include: a list of Whelan’s
qualifications, including publications he wrote in the previous
ten years, Fed. R. Civ. P. 26(a)(2)(B)(iv); a list of cases in
which he testified as an expert, id. (a)(2)(B)(v); or a
statement of his compensation for his work on this case, id.
(a)(2)(B)(vi). 1

The court, therefore, orders plaintiffs to amend

their disclosures to rectify these apparent deficiencies, if
they have not already done so, no later than the next scheduled
conference in this matter.
C.

Federal Rule of Evidence 702

FRE 702 governs the admissibility of expert testimony.
Fed. R. Evid. 702.

Whereas Rule 26 guards against the

disclosure of expert reports that provide little guidance to the
opposing party as to an expert’s testimony, FRE 702 guards

The court notes that plaintiffs’ opposition to the instant motion
attaches Whelan’s Curriculum Vitae. (See ECF No. 220-5, Ex. E.)

1

10

against the presentation of insufficiently reliable evidence to
the fact-finder.

Conte, 2011 WL 2671216, at *4.

FRE 702

permits expert testimony where:
(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
principles and methods; and

(d)

the expert has reliably applied the principles
and methods to the facts of the case.

of

reliable

Fed. R. Evid. 702.
District courts serve as the “gatekeeper” to ensure
that, in accordance with FRE 702, an “expert’s testimony both
rests on a reliable foundation and is relevant to the task at
hand.”

United States v. Williams, 506 F.3d 151, 160 (2d Cir.

2007) (quoting Daubert v. Merrell Dow Pharm., 509 U.S. 579, 597
(1993)).

“The district court has broad discretion to carry out

this gatekeeping function.”
F.3d 642, 658 (2d Cir. 2016).

In re Pfizer Inc. Sec. Litig., 819
The district court must “make

certain that an expert, whether basing testimony upon
professional studies or personal experience, employs in the
courtroom the same level of intellectual rigor that
characterizes the practice of an expert in the relevant field.”
Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999).
11

The

proponent of the expert testimony has the burden of establishing
the admissibility of the evidence under Daubert.

In re Pfizer,

819 F.3d at 658.
District courts also must ensure that “any and all
scientific testimony or evidence admitted is not only relevant,
but reliable.”

Nimely v. City of New York, 414 F.3d 381, 396

(2d Cir. 2005) (internal quotation marks omitted) (quoting
Daubert, 509 U.S. at 589).

Before admitting expert testimony

under FRE 702 and Daubert, the district court should make the
following determinations: (1) “whether the witness is qualified
to be an expert;” (2) “whether the opinion is based upon
reliable data and methodology;” and (3) “whether the expert’s
testimony on a particular issue will assist the trier of fact.”
Marini v. Adamo, 995 F. Supp. 2d 155, 179 (E.D.N.Y. 2014)
(citing Nimely, 414 F.3d at 396-97).
To be reliable, FRE 702 “requires a sufficiently
rigorous analytical connection between th[e] methodology and the
expert's conclusions.”

Nimely, 414 F.3d at 396.

“[T]oo great

an analytical gap between the data and the opinion proffered”
warrants exclusion.
(1997).

Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146

Thus, an expert opinion that “is based on data, a

methodology, or studies that are simply inadequate to support
the conclusions reached” is unreliable and should be excluded.
Nimely, 414 F.3d at 396-97 (citing Amorgianos v. Nat’l R.R.
12

Passenger Corp., 303 F.3d 256, 266 (2d Cir. 2002)); see also
Boucher v. U.S. Suzuki Motor Corp., 73 F.3d 18, 21 (2d Cir.
1996) (“[E]xpert testimony should be excluded if it is
speculative or conjectural.”); Uniloc USA, Inc. v. Microsoft
Corp., 632 F.3d 1292, 1315 (Fed. Cir. 2011) (“If the patentee
fails to tie the theory to the facts of the case, the [expert]
testimony must be excluded.”).

Accordingly, conclusory opinions

often provide an insufficient basis upon which to assess
reliability.

Estate of Jaquez v. City of New York, 104 F. Supp.

3d 414, 426 (S.D.N.Y. 2015) (citing Nimely, 414 F.3d at 396);
see also Gen. Elec., 522 U.S. at 146 (“[N]othing in either
Daubert or the Federal Rules of Evidence requires a district
court to admit opinion evidence that is connected to existing
data only by the ipse dixit of the expert.”).
DISCUSSION
I.

Whelan’s Qualifications

Defendant does not appear to challenge Whelan’s
qualifications or point to a lack thereof.

Though defendant

argues Whelan has not defined the relevant person of ordinary
skill in the art (“POSITA”), the court addresses that argument
below in considering the reliability of Whelan’s opinions.
Plaintiffs nevertheless argue that Whelan is qualified in their
opposition to the instant motion, (Pl. Opp. at 13-14), and cite
to Whelan’s deposition testimony in which he acknowledges, in
13

part, a proposed definition of POSITA, (ECF No. 213-1, Whelan
Dep. at 130:16-133:9).

In any event, the court must satisfy

itself that Whelan is qualified before admitting his opinion
testimony under FRE 702.
Defendant’s expert defined the POSITA as an individual
possessing either a Bachelor of Science degree in mechanical
engineering, or at least two years of relevant experience in the
treadmill industry, “including experience and knowledge of the
design construction, testing, and operation of manual
treadmills.”

(Blair Rept. at 7.)

Though Whelan’s Report does

not appear to disclose his Curriculum Vitae, plaintiffs
represent that Whelan holds a Bachelor of Science degree in
mechanical engineering from Lehigh University and that he is a
licensed Principal Engineer.

(Pl. Opp. at 14.)

defendant does not challenge this representation.

Once again,
Accordingly,

the court finds that Whelan qualifies as a POSITA, and moreover,
that he may offer opinion testimony that conforms to the
remaining requirements of FRE 702.
II.

Priority

Defendant seeks to preclude Whelan’s opinions as
expressed in the Report.

However, the parties appear to dispute

what Whelan’s ultimate opinions are.

Defendant contends

Whelan’s opinion attempts to support plaintiffs’ priority claim,
that is, whether the patents-in-suit can claim the priority
14

filing date of the ‘265 provisional under 35 U.S.C. § 119. 2
(Def. Mem. at 1.)

Plaintiffs counter by arguing the U.S. Patent

and Trademark Office (“USPTO”) already determined priority, (Pl.
Opp. at 3), and that an expert’s opinion as to a legal
conclusion is inadmissible, (id. at 2).
Whelan’s Report does not appear to make a priority
determination outright, but plaintiffs concede that the March
2009 IHRSA tradeshow release of the Woodway Curve could
constitute disclosure of prior art if not for the ‘265
provisional’s priority filing date.

(Id. at 4-5.)

Plaintiffs

also claim that what was disclosed at the March 2009 show “was
not the Woodway Curve, but the Speedfit Speedboard.” 3
also ECF No. 231-4, Ex. D.)

(Id.; see

In Whelan’s Rebuttal, plaintiffs

also counter the purported prior art disclosures of Woodway’s
Curve at the March 2009 IHRSA tradeshow by citing to a February
2009 episode of the television show “Wreckreation Nation” which
featured Speedfit’s prototype curved manual treadmill.

(See

Rebuttal at 9.)
This case is governed by the statutory provisions in effect before the
Leahy–Smith America Invents Act (“AIA”) went into effect. Pub. L. No. 112–
29, 125 Stat. 284, 285–93 (2011); see AIA § 3(n)(1), 125 Stat. at 293
(applying the relevant AIA amendments only to applications and patents
containing a claim with an effective filing date of March 16, 2013, or
later); see also Fleming v. Escort Inc., 774 F.3d 1371, 1374 n.1 (Fed. Cir.
2014).
3
The ‘619 Patent bears a filing date of October 29, 2010, and the ‘016
Patent bears a filing date of November 1, 2010. (ECF No. 220-2, Ex. B, ‘619
Patent; ECF No. 220-3, Ex. C, ‘016 Patent.) The March 2009 offering of the
Speedboard/Curve occurred more than one year prior to these filings, and
could constitute invalidating prior art if not for the ‘265 provisional. See
35 U.S.C. §§ 102(a)-(b) (2000).
2

15

Plaintiffs appear to disavow that they must establish
priority, relying on the USPTO’s issuance of the patents-in-suit
to arguably establish priority.

(Id. at 3.)

Plaintiffs

nevertheless argue enablement, an element of a priority
determination, by offering Whelan’s opinion that the ‘265
provisional satisfies 35 U.S.C. § 112’s enablement requirement. 4
A patentee may establish enablement of a patent when countering
an invalidity defense for lack of enablement, but Whelan’s
opinion concerns enablement of the ‘265 provisional, not the
patents-in-suit.

(Rept. at 3.)

Defendant moves to preclude Whelan’s opinion for
several reasons.

First, defendant argues the Report is

unreliable because Whelan did not identify or establish the
relevant POSITA as a threshold matter.

(Def. Mem. at 15.)

Second, defendant argues Whelan ignored the “written
description” requirement of 35 U.S.C. § 112.

(Id. at 18.)

Third, defendant argues Whelan’s enablement analysis methodology
is unreliable as it ignores the legal standard for priority.
(Id. at 20.)

Fourth, defendant argues Whelan did not separately

assess anticipation and that Whelan’s opinion is contrary to
this court’s construction of the term “means-for-slackening.”
(Id. at 23.)

4

Finally, defendant argues that Whelan’s opinion as

Pre-AIA enactment, 35 U.S.C. § 112(a) was codified in § 112 ¶ 1.

16

to derivation included in his Rebuttal to Blair’s report is not
based on sufficient facts.

(Id. at 24.)

Plaintiffs respond first by arguing the USPTO
determined priority in issuing the patents-in-suit, each of
which listed the ‘265 provisional as a reference, along with
prior art such as the January 2009 feature of the Speedboard in
a television broadcast and the March 2009 display of the
Speedboard/Curve at the IHRSA trade show.
also ‘619 Patent, ‘016 Patent.)

(Pl. Opp. at 3; see

Plaintiffs next point to

Whelan’s qualifications arguing they satisfy Woodway’s own
definition of a POSITA.

(Id. at 13.)

Next, plaintiffs argue

Whelan’s testing did not ignore the written description
requirement of § 112 and further that Whelan did not conflate
enablement and priority.

(Id. at 14-16.)

Plaintiffs concede,

however, that Whelan did not separately consider anticipation
but appear to argue that such analysis is not necessary to admit
his opinion.

(Id. at 18.)

Finally, plaintiffs deny that

Whelan’s opinion contradicts this court’s claim construction and
respond that defendant failed to identify the specific
contradiction.

(Id. at 19.)
A.

35 U.S.C. § 112

Regardless of whether Whelan opines ultimately on
priority or enablement as a required element, the court shall
begin its analysis of the admissibility of Whelan’s opinion by
17

considering the requirements of 35 U.S.C. § 112.

Provisional

patent applications must include a “specification as prescribed
by the first paragraph of [§] 112.”
(2002).

35 U.S.C. § 111(b)(1)(A)

The first paragraph of pre-AIA 35 U.S.C. § 112 required

a specification in a provisional disclosure to “contain a
written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to
which it pertains . . . to make and use the same.”
112 ¶ 1.

35 U.S.C. §

“Section 112 demands both (1) that a patentee

adequately disclose his or her invention to the public, and (2)
that the patent enable others to replicate it.”

In re

OxyContin Antitrust Litig., 994 F. Supp. 2d 367, 382 (S.D.N.Y.
2014), aff'd sub nom. Purdue Pharma L.P. v. Epic Pharma, LLC,
811 F.3d 1345 (Fed. Cir. 2016).

The written description

requirement and the enablement requirement are distinct, and a
patent or provisional application must satisfy both.

Id.

(citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1344 (Fed. Cir. 2010) (en banc)).
For a provisional application to establish priority,
“the specification of the provisional must ‘contain a written
description of the invention and the manner and process of
making and using it, in such full, clear, concise, and exact
terms,’ to enable an ordinarily skilled artisan to practice the
18

invention claimed in the non-provisional application.”

Dynamic

Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (emphases in original) (internal quotation mark
omitted) (quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
298 F.3d 1290, 1294 (Fed. Cir. 2002)); see also PowerOasis, Inc.
v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008)
(“[A] patent application is entitled to the benefit of the
filing date of an earlier filed application only if the
disclosure of the earlier application provides support for the
claims of the later application, as required by 35 U.S.C. §
112.”).
B.

Enablement

The court will first consider enablement, the element
of a priority determination that Whelan’s Report clearly
addresses.

(See Rept. at 3 (“The scope of the assignment was to

determine if the invention as described in the provisional
patent application was sufficient to allow one to make the
invention as claimed in [the] two issued patents . . . .”).)
Courts have interpreted § 112 to require that a provisional
patent application “disclose enough detail to enable a person of
ordinary skill in the art to practice the invention ‘without
undue experimentation.’”
382.

In re OxyContin, 944 F. Supp. 2d at

Some experimentation is permissible and may even be

necessary, but “unduly extensive” experimentation will preclude
19

a finding of enablement.

Atlas Powder Co. v. E.I. Du Pont De

Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
To determine if a disclosure requires undue
experimentation, courts balance the so-called Wands factors,
which include: (1) the quantity of experimentation necessary;
(2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the
invention; (5) the state of the prior art; (6) the relative
skill of those in the art; (7) the predictability of the art;
and (8) the breadth of the claims.
737 (Fed. Cir. 1988).
mandatory.”

In re Wands, 858 F.2d 731,

These factors are “illustrative, not

Streck, Inc. v. Research & Diagnostic Sys., Inc.,

665 F.3d 1269, 1288 (Fed. Cir. 2012) (internal quotation mark
omitted) (quoting Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d
1200, 1213 (Fed. Cir. 1991)).

The Federal Circuit has explained

that “[w]hether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.”

ALZA Corp. v. Andrx

Pharm., 603 F.3d 935, 940 (Fed. Cir. 2010) (citing In re Wands,
858 F.2d at 737).

Enablement does not require the disclosure

“necessarily describe how to make and use every possible variant
of the claimed invention,” because a POSITA, through
experimentation, “can often fill gaps, interpolate between
embodiments, and perhaps even extrapolate beyond the disclosed
20

embodiments, depending upon the predictability of the art.”

AK

Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir.
2003); see also Chiron Corp. v. Genentech, Inc., 363 F.3d 1247,
1253 (Fed. Cir. 2004).
The court precludes Whelan’s opinion as to whether the
‘265 provisional enabled a POSITA to make the invention as
claimed in the patents-in-suit because: (1) it will not assist
the trier of fact; and (2) it is conclusory and thus unreliable.
First, the Whelan Report does not actually appear to come to a
clear enablement conclusion, and Whelan’s underlying opinion
will not help the jury “understand the evidence or determine a
fact in issue.”

Fed. R. Evid. 702.

Second, assuming Whelan

opines on enablement, his opinion is conclusory and his method
unclear because the Report is silent as to Whelan’s method and
experimentation.
First, Whelan does not expressly conclude that the
description of the invention in the ‘265 provisional was
sufficient to allow him to make the invention as claimed in the
patents-in-suit.

His conclusions only state that the

provisional application and the patents-in-suit claimed common
elements; that they included a similar advantage in the concave
upper belt portion; and that, despite disclosing different
methods to achieve this advantage, the ‘265 provisional models
and the patents-in-suit models all performed similarly.
21

(Rept.

at 25.)

Similar performance and common elements, however, are

not the standard for enablement, and a fact-finder will be left
to guess whether Whelan was, in fact, able “to make and use” the
claimed invention based on the ‘265 provisional disclosures.
Putting these conclusions before lay jurors would risk
misleading the jurors as to what constitutes enablement, an
impermissible risk under FRE 403.

Even ignoring this risk,

permitting Whelan to opine on this narrow conclusion that the
models he tested performed similarly to the patents-in-suit
would not “help the trier of fact to understand the evidence or
to determine a fact in issue” as required by FRE 702.

Similar

performance is not a proxy for enablement, and plaintiffs have
not identified other facts or issues that Whelan’s opinion would
help determine.
Second, the court finds Whelan’s method for testing
enablement is not reliable.

Even had Whelan clearly concluded

enablement, the Report does not indicate what steps he took, on
what ordinary skills in the art he relied, or what guidance he
took from the disclosures in the ‘265 provisional to make and
use the invention as claimed in the patents-in-suit.

Indeed, as

indicated in the Report, Whelan built the third, fourth, and
fifth models drawing directly from “what was claimed and
contained in the description[s]” of the patents-in-suit, and not
what was disclosed in the ‘265 provisional.
22

(See, e.g., Rept.

at 14, 16, 18.)

It appears that Whelan’s method amounted to

constructing models based on the specifications and claims in
the patents-in-suit, rather than making and using the claimed
invention from the ‘265 provisional’s disclosures.

As discussed

above, Whelan’s conclusions based on this method are not
probative of enablement.

Even assuming that Whelan had only

used the ‘265 provisional to build these models, his Report is
conclusory because it does not discuss his method for making the
claimed invention based on the disclosures in the ‘265
provisional.

He does not explain what experimentation was

necessary for a POSITA to “fill gaps,” or “extrapolate beyond
the disclosed embodiments.”

AK Steel, 344 F.3d at 1244.

Instead, he leaps from the ‘265 provisional models to those
based on the claims and descriptions in the patents-in-suit.
Even though Whelan only had six days between the time
he was engaged by plaintiffs’ counsel and the date of his
report, (see Rept. at 3), the court is left guessing as to how
much, if any, experimentation was necessary and whether it was
unduly extensive. 5

This is especially true when considering the

5
The Wands factors are of course not mandatory, and Whelan’s failure to
expressly address them in lock-step fashion does not render his enablement
opinion unreliable. But, the factors nevertheless assist a fact-finder in
deciding if undue experimentation was necessary, and Whelan’s reports do not
address these factors. If Whelan determined no experimentation was
necessary, the report is silent as to that fact, and the court declines to
speculate.
Whelan’s Report similarly includes no discussion of the state of
the prior art, the relative skill of those in the art, the predictability of
the art in general, or how any of these factors permitted him to make and use
the invention as claimed in the patents-in-suit. Plaintiffs have not pointed

23

synchronous belt system which, unlike any of the other disclosed
means-for-slackening, does not involve a structure that is in
contact with the lower belt portion imparting an upward force.
The Report does not explain how Whelan arrived at this structure
or what in the disclosure of the ‘265 provisional enabled him to
make and use it.

Finally, Whelan goes so far as to distinguish

the models based on the patents-in-suit as being “mechanical”
without explaining why that distinction was or was not
important.
The Report is thus conclusory because the court cannot
determine that Whelan relied on methods and disclosures from the
‘265 provisional and then applied his technical expertise to the
task before him.

These analytical leaps render the Report’s

conclusion as to enablement unreliable.

Gen. Elec., 522 U.S. at

146 (holding a court may preclude opinion testimony with “too
great an analytical gap between the data and the opinion
proffered”).

Therefore, his opinion as to enablement is

precluded.
For the foregoing reasons, Whelan’s opinion regarding
enablement, as expressed in his opening Report is precluded and
defendant’s Daubert motion as to that opinion is granted.

The

to deposition testimony from Whelan that might address this shortfall.
Whelan’s opinion as to these subjects would have been particularly helpful to
the fact-finder in determining whether a POSITA could make and use the
claimed invention from the disclosures of the ‘265 provisional without undue
experimentation.

24

court need not consider whether Whelan’s failure to identify or
establish the POSITA is fatal to the admissibility of his
opinion.

The same applies to his alleged failure to address the

written description requirement of § 112.

The court reiterates,

however, that the parties appear to agree that Whelan is a
POSITA.

Thus, had Whelan established that he could personally

make and use the claimed inventions in the patents-in-suit using
only the disclosures in the ‘265 provisional and without undue
experimentation, plaintiffs arguably would have presented
evidence probative of enablement.

Further, because Whelan does

not appear to be ultimately rendering an opinion as to priority
the lack of a written description would not bear on the
reliability of his enablement opinion. 6

Finally, the court need

not address defendant’s argument that Whelan’s opinion conflicts
with the court’s later-issued claim construction order regarding
the claim term “means-for-slackening.”
III.

Correction of Inventorship
Having precluded Whelan’s opinion as to enablement,

the court now turns to his Rebuttal report which counters
Blair’s opinion as to Oblamski’s claim to inventorship of the
patents-in-suit.

Defendant argues that Whelan’s opinion as to

Nor could Whelan or Blair render an opinion to an ultimate legal
conclusion left to the court’s determination. See Hygh v. Jacobs, 961 F.2d
359, 363 (2d Cir. 1992) (“This circuit is in accord with other circuits in
requiring exclusion of expert testimony that expresses a legal conclusion.”).
6

25

the proper inventorship of the patents-in-suit under 35 U.S.C. §
102(f) (2006) is based on insufficient facts or data and fails
to reliably apply sound methods to the facts of the case.
Mem. at 24; Def. Reply at 8.)

(Def.

Plaintiffs respond that defendant

has not pointed to what specific facts Whelan failed to consider
and why that failure affected his conclusions.

(Pl. Opp. at 20-

21.)
Section 102 “requires that a patent accurately name
the correct inventors of a claimed invention.” 7

In re Verhoef,

888 F.3d 1362, 1365 (Fed. Cir. 2018) (citing Pannu v. Iolab
Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1988)); see also
Cumberland Pharm. Inc. v. Mylan Institutional LLC, 846 F.3d
1213, 1217 (Fed. Cir. 2017) (“[A] derivation challenge invokes
the rule that an applicant is not entitled to a patent if ‘he
did not himself invent the subject matter sought to be
patented.’” (quoting 35 U.S.C. § 102(f) (2006))).
fails to accurately name an inventor is invalid.
F.3d at 1350.

A patent that
Pannu, 155

Inventorship is a question of law that is

premised on underlying factual findings.
F.3d 411, 415 (Fed. Cir. 1994).

Sewall v. Walters, 21

Inventors named on an issued

patent are presumed to be correct, and one seeking to disturb

The AIA revised 35 U.S.C. § 102 and eliminated the derivation defense.
Compare 35 U.S.C. § 102 (2006) with 35 U.S.C. § 102 (2012). As the patentsin-suit issued prior to the effective date of the AIA, derivation ostensibly
remains an available invalidity defense to Woodway.
7

26

that presumption must meet the heavy burden of proving its case
by clear and convincing evidence.
at 1218.

Cumberland Pharm., 846 F.3d

A challenger asserting derivation must show that there

was a “prior conception of the claimed subject matter and
communication of the conception” to the named inventor.

Price

v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993).
Defendant argues that Whelan failed to consider clear
and convincing evidence that Oblamski is at least a co-inventor
of the patents-in-suit, and thus his Rebuttal rests on an
unreliable foundation.

(Def. Mem. at 25.)

According to

Woodway, this evidence includes deposition testimony,
specifically Oblamski’s, and other documents that defendant’s
expert, Dr. Blair, reviewed in forming his opinion on
derivation.

(Id.)

According to defendant, Whelan only reviewed

approximately ten documents hand-picked by plaintiffs’ counsel
and failed to interview either Astilean or Bostan, the named
inventors.

(Id.)

Defendant also notes in its reply that it is

not even clear that Whelan reviewed the relevant patent file
histories.

(Def. Reply at 8.)

Plaintiffs appear to respond by

arguing on the merits, pointing to the strength of Astilean’s
and Bostan’s respective claims to inventorship.

(Pl. Opp. at

21.)
The court is doubtful that either Blair or Whelan may
render an opinion that would be helpful to the finder-of-fact
27

concerning the correct inventor of the patents-in-suit.

As an

initial matter, courts must exclude expert testimony that
expresses a legal conclusion.

Hygh, 961 F.2d at 363.

Both

experts appear to render an ultimate conclusion as to Oblamski’s
claim of inventorship of the patents-in-suit.
13; Blair Rept. at 2-3, 36.)

(See Rebuttal at

Whelan, however, does not discuss

the timing of either Oblamski’s or Astilean’s and Bostan’s
conception of the synchronized timing belt, and their
corresponding communications of the same.

Expert testimony on

conception and reduction to practice would be helpful by
shedding light on when a prototype or other expressed concept
could be fairly said to represent an inventor’s claimed subject
matter.
Whelan does not offer such testimony.

Both experts

discuss a timeline of communications and collaboration between
Astilean and Oblamski around late 2008 and early 2009, though
Whelan does so with less specificity.
36; Rebuttal at 13.)

(Blair Rept. at 31-34,

Blair details communications between the

relevant individuals and concludes that Astilean “was well aware
of Mr. Oblamski’s invention of a method of using a timing belt.”
(Blair Rept. at 36.)

Whelan highlights some of the same

relevant events as Blair, but uses approximate dates and does
not discuss when Astilean, Bostan, or Oblamski communicated to
the others regarding a synchronous belt.
28

(See Rebuttal at 13.)

Whelan notes when Astilean and Oblamski began collaborating, and
when Oblamski began working with suppliers on the Speedboard 2,
the production model with a synchronous timing belt.

(Id.)

Without much elaboration, Whelan concludes that “the
file material does not suggest that Mr. Oblamski conceived or
was developing a leg-powered treadmill with a lower belt portion
taut and” concave upper belt portion prior to working with
Astilean.

(Id.)

Even if this is true, it is not probative of

whether Oblamski nevertheless conceived of and reduced to
practice certain of the claimed structures in the patents-insuit, namely those related to the use of a synchronous belt
system.

Without this discussion of conception and reduction,

the Rebuttal is conclusory, and Whelan’s ultimate conclusion
that Oblamski “was neither the inventor or co-inventor of the
leg-powered treadmill” is as unsupported and inadmissible as
Blair’s opposite conclusion.
Moreover, and like portions of Blair’s report, the
Rebuttal appears to express a legal conclusion.
conclusions will be excluded by this court.

Legal

The fact-finder,

whether a jury or the court, is empowered and perfectly capable
of considering and making the necessary factual findings
regarding the timing of communications between the named coinventors and the alleged would-be inventor.

The remainder of

Whelan’s opinions expressed in his Rebuttal are unchallenged,
29

and the court shall not consider their admissibility prior to
trial.

For the same reasons, Blair’s conclusions that the

Astilean patents are invalid, or that Oblamski is an inventor or
co-inventor of certain subject matter of the patents-in-suit,
are likewise precluded
CONCLUSION
For the reasons discussed above, defendant’s motion is
GRANTED as follows.

Whelan’s opinion as to enablement as

expressed in the Report is precluded.

His and Blair’s opinions

as to derivation and Oblamski’s status as an inventor of the
patents-in-suit is likewise precluded.

Having resolved the

parties’ expert evidentiary disputes, the parties are ordered to
confer and schedule a conference to update the court as to the
prospect for settlement of this matter, or to discuss
dispositive motion practice or setting a trial date.
SO ORDERED.
Dated: Brooklyn, New York
March 29, 2019
________ /s/____________
KIYO A. MATSUMOTO
United States District Judge
Eastern District of New York

30